Joff Wild

American companies are very active users of Europe’s patent and trademark systems. No country submits more applications to the EPO each year (60,588 in 2010 – over 25% of the total), while US entities have been granted more Community trademarks by OHIM than those from anywhere else (close to 19% of the total).

However, at the IP Service World conference, which I attended earlier this week in the Netherlands, OHIM’s Martin Schlötelburg observed that there is another right that Europe offers which US applicants do not seem to be so keen on. As well as trademarks, it is also possible to apply for Community designs from OHIM. These have been available since April 2003 and offer wide-ranging protection. According to the OHIM website:

An RCD is an exclusive right for the outward appearance of a product or part of it, resulting from the features (in particular, the lines, contours, colours, shape, texture and/or materials) of the product itself and/or its ornamentation. …

An RCD is valid in the European Union as a whole …

Holders of valid registered designs have exclusive rights to use the design concerned and to prevent any third party from using it anywhere within the European Union. They will be protected against both deliberate copying and the independent development of a similar design.

The rights cover, in particular, the making, offering, marketing, importing, exporting or use of a product in which the design is incorporated or to which it is applied, or holding stock of such a product for those purposes.

It’s a right that also has some teeth. Apple’s recent spat with Samsung in Germany, which led to a preliminary injunction banning the sale of the Galaxy Tab, concerned the alleged infringement of an Apple Community design granted for the iPad.

Surprisingly, however, the Americans have not taken to RCDs in anything like the numbers they have for European patents and trademarks. According to the latest OHIM statistics, just over 7% of all such rights granted since 2003 have gone to US entities, leaving the country in fourth place. Germany is by far the biggest user of RCDs, applicants from there have been granted close to 22% of all awards.

The protection available to designs in the US is pretty confused and the country is not a member of the Hague System, so it could be that getting this kind of protection does not immediately spring to mind in all in-house IP functions. But what that could also mean is that there are many US companies active in Europe which do not have all the coverage they could get – something which may affect their ability to implement IP-based strategies and to maximise value. After all, look what Apple achieved with its registration.