Design Protection in the European Union

One of the most underrated types of intellectual property protection is design protection, which protects the outward appearance of a product, rather than the way a product functions, or is put together. Designs are all around us; in our homes, our offices and our cars. We wear them, read them, navigate with them and sometimes even eat them!

Designs have always been around but have traditionally been neglected in favour of trade marks and patents. However, the increasing functionality and importance in the aesthetic appearance of man-made devices and the rapid development of new media and digital products, means that IP owners need to consider design protection in a new light.

With a combined population of approximately 500 million people, the European Union (EU) is a vast market that should not be overlooked when seeking to protect your intellectual property. The EU currently consists of 28 member states: 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 the United Kingdom.

There are two types of design protection that cover the entire EU: 1) a Registered Community design and 2) an Unregistered Community Design.

Registered Community Design (RCD)

An RCD can be relatively easily and quickly obtained by filing an application with the OHIM (the Office for Harmonization in the Internal Market).

Advantages of an RCD:

• Procedurally simpler requiring only a single application in one language with one application fee in a single currency for EU-wide protection and with no translation or legalisation requirements.
• Cheaper than filing separate national applications in multiple individual EU member states.
• Limited substantive examination so it proceeds quickly to grant (between 1 and 2 months).
• Can be used to protect difficult to register trade marks such as product shapes, or containers.
• An RCD application can include more than one design provided each design belongs to the same class of products within the Locarno Classification (e.g. it is possible to file one application that covers multiple designs for different jewellery items).
• It can last for up to 25 years from filing with only a single renewal fee required for maintenance purposes (in blocks of 5 years).
• It is an asset that can be traded or used as collateral.
• It provides certainty as to who owns a design and when the design was in the public domain.
• RCDs protect against the registration of subsequent similar designs, even if the subsequent design has been developed in good faith, i.e. without knowledge of the existence of the earlier design. Also, there is no defence of innocent infringement of an RCD.
• Pan-European enforcement with the possibility of EUwide injunctions and damages.
• It is possible to defer publication of an RCD for up to 30 months which can help to keep a design confidential from competitors whilst still applying for protection.

Disadvantages of an RCD:

• Obtaining and subsequently maintaining an RCD will be more expensive than a single national registered design (e.g. about 2-3 times the cost of a UK registered design).
• The unitary nature of an RCD means that it stands and falls as a whole, so that if a registration is revoked in one jurisdiction, it is revoked across all EU member states.
• It is only possible to assign an RCD for the whole EU. Ownership of an RCD cannot be broken up by EU member state.

Unregistered Community Design (UCD)

A UCD is an automatic right that arises when the design is first disclosed within the territory of the EU, such that it could reasonably have become known to the circles specialised in the sector concerned, operating within the EU. Consequently, a design first made available to the public in Hong Kong or China will not attract unregistered design protection in the EU.

Advantages of a UCD:

• It’s free!
• There is no requirement for registration (although we would recommend that records are kept of the date of creation and ownership of the design).

Disadvantages of a UCD:

• A UCD is not a monopoly right and is only a right to prevent copying.
• It is relatively short-lived, lasting only 3 years from the date on which the design was first made available to the public within the EU.
• It can be difficult to prove ownership of a design and that the design was first made available to the public within the EU.
• It requires the owner to show that the design has been intentionally copied which can make it more difficult and costly to enforce.

What is a design?

The Community Design Regulation defines a design as:

“the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation”.

This is a broad definition which includes 2-dimensional and 3-dimensional designs. A “product” means any industrial or handicraft item (excluding computer programs) including parts intended to be assembled into a complex product (products composed of multiple replaceable components that can be assembled and disassembled), packaging, get-up, graphic symbols and typographic typefaces.

It is the design itself that is protected and not the product bearing the design. Therefore, protection extends to any products in which the design is incorporated.

What are the requirements for validity?

The two basic criteria are that a design must be new and have individual character.

A design is new if no identical design has been made available to the public:

• In the case of an RCD, before the date of filing of the application for registration of the design for which protection is claimed or, if priority is claimed, the date of priority.
• In the case of a UCD, before the date on which the design for which protection is claimed has first been made available to the public.

For the purpose of assessing novelty, two designs are considered identical if their features differ only in immaterial details.

These two designs were found to be identical although there were minor differences in the logo and shading.

A design has individual character if it gives an “informed user” a different overall impression over any other design. The term “informed user” is not defined in the Community Designs Regulation or the Designs Protection Directive but it is generally regarded to be a person falling somewhere between an average consumer and a technical expert. In assessing the overall impression, it is necessary to look at the nature of the product and the industrial sector to which the product belongs.

The RCD on the left was found to be invalid due to lack of individual character in view of the boot on the right.

What designs cannot be validly protected?

A design applied to, or incorporated in, a product which constitutes a component part of a complex product cannot be validly protected if the component part does not remain visible during normal use.

The design on the right is not visible during normal use and therefore not validly protectable by an RCD.

In addition, an RCD cannot be validly obtained in respect of:

• Features of appearance of a product which are solely dictated by its technical function.

This design for a Nintendo games cartridge was found to be invalid on the grounds its shape is solely dictated by technical function

• Features of a product which must be exactly formed and dimensioned in order to permit the product to be connected to another product. For example: the three prongs on a plug would be excluded from registered design protection. However, this exclusion does not apply in respect of designs serving the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system e.g. Lego.
• A design which is contrary to public policy or to accepted principles of morality.
• A design which is in conflict with an earlier right such as a trade mark.

The RCD on the right was found to be invalid in view of the earlier registered trade mark on the left

What is the cost of obtaining an RCD?

As mentioned above, it is possible to include more than one design in the same application provided the designs all fall within the same Locarno Classification. For example, spectacles, binoculars and cameras all fall within the same Locarno Classification and can all be included in the same multiple design application, thereby saving cost.

The overall cost of obtaining an RCD depends upon the number of designs to be included in an application, the objections raised (if any) and whether or not deferred publication is requested. However, compared with invention patents, it is a relatively cheap right to obtain.

What is needed for an application?

An application must contain:

• A representation of the design consisting of line drawings or photographs of the design on a neutral background. Ideally, 7 views are required to clearly show the design, namely, front, rear, left, right, top, bottom and perspective.
• A description explaining the representation and indicating the products in or on which the design is meant to be incorporated.
• The classification of the products in accordance with the Locarno Classification.
• Details of the designer.Details of the applicant (and how rights in the design
  passed from the designer to the applicant).

What is the application process and how long does the process take?

When the application is filed, OHIM will check whether it meets the formal requirements, whether the design represents the appearance of the whole or part of a product and that the design does not contain an element that goes against the principles of public policy and morality. Provided the application passes the limited examination, it proceeds to registration and a certificate will be issued. For straightforward cases, without any objections, the whole process from filing to registration typically takes between 1-2 months.

Infringement

An RCD gives the proprietor a monopoly right to use the design in all member states of the EU. “Use” includes making, offering for sale, putting on the market, importing, exporting, or using a product in which the design is incorporated, or to which the design is applied. It protects against deliberate imitations and also independently developed similar designs.

The test of infringement is whether the potentially infringing product produces the same “overall impression” on the informed user. It is not necessary to show copying or confusion.

Please note that a UCD does not confer such an exclusive right and infringement of a UCD will require the owner of the design to show copying.

Conclusion

An RCD can provide cost effective and strong EU-wide protection for designs. A design registration can be a powerful and often underestimated tool and should actively be considered as a key component of any international filing strategy.