Main Legal Basis

– Council Regulation (EC) No. 6/2002 of December 12, 2001, on Community Designs.
– Council Decision 1999/468/EC of June 28, 1999, laying down the procedures for the exercise of implementing powers conferred on the Commission.
– Directive 98/71/EC of the European Parliament and of the Council of October 13, 1998, on the legal protection of designs.
– Council Regulation (EC) No. 207/2009 of February 26, 2009, on the Community Trademark.
– Council Decision No. EX-14-4 of December 4, 2014, on examination of design invalidity applications.

 

Application and Prosecution

As for EU Trademarks, the registered Community design is examined and registered by the European Union Intellectual Property Office (EUIPO). The application can be filed either directly at the Office, or at the central Industrial Property Office of a member State, or in the Benelux countries at the Benelux Design Office.

Applicant: a Community design may be obtained by any individual or legal entity, including authorities established under public law, who are: (a) nationals of a member State of the EU; (b) nationals of a State which is party to the Paris Union Convention (PUC), or a member of the World Trade Organization (WTO); (c) nationals who are domiciled or have a real and effective industrial or commercial establishment within the territory of the EU, or of a State which is party to the PUC; (d) nationals of other States which recognize to nationals of all the member States of the EU the same protection for designs as they accord to their own nationals (principle of reciprocity).

Filing requirements: besides the usual requisites i.e., identification of the applicant and a representation of the design, an application for a registered Community design must contain an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied.

Interestingly, several designs may be combined in one multiple application. Except in cases of “ornamentation”, all products in which those designs are materialized must belong to the same class of the International Classification of Locarno.

Languages: applications must be filed in one of the official languages of the European Union. The applicant will also indicate a second language, which shall be a language of the Office: English, French, German, Italian or Spanish. All proceedings at the EUIPO will therefore be conducted in one of those languages.

Examination: the Office shall limit itself to an examination as to formal requirement for filing and shall verify whether the application meets all formal conditions it must comply. This aspect will determine the filing date, which will be the date all pertaining documents are filed with the Office.

Registration and publication: when all conditions for the application are fulfilled, it should normally proceed to registration and shall be published in the Community Designs Bulletin. Upon applicant’s request, the advertisement can be delayed for a period of 30 months from the date of the filing (or from the date of priority when the latter is claimed).

 

Requirements for Protection

A Community design shall enjoy protection to the extent that it is new and has individual character.

Novelty: a design shall be considered to be new if no identical design has been made available to the public: (1) before the date on which the design for which a protection is sought has first been made available to the public in case of an unregistered Community design; (2) before the date of filing (or priority date when it is claimed) in case of a registered Community design. In this case a disclosure will not be taken into consideration if made during the twelve-month period preceding the filing. We should point out the flexibility of this provision (Article 7, 2.b) which will no doubt give rise to some difficulties in practice.

Individual character: means that the overall impression left by the design to the informed user should differ from the overall impression produced on such a user by any design previously available to the public. This criterion will serve to define the scope of protection of the design. In this regard, the Regulation foresees that the degree of freedom of the designer in developing the design shall be taken into consideration.

 

Duration and Renewal

An unregistered Community design that meets the above requirements shall be protected for a period of three years as from the date the design was first been made available to the public within the territory of the European Union.

A registered design shall enjoy protection for a period of five years as from the date of filing. This term can be extended to four subsequent five-year periods (25 years maximum).

 

Content of the Community Design Right

Council Regulation (EC) No. 6/2002 confers the designer of a Community design (or his successor) a right to claim to become recognized as the legitimate owner when: (a) an unregistered design is fraudulently disclosed or claimed; (b) a registered design is fraudulently applied for by a person not entitled to it.

Article 17 of the Regulation foresees a presumption in favor of the registered holder of the design.

The designers also have the right to be cited as such before the Office and the Register. If the design is the result of teamwork, the citation of the team may replace the citation of the individual designer.

A registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. Said use encompasses in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.

An unregistered design confers the same rights but as far as the contested use results from copying the protected design.

Exhaustion (Article 21): the right conferred by a Community design does not entitle the proprietor to prohibit its use when it has been put on the market in the Community (currently to be understood as the European Economic Area) by the holder or with his consent.

Prior user’s right: a right of prior use shall exist for any third party who can establish that, before the date of filing (or before the date of priority), he has in good faith commenced use in the Community, or has made effective preparations to that end of a design included within the scope of a registered design and which has not been copied from the latter. The right of prior use (which in principle cannot be transferred), shall entitle the third party to exploit the design.

Assignment: Community designs may be transferred, separately from any transfer of the undertaking. It may also be given as security or be the subject of rights in rem (Article 29) or may be levied in execution.

License: a Community design may be licensed for the whole or part of the territory of the EU. Licenses may be exclusive or non-exclusive.

 

Transfer and Invalidity of the Community Design Right

The right in a Community design does extinguish through surrender by the holder. It must be declared to the Office in writing and will only have effect once it is entered in the Register. If there were any right (a right in rem, for example), the surrender may only be entered with the agreement of the holder of the right entered in the Register. Finally, if a license had been registered, it will have to be proved that the holder of the Community design has informed the licensee of his intention to surrender.

The invalidity, which implies that the design shall be deemed not to have had the effects specified in the Regulation, can only be declared on the following grounds:
(a) if the object for which a protection is sought does not consist in a design as defined by Article 3 (a), i.e. the appearance of a product resulting from the feature of the lines, contours, colors, shape, texture and or its ornamentation;
(b) if the design is not new or does not have an individual character; if it has been disclosed or if it is solely dictated by its technical function. A design, the form of which must necessarily be reproduced to perform its function, shall not give rise to exclusive rights;
(c) if by virtue of a court decision, the right holder is not entitled to a design right;
(d) if the Community design is in conflict with a prior design, which has been made available to the public;
(e) if a prohibited distinctive sign is used in the design;
(f) if the design constitutes an unauthorized use of a work protected by copyright;
(g) if the design constitutes in an improper use of any official badges, emblems as referred to in Article 6ter of the Paris Convention.

The invalidity of a Community design will be declared on application to the Office or on the basis of a counterclaim in infringement proceedings.

 

Defense of the Community Design

Before the Office:
According to Article 24, a registered Community design shall, in principle, be declared invalid further to an “application for a declaration of invalidity” filed to the Office (Invalidity Division), by any interested party. The Office shall examine whether the grounds for invalidity that are invoked prejudice the maintenance of the registered Community design and shall take a decision as to the merits. The decision is then entered in the Register upon becoming final. A notice of appeal can be filed at the Office (Board of Appeal), within two months of the date of notification of the contested decision. The appeal has suspensive effect. In the last resort, appeal decisions may be brought before the Court of Justice.

Before the Courts:
In case of an unregistered Community design, the so-called “Community Design Courts” shall be competent. To that end, the member States should indicate a number of national courts and tribunals of first and second instance that will perform the function of “Community Design Courts” in their territories (Article 80). These courts shall have jurisdiction for, amongst other, infringement actions, actions for a declaration of invalidity and corresponding counterclaims.

Territorial jurisdiction corresponds, in order of preference, to the courts of the member State of the EU in which the defendant is domiciled or has his establishment; if the defendant is neither domiciled nor has an establishment in the EU, to the court where the plaintiff is domiciled or has his establishment. In last alternative, to the courts of the member State where the Office has its seat (to the Spanish Courts, therefore) if neither the defendant nor the plaintiff is domiciled or has an establishment in the EU.

In case of proceedings in respect of an infringement action, there will be a prima facie presumption of validity of the Community design the defendant may contest.

Appeal of decisions rendered by “Community Design Courts” is foreseen by the Regulation, but the conditions under which it may be lodged are determined by the national law where the court is located.

Provisional and protective measures are available by application made to the court of a member State.

 

Connections between the Community Design and National Designs

A Community design does not replace national design registrations. A Community design may be invoked against an application/registration filed at a national level.

More generally, a person who has duly filed an application for a design right in or for any State party to the Paris Convention or to WTO shall enjoy, for the purpose of filing a registered Community design in respect of the same design, a right of priority of six (6) months from the date of filing of the first application.

As for EU trademarks, the rule of equivalence of Community filing with national filing is also of application. It implies that an application for a registered Community design which has been allotted a filing date shall, in the member States, be equivalent to a regular national filing, including where appropriate, the priority claimed for said application.

 

Link between the Community Design and The Hague Union

Further to the accession of the European Union to the International Design registration System (administered by WIPO), the Geneva Act allows a user to obtain a Community Design protection (RCD) through a single international application filed with WIPO since January 1, 2008.

 

Office

European Union Intellectual Property Office (EUIPO), Avenida de Europa 4, E-03008 Alicante, Spain, tel (+34-96) 513 9100, fax (+34-96) 513 1344,
e-mail: information@euipo.europa.eu ; Internet address: https://euipo.europa.eu/ohimportal/en

Online design search: www.tmdn.org/tmdsview-web/#/dsview

Official design fees: www.euipo.europa.eu/en/designs/before-applying/fees-payable-direct-to-the-euipo