Designs in the European Union
Create your 'design protection strategy'
Let's imagine you have created a new design. You want to commercialise and distribute this product in the EU market, but are afraid others will reap the benefits of your newly drafted design. Therefore you want to protect it.
The RCD is, for us, a decisive aid because it's economical, quick to obtain and it works in all countries of the EU.
We are in global competition even though we are based in Finland, we have to prove our originality and tell that the design is from our company.
Registered or unregistered protection?
You have two choices: either protect your design with OHIM before you commercialise it and obtain a registered Community design (RCD) or, alternatively, commercialise it directly without registration by relying on what is known as the unregistered Community design (UCD) right.
The option you eventually choose will depend on the impact that it has on your design portfolio strategy.
Registered Community design or unregistered Community design?
Both offer the following protection
- Manufacturing a product incorporating a protected design (or to which the design is applied) without the consent of its proprietor would be considered illegal
- Putting a product on the market incorporating the protected design (or to which the design is applied) without the consent of its proprietor would be considered illegal
- Offering a product for sale incorporating a protected design without the consent of its proprietor would be considered illegal
- Marketing a product incorporating the protected design without the consent of its proprietor would be considered illegal
- Importing/exporting a product incorporating the protected design without the consent of its proprietor would be considered illegal
However, RCDs and UCDs are quite different in terms of scope of protection and duration.
Differences in duration
A registered Community design is initially valid for five years from the date of filing and can be renewed in blocks of five years up to a maximum of 25 years.
An unregistered Community design is given protection for a period of three years from the date on which the design was first made available to the public within the territory of the European Union. After three years, the protection cannot be extended.
The act of making available to the public is called ‘disclosure'. Disclosing a design and being able to prove it are key to design protection.
Differences in scope
Registered Community designs are protected against similar designs even when the infringing design has been developed in good faith, i.e. without knowing of the existence of the earlier design.
Unregistered Community designs grant the right to prevent commercial use of a design only if that design is an intentional copy of the protected one, made in bad faith, i.e. knowing of the existence of the earlier design.
The legal protection conferred by a registered design is stronger and more transparent. On the other hand, it is not always easy to prove that you have disclosed a design in the EU at a particular time. It can also be difficult to prove that your design has been intentionally copied and that the infringer should have been aware of the existence of your design. However, a registered design provides you with a certificate, which makes it easy to prove ownership.
With these two key issues in mind, you can now start shaping your design protection strategy.
If you have disclosed your design and then decide that you want to apply for a design registration —either because you want full protection or for IP strategy reasons – you can still do so within one year of disclosure. This is known as the 'grace period'. If you register your design after that, it will be vulnerable to attacks.
National or Europe-wide protection?
Once you have made the decision to register your design, the next question you are faced with is ‘where to register?' The answer depends on your commercial and IP strategy.
If you do business in a single EU country, you may want to register your design there. You'll have the exclusive right to it within the country of your choice but you won't be able to prevent anyone from copying it in other EU countries.
If you do business in more than one EU country, you should consider the option of obtaining a design right that is valid throughout the entire EU: a registered Community design (RCD). The RCD is an all-or-nothing deal: either you get it for all or you do not get it at all.
- RCDs are governed by a single legal system, providing strong and uniform protection throughout the European Union
- An RCD is easy to register. There is one application, one language of filing and one file to manage
- RCD registration offers the possibility to file multiple applications (i.e. to include several designs in one application, such as variations of the same design)
- The fee for registering and publishing one design is €350 for five years' protection
- An RCD saves you translation and administrative costs
- The design system offers a 'bulk discount'. For a multiple application, the fees for registering the 2nd to the 10th design are subject to a 50% discount while, for the 11th design onwards, the fee is just 25% that of the basic fee per design
OHIM or WIPO?
There are two possible routes when applying for registration of a Community design.
You can file an application either at OHIM (e-filing, fax, post or in person) or through the International Bureau of the World Intellectual Property Organisation (WIPO) in which case you have to designate the European Union.
No matter which route you decide to follow, your application will be examined by OHIM.
At OHIM, we manage a public register of registered Community designs. To ensure we maintain the register to the highest standard, we have a number of roles
We check all application forms to make sure that they are completed correctly
Where there are disputes regarding the scope or validity of an RCD, we judge the cases
If you license or sell your design, we record the transaction
Designs in the EU - Koziol
Designs in the EU - Creadesign