CommunityWide DesignProtection

05 February 2002

Crisinta Garrigues

Last December the long awaited Regulation on Community Designs1 was adopted by the Council of the European Union.

The path for the adoption of the Regulation has been long and tortuous. In 1993 the Commission submitted to the Council and the European Parliament a proposal for a regulation on the Community design and for a Directive on the legal protection of designs. The Directive 98/71/EC 2 was finally adopted on 13 October 1998. The ongoing discussion on the Directive together with the different positions of the Commission and European Parliament regarding the protection of spare parts contributed to the delay in adopting the Regulation.

The Design Directive was intended to harmonise substantive aspects of design protection across the EU 3. It opened the door to the creation of a Community wide design right.

The Regulation creates a design right for the European community territory, either through the filing of a single registration (registered Community design) or by making the design available to the public in a member state (unregistered Community design). This two tier system is intended to serve the needs of all industrial sectors from furniture and toy manufacturers to fashion.

Registered Community Design

The Regulation provides for a single, simple and inexpensive registration procedure. A single application will be filed at the Office for Harmonisation in the Internal Market (OHIM) in Spain (either directly or via the central industrial property office of a member state). OHIM already handles the popular Community trade mark. As with the Community trade mark, once a design has been registered with OHIM it will qualify for protection in all member states.

Applications shall be filed in one of the eleven official languages of the Community 4. One of the five working languages of the Office 5 shall also be designated in the application.

The design applied for shall be identified according to the International Classification for Industrial Designs (The Locarno Agreement).

A single application may cover multiple designs provided that (except in the case of ornamentation) the products to which the designs relate all belong to the same class of the International Classification for Industrial Designs. OHIM will examine the application to check that it complies with the formal requirements for filing. It will not, however, conduct a substantive examination as to the existence of earlier rights.

In accordance with the Directive, "design" has been defined as "the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation".

The conditions for protection are novelty and individual character. A design will not be new if it (or a design with features which differ only in immaterial details) has been prior-published anywhere in the world. This is subject to an exception for prior-published designs which "could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community." Although it remains to be seen how this proviso will be applied in practice, the Commission has explained that this "safeguard clause" is directed at protecting the design industry from invalidity claims based on an earlier design in use somewhere in the world where European industry could not possibly have been aware of it. It is intended to avoid invalidation by infringers "claiming that antecedents can be found in remote places or museums."

Individual character requires the design to differ in overall impression from other designs in the eyes of the informed user. The degree of design freedom available to the designer will be taken into account when assessing the individual character of a particular design. The concept of individual character seems to have a certain resemblance with the requirement of not 'commonplace' in the UK unregistered design right provided for in Part III of the Copyright, Designs and Patents Act 1988.

The registered Community design will confer on the registered proprietor the exclusive right to use it and to prevent any third party from using the design without consent.

The initial term of protection will be five years renewable for up to four five year periods bringing the maximum term of protection to twenty five years.

Unregistered Community Design

Unregistered Community design protection will arise automatically from the making available to the public within the Community of products which incorporate the design in question. This type of automatic protection is particularly suited to sectors where a large number of designs are created for products with a short market life. The right offers limited protection without the burden of registration. The scope of protection is narrower than that for registered Community designs. It is limited to prevent acts which result from copying the protected design. Accordingly, protection is not extended to design products which result from an independent work of creation. Although falling short of monopoly protection, unregistered Community designs will still provide a useful tool against counterfeiters.

Unregistered Community design protection will last for three years from the date on which the design was first made available to the public within the Community. Although the protection period is short, it may prove to be very useful for industries such as the fashion industry where the collections are only 'valuable' for a season.

For many years the UK design protection régime has included protection for unregistered designs which applies automatically without further formality. Such unregistered design right provides protection against copying for a period of 15 years from design or 10 years from first marketing. In contrast, no other EU member state has experience of an unregistered design system. The harmonisation of decisions on the new unregistered design right may prove a challenge when cases of infringement/validity are brought before the national courts entrusted with determining disputes on Community design rights.

The existing systems of member states for protecting designs, including registered designs, copyright, trade marks and patents will coexist with the Community design system.

OHIM, as administrator of the registered Community design, is setting up the personnel and resources to start dealing with applications. However, as further regulations regarding implementation and fees are still to be approved, it is not expected that OHIM will start accepting applications until 2003.

On the other hand, the unregistered Community design provisions will come into force on 6 March 2002, which means that all new qualifying designs which are made available to the public anywhere in the EU as from that date will receive automatic protection under the Regulation.

Due to be published in the February issue of WLLR.

1. Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs.

2. (Directive 98/71/EC of the European Parliament and of Council of 13 October 1998, on the legal protection of designs, OJ L289, 28/10/1998.

3. All member states were required to bring their national laws into line with the Directive by 28 October 2001. The Draft regulations to implement the Design Directive in the UK were finally approved and came into force on 9 December 2001.

4. The eleven official languages are: Danish, Dutch, English, Finish, French, German, Greek, Italian, Portuguese, Spanish, Swedish.

5. The five working languages of OHIM are: English, French, Spanish, Italian and German.