WHAT IS YOUR DESIGN PROTECTED AGAINST?

13 November 2006
Office for the Harmonization in the Internal Market
Office for the Harmonization in the Internal Market



As soon as your design is protected as a Community design, the law grants you a right which you may either actively exercise or passively enjoy depending on the circumstances and your needs.


Exclusive right of use
If your Community design has been registered by the OHIM, you have the exclusive right to use the design and to prevent others from using it. The term "use" includes the making, offering, putting on the market, importing and exporting of products in which the design is incorporated or to which it is applied. Your exclusive right also applies to those products which are not actively used, but only stocked for the purpose of using them later.

However, if you registered your Community design with the OHIM, but requested the OHIM not to publish the registration immediately, because you did not want your competitors to be aware of your design before you actual marketed the designed product, your exclusive right is limited to some extent: you may still prevent the use of the design by others, but only if the use they make of it constitutes copying. At first glance, this limitation of your exclusive right may not look like a serious drawback to you, since you may be primarily interested in holding off product pirates. However, the limitation will become a major concern when you assert your right in court, because it is your obligation as the claimant to provide evidence of the fact that the defendant has copied your design. Copying means that someone has knowingly adopted the features of your design. This may seem self-evident to you, but a court demands proof which you may not be able to provide easily, in particular where you are bringing proceedings against a retailer, but not the manufacturer.

The date on which a design right has been acquired is pivotal. In the case of a registered Community design, it is the priority date or the date of filing of the application; for an unregistered Community design, it is the date of first disclosure. This date is decisive for the validity of your right, since other designs disclosed before that date may endanger the novelty and individual character of your Community design. Moreover, this date may also decide against which acts of use you may enforce your Community design, because other people have the right to continue to use the design where they have commenced use prior to this date, provided they were acting in good faith. Such a situation may arise where you and another person have created independently identical or very similar designs. The other person may not have disclosed the design, but he may have undertaken serious and effective preparations in his company to use it before you have filed an application for registration of your design. While it is still true that you are the only one who will obtain the exclusive right when your design is registered, the other person will acquire the so-called right of prior use which does not allow him to exclude others from using the design, but which serves him well as an umbrella against any claims towards him. Both you and the other party have to learn to coexist; neither of you has the power to interfere in the business of the other.


Scope of protection
Your exclusive right - bearing in mind the limitations mentioned above - does not only allow you to prevent others from using designs which are identical, but any design which produces the same overall impression on an informed user as your Community design. For instance, you may have registered a design for a stool. Later you discover that a competitor offers stools with identically shaped seats and backs, but with different foot-rests. Despite the difference, you may still be entitled to stop your competitor selling the stools, provided the difference does not alter the overall impression created by the stool. The concept of overall impression is the central element in European design law, because it guarantees that other parties do not get away with copying the main features of a protected design by modifying it in some minor way. For a better understanding of this concept, you may have a look at the decisions taken by the Invalidity Division of the OHIM which are published on the Internet (http://oami.eu.int/en/design/decispending.htm). In the majority of these decisions, the Invalidity Division had to asses the individual character of a contested Community design by comparing its overall impression with the overall impression of a prior design. This comparison follows exactly the same rules as the comparison of a Community design with a later design which allegedly falls in the scope of protection of the Community design.

The above-mentioned example of the stool refers to one of the cases decided by the Invalidity Division. The two pictures below represent the two designs which had to be compared in terms of overall impression.

Despite certain differences such as the foot-rests or the connections between the back and the seat, the Invalidity Division decided that the two designs produced the same overall impression.


Obstacle to claims
Even where you do not actively exercise your exclusive right, a Community design has its value as an obstacle to the claims of other parties, in particular where you have registered your design with the OHIM. The law stipulates a presumption in favour of the registered holder in that sense that in legal proceedings, he is considered as being truly entitled. Another person cannot directly approach the OHIM with a claim that he is the real owner of the design. Instead, he must bring proceedings before a court for a transfer of ownership where he, as the claimant, has the burden to prove his case. Such legal proceedings are barred three years after the date of publication of the registration provided that you did not register your design in bad faith, knowing that the design was not yours.

Furthermore, an earlier Community design has the effect that any later Community design for the same or a similar subject is invalid. Where the later Community design dates from a period after the publication of the earlier one, not only the holder of the earlier Community design, but anybody can obtain a declaration of invalidity of the later Community design, because the publication of a Community design is an event presumed to be known by the interested circles. As a consequence, neither you nor your current and potential business partners need to fear claims based on later Community designs.


Defending your rights
Your position as the holder of an exclusive right and as the person creating the obstacle to the claims of other parties may not please your competitors. They may feel tempted or even urged to push you out of the driving seat. Where you registered your design with the OHIM, but did not (yet) claim your exclusive right in court, the only means available to other parties for removing the obstacle consist in making an application for a declaration of invalidity to the OHIM. They have to pay a fee and provide all the facts, evidence and arguments in support of their application. Only where theses requirements are fulfilled will the Office consider their application admissible and communicate it to you, so that you may defend your right. You still have the option to remain entirely passive, because the Office does not accept allegations as being true before examining the evidence carefully and deciding whether to cancel your registration or reject the invalidity application. For you as the holder it is an advantage to have the proceedings before the OHIM and not at a court somewhere in the European Union, because you can defend your registration in the language which you used in the registration proceedings. Furthermore, your financial risk is limited, because even where the person applying for a declaration of invalidity has been represented by a lawyer and finally won the case, you would only have to reimburse legal costs up to a maximum of 400.

The situation is different where you have actively exercised your exclusive right and sued your competitors for unauthorised use of your design before a court. In this case, your competitors may contest the validity of your registration not only before the OHIM, but also before that court by way of a counterclaim. However, since you had already chosen to take action, it may suit you to have all the related proceedings joined together before the same court.


Available sanctions
If you have successfully sued a competitor in court for unauthorised use of your design, the law guarantees certain sanctions to be decided by the court. Most important, your competitor will be prohibited from continuing to use your design. Furthermore, the products which incorporate your design will be seized. Depending on the court and/or your agreement, these products may be destroyed, handed over to you or used by the other party in exchange for reasonable compensation. The court will also order the seizure of materials and implements predominantly used in manufacturing these products, provided that their owner knew their purpose or it was obvious. In addition to these sanctions, which have to be granted by any European court if you win the case, there are others according to national law. In some Member States, it is usual for the source of the contested products to be disclosed. This ruling is most valuable where the products have been marketed by different retailers. Instead of suing them all, you may select just one and reach the source by means of the ruling.

All these sanctions may lose part of their value where they are late in coming. Sometimes, quick action may be needed, for instance where you find a competitor at an international trade fair offering products with your design. A long time would have to pass before you managed to get any of the aforementioned sanctions imposed on him. Fast relief is offered by the law in the form of provisional measures for which you can apply in court according to the national practice followed by that court. In some Member States, courts issue a preliminary injunction within hours of your application, provided your claim is obviously justified. Design rights are often exercised using preliminary injunctions due to the fact that many designs relate to fashion products.


Summary
In brief, a Community design puts you in a strong position. It raises an obstacle to your competitors, forcing them either to seek your consent for using your design or to find another design for their products.