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Community Designs Since April 2003, Community Designs can be registered at the Office for Harmonization in the Internal Market (OHIM) in Alicante. The registration of Community Designs enjoys increasing popularity, not least because the European Union was enlarged on May 1, 2004 by the accession of ten additional member states, thereby significantly increasing the territorial protection of Community Designs. Furthermore, on June 1, 2004, a new German design law entered into force to harmonize national law with the European directive on designs. Thus, in the last two years, protection of designs has experienced considerable changes, both on the European and the national level. In the following, we will briefly comment on the possibility of requesting the invalidity of a Community Design. The OHIM does not only register Community Designs, but also has to decide on requests for the declaration of invalidity of registered Community Designs. For this purpose, Invalidity Divisions have been established in the OHIM to decide on invalidity requests filed by Third Parties. To provide a few examples for grounds of invalidity, a Community Design can be declared invalid if it does not comply with the legal definition of a "design", if it lacks novelty or individual character over designs, which have been made public before the filing date of the Community Design, or if the design constitutes an unauthorised use of a work protected under the copyright law of a Member State. In April 2004, the first decision on an invalidity request was announced by the competent Invalidity Division. In the meantime, nine decisions have been issued, resulting in a declaration of invalidity for five Community Designs. In most of these cases, the request was based on a lack of novelty and/or individual character. When discussing the requirements for individual character by comparing the features of the Community Design with those of earlier designs, the Invalidity Divisions emphasized that the functionality of the product covered by the Community Design has to be taken into consideration. It was argued that the basic structure of a device is simply the consequence of its functionality (i.e. a specific technical effect to be achieved) and imposes specific restrictions on the designer in developing the design. Therefore, the informed user focuses his attention on features, which are not necessarily implied by this function and, consequently, deviations in these features are more relevant for the assessment of individual character. Since the OHIM Invalidity Divisions have just
started to take decisions on requests for the declaration of invalidity,
a well-established case law has still to be developed. We will continue
to carefully observe the OHIM decisions on Community Designs and will
inform our clients about new and interesting legal developments in this
field.
The Community Design Verifier: Dr. Patrick Baronikians, Schwarz Kelwig Wicke Westpfahl, Munich, Germany "Thinking is easy, acting is difficult, and to put one's thoughts into action is the most difficult thing in the world" the famous German poet Johann Wolfgang v. Goethe once said. This may be one of the thoughts crossing one's mind when trying to find the right strategy for protecting an intellectual property right. Rules and regulations change. Therefore, it's important to rethink one's strategy once in a while. A reason to maybe reconsider one's strategy was given on April 1, 2003 when the possibility of registering a Community Design was implemented. In general, a "design" means the appearance of the whole or a part of a product resulting from its features, in particular, the lines, contours, colors, shape, texture and/or materials, of the product itself and/or of its ornamentation. In short: the "design" of a product or a part thereof. In the US it would be referred to as a "Design Patent". Surprisingly enough though, the European Community Design as defined in the rules and regulations also permits protection for trademarks, e.g. logos and device marks, however, not for just plain word marks. And, this is where the Community Design has been underestimated up to now. The prerequisites for a Community Design are relatively low in comparison to a trademark. A Community Design needs to be "new" and have "individual character". Coca-Cola, for example, could have its stylized trademark "Coca-Cola" registered as a Community Design, but, it would not fulfil the qualification of being "novel". Therefore, receiving trademark protection via the Community Design is generally only interesting for companies which have redesigned their "looks"/logo or for companies who are launching a new product or service with a new brand name. This is one of the main things to think about when considering protection via the Community Design. The main advantages of the Community Design are the low costs, the quick registration and the broad protection it can be claimed for. In contrast to filing for certain goods and services according to the Nice Classification one may choose class 99 "graphic symbols" of the so-called "EUROLOCARNO"-Classification. This means that the Community Design has protection for any and all goods and services and is not restricted to the ones as claimed for which a trademark is registered. Another advantage is that in contrast to trademarks no proof of use is ever required. Unlike trademarks, though, protection for the Community Design is granted for five years and can only be renewed up to a maximum of 25 years. Taking this short and by no means complete overview into consideration there are a couple of interesting strategies which are possible with a Community Design. Example: If a company launches a new product and has a new name/logo which is to be sold in Europe and the company fears the counterfeiting of this product, it is advisable to apply for a Community Design and a Community Trademark. The advantage of the Community Design is that there is no opposition phase. Therefore, in contrast to the Community Trademark, it is registered within an extremely short period of time (usually within two to three months). The company has a registered right that can be used against counterfeiters, either in a court case or as a basis within a request for border seizures in one European country or throughout the European Union. Also, the costs for the Community Design compared to the Community Trademark are very low. The official filing/registration fee together with the publication fee for the first design (or an individual design) is EUR 350, for the second to 10th design of a multiple application is EUR 175 each, and from the 11th design on is EUR 90 each. Considering the fact that currently 25 countries are a member of the European Community (Belgium, Germany, France, Luxembourg, the Netherlands, Denmark, Ireland, United Kingdom, Greece, Spain, Portugal, Austria, Italy, Finland and Sweden and the ten new members Cyprus, Czech Republic, Estonia, Hungary, Lithuania, Latvia, Malta, Poland, Slovak Republic and Slovenia), the costs for the Community Design are extremely low. Depending on the strategy a company can A famous European once said: "Take time to deliberate, but, when the time for action has arrived, stop thinking, and go in". Strategically seen, the Community Design has been underestimated by many over the past years. It will be interesting to see, how it will develop within the next years. OVERVIEW:
First Community Design Ruling Dr. Utz Kador, Kador & Partner, Munich, Germany Following the introduction of the new Community Design Regulations, which we detailed in our NewsLetter of May 2002, the UK High Court has recently issued an EU-wide decision in respect of infringement of an unregistered Community Design protection. The case concerned US toy company Mattel who marketed a doll sold under the name "My Scene" and a competing doll sold under the name "My Style" by Simba Toys, a German toy company. By decision of October 24, 2003, Mr. Justice Hugh Laddie delivered an order that Simba Toys had infringed Mattel's unregistered Community design by producing and selling similar-looking dolls in the EU. In the decision, Laddie ordered Simba Toy to stop producing, advertising and selling its infringing dolls in the EU or continue infringing Mattel's rights for "My Scene" dolls in any EU country. It was also ordered that the defendants write to everyone who they knew or had reason to believe had any "My Style" dolls for commercial purposes within the European Community, and request the of return any such dolls to Simba. In addition, Simba was ordered to pay an in-term payment of £ 450,000 for costs. Damages will be decided in the future. Although only in its youth, this decision shows the value of unregistered Community design rights to designers. Further, the availability of EU-wide injunctions is also of great value, as the matter need only be heard once, and not in each individual EU-country. Further details of registered and unregistered Community design protection can be obtained on request.
COMMUNITY DESIGN STATISTICS Dr. Utz Kador, Kador & Partner, Munich, Germany As from 1st April 2003, the Office for Harmonisation in the Internal Market (OHIM) in Alicante registers Community Designs under the EU's new Community system for the protection of designs. The registration procedure is simple and inexpensive. Therefore, a large number of our clients have already applied for the new Community design and we are pleased to provide you with the current OHIM figures related to Community Design applications in 2003: All up, approximately 40.000 Community Design applications have been filed until the end of the year 2003. The huge number of applications shows the big interest for this new broad scope of protection of designs within the European Community.
New Community Design in the European Union Alexander Nette /Dr.
Alexander González On December 12, 2001 the Regulation on Community Designs was adopted and published in the Official Journal of the European Community on January 05, 2002. Hence, a Community Design, which is uniform throughout the whole of the European Union, was created for the first time. Thus, design protection can be obtained for a registered or an unregistered Community Design. Unregistered Community Designs can come into being for the first time following entry into force of the Regulation on March 06, 2002. From this point on, design protection can thus be obtained for the whole of the EU simply by disclosing a protectable product. However, according to the European Commission, only designs made available to the public for the first time on or after this day are protectable. If products are disclosed before this date, you will therefore probably not be able to receive a Community Design. In addition, there will also henceforth be a registered Community Design. Applicants can thus obtain design protection for the whole of the European Union by means of a single design application. Design protection of such a registered design guarantees a protection which is more extensive as regards content and duration than that of the unregistered design (cf. the presentation of both systems of protection in the enclosure for details).
In the following you will find a description of
the main features of the new registered and unregistered Community Design.
I. Main Features of the Registered EU Design 1. Requirements for Protection a) What Can Henceforth Be Protected As a Design? aa) According to the New Provisions, What Is a Design? The Regulation on Design Protection contains definitions of the European design which are somewhat lengthy and difficult to understand at first glance. Their content can essentially be summarized as follows: A design is the manifestation of an industrially or technically manufactured product which remains outwardly visible to the end user during the normal use of this product. However, service, maintenance and repair activities are not considered as normal use. In particular, this provision clarifies that
which is already law in many EU States, i.e. that only designs which
are outwardly visible to the end user can be protected. This means,
for example, that a coupling of a vehicle cannot be considered as a design
as it is not visible to the user during the normal use of the vehicle. bb) Grounds for Invalidity, Art. 8 Design Regulation The above-mentioned general definition of a Community Design will admittedly be restricted by several grounds for invalidity. Firstly, Art. 8 (1) of the Design Regulation states that the features of a product which are solely dictated by its technical function do not constitute a design. The purpose of this provision is, amongst other things, to delimit the design laws over patent design laws and utility model laws. However, it can be seen from the phrase "solely by its technical function" that European design protection is possible for such products which, although dictated by technical functions, also display additional features. Furthermore, Art. 8 (2) of the Design Regulation specifies that so-called "must-fit" elements cannot be considered as a design. "Must-fit" elements concern the features of a product which must be determined in their exact shape and dimensions so that the product can be joined with another product. An example of this would be the elements of a trailer coupling, the shape of which is dictated by the need to be connected to different trailers. The proposals for the Regulation specify that the purpose of this provision is to guarantee free interoperability of products of various brands. An exception is made to this rule for such designs which assist the multiple assembly or connection of mutually interchangeable parts within a modular system (Art. 8 (3), Design Regulation). This exception is justified because mechanical joining elements of connecting parts represent an important factor in their marketing and hence should remain eligible for protection. For example, this would be conceivable for the joining elements of shelf units. The exact limits of this provision are, however, to be set in the anticipated registration practice. Finally, according to Art. 110 of the Design Regulation,
specific so-called "must-match" parts are also ineligible
for design protection for the time being. According thereto, protection
does not exist for designs which are used as component parts of a complex
product for the purpose of repairing
these complex products to restore their original appearance. Thus, this
provision means that vehicle spare parts in particular, such as, for example,
a car door, are ineligible for protection as a Community Design. This transitional provision concerning spare
parts was proposed on the condition that a Community Regulation on this
matter be made following a three year period of observation of market
development by the Commission. b) Novelty, Art. 5 Design Regulation Regarding a design which complies with current regulations and is not declared invalid on any grounds, it is still necessary to apply for a new Community Design to obtain design protection. The extensive definitions of the Design Regulation concerning novelty can be summarized as follows: A design is to be considered as new if no other identical design has, in any form, been disclosed to the specialized circles of the relevant section of the European Community throughout the normal course of business on the day the application is filed (or on the priority date). A notion of absolute novelty, as under Patent Law, is thus introduced under this provision, though is admittedly limited to recognition in the fields of expertise of the European Union. Furthermore, the Design Regulation provides for a period of grace of 12 months for the creator of the design. This means that a design is also deemed to be new for the creator or his legal successor, if this design has been made available to the public within a time limit of 12 months from the day the application is filed (or the priority date). c) Individual Character, Art 6 Design Regulation Finally, according to the Regulation, a design must display individual character to obtain design protection. According to the definitions in the Design Regulation, a design displays individual character if the overall impression it produces to an informed user differs from the overall impression produced by another prior design. When assessing individual character, the degree of freedom of the creator in developing the design will have to be taken into consideration. It is widely agreed that these definitions require further specification by the courts and in particular by the European Court of Justice. Thus, the degree to which the overall impression of designs must differ, which must be given to prove individual character, will not be further specified in the law. It is, however, indicated that the evaluation must be carried out by an "informed user". Therefore, the extent of individual character shown depends on the assessment by a user who possesses certain knowledge of design. It is, however, to be expected that this wording
will bring down the lower limit for design protection compared with hitherto
valid German protection requirements. 2. How Long Can a Design Henceforth Be Protected
for? The Design Regulation provides for the protection of a Community Design for a period of 5 years beginning on the day the application is filed. The holder of the right can renew the term of protection for one or more periods of 5 years each, up to a total term of 25 years from the date of filing. 3. Registration Requirements Here are a few specific apects to be referred to with regard to registration procedure. Firstly, the Regulation has created the possibility for multiple applications throughout Europe (provision is already made for this under German design law). This provision is particularly aimed at economic sectors, which yield many, possibly short-lived, designs in a short period of time, of which maybe only a few are actually brought on to the market. By means of a multiple application, it is now possible for these economic sectors to combine several designs into one application. The Office for Harmonization in the Internal Market in Alicante (Spain) is responsible for the registration system of Community Designs. However, applications for industrial property rights can also be made at the central authorities of the EU Member States or at the Benelux Design Office. Please note that formal requirements in particular are examined in an application for a Community Design. With regard to substantive law the Office for Harmonization will essentially only examine whether a design does indeed exist in accordance with Art. 3 of the Design Regulation, and whether this design contravenes public policy or public morality. Conversely, the requirements for protection of novelty and individual character are not examined. 4. Other Relevant Amendments Art. 22 of the Design Regulation provides
for a particular bar to Design Law which goes beyond traditional bars.
This provision specifies that the rights conferred by a registered Community
Design shall not become effective against a third party who can prove
that, before the day the application was filed (or the priority date),
he started, in good faith,
to use or make serious preparations for the use of
a design included within the scope of protection of the registered design,
which he claims was developed independently from the registered design
and had not yet been made available to the public. In this case, such
a person shall only be entitled to exploit the design for the needs of
the undertaking. This right can also not be transferred separately from
the undertaking. II. Main Features of the Unregistered Community Design The Design Regulation also introduces an unregistered Community Design throughout the European Union. The reason for this introduction is referred to in the proposals for the Regulation; the reason being that in some economic sectors, numerous designs for products are created, which only have a short market life. Protection, which is without the burden of registration formalities and thus is preferably easy to obtain, should therefore be provided for these designs. In return, the term and scope of protection of this unregistered design was limited. In accordance with the above, an unregistered Community Design having the following requirements and characteristics was created in various provisions of the regulation: Design protection already exists if the design is made available to the public within the European Union. For this purpose, any form of public announcement should suffice, unless the act of disclosure takes place subject to confidentiality or could not, throughout the normal course of business, have become known to the specialized circles in the concerned sector operating within the European Community. Protection of the unregistered design begins on the day that the design was first disclosed, providing that this date is after March 06, 2002. The unregistered design must also fulfill the requirements for design eligibility, novelty and individual character as described above for the registered Community Design. The duration of protection of the unregistered Community Design is limited to three years and cannot be extended. The right
to prohibit inherent in the unregistered
Community Design can only be enforced against a third party who
copies the design in bad faith. A right
to prohibit cannot be enforced against a third party who has produced
an independent draft of a design, and from whom it can be legitimately
assumed that he did not know of the preexisting unregistered Community
Design. III. What Does the New Provision Mean for Your Company/Client ? Owing to the introduction of the Community Design,
you/your client will henceforth have the opportunity to obtain uniform
protection throughout the whole of the European Union. Similarly to the Community Trademark, the registered Community Design can thus be an interesting proposal, particularly for non-European owners of designs who would like to offer their product in certain areas or in the whole of the EU. Furthermore, as of March 06, 2002, you/your client will automatically obtain an unregistered Community Design for your protectable design upon disclosure, which is also valid in the whole of the EU. Owing to the shortened term of protection of three years as well as to the limited rights granted by this industrial property right, it is recommended that you consider whether this limited protection of unregistered Designs is sufficient for your/your client's purposes, and thus the registration of National or Community Designs is not required. In this regard, it should also be taken into consideration that to be able to claim an unregistered Community Design, you/your client must be able to prove that you/your client were the first party to make this design available to the public. Substantiating this can prove to be very difficult. The unregistered Community Design can, however,
be of great interest, in particular for branches of industry with short-lived
products (e.g. fashion) since, in this case, a certain design protection
can be obtained without the need for any expenditure.
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