The Community Design is a system of protection for designs in the whole of the European Union.
The unitary system of protection, including in particular the registration procedure, will be overseen by the Office for Harmonization in the Internal Market (OHIM) located in Alicante, Spain, which is also responsible for the Community trademark system.
There are two types of Community Designs :
- An unregistered Community design (UCD) which is automatically protected, with no formal filing requirements, as soon as it is made available to the public within the territory of the European Community.
- A registered Community design (RCD) which is protected following its registration by the OHIM.
In both cases, the Community Design has a unitary character : it is registered (in the case of a RCD), transferred, cancelled, surrendered or declared invalid for the whole Community. Likewise, a decision on infringement of a Community design will have effect in the entire Community such that one single infringement action will permit the plaintiff to obtain an injunction enforceable in all of the Member States.
The Regulation does not prohibit cumulative protection, as is the case in France, pursuant to which the same design may be protected by national copyright law as well as by the protection afforded by the Community design Regulation.
The Regulation defines not only the conditions for protection of designs, but also the registration and cancellation procedures. It also establishes the judicial procedure in case of infringement of a Community design.
PROTECTABLE OBJECTS, SHAPES AND DRAWINGS
According to the Regulation, it is possible to protect by a Community design, the general appearance of any industrial or handicraft item produced by its contours, colors, shapes, textures as well as the material of which it is made or its decoration. Further, packaging, graphic symbols and typographic typefaces may also be protected.
RIGHT TO THE COMMUNITY DESIGN
Only the designer himself or his successor in title is entitled to the protection of a Community design, whether or not registered.
It is also possible for numerous designers to own jointly the right to a single Community design. In such a case, the exercise of the rights shall be governed by contractual agreement between the co-owners, or in the absence of such a contract, by the law of the Member State in which the rights are exercised.
The Regulation also provides, however, that an employer has the right to the Community design if the design has been developed by an employee as part of his professional duties, unless otherwise provided by contract.
Consequently, a license or assignment agreement is necessary for the use of a Community design by a company if the designer was not an employee of such a company. The holder of a registered Community design, however, is assumed to be entitled to the rights thereto.
Finally, the Regulation does not establish any requirements concerning the applicant’s nationality or domicile. Thus, Community design protection is available to creators in all countries of the world.
THE REQUIREMENTS FOR PROTECTION
The following three principal conditions are required for a valid Community design, whether or not registered :
- the design must be new ;
- the design must have an individual character ; and
- the design must not consist of features solely dictated by the object’s technical function.
Furthermore, a part of a complex product may be eligible for protection as a Community design if (i) it is visible during normal use of the product, i.e., other than during maintenance reparation of the product, and (ii) it fulfills the requirements of novelty and individual character.
Novelty of designs
The design is considered to be new if no identical design has been made available to the public before the filing or priority date in the case of a registered Community design and before the first publication in the case of an unregistered Community design.
For the purposes of making this determination, the Regulation provides that designs shall be deemed identical if their features differ in only immaterial details. Thus, the Regulation establishes a very strict definition of what constitutes a novel design.
Pursuant to the Regulation, the novelty of a design must be absolute. Therefore, any publication or disclosure of an identical design anywhere in the world by any means whatsoever will result in a determination that a subsequent Community design is not new. This holds true even if the publication or disclosure is by the designer himself or his successor in title.
In this case, however, the Regulation provides a grace period of twelve months during which any disclosure made by the designer himself or his successor in title does not destroy the novelty of a registered Community design. This twelve-month period is calculated as of the date of filing of the application or the date of priority. The same applies if the design was made available to the public as a consequence of an abuse in relation to the designer or his successor in title.
The absolute nature of the novelty requirement is slightly diluted, however, by Article 7 of the Regulation which provides that a design will not be considered to have been made available to the public if the disclosure of the design “could not reasonably have become known in the normal course of business to groups specialized in the sector concerned, operating within the Community."
Consequently, while the novelty requirement appears to be an absolute requirement, this Article provides that it should in fact be viewed through the eyes of the so-called “specialized groups” within the Community.
Individual character of designs
A design is considered to have an 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 previously made available to the public.
The date to be taken into consideration is the first date of publication in the case of an unregistered Community design and the date of filing or priority in the case of a registered Community design.
The determination of the individual character requires the courts to define the characteristics of a so-called "informed user". This definition differs depending on the field of use of the design in question.
Furthermore, according to the Regulation, the courts should, in assessing individual character, take into consideration "the degree of freedom of the designer in developing the design." As a result of this provision, the courts may also consider the originality of the design.
The technical function
The design must not be dictated solely by its technical function. The Regulation also provides that Community design protection is not accorded to features of appearance of a product which must be reproduced in their exact forms and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be assembled with another product such that each may perform its function. A design allowing multiple assembly or connection of interchangeable products within a modular system, however, is eligible for Community design protection.
Thus, if the technical function is directly linked to the product’s appearance, it may not be protected by the Community design. In such case, the only means of protection is by a patent. This is certainly the case when a specific shape leads to a technical effect, the technical effect being inseparable from the shape of the product.
DESIGN REGISTRATION PROCEDURE
The application for a registered Community design may be filed at the OHIM, located in Alicante, or at an industrial property Office of a Member State.
The application must contain :
- a request for registration,
- the name of the applicant,
- the representation of the design,
- an indication of the product in which the design is to be incorporated or used,
- the classification of the product, and
- citation of the designer unless the designer has waived his right to be cited, in which case a declaration attesting such must be provided.
Several designs may be combined in one multiple application as long as the products belong to the same class.
Within six months of the date of filing a design application in a State party to the Paris Union Convention or member of the World Trade Organization, the applicant may claim the priority of this first filing date for its Community design application.
Examination of designs
The OHIM examines formal requirements, giving the applicant the possibility to remedy certain deficiencies. The Office also examines whether the design application fulfills the requirement that the features for which protection is sought effectively define the appearance of all or part of the design.
The Office does not examine, however, whether the design is novel, has an individual character or whether the features of the design have a solely technical function. The registration procedure is thus primarily formal and does not include a full substantive examination of the conditions of protection.
Publication and registration of designs
The OHIM, after the formal examination mentioned above, registers the design and, upon registration, publish the registered Community design. The applicant may request, however, when filing the application that the publication of the registered Community design be deferred for a period of thirty months from the date of filing or the date of priority.
In this latter case, publication is deferred according to the request of the applicant. In case of a multiple design application, the applicant may request deferment of publication for only a portion of the designs covered by the application.
Duration of the design protection
A registered Community design may be protected for a maximum of 25 years. The initial term of protection is 5 years, which may be renewed by four consecutive five-year periods.
The period of protection for an unregistered Community design is 3 years.
THE INVALIDITY PROCEDURE
The validity of an unregistered Community design can only be challenged before a competent national court. A declaration of invalidity for a registered Community design, however, may be filed with the OHIM.
The action for declaration of invalidity before the OHIM
Any interested party may bring an action for a declaration of invalidity of a registered Community design before the OHIM. In order to commence such an action, a written statement setting forth the basis for the request for invalidity must be filed with the OHIM.
If the OHIM deems that such action is admissible, it may declare a registered Community design to be invalid on the following grounds :
- lack of novelty or individual character ;
- the appearance of the design has been dictated solely by its technical function ;
- the holder of the design registration is not the real designer ;
- the design is contrary to public order or accepted principles of morality ; or
- the design is in conflict with a prior right, such as for example, a prior design, trademark right or copyright. It should be noted, however, that only the holder of such prior right may bring an action for invalidity on this basis.
The invalidity of the Community design may be pronounced for all or part of the design. In case of a decision declaring the partial invalidity of a Community design, the protection will be maintained for the modified design.
The invalidity of the Community design is a written procedure in which the parties are invited to present their arguments and file observations. The parties may also request an oral hearing, although this is in the discretion of the OHIM.
After publication of the declaration of invalidity of the Community design, the effects of the invalidity shall extend to the entire European Community.
The principle is that the losing party bears all of the costs of the invalidity procedure. In cases where each party succeeds on some and fails on other counts, however, the Office may reapportion the costs at its discretion based on general principles of equity.
The Appeal of the decision
The OHIM’s decisions may be appealed before the OHIM Boards of Appeal, which decide on the merits on the appeal. The Boards of Appeal may render a final decision or remit the case for further prosecution to the examination department of the OIHM. The OHIM is bound by any decision taken by the Boards of Appeal.
A written notice of appeal must be filed, and the official appeal fee must be paid, within the two-month period following the notification of the contested decision.
The parties to the proceedings must file a written reasoned statement setting out the grounds of appeal within four months and are invited by the Boards of Appeal to file observations as often as it deems necessary.
The Court of Justice
An appeal contesting a decision of the OHIM Boards of Appeal may be brought before the European Court of Justice within the two-month period following the date of the notification of the Boards of Appeal’s decision.
The Court of Justice has jurisdiction to annul or alter the contested decision as well as to determine whether any procedural requirements were violated. The OHIM must take all the necessary measures to comply with the Court of Justice’s decision.
DESIGN INFRINGEMENT ACTION
The protection conferred by the registered or unregistered Community Design includes any design for which the overall impression produced on the informed user, considering the "degree of freedom" of the designer, is the same as that produced by the protected design.
This definition a contrario of individual character means that the holder of a Community design may defend himself in an infringement action by asserting that his Community design, which is presumed valid and therefore to have individual character, must consequently produce a different overall impression from all earlier designs, including that upon which the infringement action is based, and therefore not fall within the scope of protection. Only a decision of the OHIM invalidating the allegedly infringing design could change this situation.
Other than in the particular circumstances described above, a registered Community design grants to its holder an exclusive right allowing him to prevent any use of his design by any unauthorized third party.
The holder of an unregistered Community design may only forbid the use of a copy of the protected design. This does not include, for example, an independent work of creation by a designer who is considered not to have knowledge of the prior unregistered design.
Design Infringement proceedings
The national law in force in the Member State in which the action is brought applies.
The EU Member States have designated a certain limited number of courts that are responsible for Community design infringement actions.
These courts have an exclusive jurisdiction for the following actions :
- infringement actions or threatened infringement of Community designs ;
- actions for a declaration of invalidity of an unregistered Community design ; and
- counterclaims for a declaration of invalidity of a registered Community design.
- The place of the defendant’s domicile or registered office
The competent court is the national court in which the defendant is domiciled or has an establishment.
If the alleged infringing party is not domiciled and does not have an establishment in a Member State, the competent court will be that where the plaintiff is domiciled or has an establishment.
If neither the defendant nor the plaintiff is domiciled or has an establishment in a Member State, the proceedings shall be brought in the court of Spain, where the OHIM is located.
In all cases, the judgement is valid and may be enforced in all of the Member States of the European Union.
- The place of the infringing act
An action may also be brought in the court located in the place where the infringing acts took place. In this case, however, the judgement is only valid and may only be enforced within the jurisdiction of such court.
The grant procedure
In an infringement action, the court has to treat the registered Community design as valid.
The same applies to the unregistered Community design if its holder can prove the individual character of the design.
The alleged infringing party, however, may bring a counterclaim requesting the invalidity of the Community design. If such counterclaim is based on a prior model, copyright or trademark, however, the party must be the holder of such prior right.
In addition, in a case of a counterclaim for a declaration of invalidity of a registered Community design, the court may oblige the alleged infringing party, upon request of the plaintiff, to bring the action before the OHIM. Thus, the holder of the registered Community design, the plaintiff, may decide whether the court or the OHIM will judge the validity of the design.
After the court has held that the acts constituted an infringement of the Community design, it may issue an order to cease all infringing acts and/or to seize of the infringing goods and may also order the payment of damages or other remedies. It may also issue a preliminary injunction or other preliminary measures available under its national legislation prior to passing on the merits of the case.
The decisions of the lower court may be the subject of an appeal before an appellate court, which decisions may be the subject of a further appeal before the national Supreme Court, the national law determining the conditions of those proceedings.