THE COMMUNITY INDUSTRIAL DESIGNS REGIME IN EUROPE:
The Community Design Regulation was implemented on 12th December 2001 by the ‘Office For Harmonisation In The Internal Market’ (OHIM) with the aim of harmonizing Intellectual Property Rights pertaining to Industrial Designs amongst the European Countries which are signatory to the European Union.
OHIM administers and protects industrial designs rights of applicants through 2 ways which are:
1. Registered Community Designs – RCD and
2. Unregistered Community Designs – UCD
Registered Community Designs – RCD protection was adopted on April 1st 2003. This type of protection gives better rights to the applicants.
Unregistered Community Designs – UCD protection was adopted on March 6th 2002. This type of protection is relatively for a shorter duration.
Initially Community Design Regime comprised of only 15 nations and then expanded to include several other European countries. Kindly refer the list for current members.
Earlier applicants wishing to register their designs in Europe had to do so through individual filings at the National Offices of the countries of choice. With the Community Designs Regime, it is now possible to obtain registration of designs through a single route by way of a single application which covers many European countries as well as subsequent member countries as and when they join the Community Design Regime.
Furthermore, the EU's Accession in 2007 to the Geneva Act of the Hague Agreement on the International Registration of Industrial Designs allows applicants to obtain design protection throughout the EU with Community Design as well as in the countries party to the Geneva Act thereby further simplifying procedures, reducing costs and easing administrative procedures.
Aspects of Community Designs Regime:
• Simplicity along with Lower Costs towards registration of designs in the European Union.
• Validity of the Community Designs Regime throughout the European Union.
• Automatic protection in the subsequent member countries joining the European Union.
• Uniform registration period of 25 yrs. Throughout the European Union for RCD.
• Options for filing the applications either:
(i) Directly with the OHIM office based at Alicante, Spain
(ii) National Offices of the signatory countries
(ii) Benelux office based at Hague, Netherlands
• Options for filing the applications in any of the 22 languages prevalent in the European Union. The language chosen therein will be deemed as the 1st language.
• The applicant then has to indicate a 2nd language on the application at the time of filing out of the five languages which are English, French, German, Italian and Spanish. The indicated 2nd language will apply to all matters and proceedings pertaining to oppositions, cancellations along with administrative purposes.
DESIGN REGISTRATION IN THE EUROPEAN UNION
Designs in the EU are protected as Community Designs. They are further categorised as”
1. Unregistered Community Designs – UCD and
2. Registered Community Designs – RCD
1. The Unregistered Community Design – UCD:
UCD is an exclusive right that protects the outward appearance of a product or part of it. Offers protection only against copying. As the name indicates, an application need not be filed to avail protection.
Therefore, if a similar design were to be created independently by another designer who is able to show and prove that the designer was not aware of the earlier design, there arises no infringement.
Term of Protection is 3 yrs.
To create a UCD right, the design has to be disclosed with the EU territory through appropriate means such as:
- A printed review of the design bearing a date
- Mass publicity
- Publication in a national IP office bulletin
- Display at an international exhibition
- Dated mailing to all the trade associations of a given industrial sector
Care has to be taken to ensure ‘enough disclosure’. Disclosure is not considered sufficient enough if it is not known ‘in the normal course of business to the circles specialised in the sector concerned operating within the community’.
Though UCD protects a design for 3 yrs. without registration, upon disclosure, a design application has to be filed within 1 yr. from the date of disclosure if the applicant seeks better rights against infringement. This 1 yr. is a grace period granted to protect novelty. Else, novelty is negated and the design would no longer be considered new and original for registration.
Applicants can ‘test’ the market for their designs during the 1 yr. grace period and if they wish to seek better rights against infringement, they can then proceed to obtain a Registered Community Design mark.
2. The Registered Community Design – RCD:
RCD is an exclusive right that protects the outward appearance of a product or part of it. Being a Registered Design, it offers better protection upon infringement.
RCD covers all 27 member states of the EU through a single application.
Term of Protection is 25 yrs.
Applications to obtain an RCD can be filed directly with the OHIM or at any of the national IP Offices.
Representation is not required to file/lodge the application but will be required at a later stage.
3. Steps to Registration:
i. Finding out whether such a design has been registered previously.
ii. Preparing a representation of the design
iii. Identifying the class of design.
iv. Providing a statement of novelty.
v. Including a disclaimer that the design has not been in the public domain at any point in time.
vi. Claiming a priority date if the design Is registered in other countries.
vii. Determining the fee to be paid.
viii. Ensuring all enclosures are attached.
ix. Complying with objections if any.
x. Providing full details pertaining to contacts and addresses.
Several designs may be combined in one multiple application as long as the products belong to the same class.
4. Filing, Examination , Publication, Opposition, Registration:
Upon receipt of the applications formality checks and verifications are carried out. Substantive examination regarding novelty of the design is not carried out.
Upon examination, if it is found that there are no deficiencies or there are no objections from the examiner, the design is registered and published.
In the event there are any deficiencies or objections regarding formality requirements, a ‘deficiency letter’ is drawn up and the same is despatched to the applicant to be complied with in the prescribed time limit else, non-compliance leads to refusal of the application.
There is no opposition procedure in place. Aggrieved parties can initiate invalidity proceedings against designs once registered.
Once all the requirements have been met and the application not being refused, OHIM registers the application in the Community Designs Register and publishes it in the Community Designs Register.
Post publication, OHIM issues Registration Certificate.
Applicants are accorded exclusive and specific rights pertaining to:
The making, Offering, Marketing, Importing, Exporting or Use of products in which the design is incorporated or which it is applied, Holding Stock of such a product for those purposes
This protection ensures a strong, single, unitary and uniform legal system and protection of the Community Design Regime throughout the European Union.
OHIM will be able to annul non-qualifying designs applied for registraton after invalidity proceedings, also member states' community design courts will also be able to decide on the protectability of the design in view of litigation pertaining to alleged infringemnt of that protection.
5. Renewals & Maintenance:
Maintenance & Renewals have to be carried out timely.
Our attorneys will assist you with renewals and maintenance.