Registered Community Design - basics
The European Union's Community Design Regulation (CDR) is a law that protects industrial designs - it is unitary intellectual property right in Europe for design. It lets designers and companies register and obtain exclusive rights in all European union member states. Today we have 28 countries in European Union.
EU registered Community Design
The EU Community Design law covers many types of products, such as industrial and handicraft items, consumer goods, packaging, and graphic symbols.
The Design protects how a product looks on the outside, including its shape, design, pattern, decoration, and color. But the protection doesn't cover any technical or functional parts of the product.
To register a design and get protection, certain criteria must be met. Firstly, the design must be 1) new (= be novel) and 2) unique (have an individual character), meaning it cannot be identical or too similar to any other design that has been made available to the public before the application date (the exception is the so-called Grace Period, we cover this later here).
Both requirements should be examined using public designs before the community design application is filed. Designs can be published, used, or shared. This is to ensure that there is a level of originality and creativity. In addition, the design does not have an aesthetic value, whether it is visually appealing and pleasing to the eye is irrelevant.
What Novelty and Individual character means?
Novelty of a Design
Article 5(1)(a) CDR says that a design is "new" if no similar design was made available to the public before the date the design was first made available to the public. This is true whether the design is registered or not. Article 5(2) CDR says that two designs are the same if they only differ in small, unimportant ways.
Novelty should be judged by comparing it to designs that have already been made. A mosaic-like comparison, in which different parts of one design are compared to parts of another design, is not allowed.
Individual character
Also, both registered and unregistered community designs need to have something that makes them unique. Article 6(1)(a) CDR says this is the case if the overall impression a design gives to an informed user is a different overall impression given in comparison with any other design that was available to the public before the date when the later design was first made available.
This character is looked at by comparing the overall feel of the design to what has already been made.
In domains where the designer has less freedom to make designs, there is a higher risk that the design (or part of it) is solely dictated by a function that cannot be protected.
What is Grace period?
One important exception to the above is that prior disclosure of a design by its designer or as a result of a disclosure by the designer within 12 months before the filing date (or priority date, if applicable) of the application does not count toward determining Novelty or Individual Character.
But such revelations might stop the design from being registered in some countries, notably outside of the European Union, because many nations don't allow such a grace period or just give a shorter one.
The rule doesn't prevent disclosures made by someone other than the designer within this time, thus if feasible, applications should be submitted before the design is made public.
Complex products and design protection?
Products are made up of two or more parts that can be replaced and allow the product to be taken apart and put back together from replaceable parts again are complex products.
The designs of these goods' pieces will only be registered if the parts can still be seen when the product is being used normally (so-called normal use). Also, using a part to fix a complex product so that it looks as it did when it was first made does not break a registered design for that component part.
This is done to make sure that "non-genuine" automotive components can still be made and sold, even if they are registered.
What is excluded from design protection?
Registration won't protect parts of a design that are only determined by the technical function (no designer's freedom) of the product or parts of a product that are needed to connect or situate the product in, around, or against another product so that each may perform its function.
But a design makes it possible to put together modular devices that might be able to be registered. It is not possible to register designs that use protected symbols like redcross, national flags.
How do I register a registered design at EUIPO? Registered community design application!
When it comes to protecting your design, one important step is getting it registered with the European Union Intellectual Property Office (EUIPO). You have to file a design registration and get a filing date that gives you priority.
What are the requirements to receive a community registered design right protection?
Filling a community design application which
requires sketches or photos of the full design. Draw or photograph samples or models;
contains the full name, address, and nationality of the applicant (which could be an individual or a corporation); a description or generic name of the item to which the design would be applied (if not obvious); and full information of any application from which you want to claim a priority;
does not need to to name the designer(s) or say they waived their right to be named;
can contain a brief design description of design's features but requires Locarno designation;
You must pay:
a registration fee (250 €),
publishing fee (120 €),
and/or delaying (deferred publication) publication fee (40 €),
when filing a registered community design application (fee may vary according to the number of eu designs you apply for, see EUIPO section on payments and fees).
If you claim priority, EUIPO must receive a certified copy of the first application (priority document) within three months or within a new timeframe set by the office. Sending priority documents with applications saves money.
The EUIPO accepts PDF scans or electronic copies of certified paper priority papers.
What are Multiple applications?
It is permissible to file applications for more than one design, as long as all the items to which the designs will be applied fit into the same class of the Locarno Design Classification, which has quite broad headings.
When compared to filing a single application, filing numerous applications is cost effective. Each of the designs in the multiple application is a separate piece of property and can be licensed and allocated independently.
Representation
Residents of the EU do not have to be represented in front of the EUIPO to register Community Design. Applicants from outside the EU must hire a representative who is registered in any EU country. We at EUtrademark.eu are one of them.
What is a priority date?
If the EU design application is the first one filed for the design, it creates a "priority date" that can be used to support the same design application filed abroad (countries that are parties to Paris Convention or are a member of the World Trade Organization) within six months of the filing date (eg. for a uk registered designs) in European union. The same six months can be claimed for previous design application filing before EUIPO.
What is a deferment of publication?
Most community designs are published after they are registered, however this can be put off (to defer publication) for up to 30 months from the day the application was filed or the date the priority date was claimed.
This means that the filing and design won't be made public, but instead of the usual publishing, it will say that the publication has been put off.
This postponement requires you to pay a fee when you apply for it and another price before the design can be made public. So, this cost must be paid at least three months before the end of 30 months from the date of filing (or priority).
Examination
Applications in the community design registration process are only examined on formal requirements:
does it fall under the registered design definition?
does it not violate a public policy?
There will be no searches for similar registered designs. After the review is over, the design will be registered and made public (subject to deferment: see above).
If all the requirements are satisfied at the time of filing, this can usually happen within a couple of weeks. During the deferment period, the registration cannot be used against a third party unless that party has been told about the registration.
How long does an EU registered design last?
If granted, you receive an exclusive right. The community design registration lasts for 25 years, although it must be renewed every five years period by paying renewal fees. Design renewal fees are on page of EUIPO [link no follow].
Design renewal fee?
You can renew online if you wish to keep safe. The following is the renewal fee per design, whether it is part of a multiple registration or not: After 5 years, you'll pay €90. After 10 years, you'll pay €120.
Within a six-month grace period following the protection period, you can pay an extra fee to renew after the deadline (so-called late renewal). If the late renewal fee is paid your community design protection survives.
How long it takes to get registered?
From the time the application is filed to the time the registration is granted, the process takes about one month, if everything goes properly. In some instances it may be even faster.
Invalidity
Once the registered community design is registered, the law (CDR) says that a request for a declaration of invalidity can be made. However, if a lack of novelty or individual character is claimed based on an earlier right, the request must be made by the holder of that right.
Unregistered Community design
This type of design right comes about automatically when you make a design available to the public. We will cover this topic in a separate article.
This is a condensed version of complex topics and should not be used as a substitute for legal counsel.