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The Community Designs System

Introduction

The European Community design regulation (Council Regulation (EC) No. 6/2002) creates a unitary design protection regime for the entire European Community. Like the trade mark system, the Regulation provides for a single registration, without the need for formalities in each Member State. The resulting rights are enforceable in all the countries making up the European Community.

The possibility of registering a design for all 25 Member States should be an exciting one for designers. Coming as it does soon after the amendments to the Registered Designs Act 1949, version 3 of which affords much more extensive protection to industrial designs than hitherto, design protection can no longer accurately be characterised as the Cinderella among intellectual property rights.

In addition to registered protection, the EC regulation gives designers a shorter period of unregistered protection, thus complementing both the registered designs system (in its national and Community manifestations) and the UK’s existing unregistered design right under Part III of the Copyright, Designs and Patents Act 1988. This will meet the requirements of many who would otherwise have to file applications for registration but for whom the expense would be unjustified, including makers of fashion items – the designs for which might not even be registered before they were out of date.

The Office for Harmonisation in the Internal Market, OHIM, which already operates the Community trade mark system, now handles design registrations too. It opened its doors for applications on 1st January 2003, although the earliest filing date that an application could be given was 1st April 2003. The first application to be filed was on behalf of Casio, by RGC Jenkins & Co, the London patent attorneys.

Applying for a Community design

Anyone may apply for a Community design registration. An application must consist of representations of the design together with supporting information. The representations may be drawings or photographs.

Registration will give protection for the design for all articles in which it is incorporated or to which it is applied. The application must specify a product (and products are classified under the Locarno Convention) to which the design will be applied, but this does not limit the protection which the design will receive.

Any number of different designs may be filed in a single, so-called ‘multiple’, the application. Some products, like textiles, will benefit from this possibility. There is no requirement that multiple designs are related: there is no need for them to look similar or to be used together. The only limitation here is that the products specified in an application to register three-dimensional designs must all fall within the same class of the Locarno Convention.

If multiple products fall into different Locarno Convention classes, all is not lost. It will be possible to divide out additional classes into separate applications.

Once registered, designs will normally be published in the bulletin shortly afterwards. The applicant may choose to request a deferral of publication for up to 30 months from the priority or filing date. The applicant may wish to do this where it is launching a new range of designs and does not want them to be open to public inspection before the actual launch date. This will also be useful where a decision has not yet been taken about which of several designs should be placed on the market.

Priority

Priority can be claimed from design or utility model applications filed in any country which is a party to the Paris Convention or a member of the World Trade Organisation. Exhibition priority can be claimed from disclosure at one of the international exhibitions on the list maintained by the World Intellectual Property Organisation (WIPO). However, there are very few international exhibitions on this list.

Whichever way priority arises, it lasts for six months.

Languages

The Office already uses five working languages (English, French, German, Italian and Spanish) and these will be used for the designs system as well as for trade marks. Applications may be filed in any of the official languages of the Community (of which there are now 21). The application must also nominate a second language, one of the five official languages.

English will be the most frequently used language in the Office, but given the nature of the subject matter of the registration system it will make relatively little difference – unlike the trade mark system, which of course is much more dependent on words.

The language of the application will determine the language of subsequent proceedings concerning the validity of the registration.

Unitary character

A registration of a Community design is valid for the whole of the European Community. Enlargement will automatically mean extension of protection (with savings to protect the owners of existing rights in accession countries), as it will for Community trade marks.

Because of its unitary character, a Community design registration cannot be declared invalid for only part of the European Community. Anything that happens to it, happens to it throughout the European Community: if it is invalid, it is invalid in every Member State. Likewise, the owner of the Community design can generally only assign it to someone else for the whole European Community.

What is protectable?

The types of design that can be registered are identical to those that can be registered under the UK’s Registered Designs Act 1949, as amended in 2001. The latest amendments were mandated by the EC Directive on legal protection of industrial designs (Directive 98/71/EC), and that directive was adopted to ensure that the Member States brought their laws into line with the upcoming Community system. The UK was the first Member State to adapt its national laws and at the time of writing remains the only country to have implemented the directive.

A design, for the purposes of the Regulation, is some aspect of the appearance of a product or part of a product. It may comprise lines, contours, shapes, colours, textures or materials (or more than one of these) of the product or of its ornamentation.

Product

A product includes any industrial or handcraft item, including packaging, get-up, graphic symbols and typefaces. Almost everything that one might refer to as a design will be registrable (subject to meeting the other requirements of the legislation), whether it belongs to the field of graphic design, product design or industrial design. The exceptions are such exotica as smells, sounds or words, which clearly cannot give shape to products or contribute to their appearance (although a word in a particular graphic form might do so).

The boundaries between trade mark law and design law are becoming more blurred than formerly, and indeed it is noteworthy that among the applications to register designs under the UK’s reformed law is Arsenal FC’s badge incorporating the cannon device. The attraction of registering as a design matter that is already protected as a trade mark lies in the fact that protection may be gained without the need to show confusion, so the monopoly right conferred by registration of the design will be rather more valuable during the term of registered design protection than the trade mark right. And a shape that may in due course acquire sufficient distinctiveness to be registrable as a trade mark may be protected during the initial period by registration under the Regulation, without the need to show the distinctiveness which is the defining feature of a trade mark.

The legislation will not give protection to immoral designs, or to designs for the shape of mechanical interfaces, component parts that are hidden from view in normal use, or which are dictated by the function of the product to which they are applied so that the product could not be made in any other way and the design is mandatory, the designer having no freedom when designing the product.

The fact that protection is not specific to products specified in the application, as used to be the case under the UK’s Registered Designs Act 1949 before it was amended in 2001 to comply with the Directive, means that a registered design is a useful foundation for a merchandising programme. Designs for cartoon characters and toy figures may be registered, and the possibility of using a single application for multiple designs means that one application can be used for a whole cast of such characters.

Novelty

A design is new if no identical design or no design whose features differ only in immaterial details have been made available to the public before the relevant date. A design is considered to have been made available to the public before the relevant date it if has been published, whether following registration or otherwise, exhibited, used in trade or otherwise disclosed before that date. However, certain disclosures are disregarded. These are mentioned in the section on invalidity, below.

Individual character

Just as, in the patent system, an invention must not only be new but also involve an inventive step, so too it is not enough for a design just to be new. It must also have individual character, which is defined as meaning that the overall impression it produces on the informed user differs from the overall impression produced on the informed use by any design which has been made available to the public before the relevant date. In other words, a design may be new in the sense that it is different from any design which has gone before, but it might not be sufficiently different to justify protection.

The extent to which a design has got to differ from what has gone before in order to satisfy the individual character test will vary from case to case. The key consideration is the amount of design freedom enjoyed by the designer. If constraints, perhaps relating to the job that the product had to do, limited the ability of the designer to choose particular design features, smaller differences between those features and ones that have gone before will suffice to demonstrate that the later design has individual character. To the extent that all designers in the field are compelled to produce similar-looking work, smaller differences will serve to differentiate them.

The fact that the legislation protects designs for component parts of a complex product creates difficulties when formulating the ‘individual character’ test. A replacement part is generally not apt to be regarded as having this sort of quality, but there may exceptionally be circumstances in which a design for a part could meet the requirement. The legislation specifies that a component part may have individual character if, once it has been incorporated into the complex product, it remains visible during normal use. Even then, it will only be regarded as having individual character to the extent that those visible features of the component part have such character, as well of course as being new. A mechanical part hidden under the bonnet of a car will not remain visible during normal use of the car itself, and it will therefore not qualify for protection. A car headlamp, on the other hand, is partly visible during normal use of the car: whether the design for it will be registrable will depend on whether the features that are not concealed within the structure of the car are new and have the requisite individual quality.

Eye appeal

Community designs do not distinguish between aesthetic and functional designs. Even where technical function is the only design consideration (provided it leaves some scope for design freedom), registration will be possible, unlike the pre-2001 position in The Registered Designs Act 1949 and the approach of many other national laws. Community designs, as well as national registered designs under the harmonised regime, will be vastly more useful for engineering businesses and other manufacturers of functional items. If a patent is not available for a functional design – whether because there is no inventive step, or there has been prior disclosure, or it would be prohibitively expensive – a design registration will provide a modicum of protection.

Nor does the Regulation distinguish between internal and external features of a product. So long as there is design freedom – so long as they could be made in a different shape – internal features which are not even visible in the product will enjoy protection. They will be protected predominantly as part of the complex product: internal components on their own, and spare parts, receive little protection under the legislation.

Filing applications

Applications for Community designs may be filed either at OHIM or through national receiving offices (of which the UK Patent Office is one). It is possible to file applications by fax, though care must be taken to avoid any degradation of the representations in the process. Applicants from outside the European Community must appoint representatives. Practitioners who are appointed as official design or trade mark representatives before OHIM may act in this capacity, and so too may firms (referred to for the purposes of the system as ‘associations of representatives’).

Ownership

In a registered system, ownership is usually fairly clearly defined: the registered design belongs to the person shown as the owner on the register. But there is a question of who is entitled to have their name entered on the register as owner.

Where a design is made by an employee, the right will normally belong to the employer. However, it is open to the parties to agree otherwise, and national laws may also make different provision (which could lead to the unsatisfactory situation where the rights belong to different owners in different countries). Whether the designer is an employee or not, and regardless of who owns the design rights, he or she is entitled to be named on the register as the designer. This might be an important aspect of the designer’s reputation.

Examination and registration

Examination of applications is intended to be brief, and will not go into such substantive issues as novelty and individual character. The first matter to be considered is whether the application can be given a filing date: does it satisfy the formal requirements for an application, and have the fees been paid? For example, the form of the representations must be in accordance with the legal requirements and in the case of a multiple application all the designs must be in the same class.

Second, there is a minimal substantive examination to determine whether the application is a design (and not something like a word, smell or sound) and to check that it is not immoral. If any defects are found under these first two heads, the applicant gets a chance to put it right or at least to comment before the application is refused. If it is refused, the applicant may appeal to the Board of Appeal within the Office, and ultimately has the right to take it to the Court of First Instance and the Court of Justice of the European Community.

Once the application has been accepted by the Office, it will be published in the Community Designs Bulletin. Where the applicant has requested deferred publication, the design will be kept secret for up to 30 months from the date of filing or the priority date. There is no opposition period before the registration becomes final, or indeed any provision for opponents to take proceedings before the design is registered and its validity can be challenged.

Protection for the registered design lasts for five years from the filing date, renewable four times at five year intervals.

Invalidity

A Community design may be declared invalid on a number of grounds concerned with its compliance with the substantive requirements for registration. It might not be a design within the meaning of the legislation: it might lack novelty or individual character; it might not belong to the person who has registered it; it might conflict with an earlier national right such as copyright, designs, trade marks or other protected marks. Some of these so-called relative grounds may only be raised by the proprietor of the earlier right.

A design will not necessarily suffer this fate merely because of a prior disclosure. The regulation provides for a period of grace, lasting one year, during which disclosures by the designer, the designer’s successors in title, and third parties, will not invalidate the subsequent registration. This is much more generous than the limited exhibition priority given under the old UK law, and reflects French practice.

An application for a declaration that a Community design is invalid may be made by anyone, except in the case of a relative ground where the application can only be made by the person with the prior rights. The application is heard by the Invalidity Division and the proprietor of the design is a party to the proceedings. The decision of that Division may be appealed to a board of appeal and thence to the Court of First Instance of the European Communities and finally the full Court of Justice.

Community design courts may also hear invalidity claims but they have no jurisdiction to do so other than in infringement actions, on counterclaims and when raised by the defendant as a defence.

If a design is declared invalid (whether by the Office or a Community design court), the declaration is effective for the entire European Community. Any other result would be incompatible with the registration’s unitary status, of course. An invalid registration is deemed never to have existed.

Infringement

A registered Community design confers on the owner a monopoly right to prevent any unauthorised person from making, supplying, importing, exporting, using or otherwise dealing in products that incorporate the design. It is no defence to an infringement action to show that the defendant was ignorant of the registered design, or that no copying occurred.

The Community design courts – national courts designated by the Member States to hear Community design cases, both at first and second instance – hear infringement claims. There will usually be a choice of jurisdiction for the claimant, but the effect of the judgment of the court will be the same wherever they choose to take action: an injunction for the whole European Community will be available, and the court will be able to award damages.

Actions may be brought in the Community design court of the country where the infringement took place, but then the court will usually only have jurisdiction for its own territory.

Unless there are special circumstances, the court must grant an order to stop the infringement. It is also able to order seizure of infringing products and materials used to make the infringing products and to grant such other remedies (including damages or compensation) as would be awarded in the country where the infringement took place.

Licensing

The unitary character of a Community design does not prevent a licence being granted for only part of the EC. Nor does it prevent the owner licensing different rights to different licensees, allowing one licensee to make only some of the products within the scope of the protection.

Licences may also be exclusive or non-exclusive, and exclusive licensees will have rights to bring infringement actions and recover damages in their own name.

Community designs may also be assigned, but the unitary nature of the right means that it is not possible to assign parts of the rights to different people. The law governing the assignment will be that of the country in which the proprietor is domiciled.

Assignments are recorded at the Office and registration raises a presumption that the person shown on the register as the proprietor is entitled to the design. This presumption can only be challenged in legal proceedings.

Unregistered Community design right

In addition to registered protection, Community designs also benefit from a shorter period of unregistered protection lasting three years. The criteria for protection – novelty, individual character and so on – are the same as for registered protection, but the right arises automatically. The same range of acts - making, supplying, importing, exporting, using or otherwise dealing in products that incorporate the design – constitute infringement of an unregistered Community design right, but for infringement to take place there must be copying. Monopoly protection is acceptable where the right is recorded on a public register, but where it arises automatically the defendant must have some sort of innocence defence.

The advantages of the unregistered right will appeal to designers of products with a short life, such as fashion items of all types, novelties and toys, who might consider the costs of registering hard to justify. In addition, the right will give protection to a design in the period before an application for registration is filed. Designers will therefore be able to take full advantage of the grace period. However, it is not a perfect substitute for registered protection. Protection against copying only is much narrower than the monopoly right conferred by registration, and registration also overcomes problems of proving subsistence and ownership.

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