Community Design


Updated, March 2016

The Community Design Regulation (Council Regulation (EC) No. 6/2002 of December 12, 2001) creates two forms of Community Design—unregistered and registered. The Unregistered Community Design (UCD) system, which came into effect on March 6, 2002, gives automatic protection without the need for registration. UCD protection lasts for three years and is very useful as short-term protection for designs that have not been registered. The Registered Community Design (RCD) system came into effect on April 1, 2003, with a sunrise period that began on January 1, 2003. An RCD can last for up to 25 years.

 

1. What is a Community Design?

“Design” means the appearance of the whole or a part of a product resulting from the features—in particular, the lines, contours, colors, shape, texture and/or materials—of the product itself and/or of its ornamentation that is visible in normal use. In other words, the design is simply the appearance of the whole product or a part of it—there is no requirement for “eye appeal.”

“Product” is also defined widely, as any industrial or handicraft item, including, inter alia, parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces (but excluding computer programs).

To qualify for protection as a Community Design, a design must have novelty and individual character. In the case of an RCD, a design is considered to be “novel” if no identical design has been made available to the public before the application date (or, if priority is claimed, the date of priority). “Made available to the public” in this context includes publication, exhibition and use in trade. Disclosures made by the designer during the 12-month period preceding the application date (or the priority date), however, are not considered to be prior disclosures. In the case of a UCD, a design is novel if no identical design has been made available to the public before the date on which the design for which protection is claimed has first been made available to the public.

A design has “individual character” if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design that has been made available to the public before the application date (for an RCD) or the date on which it was first made available to the public (for a UCD). An “informed user” is expected to have a certain level of knowledge or design awareness, depending on the character of the design to be assessed, but is not a design expert. In assessing individual character, the degree of freedom of the designer in developing the design also is taken into consideration.

Designs dictated solely by their technical function and designs contrary to public policy or morality may not be protected as Community Designs.

2. What countries are covered by a Community Design registration?

A Community Design, whether registered or unregistered, is a unitary right that covers all the member states of the European Union (EU). Currently, the EU has 28 member states: Austria, Belgium, Bulgaria, Cyprus, Croatia, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom.

3. What are the advantages of a Registered Community Design?

An RCD has many attractive features. These include the following:

• It can be obtained at a substantially lower cost than national design registrations in individual member states of the EU.
• One RCD application may cover a number of different designs (provided they all belong to the same class of product), which will result in further cost savings. This feature can be of great value in, for example, character merchandising.
• Because an RCD protects a specific appearance, it gives protection across all product lines. In other words, the design registration is not restricted to specific goods, but protects against use of the design on any product.
• Given the scope of RCDs and ease of registration, they may also be useful in helping to protect hard-to-register trademarks that consist of features such as product shapes, get-up, container shapes and packaging, color combinations, and typefaces.
• There is minimal official examination of an application, and no official searches are carried out. Furthermore, there is no opposition procedure.
• There is no requirement that the design be used in trade, and consequently no risk that an RCD will be vulnerable to cancellation on the ground of non-use.
• It is possible to keep a design confidential for up to 30 months by deferring publication.

An RCD also has a number of advantages over a UCD. In particular, to prove infringement of a UCD, it is necessary to prove ownership of the design and substantiate that copying has occurred. Neither of these proofs is necessary if the design is registered as an RCD.

4. What are the procedures and requirements for applying for a Registered Community Design?

Applications can be filed, at the choice of the applicant, at the European Union Intellectual Property Office (EUIPO) (formerly Office for Harmonization in the Internal Market); at the intellectual property office of a member state of the EU; or at the Benelux Office for Industrial Property (BOIP), the official body for the registration of trademarks and designs in the Benelux territory (Belgium, the Netherlands and Luxembourg). It is also possible to designate the European Community in an international application for an industrial design filed with the World Intellectual Property Organization (WIPO).

An application must contain a representation of the design, a description explaining the representation and an indication of the products in or on which the design is intended to be incorporated, although this indication has no limiting effect. The application must also include the classification of the product in accordance with the Locarno Classification, an international system for the classification of goods for purposes of registration of industrial designs, which is continuously monitored by a committee of experts of the Locarno Union under the guidance of WIPO.

Applications are examined for compliance with formal requirements, but there is no substantive examination. Any third-party objections to the validity of the design must be raised in invalidity proceedings after registration.

5. What is the duration of a Community Design?

An RCD is registered for an initial period of five years from the application date and then may be renewed for further periods of five years, up to a maximum of 25 years.

UCD protection lasts for a period of three years from the date on which the design was first made available to the public in the EU.

6. What constitutes infringement of a Community Design?

An RCD is a monopoly right that grants the proprietor the exclusive right to the use of the design in all member states of the EU and protects against both deliberate copying and the independent development of a similar design. The test for infringement is whether the design objected to produces the same “overall impression” on the informed user. It is not necessary to prove copying or confusion with, or reputation in, the original design.

Conversely, infringement of a UCD is deemed to have taken place if it is substantiated that the infringing design was copied, which may be disproved by the alleged infringer.

7. What are the grounds for invalidating a Community Design?

An RCD may be declared invalid if the design does not fulfill the requirements of novelty, individual character or disclosure; if the design is dictated by technical function; if the design is contrary to public policy or accepted principles of morality; or if the proprietor is not entitled to the design.

There is a procedure for invalidation available before the EUIPO, which is generally faster and less expensive than court proceedings. Article 25 of the Community Design Regulation lists several grounds on which a Community Design may be declared invalid.

8. Who owns a Community Design?

The rights to a Community Design vest in the designer or, when a design is developed by an employee in the execution of his or her duties, in the employer (unless otherwise provided by contract). Community Design registration is available to proprietors in most countries of the world, and the applicant is not required to have a domicile or a place of business in the EU.

9. Must a design owner be represented by an attorney when applying for a Registered Community Design?

Although a designer outside the EU does not need to be represented in order to send an application for registration of a Community Design to the EUIPO, representation by an attorney who is entered on the lists of qualified attorneys maintained by the EUIPO will be required at the examination stage. Therefore, it is advisable to designate an attorney when filing an application, to expedite the process. It is also advisable to consult an attorney or a trademark agent to assist in filing a design application, as the contents of the filing will determine the scope of legal protection to be obtained and, thus, whether and how the holder may invoke its design rights for enforcement purposes against third parties.

Other Resources


European Union Intellectual Property website

Locarno Classification