How to protect an EU Design – Guidelines in a Nutshell
The Registration of a Community Design offers the option of obtaining a design right that is in force throughout the whole European Union (EU). Outlined below please find some important basics you should know.
A Community Design is a unitary right that covers all 28 Member States of the EU: Austria, Benelux (Belgium, the Netherlands and Luxembourg), Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom.
A design is defined as "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".
Example 1: The design of a wheel rim for example can be protected as a whole product.
Example 2: A mobile phone keypad can be protected as a part.
For establishing design protection, it is necessary that the design is new and has individual character. To establish novelty, the design must vary from any other prior designs. The character of a design is individual, if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public. An informed user is a person, who is particularly observant and who has some awareness of the previous state of art. Where a design forms part of a more complex product, the novelty and individual character of the design are judged on the part of the design which is visible during normal use.
Otherwise, there is a high variety of protectable products including furniture, clothing, graphic symbols, icons etc. as can be taken from the following examples:
3. Unregistered and Registered Designs
It is possible to receive protection via an unregistered or a registered EU Design.
a) Unregistered Community Design
The unregistered Community Design has been available since 6 March 2002. It grants the right to inhibit commercial use of intentional copies of the protected design, which are made in bad faith. An unregistered Community Design protects the design for three (3) years from the date on which the design was first made available to the public. There are no possibilities to extend the protection.
b) Registered Designs
Registered Community Designs came into effect on 1 April 2003. They are protected against similar designs even when the infringing design has been developed in good faith. It is primarily valid for five (5) years from the date of filing and can be renewed in blocks of five (5) years up to 25 years.
c) Advantages and Disadvantages
Both of them have advantages and disadvantages. A registered design is stronger and more transparent because it is easy to prove the ownership. An unregistered Design is free of charges, but, it is difficult to prove that a design has been intentionally copied and that the infringer is in bad faith.
An unregistered Community Design gives automatic protection without the need for registration. To obtain a registered Community design, it is necessary to file a formal application. Therefore, especially drawings or photographs showing all features of the design have to be shown (see at the examples of the protection of a whole product or a part of it). The filed application (up to seven (7) views) will be reviewed by the Office for Harmonization in the Internal Market (OHIM). This review proceeding only takes about 3-5 working days, because no substantial examination takes place. OHIM only “examines” if
- the application has formal defects,
- the design conforms with public policy and accepted principles of morality,
- the applied design is qualified to get design protection.
If these conditions are fulfilled, the design will be registered and published in the Electronic Design Gazette.
NOTE: OHIM does not examine the novelty or the individual character of the design. This aspect must be researched by a professional, e.g. a lawyer, when it comes to litigation.
The official fees to register a Community Design Application are:
- A registration fee of 230 Euros
- A publication fee of 120 Euros
In case of a multiple registrations (second to tenth design)
- A registration fee of 115 Euros
- A publication fee of 60 Euros
From the eleventh design onwards
- A registration fee of 50 Euros
- A publication fee of 30 Euros
The protection is than valid for five (5) years. After that it can be renewed for a total of five (5) terms up to 25 years.
5.Overlap of Design Law and other IP rights
Design law often overlaps with other IP rights, especially with copyright or trademark law. For example, a word/device trademark logo can also be registered as a design if it is new and can claim individual character. Similarly, a three-dimensional appearance of a product, which can be protected as a design, may also be registered as a 3D-trademark. Designs may also be protected under copyright law. If on to what extent a product or logo can be protected via trademark, design and/or copyright law depends on the applicable laws of the Member States of the European Union. Contrary to design and trademark law, no European-wide copyright law exists and therequirements for copyright protection have not been harmonized.
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