HOW TO PROTECT YOUR DESIGN IN THE EUROPEAN UNION

13 November 2006
provided by OHIM Office for Harmonization in the Internal Market
provided by OHIM Office for Harmonization in the Internal Market

Before the entry into force of the Regulation on Community designs in 2002, the Member States of the European Union had separate systems of design protection through national registrations, which meant a separate application in each country. The protection was limited to the territory of that country for durations that varied depending on the country. Designers had no guarantee that, across the European Union, their creations were granted the same degree of protection, that they were protected against the same actions and for the same durations. But today, the situation is different since the laws have been harmonised through the Designs Directive. A design can now be registered individually in each Member State, if protection throughout the whole EU is not sought, with a higher degree of legal security than before the approximation of national laws. Designers now have the possibility to file national registrations without encountering the problem of disparities between the laws of different Member States.

An alternative form of protection is 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 not applicable in all EU Member States (today it applies to Germany, Belgium, Spain, France, Greece, Italy, Luxembourg, the Netherlands, Estonia, Latvia, Slovenia and Hungary plus certain other non-EU countries, in total 42 countries).

Another alternative for protecting designs is the Community design system that offers a truly new opportunity to protect your 3D or 2D creations throughout the European Union in a convenient and cost-effective way. It offers a one stop route to design protection throughout the European Union. Any company whose business is not confined to one country may wish to make use of this Community right.

The Community Design Regulation provides for both an unregistered (not applied for) and a registered design right (applied for and registered) The unregistered Community design automatically protects a new and individual design for three years from the date it is first made public within the EU. However, a registered Community design provides longer, more solid and more comprehensive protection. It lasts initially for five years and can be renewed in five-year blocks up to a maximum of 25 years. In infringement cases, an unregistered Community design provides less solid protection because the holder must prove the validity and the existence of the design right, particularly in relation to the date and scope of its initial disclosure. Also, it must be proved that the design has actually been copied. The registered Community design right is exclusive, allowing its owner to prevent commercial use of a design if it produces the same overall impression this effectively covers similar designs that have been developed without direct reference to your own.

How to apply for a Community design
You can apply for a Community design at the EU Agency responsible for EU-wide trade mark and design registration the OHIM (Office for Harmonization in the Internal Market) or via a national industrial property office. The OHIM receives applications by mail and e-filing. The application must show the design and specify to which products it will be applied. To speed up the registration process, the OHIM recommends that applicants use its detailed product classification list (EUROLOCARNO) which is based on the international Locarno system, translated into the EU s 20 languages, and searchable on-line. The application may cover an unlimited number of different designs; however each design in a multiple application is treated as independent for invalidity, renewal and publication deferment purposes.

While it checks the application to see that it is complete and not contrary to public policy, the OHIM does not carry out a detailed examination of the design s novelty or individuality. You will need to carry out your own research to check the solidity of your application. The OHIM s on-line design search tool (RCD-online) can help in this respect. A design can be declared invalid following registration if the person challenging the registration can prove that it is not new, or not individual.

The key points of the Community design system are:
- Single legal system which applies to Community designs whether registered or unregistered, providing strong and uniform protection throughout the European Union (25 countries so far).
- Simplified formalities with:
- a single application
- a single language of filing
- a single administrative centre
- a single file to be managed
- 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 finding out about it.
- An RCD confers on its holder the exclusive right to use it and prevent any third party not having the holder's consent from using it. Any unauthorised use of the design on any type of product may infringe the design. Enforcing an RCD is easier than separately enforcing national design rights. Infringement proceedings go before Community design courts, which are Member State courts that are designated to hear RCD cases. Their decisions apply throughout the EU so there is no need to go to separate courts in each Member State where infringement has taken place.
- Designers have 12 months to register after the first disclosure of the design.
The fee for a Community design is very reasonable: 350 for five years' protection.
In short, the RCD is an instrument designed to complement the single market. If your market, current or potential, is EU-wide then a pan-European design right makes sense.

Combining design with other forms of IP protection
What is the difference between the protection offered by a 3D mark and that offered by 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 new at the time of filing. A 3D Community trade mark will protect your design if it 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.
Registration as a 3D mark protects the distinctiveness of the sign compared to the other existing signs in use for the same products or services whereas registration as a design protects the novelty and the individual character of a product.

The concept of novelty does not apply to trade marks and the concept of distinctiveness does not apply to designs.

A trade mark has no time restrictions (it can be renewed indefinitely for periods of ten years), whereas a registered Community design has a maximum of 25 years' duration from the date of application for registration.

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, be capable of industrial application and be described in such a fashion that a person skilled in the field 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 you wish to protect a product with registration as both a patent and a design (since a new product can easily 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.

In conclusion, the design of a product adds to its value and increases its marketability. The appearance of the whole or part of a product may be protected, including the shape of the product and any pattern or ornamentation applied to it through different ways of protection (national rights applied for directly, international design applications, unregistered Community designs, registered Community designs and, where possible, 3D marks). The technical aspects of the creation may be protected by patents. So a single product may be protected by different industrial property rights which may be enforced when imitations or copies of that product appear. The Community design provides an exclusive right against the unauthorised copying or imitation of the design. The shape of a mobile phone or a doll s head, the pattern on wallpaper, the design of a board game, a picture of Harry Potter on a toy, a car wing mirror, an icon on a computer screen or the packaging of an Easter egg all enjoy protection as Community designs.

A complete guide on the way to apply for and register Community designs is the theme of the next issue of this series of training articles specially tailored for designers: THE RCD how to file, -step by step guide-, release on 01/07/2005.




For more information, visit:

OHIM Office for Harmonization in the Internal Market

FAQ s on the RCD

National Patent and Trademark Offices in the EU

Hague System for the International Registration of Industrial Designs