Is EU Community design the top dog for design protection?

It can be hard to choose the most appropriate and cost-effective means of protecting designs within the European Union. This article looks at the issues that parties may wish to consider if they import, distribute or sell products within the European Union by reference to their innovative, visual appeal.

What forms of design protection are available?
It is possible to register designs on a country-by-country basis, including in the United Kingdom, but the costs of cumulative national filings and official fees can be prohibitive.Designs law has been significantly harmonised within the European Union over the past decade, with the express goal of encouraging design innovation and the development of new products, in particular by the creation of two new forms of design protection providing pan-European cover. The EU Community Designs Regulation introduced both a short-term unregistered Community design (UCD) and a longer-term registered Community design (RCD), which can be obtained by a single filing. In parallel, UK law also provides unregistered protection for artistic works (eg, architectural plans) through copyright and a much more limited design right for non-artistic works (famously, in Lucasfilm v Ainsworth the fictional Imperial Stormtrooper helmet created for the Star Wars films), which can also protect a design from being copied and exploited within the United Kingdom.

What are the advantages of registration?
The scope of protection offered by the RCD is superior to the UCD in two critical respects: the term of protection and the degree of exclusivity. RCDs (and UK registered designs) provide a term of protection, renewable in five-year blocks, up to a total of 25 years from the date of filing. The UCD provides protection for a period of three years from the date on which the design was made available within the European Union. Unregistered rights (the UDC and the UK design right) arise automatically, but are far more difficult to enforce because copying must be proven. By contrast, the RCD confers exclusivity whether or not the design is copied. In general, where designs change slowly or a product’s desirable appearance permits the vendor to charge a premium price, obtaining RCDs is likely to secure a better return on investment. Even in those sectors which produce large numbers of designs for products with a short market life – such as the fashion industry, where the UCD was expected to offer sufficient protection – the speed at which discount retailers source cheap copies, and therefore erode profits within weeks of a new product coming to markets, indicates that the UCD is an inadequate deterrent.

What features are protected?
A Community design protects the visual appearance of the whole or part of a product, and in particular the lines, contours, colours, shapes, textures and materials of the product itself and its ornamentation. The product can be an industrial or handcraft item as well as packaging, get-up and graphic symbols. The latter can lead to surprising results, with corporate logos and their location and prominence on a product all being taken into account in determining whether an accused product may infringe a registered design. Features which are dictated solely by their technical function or by the requirement to interconnect with other articles (eg, the terminals of a plug intended to fit into a socket), as well as component parts which are not normally visible during normal use of the product (eg, a car engine), are excluded from protection. An RCD provides an enforceable right to prevent others from using or exploiting the design (eg, by making, selling or using products which incorporate the design). 

When does a design qualify for protection?
In order to qualify for design registration, a design must be new and have individual character. A design will be new if no identical design has previously been made available to the public, where 'identical' means that the designs differ only in unimportant details. A design has individual character when the overall impression produced on an 'informed user' viewing the design clearly differs from that produced on the user by the existing body of designs, taking into account the nature of the article to which the design is applied and the industrial sector to which it belongs. In order to assess whether a design may be new, searches of the designs registers can be carried out and, depending on whether the product is an everyday item or is used only in a specialised sector, the expertise of an 'informed user' may be required.

Taking advantage of priority and the grace period
Up to six months' priority can be claimed from earlier filings in countries outside the European Union which are members of the Paris Convention. So, for example, if a design filing is first made in the United States for products which are bound to find their way into the European Union shortly after, this is an issue to consider. The Community Designs Regulation also allows for a product to be tested on the market in the European Union for up to 12 months before deciding whether to file for registration (assuming no prior disclosure). This can provide a practical means of assessing product demand and the potential long-term benefits of registration in advance of having to make a decision as to whether to seek registration. 

Cost-effectiveness of registration
An application for a RCD is made to a single office and will provide uniform cover in all member states. For cover in the United Kingdom alone, an application for a registered design may be made to the UK IP Office (UK IPO) and will be assessed under the same criteria as are used to assess RCD applications. There is no substantive assessment of applications and, provided that the necessary documents are in order, an RCD application usually proceeds to registration with little or no difficulty by a single application to a single office (the UK IPO or the Office for Harmonisation in the Internal Market (OHIM)), which can be filed electronically. An RCD is the most cost-effective way of securing protection for a design in more than one EU member state. Official fees for filing and publication must be paid upfront and various documents are necessary, including visual representations of the designs, in order to file a design with the appropriate office. In certain cases savings can be made by filing several designs combined into one application, provided that they fall within the same class of goods under the Locarno classification system.

How do I enforce my design rights?
This varies from country to country, but in the United Kingdom, design rights are enforced through courts specialising in IP matters. In England, matters involving the infringement and validity of RCDs are dealt with by the Patents Court and the IP Enterprise Court in London, which are specially designated Community design courts. One matter to bear in mind is that persons and corporations not resident in or having an industrial or commercial presence in the European Union must act through an authorised, professional representative for OHIM filings, oppositions and appeals to the European Court of Justice.