Effective use of Community design protection
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Design protection has taken on an increasingly important role in recent years, since appearance and exterior shape now play a fundamental role in the success of a product. Designs are now relevant to a wide range of products involving industry, fashion and crafts, and must be protected accordingly in order to guarantee the creator’s moral and financial benefits.
IP law provides a number of legal and administrative instruments aimed at protecting and rewarding the achievements of human creativity and ingenuity. This chapter gives an overview of design rights protection in the European Union, which in the past tried to simplify design registration procedures on the one hand and, on the other, to strengthen design protection so that both innovation and economic development could be properly incentivised.
Design protection is governed (apart from specific national design provisions) by the EU Community Design Regulation (6/2002), which applies directly in all 28 member states. The regulation was the result of over 10 years of discussion, which at first focused on the protection of spare parts. The member states ultimately reached a valuable compromise, providing two-tier Community-wide protection for all kinds of industrial design through both unregistered and registered designs.
An unregistered Community design, as the name suggests, does not require prior registration. Its protection simply starts from the date of disclosure of the new product – that is, the date on which the design was first made available to the public within the European Union (the exact date must be proved, not only in case of infringement, but also if the owner subsequently decides to register the design within the so-called grace period). Protection lasts for three years.
Conversely, registered Community design protection is based on formal registration and starts from the date on which the design application is filed with the EU Intellectual Property Office (EUIPO). A registered Community design provides monopoly protection for up to 25 years, renewable in five-year periods.
Requirements for Community design protection
As defined by Article 3 of the Community Design Regulation, a ‘design’ is “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation”. As per Article 3(b) of the regulation, a ‘product’ means any industrial or handicraft item, including parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs. As is apparent from this definition, design protection applies to a wide range of products and includes both two-dimensional and three-dimensional items.
However, as designs protect the appearance of products, mere technical functions and non-visible parts of a complex product are not protected under the Community Design Regulation. As a result, internal components and parts that are not visible in the course of the product’s normal use are excluded from design protection.
Apart from the aforementioned prerequisites, in order to benefit from EU design protection, the design must meet two requirements: novelty and individual character.
Community designs must be new. Pursuant to Article 5(1) of the Community Design Regulation, a registered Community design is considered new if no identical design has previously been disclosed. Pursuant to Article 5(2) of the regulation, differences consisting of immaterial details do not rule out a finding that two designs are identical.
Therefore, according to the regulation, a design is considered new if no identical design has been made available to the public:
- before its filing or priority date, in the case of a registered Community design; or
before the date on which the design was first made available to the public, in the case of an unregistered Community design.
According to EUIPO case law, “there is identity between the Community design and an earlier design where the latter discloses each and every element constituting the former. The framework of the comparison is limited to the features making up the Community design. It is therefore irrelevant whether the earlier design discloses additional features. A Community design cannot be new if it is included in a more complex earlier design” (Decision R0978/2010-3, October 25 2011).
Community designs must also have individual character. According to Article 6 of the regulation, a design has individual character if the overall impression that it produces on the informed user differs from the overall impression produced on such a user by any other design which has been made available to the public:
- before the filing or priority date, in the case of a registered Community design; or
- before the date on which the design was first made available to the public, in the case of an unregistered Community design.
In accordance with Recital 14 of the regulation, the assessment of whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him or her by any existing design, considering both:
- the nature of the product to which the design is applied or into which it is incorporated; and
- the industrial sector to which the product belongs and the degree of freedom of the designer in developing the design.
The term ‘informed user’ is not defined in the Community Design Regulation or the EU Design Protection Directive, but the case law does offer a definition. In Case C-281/10 P (October 20 2011) the European Court of Justice stated that the concept “must be understood as lying somewhere between that of the average consumer, applicable in trademark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trademarks in conflict, and the sectoral expert, who is an expert with detailed technical expertise. Thus, the concept of the informed user may be understood as referring, not to a user of average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question”. In other words, the informed user is neither a designer nor a technical expert. As further specified in the same judgment, “as regards the informed user’s level of attention, it should be noted that, although the informed user is not the well-informed and reasonably observant and circumspect average consumer who normally perceives a design as a whole and does not proceed to analyse its various details (see, by analogy, Case C 342/97 Lloyd Schuhfabrik Meyer  ECR I 3819, Paragraphs 25 and 26), he is also not an expert or specialist capable of observing in detail the minimal differences that may exist between the designs in conflict”.
Finally, disclosure of a design before its filing or priority date can destroy its novelty or individual character, even if such disclosure took place in a country before its accession to the European Union. The sole requirement is that such disclosure could reasonably have become known in the normal course of business in the relevant specialist circles operating in the European Union (Article 7(1) of the regulation).
Advantages and disadvantages of unregistered and registered designs
Both types of design protection have advantages and disadvantages.
A clear advantage of the unregistered Community design is pan-EU protection of the design for three years, regardless of any formal registration or payment of fees. In particular, in fast-moving industries such as home furniture and toys, registration of a new design that may be of interest for only a few years is not convenient; unregistered design protection is therefore a useful tool, offering adequate protection in the event of design counterfeiting.
Nevertheless, there are also disadvantages. The limits and weaknesses of an unregistered Community design derive from the difficulties in asserting unregistered rights against counterfeiters. The unregistered Community design owner must prove:
- the date and place of first disclosure of the design (the difficulty of proving the date and scope of disclosure should not be underestimated);
- the coincidence of the design with the disclosed design (with its main characteristic features);
- awareness among interested circles of the disclosure within the European Union; and
- the actual imitation of the protected design by the alleged counterfeiter.
If the commercial success of a product justifies and requires the protection of the unregistered design for longer than three years, the unregistered design can be converted into a registered design within a 12-month grace period provided by the Community Design Regulation. During the grace period, the design owner may test the market on the basis of the unregistered Community design before proceeding with registration. The advantage of the grace period is that the design owner will not be considered to have destroyed the novelty of its design during this time. However, if the design application is filed more than 12 months after the first disclosure, the registration could subsequently be declared invalid.
This is a strategy that can be applied to all new products and the owner can decide to proceed with registration only in relation to the most successful products, in order to obtain a good balance between protection, duration and costs.
The main disadvantage of the registered design is the attendant application and maintenance costs (ie, every five years). Moreover, due to the unitary character of the registered design, design rights stand or fall with one registration across the entire European Union. As a result, in the event of an invalidation, design protection immediately ceases in all 28 EU member states.
Apart from these disadvantages, there are clear advantages in applying for registered Community design protection. First, registration confers an exclusive right to use the design and prevent any third party from using it without consent across all 28 EU member states for up to 25 years (if renewed every five years). Moreover, it is cheaper to register and maintain a Community design than a number of national registrations; assigning and licensing registered Community design rights are also simpler. In addition, the Community design application may combine multiple variations of the same product into a single application.
Last but not least, unlike many national systems, there is no substantive examination of registered Community design applications and consequently it is easy to obtain registration. Even if, due to the lack of substantive examination, a registered design does not meet registration requirements and might subsequently be invalidated in court proceedings, until such decision, the design is fully valid and constitutes an effective IP title.
Enforcement of Community design rights
Both unregistered and registered Community designs can provide an effective tool to combat design counterfeiting across the European Union. Infringement actions are dealt with not before the EUIPO, but rather before Community design courts – that is, national courts that have been designated as such by the individual member states.
As a result, in the event of design infringement, the rights holder must bring a court action against the alleged infringer before one of these national courts. Consequently, the specific procedural law used and costs of such proceedings vary across member states.
Moreover, registered Community design owners may monitor potential design infringement using EU border surveillance measures according to EU Regulation 608/2013. Such surveillance is an efficient tool for fighting cross-border counterfeiting, given that Customs typically detects counterfeit products before their entry into the European Union. In the case of border seizures, the release of counterfeit goods will be suspended and, depending on the legislation, the goods will be destroyed shortly after detection, with no need to start ordinary legal proceedings before the competent authorities. Therefore, EU border seizures allow design rights holders to prevent the marketing of counterfeit products in the European Union and – unlike usual infringement proceedings – do not require long and expensive searches and test purchases in order to obtain detailed information and proof of the counterfeiting and the counterfeiters’ identity.
EU trademark protection versus Community design protection
While designs are often overshadowed by trademarks, in certain respects they do offer real advantages over trademarks:
- Unlike trademarks, there is no limit on the range of products protected – although a particular product must be specified in the design application, such specification does not limit design protection. Conversely, in order for an EU trademark to cover a wide range of products, the mark owner must file a trademark application in all classes of interest and must pay the official fees for each class.
- A registered Community design can cover an unlimited number of designs, provided that all designs refer to the same type of product. Conversely, an EU trademark is restricted to one mark.
- Details of EU trademark applications become publicly available within a few days of their submission. In the case of registered Community designs, a deferment of publication can be requested for up to 30 months from the application date (or the priority date if claimed). This can be useful in certain industries, so that competitors do not become aware of designs before they are launched.
- While an EU trademark registration can become vulnerable to attacks if use is discontinued for five years, the validity of a registered Community design does not depend on use.
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