community design

05 February 2001

Cristina Garrigues

On November 30 last year the EU's Internal Market Council (IMC) reached political agreement on all but one aspect of the proposed Regulation on Community Design. The IMC decides on legislation relating to the free movement of goods, services, workers and capital. One of IMC?s aims is to clarify and simplify the laws governing trade in all EU member states before these are finally adopted.

The Council meeting took place under the French presidency which was keen to reach an agreement before the end of its term. A political agreement could only be achieved by shelving the languages issue which had been the centre of intense and lengthy discussions. The real achievement, however, was that the Council settled the spare parts issue which had been the subject of much debate and lobbying.

The Regulation is based on a unitary design for the European Community, similar to the successful unitary Community Trade Mark. The proposal would encourage innovation and help to prevent counterfeiting and piracy throughout the EU on the basis of a single, simple, inexpensive registration procedure with the Office for Harmonisation in the Internal Market (OHIM) in Alicante, Spain.

The following is a summary of the main provisions set forth in the Regulation as last amended.

An Unregistered Community Design will exist alongside a Registered Community Design. The possibility of protecting an unregistered right responds to the needs of specific sectors whose products have a very short life cycle. An unregistered design protection will exist for a term of 3 years from the date of first public use. On the other hand a Registered Design will be available for a maximum term of 25 years, (Articles 12 and 13).

A Community Design, either unregistered and registered will not subsist in features dictated solely by function. Therefore, protection by Community Design cannot be relied on for features which 'must fit' or 'must match'. The 'must fit' features are features of parts which are specially designed so that they may be placed in, around, or next to another product, so that both the part and the other product will function properly. An illustration of the must fit features is an electrical plug. The shape, dimensions etc of the pins would be excluded, together with the corresponding apertures in the socket. On the other hand, the overall shape of the plug may qualify for protection.

The 'must match' features apply to parts the design of which is dependent on the appearance of the product which it fits. The part and the product must be compatible. The design of component for cars such as body panels, doors, windscreens, etc will fall within the must match exclusion.

The new Article 127a as agreed at the meeting provides that '....a Community Design shall not exist for a design which constitutes a component part of a complex product... for the purpose of the repair of that complex product so as to restore its original appearance'. The adopted solution is clear: the registration of 'component parts of a complex product' is permitted but it will not be allowed to be enforced to prevent repair.

This article was adopted as it would not be appropriate to grant protection as a Community design to the design of a component part of a complex product which is used for the purpose of repair of a complex product so as to restore its original appearance, until the Council adopts a policy. The permanent policy to be adopted will incorporate the results of the consultation which is currently carried out by the Commission as established by Article 18 of the 98/71 EC Directive. This article provided that 5 years after the implementation of the Directive, the Commission will submit an analysis of the consequences of the provisions of the Directive for Community industry, for consumers, for competition and for the general functioning of the Internal Market.

The Registered Community Design grants the owner an exclusive right to use and to prevent any third parties from using it. The Unregistered Community Design protects the owner against copying. However, the Unregistered Design does not allow the right holder to oppose any designs which are the result of independent creation by another designer (Article 20).

It was also agreed that the applicant may request that publication is deferred for a period of 30 months. The decision of fixing the deferment period in 30 months was somehow surprising when no one had asked for this length of time. This period is however, the maximum permitted by the Geneva Act (Hague Agreement), (Article 52).

Another point clarified at the IMC meeting was the presumption of validity. A registered design is presumed valid until challenged. The same applies to an unregistered design, but only if the holder 'indicates in what lies the individual character of his Community Design. For the most part this may be a mere question of asserting some feature(s); the problem would be if the Court takes the indication to be a binding limitation to the scope of protection (Article 89).

A system of Design Courts will be created throughout the Community to deal with matters of infringement and validity. The Court's decision will have effect throughout the Community. However, in the event of a declaration that the design is not enforceable for reasons of public policy or morality, the effect will be limited to the state where that particular design court is based.

As mentioned above, in order to reach an agreement on the amended proposal the question on the language regime of the Community Design Office was postponed. The proposed text included that 'most' of the proceedings before OHIM may be carried out in any Community language. A simple way of solving this issue would be to adopt a similar format to the one used in the Community Trade Mark system, ie a CTM application can be filed in any of the 11 official languages of the Community, but a second language, one of the 5 working languages of the Office must also be indicated. This second language will be the language of communication with the Office.

Once this outstanding issue is agreed, the Council will be able to adopt a Common Position on the proposed Regulation. At the current moment there is not indication on when the language issue will be addressed again by the Council.

First published in WIPR in February 2001.