Community Design Protection

Dr. Tilo Blasberg, Patentanwälte Kewitz & Kollegen

Important changes in legislation on protection of designs in the European Community that will offer better and more efficient protection entered into force recently. This paper gives an overview over the new Community Design Regulation and will discuss filing strategies and present new possibilities for the protection of designs, trademarks and merchandising products.

Until recently national legislation for the protection of designs in the European Community (EC) varied enormously between the member states.

For harmonizing the different legislations two approaches are followed in the EC:

1. Directive 98/71/EC[1] was issued that must be implemented by the member states into national law by October 2001. Several member states, including Germany, missed this deadline.

2. The so-called Community Design Regulation[2] (CDR) EC No. 6/2002 of December 12, 2001 entered into force on March 6, 2002 providing for the first time ever a Community Design taking effect in the whole EC.

The standards of the Directive 98/71/EC and of the CDR are compatible. In the future applicants will have the choice between either national or community wide design protection. As will be shown below the Community Design offers many advantages.

The Community Design registration will be a single registration that covers the whole of the EC and can only be declared invalid for the whole of the EC.

The right conferred by a Community Design will be exhausted in the whole of the EC once a product incorporating the design has been marketed in a member state of the EC by the proprietor of the design or with his consent (Art. 21 CDR). The proprietor can only object to the importation of that product from outside of the EC, e.g. from the U.S..

The CDR provides a dual system of protection, namely for registered Community Designs and for unregistered Community Designs.

A registered Community Design can only be obtained by filing a Community Design application. On the other hand, an unregistered Community Design will come into existence automatically by making articles incorporating the design available to the public within the EC.

A protectable ‘design’ is a certain aspect of the appearance of a product or part of a product. It may result e.g. from the lines, contours, colours, shape, texture and/or materials of the product or its ornamentation.

A ‘product’ means any industrial or handicraft item, including packaging, get-up, graphic symbols and typographic typefaces.

European legislation does not want to hinder technical progress or technological inventions by design protection. Therefore, a Community Design shall not subsist in features of a product which are solely dictated by its technical function (Art. 8(1) CDR).

Example: The three-dimensional shape of a body of a speed boat might by dictated solely by hydrodynamic principles. However, the overall appearance of the body (including parts above water level) may reside in a mixture of solely technical and aesthetical features which qualifies for design protection.

Features that must necessarily be reproduced in their exact form and dimensions to permit the product to be mechanically connected or placed in, around or against another product are excluded from protection (Art. 8 (2) CDR).

Example: Mechanical couplings allowing parts to be connected (proportions might be dictated by technical standards).

I.6. No protection for spare-parts if they are not visible during normal use

Under the pressure exerted in particular by the automobile industry, design protection can only be obtained for a part if they remain visible during normal use of a complex product when the (spare) part is mounted to the complex product (Art. 4(2) CDR). Visibility only during maintenance, servicing or repair work is not considered as ‘normal use’ (Art. 4(3) CDR). The rule is that ‘protection must stop under the engine hood’.

In order not to hinder the repair business (like automobile garages) and not to tie customers to exclusive suppliers of original parts, there exists a provision which prevents protection for a design which ‘constitutes a component part of a complex product used for the purpose of repair to restore its outer appearance’. Example: An automobile bumper or headlight (which is a spare part that is clearly visible in its normal use) is exempted from protection (Art. 110 (1) CDR). However, this regulation is of temporary character only, and the European legislator will address the issue of protection of such components by the end of 2004 again.

It is heard that e.g. the automobile industry will file design applications for all spare and repair parts, even if they are exempted from protection at present, in the hope that Art. 110 (1) CDR will be abolished. The Office in charge for registration of a Community Design will conduct only a formal examination but will probably not make a decision as to whether the design for which protection is sought for is a repair or spare part.

A design shall be protected by a Community Design to the extent that it is new and has individual character (Art. 4(1) CDR).

A design shall be considered to be ‘new’ if no identical design has been made available to the public before (1) the data of filing/priority of a registered design or (2) the date on which the unregistered design has first been made available to the public (Art. 5 (1) CDR). According to Art. 5 (2) CDR designs shall be deemed identical if their features differ only in immaterial details. For the assessment of novelty one will therefore refer to a non-weighted feature analysis of all features constituting the overall impression of the design.

A design shall be considered to have ‘individual character’ if the overall impression a design produces on the informed user differs from the overall impression of any other design made available to the public prior to the filing/priority date of a registered Community Design or the date on which the unregistered Community Design has first been made available (Art. 6 (1) CDR).

It is important to note that it is not the design expert who is responsible for the assessment of the individual character but instead the (average) informed user. Further, all features that contribute to the overall impression of a design have to be considered and not only selected features. De facto, the requirements for the existence of an individual character are relatively low. This certainly strengthens the value of Community designs but makes it more difficult to have them invalidated.

I.9. Infringement and Declaration of Invalidity

An action for infringement of Community Designs will be heard before a Community Design Court, which will be established in every country. The Community Design Courts will have exclusive jurisdiction to impose a Community wide injunction and award damages.

The Community Design Courts will also have exclusive jurisdiction for action for declaration of non-infringement, for declaration of invalidity of unregistered Community Designs or in case of a counterclaim raised in connection with infringement actions.

With regard to registered Community Designs, any natural or legal person may submit an application for declaration of invalidity before OHIM. The costs for the declaration of invalidity before OHIM are modest as compared to the costs for filing an action.

A registered Community Design gives the proprietor the exclusive right to use the design and can be used to prevent third parties from making, supplying, importing, exporting using or otherwise dealing in products incorporating the design anywhere in the EC (Art. 19 (1) CDR). In the case of infringement there is no need for the proprietor to prove that his design has been copied by the infringer.

The registered Community Design will be administered by the Office for Harmonization in the Internal Market (OHIM) in Alicante, Spain, which is also known as the Community Trademark Office. A schematic flow diagram of the proceedings before OHIM is attached.

The examination will cover only formal requirements, but a check will be made to ensure that protection is being sought for a design in accordance with the CDR. It can be expected that OHIM will be very liberal with registration of Community Designs and will accept substantially all types of design applications, in particular also designs where unimportant features are stylized with dashed lines.

Community Design applications may be filed as of January 1, 2003, however, the first Official filing date will be April 1, 2003 (which corresponds to a date of priority of October 1, 2002). Once accepted for registration, the design will be published electronically. Therefore, the Official fees will be low and publication may be expected within approx. 4 months after filing. Deferment of publication up to 30 months from the filing or claimed priority date may be requested, in which case the design will be kept secret. Applicants might choose this option when wishing to obtain a registered Community Design protection before launching a new design but to keep the design secret until launching the design.

Multiple designs: A significant advantage is that any number of designs may be filed in a single application even if the outer appearances of the designs differ largely from each other. Filing of multiple designs results in a substantial reduction of fees. Where the designs are three-dimensional rather than merely ornamental, the products to which the designs are applied must all fall within the same class of the Locarno Classification[3].

Grace Period: A disclosure of the design shall not be considered to have been made available to the public if it is made by the designer himself (or based on information provided by him) during a 12 months grace period preceding the filing or claimed priority date of a registered Community Design (Art. 7 DCR). This gives designers enough time to decide whether to launch a new design on the market, provided that he decides to file a Community Design application.

However, if a third party has disclosed an identical design which they have created independently, then this disclosure will be a bar to novelty. Further, if a third party has, in good faith, commenced to start use within the EC, this might entitle the third party to a right of prior use (Art. 22 CDR).

Therefore, it is recommended to file an application for registration of a Community Design as soon as possible and, preferably, before disclosing the design to the public.

Term of Protection: The term of protection is 5 years from the date of filing of a registered Community Design, which is extendable for further periods of 5 years up to a maximum of 25 years.

Comparison of Costs: In the following the Official fees for filing a design application consisting of a single (black&white) design and of 50 designs (combined to a multiple application) will be compared.

If a design fulfils the above requirements for protection (novelty; individual character), unregistered Community Design protection will come into existence automatically by making articles incorporating the design available to the public within the European Community. Protection for unregistered Community Designs may be obtained as of March 6, 2002, i.e. when the CDR entered into force.

A prerequisite for the unregistered Community Design is that the disclosure, in the normal course of business, could reasonably have become known to the circles specialized in the (design) sector concerned operating within the European Community (Art. 11 (2) CDR).

Examples: (1) If a design is exhibited on a fair in Japan and a magazine within the European Community, which is usually consulted by the designers specialized in the sector of the design, such a disclosure should be considered as qualifying for an unregistered Community Design protection.

Term of Protection: The unregistered Community Design is protected for a period of three years as from the date on which the design was first made available within the European Community (Art. 11 (1) CDR). Of course, the designer has the possibility to file a Community Design application which will be deemed novel as long as it is filed with the 12 months grace period.

Different Scope of Protection: An unregistered Community Design qualifies for preventing the same infringement acts as a Registered Community Design. However, an important difference is that infringement of the unregistered Community Design only occurs when a similar or identical design has been copied from the earlier design. The act of copying requires knowledge of the earlier design. Therefore, if a design results from an independent work of creation by a designer, this does not constitute copying (Art. 19 (2) CDR).

For litigation, the proprietor of an unregistered Community Design must prove that their design has been copied, i.e. that the designer of the alleged infringing product knew or could have known the unregistered Community Design. E.g. presenting his design on a widely attended fair or exhibition could prove that the designers in the sector concerned could have known the unregistered Community Design. In practice, substantial similarity of the designs will be deemed prima facie evidence that the copy does not result from an independent work but results from copying.

Due to the difficulties that will necessarily arise when litigating unregistered Community Designs, designers seeking to optimise protection in the European Community are strongly advised to obtain a registered Community Design.

Designers seeking protection for their designs, have the following main options:

1. Immediately Filing a Community Design application without deferred publication

3. Disclosing/launching the new design but filing a Community Design application later (within the 12 months grace period)

4. Disclosing/launching the new design and never filing a Community Design application

In principle, new logo, device or graphics trademarks can be protected by Community Designs. Rights conferred by the Community Design can be enforced without the need of showing copying or confusion. Registration will give protection for all goods with a single filing. This can save class fees otherwise required for trademark applications.

It is difficult to register three-dimensional trademarks. In many cases three-dimensional trademarks are deemed devoid of any distinctive character. For being registered and enforceable, such a distinctive character is not required for Community Designs. Furthermore, by filing an application for a new design and for the most important modifications (making use of the possibility of multiple design applications), applicants may keep free the market from similar designs of competitors. During the relatively long term of protection of 25 years the design might acquire a distinctive character or might even become well-known which would, in the long term, qualify the design also for registration as a three-dimension trademark.

Therefore, it should be considered protecting three-dimensional trademarks as Community Designs in the early stages before trademark protection can be obtained.

Protection of a Community Design extends to all goods. Hence, Community Designs may be useful for protecting merchandising products, such as characters of films, videos or video game applications, cartoon characters or three-dimensional toy figures.

The possibility of filing multiple design applications enables cost-effective protection for a whole range of characters of the same (or different) film, video or video game application. It should also be considered protecting the characters in different positions and/or situations (standing, sitting, laughing…).

The new Community Designs will provide a strong and cost-effective protection of designs, enforceable for the whole of the European Community. Applicants will have the choice of filing national or Community Design applications. Due to the manifold advantages of Community Designs designers should take into consideration Community Designs in the future.

According to a recent survey conducted, OHIM expects filing of approx. 20,000 Community Design applications per year. Most likely, in the first years even more applications will be filed.

[1] cf. http://oami.eu.int/en/design/propdir.htm

[2] cf. http://oami.eu.int/en/design/pdf/reg2002_6.pdf

[3] http://oami.eu.int/pdf/design/eurolocarno_en.pdf