Community designs are the European Union’s (EU’s) equivalent to industrial design (or simply “design”), which is a type of industrial property that is protected by intellectual property rights. In the EU, a community design is defined as “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation”. Essentially, community designs protect the ornamental or aesthetic aspects of products, that is, the outward appearance of a product.

US design patents do not provide protection outside US territory. For products marketed or sold in the EU, your company may apply for a Registered Community Design (RCD) by way of a relatively inexpensive and simple application process that provides protection across all twenty-seven EU Member States. US exporters who sell products in the EU, where the value from such products can be attributed in part to the product’s design should register in the EU.

Legislation

In general, to receive design protection under international, EU, and national law, companies must establish that their product is novel and possesses an individual character. Design rights protect new and original visual aspects of a product or its package and that a product’s design can be protected at the same time by a registered trademark, design protection, and/or a patent. Each form of IPR serves a different purpose and is not mutually exclusive. Specific components of a product may also receive design protection if they are visible during the product’s normal use and their design fulfills the novelty and individuality requirements for a design to be protected.

A registered design qualifies as novel if it is not “made available to the public” prior to the earliest date of filing of the application. Public disclosure of the design before this could affect a design’s novelty (USPTO comments: novelty is the proper term of art) status. The individual character requirement is more searching. A design is considered to be “individual” if the overall impression it produces on the informed user differs from that of existing designs. As Article 6.1 of Regulation 6/2002 puts it, “a design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design that has been made available to the public.”

International Law

The World Intellectual Property Organization (WIPO) maintains the Hague System for the International Registration of Industrial Designs, which allows companies to receive industrial design protection from states in the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) by filing one application.

The European Community submitted an instrument of accession to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs. Accession to the Geneva Act of the Hague Agreement links WIPO’s Hague System and the Office for Harmonization in the Internal Market (OHIM) community design system (located in Alicante, Spain). This means that as of January 1, 2008, companies can submit one application for design protection through the Community Design and any of the twenty-three countries that are members of the Geneva Act.  This will simplify procedures, reduce costs for international protection, and make administration easier.

EU Law

EU Member States adopted Directive 98/71 on the legal protection of designs and Regulation 6/2002 on Community Designs to allow companies to receive a single EU wide design protection instrument. The Office for Harmonization in the Internal Market (OHIM) processes design applications.

National Law

Companies may choose to register their design with a Member State and receive national design protection, which will exist in parallel with community design protection.

• Coverage

The Community Design Regulation provides for both an unregistered and a registered design right. The Unregistered Community Design (UCD) automatically protects a design that is new and has individual character for three years from the date it is first made public within the EU.

A Registered Community Design (RCD) provides longer, more robust, and more comprehensive protection. It lasts initially for five years and can be renewed in five-year blocks up to a maximum of twenty-five years. Further, in infringement cases an RCD provides more robust protection because unlike UCD, the design creator does not need to prove the validity of the design. Also, with UCD, to prove infringement, the original designer must prove that the design was copied and not the result of an independent creation by another.

If a design is targeted toward several EU Member States, the simplicity and cost of an RCD is compelling. It involves a single application, language, and administrative center. The initial five-year registration fee for one design is around 350 euros. Further, RCDs allow a designer to include several different designs in the same application and to keep designs confidential for up to thirty months after registration.

What Is Not Covered. OHIM will not cover component parts that are not visible once incorporated into complex products or designs dictated by function of the product. OHIM cites certain parts of a shaver as an example of what will not be covered by the CTM, since the shaver must have a certain shape in order to work and "must-fit" parts of complex products. For example, electrical or other interconnections (with the exception of connections in modular systems such as Lego) will not be protected under the Community Design.

Furthermore, under Directive 98/71, designs that constitute a component part of a complex product will not be protected when used for the purpose of repairing that complex product so as to restore its original appearance.

Combining Design Protection with other forms of IPR

Trademarks- a product’s “look” can be registered as a design and/or trademark. While the registered design protects the product’s novel and individual appearance, the trademark links it uniquely to the producer and helps distinguish it in the target market. In such cases companies should be careful of registering the trademark first since this can impact the novelty criterion for design registration. Sometimes design protection can provide a versatile alternative to 3-D trademarks when a company looks to protect the shape of its products. For example, a 3-D trademark cannot be registered if the shape of the product is essential to its function, whereas a design application can only be turned down on “functionality” grounds if the product can only work if it is designed in that way.

Patents – patent and design protection are not mutually exclusive either. New products can have both an innovative function and a novel design but, as the timing of disclosure/publication is crucial to both the registering of a design and the filing of a patent, the IP protection process needs to be managed carefully. Unfortunately, there is no patent protection equivalent of the Registered Community Design (see section on patents).

• Registration

Before filing for design protection, companies should search international design registrations listed in the Hague Express database. Provided that the design has not yet been registered, companies can apply for a Community Design with the EU agency responsible for EU wide trademark and design registration, OHIM, or through a national industrial property office, which will forward the application to OHIM.

Non-EU based companies can apply for an RCD but need an EU representative for all subsequent dealings, including future correspondence, with OHIM. In practice many EU-based firms also choose to use the services of experienced design practitioners for their initial design registration and subsequent dealings with OHIM. OHIM has a list of professional representatives on its website. Companies can also use any legal practitioner that is qualified to represent a client to a national trademark office.

While it checks the application to see that it is complete and not “contrary to public policy or morality”, OHIM does not carry out a detailed examination of the design’s novelty or individual character. You will need to carry out your own research to check the validity of your design. OHIM’s on-line design search tool can help in this respect. A design can be invalidated following registration if the challenger can prove that it is not new, or does not possess individual character. Importantly, lack of novelty can be demonstrated if the design was first publicly disclosed more than twelve months before registration.

An application may be made by mail, by fax, electronically or in person at OHIM

OHIM receives applications by mail and fax, and now also offers on-line e-filing. The registration request needs to show the design, and has to specify to which products it will be applied. To speed up the registration process, OHIM recommends that applicants use its detailed product classification list (EUROLOCARNO), which is based on the international Locarno system, translated into the EU’s 23 official languages and searchable on-line. The application may cover an unlimited number of different designs as long as they all belong to the same class of product.  For example, class 06 is “furnishings” and class 02 is “clothing.”

In the case of fax filing, the quality of the representation of the design is likely to be quite poor (especially if photographs are used) since this technology is not adequate for the transmission of image information. Filing by fax is therefore not favored in general. If, however, applicants still wish to use the fax to file, they should make sure that a paper copy of the representation is sent to OHIM within one month from the date of the receipt of the fax. The examiner will await a confirmation copy for a period of up to one month, before further processing the application.

The application for registration must be filed together with payment of the required fees (350 euros for a single application).

RCD registration lasts for up to twenty-five years and may be renewed every five years up to that maximum. The basic registration fee for a first design is approximately 230 euros, although the fees are lower for any further design registered at the same time. Renewals cost 90 euros for a first renewal up to 180 euros for a maximum fourth renewal. To be eligible for protection, designs must be new and have an individual character. This means that the design must appear different from products that existed previously to the public.

Is there a limit to the number of designs, which may be applied for in an application?   For traditional filing, there is no upper limit to the number of designs that may be submitted. However, the products to which the design is applied belong to the same Locarno class, which means that they must pertain to the same type of goods. The exception to this is that if filing an online application, OHIM will only accept 99 designs. This condition does not apply when an application concerns ornamentation.

How many views of my design can I submit?   The design should be represented by at least one view but up to seven views per design may be supplied. In a multiple application, the maximum number of views will be seven per design, multiplied by the number of designs.

The Registered Community Design – Key Considerations

Grace Period - novelty is an essential criterion for an RCD. A design that has been made public is no longer novel. The Design Regulation provides an exception to this in the form of a twelve-month grace period between a design’s first public disclosure and the earliest filing date of the application. This “grace period” allows your company to test its design marketability before pursuing a formal registration. In the interim the design is protected as an Unregistered Community Design against exact copies. If the twelve-month deadline is missed, then an RCD can later be challenged on the grounds of lack of novelty. It follows that enjoying three years protection under the UCD system, and then looking to register, is not an option. Given the importance of disclosure to a design’s validity, one should carefully document that first public appearance, particularly at trade shows and exhibitions.

Priority Right - companies may request that an earlier filing date for their registration by using what is known as the “priority right”. If the design a company presents for RCD status has already been the subject of an earlier filing (in certain countries), or has been disclosed at an officially recognized exhibition, a company may exercise its priority rights to claim the original filing/disclosure date as the filing date for an RCD. Because the novelty status of a design is so important to ensure its legal protection, this priority right should be exercised wherever possible, but is only available for six months after the original filing/disclosure. Carefully timed and well documented disclosure is key for companies to benefit from the grace period and priority right options because once a design is disclosed the clock starts ticking. You have six months to claim the priority right, twelve months to register your RCD.

Disclosure - EU design protection law essentially defines disclosure as making the design available to the public before the applicable date of the protection one is seeking. In addition, EU law provides that public availability means that the disclosure cannot have been subject to a confidentiality agreement or have been made in such as a way that the interested sector operating in the EU could not have become aware of it.

The deferral option - a company may opt to keep their RCD confidential for up to thirty months after filing its application. This can be helpful if a company needs time to fine-tune a product launch and want to keep the design under wraps. If a company chooses this “deferred publication” option it provides all the necessary details just as it would in a normal application. However, OHIM only publishes basic details in the Register and the substance remains confidential. Note that companies may cancel this deferral at any time.

• Enforcement

Enforcing an RCD is generally easier than separately enforcing national design rights in each individual Member State. Infringement proceedings go before Community Design Courts, which are Member State courts that are designated to hear RCD cases. The decisions of these courts apply throughout the EU, making it unnecessary to separately litigate an infringement claim in Member State individual courts. In short, the RCD is an instrument designed to complement the single market. If your market, actual or potential, is EU-wide then a pan-European design protection instrument makes sense.

OHIM deals with implementation at Community level. Member States have exclusive powers for infringements of Community designs (registered and unregistered) and, to that end, must designate one or more Community design courts of first and second instance.

These courts are responsible for:

· infringement actions and - if they are permitted by national law - actions in respect of threatened infringement;

· actions for a declaration of invalidity of an unregistered Community design;

· counter-claims for a declaration of invalidity of a Community design raised in connection with infringement actions.

• Fees

There are registration, publication, and renewal fees for EU design protection, which are available on the OHIM website. To discover the specific fees for registering a design with WIPO, you can use WIPO’s fee calculator.

• Conclusion

The design of a product can add to its value and increase its marketability. If your product's appearance risks being copied or imitated then its market potential could be threatened unless you protect your industrial property. The RCD provides you with an exclusive right against unauthorized copying or imitation of your design. OHIM design registration statistics point to the attractiveness of the RCD. Over 8,500 have been registered by US companies, which represent nearly 9% of the total. Registering designs in the EU is relatively inexpensive and simple. For this reason, even those US companies that may not have considered design registration at home may look at it as a viable option in the EU.

• Helpful Links

Costs of registering a Community Design:
http://europa.eu/rapid/pressReleasesAction.do?reference=IP/02/1926&format=HTML&aged=0&language=EN&guiLanguage=en  

Hague System for the International Deposition of Industrial Designs:
http://www.wipo.org/hague/en/index.html  

Member States Industrial Property Offices:
http://oami.europa.eu/en/links.htm

National Patent and Trademark Offices in the EU:
http://www.intellectual-property.gov.uk/std/resources/trade_marks/offices_worldwide.htm  

OHIM – Office for Harmonization in the Internal Market:
http://oami.europa.eu/  

OHIM’s Online Application:
https://service.oami.europa.eu/forms/rcdapplication/la/en_form.cfm

Press Release on the EU’s Accession to the Design Treaty:
http://europa.eu/rapid/pressReleasesAction.do?reference=IP/07/1388&format=HTML&aged=0&language=EN&guiLanguage=en

STOP! USG campaign to promote better enforcement of intellectual property rights: www.stopfakes.com

United States Patent and Trademark Office:
http://www.uspto.gov/

World Intellectual Property Organization’s SME website:
www.wipo.org/sme/en/index.html  

TRIPS agreement:
http://www.wto.org/english/docs_e/legal_e/27-trips_01_e.htm