The Trade Marks and Designs Registration Office of the European Union
The outward appearance of a product or part of it, resulting from the lines, contours, colours, shape, texture, materials and/or its ornamentation.
1.2. What is a product?
A product can be any industrial or handicraft item including packaging, graphic symbols and typographic typefaces but excluding computer programs. It also includes products that are composed of multiple components, which may be disassembled and reassembled.
1.3. Why a Community design?
Community design protection is directly enforceable in each Member State and it provides both the option of an unregistered and a registered Community design right for one area encompassing all Member States. The area of protection increases each time the EU enlarges.
The Community design has equal effect throughout the Community. OHIM only deals with applications for registered Community designs, since an unregistered Community design requires no filing.
1.4. Why protect your designs?
The design or shape of a product can be synonymous with the branding and image of a company and can become an asset with monetary value that could increase. If you do not apply for protection others may benefit from your investments.
1.5. What is the difference in the scope of protection of a registered Community Design (RCD) and an unregistered Community design (UCD)?
The scope of protection is the same. Both have unitary character throughout the European Union and share the requirements for protection such as novelty and individual character.
The rights conferred, however, differ because the RCD gives an exclusive right to use and prevent making, offering, putting on the market, importing, exporting, using or stocking for such purposes, products incorporating the design, which do not produce a different overall impression.
The UCD constitutes a right to prevent the commercial use of the design only if the use results from copying. Consequently, if the design has been created independently by a second designer (in other words, that designer shows that he/she was not aware of the existence of the protected design), there is no infringement.
Unlike a registered Community design, you do not have to file an application to protect an unregistered design. This simplicity does, however, have its downside because in practice the holder of the UCD may encounter serious problems proving that the protection exists
An RCD initially has a life of five years from the filing date and can be renewed in blocks of five years up to a maximum of 25 years whereas the UCD grants a right of three years from the date of the first disclosure that must have taken place within EU territory.
The fees for registering and publishing one design are €350 for five years' protection. The system is “fee-decreasing” which means that in a multiple application, the fees for the second to 10 th design will be 50% of the basic fee each and less than 25% of the basic fee for the 11 th design onwards.
It is advisable to do so as swiftly as possible.
However, a grace period allows you to market your product during the 12-month period preceding the date of filing a design without destroying its novelty. In other words, the fact that you disclosed a new design before you filed an application does not render your registration invalid due to lack of novelty.
Before the introduction of the Regulation on Community designs, only the Benelux countries ( Belgium , Luxembourg and the Netherlands ) had a unified design protection law. In all other European Union Member States, protection of designs was through national legislation, which meant a separate application in each country and the protection was then limited to the territory of that country.
The only alternative to this was the international system of the Hague Agreement administered by the World Intellectual Property Organization (WIPO). This agreement confers national protection by filing a single application with WIPO, designating the states for which protection is sought. This system is applicable in some of the current and potential future EU Member States and in some other non-EU countries, in total more than 40 countries.
Yes, individual Member States will continue to offer national design protection and Belgium , the Netherlands and Luxembourg will continue to have a common system of protection for designs in the Benelux .
Designers' freedom when creating can vary greatly from one product to another. The freedom is, however, not to be measured by the absence of leeway from a subjective point of view (e.g. the fact that the person who orders the designs requires that some features appear in them) but from an objective one. Thus sectors in which prior art (i.e. all pre-existing creations) is crowded or in which standardisation imposes many constraints will be considered to leave little freedom to designers.
No it is not possible to protect a specific material by a Community design.
It is the appearance of the product to which the design is applied that is protected, and the fact that a product is made of wood may add something to this outward appearance.
The right conferred will not grant the exclusive right to manufacture a specific product in wood, competitors would be allowed to manufacture their product in wood if their design meets the requirements of novelty and "individual character".
This includes such things as parts of cars, wing mirrors, bumpers, bonnets, lights. If they are visible during their normal use, these are not excluded from registration but they will have a limited protection. It will be possible to produce and sell these parts specifically for repair of an original product without infringing the registered Community design. If they are not visible in the normal use of the complex product, they will not be excluded from protection through registration as OHIM does not conduct any substantive examination before registration but they will not have the legal effects of a Community design, even if registered.
A modular system consists of a number of items that are designed to be connected together in a number of ways. The typical example of a modular system is the building blocks or tiles used by children. This notion is also of particular relevance to the furniture industry as it includes items such as desks and tables, which may consist of a number of smaller tables that can be assembled in alternative configurations.
Interconnections refer to the feature of a product which enables that product to be assembled or to be mechanically connected with another product, e.g. the connection for a plug or an exhaust pipe would necessarily be of a specific “form and dimension” in order to fit with a car.
This will not usually include the possibility of alternative configurations as in the case of a modular system.
Applications for registrations of “Interconnections” will not be excluded from protection through registration as OHIM does not conduct any substantive examination before registration but they will not have the legal effects of a Community design even if registered.
It is possible to obtain both forms of protection.
A Community design will be protected if it meets the legal requirements of novelty and individual character at the time of filing. The protection granted by a Community design extends to the shape, lines, and contours of a product to which it is incorporated or applied. A 3D CTM will be granted if the product can be considered as a sign which distinguishes the applicant's goods from those of anyone in a similar business. The protection granted by a Community trade mark is related to the distinctiveness of the sign itself compared to identical reproductions and signs with visual, phonetic or conceptual similarities leading to a likelihood of confusion.
It is possible for example to protect packaging as both a CTM and RCD if they meet the corresponding legal requirements: a novel shape becomes synonymous with a company's goods and may then be registered as a trade mark as well as being protected by a Community design on the grounds of its individual character and novelty.
A new or very unusual or original shape will not be registered as a CTM if it does not comply with the condition of being distinctive as regards the products or services which have been applied for. A product with a design that has been marketed for years before the application for registration will be registered but could be invalidated by any interested third party because of its lack of novelty.
Indeed, the characteristic of novelty does not apply to trade marks and the characteristic of distinctiveness does not apply to designs.
A trade mark has no time limit (it can be renewed indefinitely for periods of ten years) whereas a registered Community design has a maximum of 25 years' duration from the date of application for registration.
A patent covers the function, operation or construction of an invention. Patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.
A design covers the appearance only of a product. A design cannot protect the function of a product.
If protecting a product with both a patent and a design registration (i.e. a new product can perfectly include both new functions and a new appearance), the timing of the applications will be crucial, as it must be ensured that the publishing of one or other of the rights does not destroy the novelty of the other application.
A utility model is an exclusive right granted for an invention similar to a patent. It is sometimes referred to as a petty patent or an innovation patent. It may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, compositions of matter, or any new useful improvement thereof.
Publication may be delayed for up to 30 months and your product can therefore be kept confidential until you are ready to disclose it. You may even choose not to publish it at all and your registration will then lapse after the 30 month period.
If you decide to publish the design after a period of deferment of publication, you should not forget to pay the relevant publication fees and, where necessary, submit the representation of your design (if you applied attaching a specimen) within the period of a maximum 27 months from the filing date or from any priority date.
A designer (or subsequent owner of a design) can apply for protection up to a year after he first discloses a design, without his own disclosures counting against the registration. In other words, the novelty of the design will not be destroyed for one year after disclosure. This allows a proprietor the opportunity to determine whether seeking protection for a design is likely to be worth the money and time required. It suffers the drawback of leaving legal uncertainty for third parties as to whether a design is going to be registered. However, this is for a relatively short period during which competitors would not be free to copy the design anyway because of the unregistered right offered by the Regulation on Community designs.
This is particularly useful for small businesses since they frequently lack the money to finance systematic registration of designs, which may or may not be successful on the market.
Yes, but you should always be prudent. The person to whom you have shown your design might try to register a similar one before you do and you would then be in a weak position as it is the creator of the original design that has to prove that his/her design has been copied, which is always difficult.
Yes, of course, provided you respect the grace period of one year, i.e. you file at EU level within one year of the disclosure of the national design. Also, if the national design application was filed less than six months earlier, then it is possible to claim the priority of that earlier application within the RCD application (see page 2 of the application form).
The main difference is that the Community design grants one right in the whole territory of the EU whereas the Hague Agreement gives the possibility to file via one centralised application several national design applications for several design rights.