8. Unregistered community design

8.1. What is disclosure?

Disclosure is the making available to the public of a design in such a way that the interested circles operating within the Community could reasonably be aware of the design. The date and means of disclosure are essential: it creates an unregistered Community design right but can conversely destroy the novelty of a registered design if the latter is not applied for within 12 months of the disclosure. To create an unregistered Community design right, disclosure must take place within the territory of the EU.

8.2. How can disclosure be proved?

This may be achieved through, for example, a printed review bearing a date, mass publicity, publication in a national IP Office Bulletin, display at an international exhibition, dated mailing to all trade associations of a given industrial sector.

8.3. How much of the ‘public' must be reached for disclosure to be valid?

Disclosure will not be taken into account if the design, after disclosure, is not known "in the normal course of business to the circles specialised in the sector concerned operating within the Community".

In consequence, the design must be at least known by the interested circles of the sector concerned within the Community and the date of disclosure must be certain.

8.4. What should I take care to do when I first disclose?

Every element of proof that the disclosure in itself has been launched to/reached the target should be usefully and safely kept. The date of the first disclosure is particularly important in order to avoid having to seek such proof later on in case of legal proceedings.

8.5. Is disclosure in only one Member State among the interested circles sufficient?

Disclosure must give the opportunity for interested circles within the Community to be aware of the design. Disclosure within one Member State may be sufficient provided that it was made in such a way that the interested circles of this industry within the European Union might become aware of the design. This should be sufficient to establish the UCD right. In international fairs within the Community where all the interested circles from all the countries are present, the problem of birth of the right should be less difficult to establish.

8.6. From when is a UCD right effective?

The protection for unregistered Community designs has been effective since 6 March 2002 . Designs which were disclosed for the first time on or after this date will be protected. There is no protection for designs disclosed before this date.

8.7. Is there a nationality clause for a UCD or is it sufficient for the design to be disclosed in the EU?

Nationality cannot be a hindrance to obtaining design protection in Europe . A design disclosed within the EU, in respect of conditions of protection and of disclosure, is a right that vests in the person (legal or natural) who has disclosed it regardless of the nationality of that person.

8.8. What if disclosure is made in a candidate country to EU accession?

As long as candidate countries are not members of the EU, the normal rules apply to them and to acts of disclosure taking place in them.

8.9. What are the limits and weaknesses of the UCD?

The UCD holder must be able to provide the following to a third party in a court action to defend his right in defence or when acting against counterfeiting:

proof of the date and of the place of the first disclosure of the design,
proof that the design refers to the disclosed design (with its main characteristic features and especially the ones bearing "individual character"),
proof that the interested circles within the Community could have been aware of the disclosure itself. This difficulty of the proof of the date of disclosure and of the scope of disclosure should not be underestimated. It is inherent in the UCD system, which is otherwise an easy form of protection to achieve,
Proof that the counterfeiter has in fact copied the protected design.

8.10. If a UCD is being copied, can the OHIM do anything about this or is it for a court to decide? If so, which courts?

Infringement actions are not dealt with by the OHIM but by the Community design courts, which are designated by the Member States. If your design is copied, you must then sue the person who has infringed your right before one of these courts.

8.11. Can a UCD be converted to an RCD?

It is improper to speak of a conversion from one right to another. Both rights can exist in the same design.

It is, however, important to recall that there is a “grace period” of one year in the regulation, which allows you to test the market with the protection of a UCD and then to register an RCD. The effect of the grace period is that you will not be considered to have destroyed the novelty of your design during this time.

If, however, you file your RCD application more than one year after the first disclosure, your RCD can be declared invalid later on.

It is, therefore, not possible to have the full three years of protection as a UCD and then to file an application for an RCD, as the novelty requirement will not then have been met.