Designs operate on a first-come, first-served basis. If someone else has already registered or disclosed your design or a similar one, it is not available. You can save time and money by searching for designs that may conflict with yours before you apply.
It costs nothing to search, and the information you find is crucial to your application. If someone already owns a design they may want to object to yours.
It is important that you do not limit your search to registered designs only. All previously disclosed designs, whether unregistered or registered but lapsed, are also potential threats to your design.
Using the Designview applications, you can search the RCD database and national registers to find out if your design is available.
The Designview database contains designs valid for all EU Member States; they have been filed either with us direct or via the Hague system designating the EU. This database also contains designs filed within the EU at national level. A design applied for or registered at national level before yours can pose a threat to your application. So make sure you also take any such designs into account.
Designs registered at national level or at OHIMDesignView
Conduct a search within the circles specialising in your sector. Consult any existing literature, visit trade fairs and conduct research on the internet, etc.
As an expert in your field, you will be in a position to know what the current design trends are and how to capitalise on this knowledge. You should not limit your search to the EU territory: any design that has been made available to the public anywhere in the world and at any time must be taken into account if it is reasonable to believe that it has become known in the normal course of business to the circles specialising in the sector concerned and operating within the European Union.
There are two main factors you should take into account when analysing the search results: timing and design. Checking these parameters does not rule out risks but does minimise them.
Unregistered design rights come into force when the design is made available to the public: this is referred to as 'disclosure'.
Registered design protection begins when a filing date is granted.
However, it is not only the filing date of the potential competitor's design that counts when establishing who is first. If there is a priority date, this should also be taken into consideration.
Applicants who have previously applied for the same design in another jurisdiction are asked to complete the part of the form relating to priority, providing that the previous application was filed less than six months before the new one. If the priority date is accepted by OHIM, the filing date of the first application will become the benchmark for calculating who applied first.
Design priority period
Two lists presented below are dependent on each other. First element of first list is connected with first element of the second list and so on.
Filing date in the USA
Filing date at OHIM
Filing date at OHIM
In this example, the proprietor of design B can apply for design A to be declared invalid, even if in 'time-related' terms, design A was the first design to be applied for in the EU.
Comparing your design to others
When comparing the appearance of an earlier design with yours, make a global comparison. If every element constituting your design can be found in the earlier design, the two designs will be considered identical and yours will consequently lack novelty.
The comparison becomes more complicated when there are several differences between the two designs but they still look very similar overall. The question that you should ask yourself is:
'Will my design convey a different overall impression to an informed user than the one that already exists?'
These two concepts need some explanation
- Informed user: think of an 'informed user' as a person with some knowledge of designs in the sector concerned, but not necessarily a designer, technical expert, manufacturer or seller
- Overall impression: when comparing the designs, try not to pay too much attention to features that are less evident or visible when the product is in use or standard features of the type of product concerned. Instead concentrate on features that are arbitrary or diverge from the norm
What should you do with your search results?
If you find a design — registered or unregistered — that conveys the same overall impression as yours, you have a number of options
- Negotiate: contact the owner of the earlier design with a view to reaching an agreement (after all, many identical or similar designs do coexist on the market)
- Risk registration: go ahead and file your application and risk an invalidity action. The decision to object to an RCD registration depends on many factors. The existence of an earlier (un)registered design does not prevent you from applying, but it does mean that you run the risk of infringing someone else's rights and the possibility of court action against you
- Challenge: challenge the first design
- Give up: go no further because the risk of conflict is too great