FOCUS

European Community design

The European Community Council, in instituting the registered Community design or model, did so with the purpose of facilitating the free circulation of goods inside the Community, creating an institution which aims to give greater protection to designs and models, to improve the contribution of individual designers and to encourage innovative processes and the creation of new products by stimulating productive investments. In the Community countries which adopt it, this institution allows the same product to be protected, not only as a Community design, but also by other institutions such as: the trademark, patents of invention, patents for a utility model, the legislation on unfair competition, on civil responsibility and on copyright.

Contracting States

Applications for Community designs must be filed at EUIPO (European Union Intellectual Property Office, until 23 March 2016 known as Office for the Harmonization in the Internal Market - OHIM) in Alicante, Spain, hereafter referred to as the Office. When registered, Community designs have the characteristic that they have their effect throughout the European Union (Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and United Kingdom) since they are a single title, subject to a single norm and valid throughout the Community territory.

Characteristics

The Community design has a unitary character so that it produces its effects uniformly throughout the European Union. It cannot be registered, transferred, renounced, or annulled, nor can its use be forbidden, except for the whole of the Community. The principle of uniformity and its implications are applied unless there is a different disposition of the Community Regulations. The regulation has instituted two forms of protection.

The first, the unregistered design, gives protection only for a short period (three years) and will therefore be used for those products which last only a short time. This form of protection, however, poses the problems of primogeniture and certification of the certain date, which is a burden for those who wish to have this type of protection.

The second, the registered design, gives a long period of protection (up to 25 years), enjoys a certain registration date, and the burden of proof is inverted. This form will be used more for those products with a commercial life of more than three years, and, given the inversion of the burden of proof and the other privileges given above, is in any case more advantageous than the unregistered design. This second form enjoys another privilege which is that it is possible for the inventor, or his successors in title, to subject the relative products to market trials, for a maximum period of twelve months, before deciding whether or not to apply to register it. This means that, for anyone who wants to use this period, the problems of certifying the certain date when the 12 month deadline starts are the same as those for the unregistered design.

Extension abroad

In the event that a registered design is extended to other countries, there is the problem of evaluating, if the trial period is requested, if that country allows prior disclosure or not.

The Community design which has been assigned a filing date has the validity in the member States of a proper national filing, including, if necessary, the priority right invoked to support the application.

Whosoever has properly filed an application to register a design in one, or for one, of the States which belong to the Paris Convention, or the agreement which institutes the World Trade Organization, or his successors in title, enjoys for a period of six months from the filing date of the first application, a priority right to file an application to register a Community design. Any filing which has the value of a proper national filing according to the legislation of the State where it is made, or according to bilateral or multilateral agreements, is recognized as constituting the priority right. By "proper national filing" we mean filing which offers sufficient elements to determine the date on which the application is filed, irrespective of the outcome of the application.

The applicant for a registered Community design can request, when the application is filed, that the publication of the registered Community design be deferred for a period of thirty months starting from the filing date of the application or, in the event of a priority claim, from the priority date. In the event of a multiple application, deferred publication can be applied only to a part of the designs or models to which the application refers. During the deferment period, any judicial actions based on a registered Community design can only be proposed on condition that the information contained in the register and in the documentation relating to the application be communicated to the party against which the legal action is directed.

The so-called exhibition priority is also recognized; the applicant for a registered Community design who has displayed the products in which the design is incorporated, or in which it is applied, in an official international exhibition, or officially recognized according to the convention on international exhibitions signed in Paris on 22 November 1928, if he files the application within six months subsequent to the first presentation of the products, can enforce a priority right starting from said date, by giving proof that said products were exhibited.

A Community design is protected as:

• "an unregistered Community design" if it has been disclosed to the public, for a period of 3 years from the disclosure, but has not been registered;
• "a registered Community design" if it has been registered.

Requirements for protection

A design or model is protected as a Community design when it is novel and possesses an individual character. The design applied to a product, or incorporated in a product which constitutes a component of a complex product, can only be protected if:

• once incorporated into the complex product, the component remains visible during the normal use thereof, and
• the visible characteristics of the component possess in themselves the requisites of novelty and individuality.

By "normal use", we mean the normal use by the final user; therefore, the cases wherein a product is visible only when operations of maintenance, assistance and repairs are carried out are excluded.

Novelty

A Community design is considered novel when no identical design or model has been disclosed to the public:

• for unregistered Community designs, before the date on which the design for which protection is claimed was disclosed to the public for the first time;
• for registered Community designs, before the filing date of the application to register the design for which protection is requested, or, when priority is claimed, before the priority date.

Designs are considered to be identical when their characteristics differ only by irrelevant details.

Individual character

A design is considered to have an individual character if the general impression which it causes in the informed user differs significantly from the general impression created in said user by any design which has been disclosed to the public:

• for unregistered Community designs, before the date on which the design for which protection is claimed was disclosed to the public for the first time, which poses the problem of documenting the certain date;
• for Community designs registered before the filing date of the application for registration, or, when priority is claimed, before the priority date.

In ascertaining the individual character, the margin of liberty of the inventor in designing the design must be taken into account. By informed user we mean someone operating in the field, whether it be a designer, producer, tradesman or purchaser operating continuously in the field of the product on which the design or model is applied or embodied, and who, by profession, knows the market and the forms, designs to be found therein.

Disclosure

For the purposes of applying the concept of novelty and individual character, a design is considered to be disclosed to the public if it has been published as a result of registration, or exhibited in some other way, used in commerce, or otherwise made public before the reference date, except for when such facts could not reasonably be known in the course of normal commercial activity in the specialized fields of the sector concerned, and operating in the Community. However, the design is not considered to have been disclosed to the public just because it has been revealed to a third party under an explicit or implicit confidentiality agreement. It is not a disclosure if the registered Community design has been disclosed to the public:

• by the inventor or his successor in title, or by third parties according to information supplied or acts committed by the inventor or his successor in title, and
• in the twelve months preceding the filing date of the application for registration (which poses the problem of documenting the certain date) or, when a priority is claimed, in the twelve months preceding the date of the priority.

It is not disclosure either when the design has been disclosed to the public following an abuse committed against the inventor or his successor in title.

Designs with an appearance dictated by their technical function and interconnection design

A Community design does not protect the appearance of a product determined only by its technical function. Therefore a design cannot be protected when the appearance of the product which incorporates it, or on which it is applied, must necessarily be reproduced in its exact form and size in order to allow the product to be mechanically connected to another product, or to be located inside another product, around it, or in contact with it, so that each product can perform its proper function. However, the Community design with an individual character is protected, when its purpose is to allow the multiple union or connection of interchangeable products in the framework of a modular system.

Extension of protection

The protection conferred by a Community design extends to any design which does not produce in the informed user a different general impression. In ascertaining the extension of the protection, the inventor's margin of liberty in embodying the design is taken into account. This means that in crowded sectors, even small variations can find proper protection, but it also means that small variations can be excluded from the protected field especially if such variations create a general impression more of an existing product than the product incorporating the Community design.

Duration of the protection for unregistered Community designs

The duration of the protection of unregistered Community designs is three years starting from the date when the design is disclosed to the public for the first time in the Community.

Duration of the protection for registered Community designs

The duration of the protection of registered Community designs is five years starting from the date when the application for registration is filed. The protection can be extended for one or more periods of five years up to a maximum of twenty-five years from the filing date.

Rights conferred by the Community design

The registered Community design confers on the holder the exclusive right to use the design and to forbid third parties to use it without consent. In particular, acts of use include the production, offer, marketing, import, export or use of a product in which the design is incorporated or applied, or possession of the product for the purposes above. The unregistered Community design confers on the holder the right to forbid the same acts forbidden by the registered Community design only if the contested use derives from copying a protected design. This definition puts this form of protection as an extension of the norm on unfair competition, but requires a more intense imitation than that protected by the registered design. However, use cannot be contested if it is the result of an independent work of creativity made by an inventor who, one might reasonably think, did not know the design disclosed by the holder.

Limitation of the rights conferred by the Community design

The rights conferred by the Community design cannot be exercised with regard to:

1. acts made in private and not for commercial purposes;
2. acts made for the purposes of experimentation;
3. reproductions for didactic purposes or quotations, provided that such acts are compatible with proper commercial practices, do not unduly prejudice the normal use of the design and that the source is indicated;
4. furnishing or installations present on board ships or airplanes, registered in a third country and which temporarily enter the territory of the Community;
5. importing into the Community spare parts and accessories intended to repair the means of transport as in point d);
6. performing the repairs on the means of transport as in point d).

Termination of the rights

The rights conferred by the Community design are terminated when the product which incorporates or bears said design is put onto the market in the Community by the owner of the Community design, or with his consent.

Rights deriving from a previous use of the registered Community design

A third party has the right - deriving from a previous use in good faith in the Community - to use the design for the purposes for which he had started to use it, or had made serious and effective preparations before the filing date or the priority date of the registered Community design. However, this right does not confer the faculty to grant licenses to third parties for the use of the design. The right can be transferred, however, if the third party concerned is a Company, but only with the part of the activity of said Company in the field where the use has been created, or the preparations have been made.

Use by the government

The legislation of the member States which authorizes the use of national designs and models by the government, or on the government’s behalf, is applicable to Community designs, but only to the extent that such use is necessary for fundamental necessities of defence or security.

Declaration of annulment

A registered Community design is annulled following a request for annulment presented to the Office, or to a Court for Community designs according to a counter application in the field of an action for infringement. It should be noted that Community regulations oblige the contracting States to define a restricted number of specialized Courts, which must deal with all the material concerning industrial right. A Community design can also be annulled after it has expired, or has been renounced. An unregistered Community design is annulled by a Court for Community designs following an application for such, or according to a counter application in the field of an action for infringement.

A design can be annulled only in the following cases:

1. if the design does not possess the requirements for protection;
2. if, in the light of a legal decision, the owner does not have the right to the Community design; this reason can be invoked only by the owner of the design;
3. if the Community design is in conflict with a prior design which has been disclosed to the public after the filing date of the application for registration, or after the priority date of the Community design if a priority is claimed, and which is protected starting from a prior date by means of registration of a Community design or by an application for registration of said design, or by the registration of a design in a member state, or an application to obtain the relative right;
4. if in a subsequent design a distinctive sign is used, and the community law or legislation of the member State concerned to which the distinctive sign is subject confer on the owner the right to forbid its use;
5. if the design constitutes a non-authorized use of a work protected by the legislation concerning copyright in a member State;
6. if the design constitutes an abusive use of one of the elements listed in article 6 ter of the Paris Convention for the protection of industrial property, or signs, emblems and badges other than those allowed by article 6 ter and which have a particular public interest in a member State.

A registered Community design annulled by applying points a), d) e) or f) can be maintained in a modified form if said form satisfies the conditions for the grant of protection and if its identity is preserved. By "maintained in a modified form" we mean registration accompanied by the partial renunciation by the owner of the registered Community design or the registration of a judicial decision or a decision by the office declaring the partial annulment of the registered Community design. The declaration of annulment is retroactive to the filing date or the date the right came into force.

Apart from the national regulations concerning actions for damages caused by the negligence or bad faith of the owner of the Community design or unlawful enrichment, the retroactive nature of the declaration of annulment does not prejudice:

1. decisions concerning infringement which have already become final and executed before the declaration of annulment;
2. contracts concluded before the declaration of annulment, if and to the extent that they have been executed before said declaration; for reasons of fairness, however, it is possible to request the refund of sums paid as a result of the contract, to an amount justified by the circumstances.

Participation in annulment proceedings of the alleged infringer

When an application is filed for the annulment of the registered Community design at the Office and until the Office takes a definitive decision, any third person who provides proof of having been summoned in a case for infringement of the same design can participate in the annulment proceedings, provided that he presents a request to do so within three months from the date on which the action of infringement is started. The same applies for any third person who provides proof that the owner of the Community design has requested him to cease his actions of alleged infringement of the design, and also the proof that he has asked a Court to declare that such actions do not constitute an infringement of the Community design. Appeal may be made against the decisions of the Examiners, the Division of the administration responsible for trademarks, designs, the Legal Affairs Division and the Annulment Divisions. The effect of the Appeal is to suspend such decisions. Any decision which does not put an end to a proceeding against one of the parties can be impugned only with the definitive judgement, unless it allows an autonomous impugnment. Appeal may be made to the Court of Justice against the decisions of the Appeals Commission.

Infringement and annulment: competence

The specialized Courts have exclusive competence:

1. for actions of infringement and, when allowed by the national legislation, for actions concerning a threat of infringement of Community designs;
2. for actions to ascertain that no infringement of the Community design has occurred, when allowed by national law:
3. for actions to annul unregistered Community designs;
4. for counter-claims of annulment of Community designs proposed in proceedings as per letter a).

Counter action or counter-claim of annulment of a Community design

Actions of annulment or counter-claims of annulment of a Community design can be founded only on the causes of annulment. If the counter-claim is proposed in a dispute where the owner of the Community design is not already a party, the latter is informed of the case and can be admitted to intervene in the proceedings on the conditions laid down by the law of the member State where the specialized Court sits. The validity of the Community design cannot be contested with direct action to ascertain that infringements do not exist.

Presumption of validity – factual defence

In proceedings concerning actions of infringement, or the threat of infringement of a registered Community design, the specialized Courts consider the Community design valid. Validity can be contested only by a counter-claim of annulment. However, an objection of annulment of the Community design made in a different form other than the counter-claim is admissible only if the defendant requests the declaration of annulment of the Community design by exercising the right of a prior national right. In proceedings concerning actions of infringement, or the threat of infringement of an unregistered Community design, the special Court considers the Community design valid if the owner of the Community design provides proof that all the conditions of validity of the unregistered design subsist, and if he indicates how said design meets the requisite of individuality. The defendant can contest the validity by an objection or a counter-claim for annulment. A counter-claim for the annulment of the registered Community design cannot be proposed when the Office has already issued a decision which has become definitive, in proceedings between the same parties and having the same object and the same cause.

Penalties in proceedings concerning infringement of the design

If within an action of infringement, or a threat of infringement, a special Court ascertains that the defendant has infringed, or threatened to infringe, the Community design, unless there are particular reasons to the contrary, the Court issues against him the following orders:

1. an order in which he is forbidden to continue his actions of infringement or threats of infringement;
2. an order to confiscate the products in question;
3. an order to confiscate materials and equipment mainly used to produce the infringing products, should their owner be aware of the purposes for which they were used or were such purposes obvious, given the circumstances;
4. any order imposing other penalties commensurate to the circumstances, as laid down by the law of the member State wherein the infringement or threat of infringement has occurred, including the international private law of said member State.

Provisional and interim measures

With regard to a Community design, the judicial authorities of a member State, including the special Courts, can be requested to apply provisional measures, also of an interim nature, as allowed by the law of said State concerning the national design, even when, according to Community Regulations, a special Court of another member State is recognized as having the competence to decide thereon. In proceedings in which provisional and interim measures are requested, objections regarding the annulment of the Community design are allowed when raised by the defendant in a different form other than the counter-claim of annulment.

Competence of the Community appeal courts for designs – Court of Cassation

The rulings of the special Courts of the first instance can be impugned by appealing to the special Courts of appeal. The conditions under which appeal may be made to the special Court of appeal are determined by the law in force in the member State where the special Court sits. Appeal may be made to the Court of Cassation against the decisions of the special Court of appeal.

The Community design as an object of property

The Community design as an object of property is similar, in its entirety and throughout the territory of the Community, to the national design of the member State where the owner:

1. had head office or domicile at the reference date, or
2. when letter a) is not applicable, had a stable organization at the reference date.

This disposition applies for registered Community designs and is applied according to the registrations made in the register. In the case of several owners, the member State of one or more owners is determined:

1. for unregistered Community designs, by referring to the designated co-owner by mutual accord of the co-owners;
2. for registered Community designs, by referring to the co-owner who is written in first place on the list which appears in the register.

When neither of the two cases above applies, the member state is the one where there is the Office. The registered Community design can be transferred, subject to the following dispositions:

1. on request from one of the parties, the deed of transfer is written in the register and published;
2. until the transfer has been written in the register, the party entitled cannot exercise the rights deriving from the registration of the Community design;
3. when terms imposed by the Office have to be observed, the party entitled can make the necessary declarations to the Office as soon as it has received the application to register the transfer;
4. all the documents which have to be notified to the owner of the registered Community design are sent by the Office to the person registered as owner or possibly his representative.

The registered Community design can be given as security or be the object of property rights. The registered Community design can also be the object of a compulsory enforcement. In proceedings of compulsory enforcement on registered Community designs it is the judges and authorities of the member State which have exclusive competence. For registered Community designs, juridical deeds of transfer, security, property rights and license can be opposed against third parties in all the member States only after they have been written in the register. Until then, the deeds can however be opposed to third parties who have acquired rights over the registered Community design after the date of the deed, but of which they were aware at the moment they acquired said rights. This condition is not applied to those who acquired the registered Community design or a right thereto by means of a transfer of the Company in its entirety or by means of any other succession in entirety. The only insolvency procedure in which Community designs can be included is that which is started in the member State in whose territory the centre of the debtor’s main interests is situated. In the event of co-ownership, the insolvency procedure is applied according to the quotas of co-ownership.

Multiple Community designs

One or more designs can be protected with one application for registration. Several designs can be put together in a single multiple application for registration of registered Community designs. Except for the case of decorations, multiple applications are allowed only if the products in which the designs are intended to be incorporated or to which they are intended to be applied all apply to the same class of the international classification of industrial designs. The multiple registration application must meet the requirements as laid down by the execution regulations. Every design included in a multiple application or registration can be treated independently of the others for the purposes of the execution regulations. In particular, independently of the others, it can be actuated, be the object of licenses, property rights, compulsory enforcement, renunciations, renewal, assignment, deferment of publication, it can be included in insolvency proceedings or can be annulled. A multiple application or registration can be divided into separate applications or registrations only under the conditions laid down by the execution regulations.

Renunciation

Any renunciation of the registered Community design must be declared in writing to the Office by the owner. It comes into force on the date when it is written in the register. When the object of the renunciation is a Community design for which a deferment of publication has been granted, it is considered ineffective from the beginning. A registered Community design can be the object of a partial renunciation provided that in its modified form it possesses the requirements to obtain protection and that its identity is maintained. The renunciation is written in the register only with the consent of the owner of a right written in the register. When there is a license written in the register, the renunciation is only written if the owner of the registered Community design proves that he has informed the licensee of his intention to renounce. When an action concerning the ownership of a registered Community design is presented before a Court of Community designs, the Office does not write the renunciation in the register without the consent of the person who has started the action.