Registered EU Designs: an Overview of a Valuable Tool to Protect IP in Europe
As intellectual property (IP) continues to strengthen its position as one of the most valuable assets, and perhaps the most valuable asset, of businesses today, the importance of developing a strong IP protection strategy that safeguards all valuable aspects of the business’ IP has never been more important. A strong IP portfolio often brings to mind patents, trademarks, and copyrights. However, the recent smart phone and tablet IP disputes making their way through courts across the world have highlighted once again that protected product designs can be a very useful tool in the enforcement and protection of a product. A community design under the European Community Design Regulation (CDR) provides a single right giving uniform protection for designs throughout the entire territory of the European Union (EU). While protection of designs in the EU can be obtained through registered or unregistered national or Community design rights, this article focuses on registered Community designs (RCDs) administered through the Office for Harmonization in the Internal Market (OHIM).
An RCD confers on the design protection for five years from the filing date and can be renewed in blocks of five years up to a maximum of twenty-five years. An advantage of registration is that it provides a presumption of entitlement to the RCD and a prima facie basis of the design’s entitlement to protection. An RCD provides absolute protection against use of the design, irrespective of whether or not there has been copying.
Requirements for Protection
As defined in Art. 3 CDR, a design is the outward appearance of a product or part of it, resulting from the lines, contours, colors, shape, texture, materials, and/or its ornamentation. Designs are not protectable when their appearance is wholly determined by their technical function, or by the need to interconnect with other products to perform a technical function. Protectable designs must also be novel and have individual character. A design is novel if no identical design, or one that differs only in immaterial details, has been made available to the public before the priority date of the application for registration. A design is deemed to have individual character if the overall impression it produces on the informed user (i.e., someone who is not a designer or a technical expert but knows the various designs that exist in the sector concerned, possesses a certain degree of knowledge with regard to the features that those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them) differs from the overall impression produced on such a user by any other design that was publicly available before the priority date of the application for registration.
Public availability depends on whether or not a design has been published, exhibited, used in trade, or otherwise disclosed, before the date of filing the application, in a manner in which the design would reasonably have become known, in the normal course of business, to the circles specialized in the sector concerned, operating within the EU. Consequently, disclosure, including sale or offer for sale, to a third person under explicit or implicit conditions of confidentiality does not amount to public availability. Unauthorized public disclosure of a design resulting from an abuse in relation to the designer or the design’s owner will not destroy the novelty of an application either.
The CDR also provides a grace period that permits the designer or the owner of the design to publicly disclose the product during the twelve months prior to the date of filing of a design application without destroying its novelty. This grace period can be useful for applicants with budgetary constraints that may be hesitant to incur the expense associated with registering designs before determining their success on the market.
For those applicants familiar with the delays and complexities associated with the filing and prosecution of patents at the European Patent Office (EPO), the design registration process will appear to be remarkably uncomplicated. The applicant files an application with basic requirements, e.g., identifying the name and address of the applicant, the first and second language of proceedings, at least one visual representation of the design, the indication of the type of product designed, and the relevant fees. An application can claim priority on the basis of a previous design application filed within six months prior to the date of filing in any state that is party to the Paris Convention or a member of the World Trade Organization. If an application claims priority, requirements related to the priority document are also submitted with the application.
Applications can be filed directly with OHIM or through any of the Industrial Property Offices of the EU Member States.
There is no substantive examination of applications for an RCD. Substantive requirements for protection, such as novelty and individual character, are not examined by OHIM. These requirements are examined only in case of a legal dispute through a request for declaration of invalidity of a registered Community design filed directly at OHIM or by way of a counterclaim in infringement proceedings before a court. Accordingly, after filing the application, OHIM examines whether or not the application contains formal defects. If the application does not meet the formal requirements, OHIM will raise an objection and provide the applicant with the ability to correct the issues, typically within two months. If all formal requirements are met, OHIM checks whether or not the design applied for corresponds with the definition of a design according to Art. 3 CDR and verifies that the design is not contrary to public policy or morality (Art. 9 CDR). If these requirements are fulfilled, the design will be registered and published in the Community Designs Bulletin, and OHIM will issue the registration certificate. The first five-year term of protection starts from the date of filing of the application.
Applicants have the option of deferring publication for up to thirty months, allowing the design to remain confidential. The request for deferment must be made at the time the application is filed. Once the design has been registered, the design owner can request the publication of the design at any time within twenty-seven months after the filing date of the application. If the applicant chooses not to publish the design at all, the registration will lapse after the thirty-month period.
The RCD grants its owner an exclusive right to prevent an unauthorized third party from making, offering, marketing, importing, exporting, or using a product in which the design is incorporated or to which it is applied, or holding stock of such a product for those purposes.
The owner of an RCD can seek to enforce its rights through a court action brought to Community Design Courts established by the regulations. Because an RCD is valid in the EU as a whole, i.e., it is not possible to limit the geographic scope of protection to certain Member States, a finding of infringement of an RCD applies to the entire territory of the EU. The design owner may also seek to enforce its rights before the national courts of a Member State (i.e., a court not designated as a Community Design Court). In this case, the competence of the court, and any relief granted, is limited to the territory of that Member State.
The design owner can also seek relief through administrative action by requesting the customs authorities of EU Member States to retain suspected counterfeit goods while under their control.
A third party may apply for a declaration of invalidity by commencing invalidation proceedings at OHIM or by submitting a counterclaim in infringement proceedings before a Community Design Court.
For commencing invalidity proceedings at OHIM, the opposing party submits an application for a declaration of invalidity. Parties who are not domiciled or who do not have their principal place of business in the EU must appoint a legal representative within the EU. The application for declaration of invalidity generally must include the grounds, facts, and evidence on which the application for a declaration of invalidity is based. Grounds on which an RCD can be invalidated are outlined in Art. 25 CDR. The following are the principal grounds alleged in most cases:
- the contested design does not correspond to the definition of a Community design (Art. 3 CDR);
- the contested design does not fulfill the requirements of novelty and individual character (Arts. 5 and 6 CDR); and
- the holder of the contested design is not entitled to it by virtue of a court decision settling a dispute over ownership of the right (Art. 14 CDR).
Other grounds of invalidity relate to the use of a work protected by copyright law of a Member State, and improper use of items protected under Art. 6ter of the Paris Convention or of public interest in an EU Member State. OHIM will not admit an application for a declaration of invalidity relating to the same subject matter and cause of action, involving the same parties, that has been adjudicated by a Community Design Court and acquired the authority of a final decision.
The invalidity process at OHIM is an inter partes proceeding, and as such, the design owner of the contested RCD will be given at least one opportunity to comment before OHIM issues a decision on the validity of the design. The decision can be appealed to the Board of Appeals within two months of the date of the notification of the decision.
If there is already an infringement action pending in one of the Community Design Courts, the accused infringer may be able to bring a counterclaim there for a declaration of invalidity. A decision of a Community Design Court to declare an RCD invalid is applicable throughout the EU.While undoubtedly there are additional complexities to the registration and use of RCDs, the process of registration is remarkably simple and cost efficient, and may provide the necessary tools to gain early protection of IP, and merits serious consideration when assessing the needs of IP protection in a business.