Community Design Regulation in European Union

The Community Design Regulation (“the Regulation”) came into effect on 6th March 2002.  The Regulation provides the possibility of obtaining a single design registration covering the entire European Union by way of a single application.  Community designs will be registered at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (“OHIM”).  Applications will be accepted by OHIM starting from 1st April 2003.

Who can apply?

Applications can be filed by natural persons or legal entities irrespective of their domicile to OHIM directly or through a national office (e.g. the UK Patent and Trade Mark Office).  Where the applicant is not based within the European Union, a representative must be appointed. 

What Designs can be Registered?

A protectable design is one with some aspect of appearance (i.e. the external form) of a product or part of a product.  It can consist of lines, contours, colours, shapes, textures and/or materials of the product or its ornamentation.  However, matter such as smells, sounds or words will not be registrable.

Registration is also not allowed for immoral designs; designs of the shapes of mechanical interfaces; designs of shapes of component parts which are hidden in normal use; and designs which are dictated by the function to be performed, to the extent that the design could be made in any other shape.

What are the Application Procedures?

Application procedure is rather simple.  It consists of representations (drawings or photographs) of the design and supporting information.  In the case of two dimensional designs (e.g. textile), it may be possible to file a sample instead of representations.

What are the effects of registration?

The registration of a design will protect that design for all articles in which it is incorporated or to which it is applied.  Although the application needs to specify product(s) to which the design will be applied and the class of product(s) (under the Locarno Convention), the scope of protection is however not limited to such product(s).

What is the term of the registration?

The initial term of a registered community design will be 5 years from the filing date.  It will be renewable for further periods but not exceeding the maximum of 25 years.

Who owns the registered community designs?

Community designs made by employees will normally belong to their employer unless otherwise agreed or specified under national law.

The designer or designers of a community design are entitled to be named as an official record.

What is the examination process?

Firstly, the application will be examined to determine whether the formal requirements are satisified before a filing date is given, i.e. whether the fees have been paid and whether the formal requirements of the application are satisfied (including matters such as the form of representations, any claim to priority and, in the case of multiple designs, whether all designs are in the same class).

Then, there will be a minimal substantive examination to determine whether the application is obviously not a design and to determine whether the design is immoral.

Any further substantial conditions of protection of the Community design, such as novelty and distinctive character, will not be examined during the examination proceedings.

In either case, the applicant will be offered an opportunity to rectify any defects identified or to comment before refusal.  Any refusal may be appealed to a Board of Appeal within OHIM and ultimately to the European Court of First Instance and the European Court of Justice.

Once the design can satisfy the first and second stages of examination mentioned above, the application will be granted registration and a certificate will be issued.

After being accepted for registration, the design will then normally proceed to publication in the Community Designs Bulletin.

What is deferred publication?

Deferral of publication may be requested by the applicant for up to 30 months from the priority or filling date.  This may be useful where a new range of designs is to be launched and the applicant does not want them to be open to public inspection before launch.

The consequence of such a request is that the Community design will be registered, but that the representation of the design and other documents of the application will not be open to public inspection.  Only facts relating to identity of legal proprietor, date of application and indication of the deferral of publication will be disclosed.

Possible to claim priority?

An applicant may claim priority from design or utility model applications filed in any World Trade Organization or Paris Convention country.  If priority is to be claimed, the Community design application must be filed within 6 months of the first filed application.

Possible to file multiple applications?

Two or more designs can be filed under a multiple design application provided that the designs fall within the same classification.

Invalidity

Community design may be declared invalid on one of the following grounds:-

1. the design does not meet the criteria for a protectable design mentioned above;
    

2. the design is not new;
    

3. the design lacks individual character (i.e. it creates the same overall impression as an earlier design);
    

4. the design does not belong to the purported proprietor; or
    

5. the design conflicts with earlier rights such as copyright, a national design, trade mark or sign protected under national or international law.

The application for declaration of invalidity can be filed by anyone under grounds 1 and 2 above.  For other grounds, application may be filed by a relevant person (e.g. a proprietor of earlier right).