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The outward appearance of a product or part of it resulting from the lines, contours, colours, shape, texture, materials and/or its ornamentation.
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.
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 Community design has equal effect throughout the Community and the forthcoming enlargement of the European Union will mean that this area of protection will increase greatly. The OHIM only deals with applications for registered Community designs, as an unregistered Community design requires no filing.
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 a monetary value that could increase. If you do not apply for protection others may benefit from your investments.
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 gives the right to prevent the commercial use of the design only if the use results from copying.
6. What are the differences between a registered and an unregistered Community design?
A registered Community design is an exclusive right for the outward appearance of a product or part of it, resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. A RCD initially has a life of five years that can be renewed in blocks of five years up to a maximum of 25 years. The fact that the right is registered constitutes an important feature as it gives it greater certainty and solidity in case of infringements.
An unregistered Community design protects a design for a period of three years from the date on which the design was first made available to the public within the Community. An unregistered Community design confers on its holder a right to prevent copying.
Unlike a registered Community design you do not have to file an application to protect an unregistered design. This simplicity does, however, have its down side because in practice the holder of the UCD may encounter serious problems proving that the protection exists.
7. What are the advantages of a registered Community design compared with national protection schemes?
• Single legal system applies to Community designs, providing strong and uniform protection throughout the European Union.
• Simplified formalities with,
o a single application
o a single language of filing
o a single administrative centre
o a single file to be managed
o a single payment
• The possibility to file multiple applications (i.e. to include several designs in one application, such as a whole range of similar products)
• The possibility to keep the design undisclosed for up to 30 months to avoid competitors learning of it.
• Confers on its holder the exclusive right to use it and prevent any third party not having his consent from using it.
8. How will the cost of the Community design compare with other systems?
The fees for a Community design are very reasonable and compare very favourably with the overall costs of national registration in all countries of the European Union. It will be much cheaper to apply for a Community design protection rather than to seek protection through the national protection systems in several countries. The fee for registering one design is 350€ for five years of protection.
9. What difference has the European Enlargement made?
The enlargement of the European Union means that the Community design protection has now been extended to include the ten new countries (Czech Republic, Cyprus, Estonia Hungary, Latvia, Lithuania, Malta, Poland, Slovakia, Slovenia) that joined the European Union on 1st May 2004.
10. When should you apply for protection?
As soon as possible before anyone else does!
However, a grace period allows you to market your product a full year before you apply for protection without destroying the novelty.
11. What was available before the UCD and RCD?
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, however, is only applicable in eight EU Member States (Germany, Belgium, Spain with limited effect, France, Greece, Italy, Luxembourg, Netherlands) plus certain other non-EU countries.
12. Can a design be registered individually in each Member State if protection throughout the whole EU is not sought?
Yes, individual Member States will continue to offer national design protection.
13. What does 'degree of freedom of the designer in developing his design' mean?
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 the 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 the designers.
14. Is the material (e.g. wood or metal) used for a product protectable through the Community design system?
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".
15. What is a "component part of a complex product"?
This includes such things as parts of cars, wing mirrors, bumpers, bonnets, lights. 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.
16. What is a modular system whose protection may be sought under Article 8(3) of the Community Design Regulation?
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.
17. How can a modular system be distinguished from a design of interconnections whose protection is refused under Article 8(2)?
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.
18. What is the difference between a 3D CTM and a design?
A registered Community design will protect your creation from the earliest stages even before you begin to market your product and must be novel at the time of filing. A 3D CTM will be granted if your design is a sign which distinguishes your goods from those of anyone in a similar business. It is therefore possible to have both forms of protection.
This is often seen in the area of packaging where a novel shape becomes synonymous with a company's goods and may then be registered as a trademark.
19. What is the difference between the protection offered by a 3D mark and that offered by a design?
The 3D-trademark registration protects the distinctiveness of the sign compared to the other existing signs in use for the same products or services whereas the design protects the novelty and the individual character of a product.
Indeed, the characteristic of novelty does not apply to trademarks and the characteristic of distinctiveness does not apply to designs.
A trademark has no time limit, (it can be renewed indefinitely by periods of ten years) whereas the registered Community design has a maximum of 25 years duration from the date of application for registration.
20. What is the difference between a patent and a design?
A patent covers the function, operation or construction of a new creation. To be patentable a function must be innovative, have an industrial application and be described in such a fashion that a man of the art is capable of reproducing the process.
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.
21. Must your registered Community design be published?
Publication may be delayed for up to 30 months and your creations can therefore be kept confidential until you are ready to disclose them. You may even choose not to publish at all and your registration will then lapse after the 30 months.
22. What is the Grace period?
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 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 in the market .
23. Can I talk to other people about my design?
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 against such a person, as you would have to prove that your design was copied, which is always difficult.
24. Can an applicant have a national design registration and then apply for a registered Community design?
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.
25. What is the difference between the Community design system and the Hague system?
The Community design is a unitary system wherein one application will provide design protection throughout the European Union. The right has equal value in all the Member States.
The Hague Agreement is an international system, which confers national protection by filing a single application with the World Intellectual Property Organization. Within this application the States in which protection is sought must be designated. This system is applicable in only eight EU Member States (Germany, Belgium, Spain with limited effect, France, Greece, Italy, Luxembourg and the Netherlands) plus other non- EU countries.
B. Registered Community design applications
1. When and where can applications be filed?
As from 2003 it is possible to file applications, with payment of the required fees (350€ for a single application), with the Office for Harmonization in the Internal Market (OHIM) or through the Industrial Property Offices of Member States.
2. How do I apply?
An application form (available from the Office or on our web site) should be completed and must be accompanied by a representation of the design suitable for reproduction. This representation may be a drawing or a photograph.
In case you require a deferred publication for a two-dimensional design you may file with a specimen of the design (e.g. a piece of cloth or wall paper of A4 size of maximum 50 grams and 3mm thick) in five copies.
The application must include the payment of the requisite fees. These will vary in accordance with the request e.g. whether deferment of publication is required.
An application may be made by post, by fax, electronically or in person at the Office.
3. Who can file a RCD? Is there a nationality requirement for the applicant?
Any natural person or legal entity from any country in the world may file an application.
4. Is it possible to claim priority from a design already applied for?
Yes, if someone has filed a design application in any state which is party to the Paris Convention for the Protection of Industrial Property or to the Agreement establishing the World Trade Organization, they can claim priority. The subsequent filing with OHIM must be made within a period of six months from the earlier application.
5. Is there a limit to the number of designs, which may be applied for in an application?
No there is no upper limit: the applicant can file as many designs as he wishes in one multiple application, the only condition being that the products to which the design is applied belong to the same Locarno class, i.e. that they pertain to the same type of goods.
This condition does not apply when an application concerns ornamentation.
C. Representation before the office
1. What are the representation requirements before OHIM for RCD applications?
For filing design applications, the applicant does not need to be represented although representation may be required at a later stage.
2. When will an agent (or Professional representative) be necessary?
According to the Regulation on Community designs, natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the Community must be represented before the Office in all actions except the filing of an application.
EU nationals do not need to be represented if they have their domicile or their principle place of business or real and effective industrial or commercial establishment in the Community.
Filings are often made through agents who are aware of the details of the law.
3. Who is entitled to represent a third party before the Office?
Third parties may be represented before the OHIM by:
• professional representatives on the lists held by the OHIM.
• legal practitioners: all legal practitioners (e.g. barristers, solicitors, and advocates) entitled to represent before the national offices are entitled to represent before the OHIM.
• employees of companies that have a seat in the EU.
4. Can trade mark attorneys or legal practitioners also act as design attorneys?
Yes.
D. Procedure
1. How is a RCD application examined?
Applications are mainly checked for formalities. There is no in depth substantive examination except to verify that it is a design application and that the design is not contrary to public policy or morality. Unlike the CTM system there is no opposition procedure.
The RCD application will be examined and if there are no problems the design is then registered and published immediately or after the deferment period.
If the application does not meet the formal requirements an objection will be raised. This may lead to the amendment of the application or to its rejection if the requirement is not complied with.
2. What is deferred publication?
This period allows the applicant an opportunity to further develop his marketing strategy or to finalise the preparations for the production without the competitors being aware of his design.
On registration only very basic details will be supplied in the Register, the substance of the design will remain confidential. This can be of vital importance in an area such as fashion or the automobile industry where it is necessary to protect your designs from competitors whilst arranging the production of your design into the final product. If at any time the applicant wishes to cancel his deferment he can do so by asking the Office to publish the design.
This offers a great deal of control to a designer/business over their creations.
3. What are the main steps regarding the invalidity procedure?
Applications for invalidity may be made to the OHIM by any natural or legal person as well as a public authority empowered to do so. A payment of a fee is required from the person requesting the invalidity.
The procedure is inter-partes: it happens between the holder and the opposing party who requires the invalidation of the registered design. The invalidity division of the OHIM organises the procedure and when they consider that the submissions and evidence provided is sufficient, they render a decision on the case.
The decision reached at the end of the invalidity procedure may be appealed before the Board of Appeal of the OHIM.
4. What are the main steps regarding the Appeal procedure?
An appeal can be made by any party adversely affected by a decision and can arise from decisions of examiners, the Administration of Trade Marks and Designs Department and Legal and Invalidity Divisions.
A notice of appeal must be filed in writing within two months of the issue of the decision, which is being appealed. A payment of a fee is required from the person lodging the appeal.
E. Search
1. Does the Office carry out identity or similarity design searches?
The Office does not undertake searches on individual request.
Such services may be provided by private enterprises with no commercial link whatsoever with the Office.
F. Register
1. What is the design (RCD) Register?
The RCD Register is a database containing particulars of all designs registered and published by the Office.
The Register will be constantly updated, to take into account any change, such as e.g. a transfer of ownership, a change of name or address, the granting of a license.
2. Is it possible for a third party to inspect the register or a RCD file?
The Register is public and accessible. Furthermore, files are available for inspection, subject to a written request and the payment of fees. Files also contain elements that are not part of the register and can be of interest to third parties such as the brief description of the design, if the applicant provided one.
In the case of a deferred design, no inspection will be admissible until publication, unless with the consent by the owner or if under any of the other limited exceptions provided by the regulations. A design that is never published will never be open to public inspection.
G. Unregistered Community design
1. What is the disclosure?
The 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 a right of unregistered Community design but can conversely destroy the novelty of a registered design if the latter is not applied for within 12 months of the disclosure.
2. How can one prove disclosure?
This may be achieved through for example, a printed review bearing a date, mass publicity, publication in a national IP Office Bulletin, international exhibition, dated mailing to all trade associations of a given industrial sector.
3. How much of the 'public' must be reached for disclosure to be valid?
The disclosure will not be taken into account if the design after the 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 concerned sector within the Community and the date of disclosure must be certain.
4. What should I care about 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 a legal procedure.
5. Is a disclosure in only one Member State among the interested circles sufficient?
The 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 European interested circles of this industry might be aware of this design. This latter should be sufficient to establish the UCD right. In the 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.
6. Regarding disclosure of an UCD: where does it have to be disclosed, the EU or the international community?
Disclosure must be made within the Community.
7. From when is it effective?
The protection for unregistered Community designs has been effective since the 6 March 2002. Designs, which were disclosed for the first time on or after this date, will be protected but there is no protection if they were disclosed before this date.
8. Is there a nationality clause for an UCD or does it just have 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 person) who has disclosed it regardless of the nationality of that person.
9. What if a disclosure is made in a candidate country to the 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.
10. What are the limits and weaknesses of the UCD?
The UCD holder must be able to prove the following to the third party in a court action to defend his right in defence or to act against counterfeiting:
• proof of the date 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 the "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 the disclosure and of the scope of the 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.
11. If a UCD is being copied, can OHIM do anything about this or is it for the court to decide? If so, which courts?
Infringement actions are not dealt with by the OHIM but by the Community Design Courts, which will be designated by the Member States. If your design is copied you must then sue the person who has infringed your right in front of such a court.
12. Can one convert a UCD into a RCD?
It is improper to speak of a conversion from one right into the other. 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 the UCD and then register a 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 will therefore not be possible to have the full three years of protection as a UCD and then file an application for a RCD, as the novelty requirement will not then have been met.
H. Invalidity
1. Does the Office anticipate building a doctrine or an internal jurisprudence on invalidity matters?
The invalidity applications will be received by the OHIM, which is competent, together with the Community design courts to solve conflicts, which arise concerning registered Community designs. On the other hand, conflicts concerning unregistered Community designs will be dealt with exclusively by the Community design courts.
Once a number of decisions on these matters have been reached by the OHIM and by the competent national (Community Design Courts) or European courts, a doctrine will naturally and gradually be set up. This will constitute a case law that will be documented and commented on for all to consult and study.
Translation - Chinese 随着2001年12月的出台,非注册欧盟工业设计自2002年3月6日起,可依法获得保护.并且,自2003年1月起,可在欧盟统一市场协调办公室申请注册,从而获得注册欧盟工业设计的保护.
企业只需花费350欧元,就可使您的工业设计,在欧盟所有成员国,获得5年的保护.
请您阅读本文的为您所做的清晰介绍.
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