Who can apply for and own a design?
According to the Guidelines (see Part B, ‘Examination’, section 2, ‘Formalities’, Part 7), any natural person or legal entity from any country in the world may file a Community design application, irrespective of their domicile or nationality. The appointment of a representative is not compulsory for filing a Community design application. However, if the proprietor does not have their place of business, a real and effective establishment or their domicile in the European Union, a representative must be appointed for all other proceedings before European Union Intellectual Property Office (EUIPO) except for the filing of the application. More information on professional representation can be found in article 78 of the Council Regulation (EC) No 6/2002.
Regarding ownership, article 14 of the Community Design Regulation provides that the right to a Community design belongs to the designer or his or her successor in title. If two or more people have developed the design, the right to the Community design shall be joint.
If the design has been developed by an employee as part of his or her duties or under the instructions of his or her employer, the right to the Community design belongs to the employer, unless otherwise agreed or specified under national law.Scope
What may and may not be protected?
A design may be protected if it is new and has individual character in comparison with other designs. A design is new if no identical design has been made to the public before the date of filing of the application for registration or before the priority date, if priority is claimed. A design has individual character if the overall impression produced on the informed user is different from the overall impression produced on such user by any designs made available to the public before the filing date or the priority date.
A disclosure is not taken into consideration if the design has been made available to the public up to 12 months before the filing of the application or, if priority is claimed, before the priority date. In addition, the design is not deemed to have been made available to the public if it has been disclosed to a third party under conditions of confidentiality or as a consequence of abuse to the designer or to his or her successor in title.
In April 2020, the European Intellectual property network (EUIPN) published a Common Communication concerning Criteria for Assessing Disclosure of Designs on the Internet. Common Communications are not legally binding, but are used to make available to the public the common criteria (Common Practice) which are meant to serve as guidelines for the EUIPO and the National and Regional IP Offices of EU member states, as well as other relevant authorities and user associations.
The Common Practice identifies the following set of criteria for assessing disclosure of designs on the internet and provides recommendations with respect to each of such criteria:
- the most common sources of design disclosure on the internet: websites, apps, electronic email and file sharing;
- relevant data of disclosure;
- means for presenting the evidence obtained from the internet: printouts and screenshots, images and videos, metadata, URL addresses and hyperlinks, and statements in writing; and
- exceptions to the availability of the design on the internet.
When assessing the requirement of individual character, the degree of freedom of the designer in developing his or her design is taken into consideration.
A design right protects the appearance of the whole or part of the product provided by its features, such as ‘the lines, contours, shape, texture and/or materials of the product itself and/or its ornamentation’.
For further reference see section 1 of the Community Design Regulation.
According to article 10 of the Community Design Regulation:
‘product means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs’.
Furthermore, article 10 of the Community Design Regulation defines a complex product as ‘a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product’.
Accordingly, a component part of a complex product can obtain protection as long as it is visible during its normal use and it complies with novelty and individual character requirements. Maintenance, servicing or repair work is not considered to be ‘normal use’. In principle, protection of spare parts is not allowed if their purpose is to restore the product to its original appearance.
However, the appearance of a product dictated solely by its technical function may not be protected with a Community design. This also applies to designs of interconnections, such as a plug connection or an automobile exhaust pipe. Such products typically have specific shapes and dimensions to fit with a car and therefore such interconnections do not usually include alternative configurations as in the case of modular systems.Costs
What are the costs involved in registration?
The official fees are divided into three parts:
- Registration fee: €230 for the first design, €115 each for two to 10 additional designs and €50 each for 11 or more additional designs in the same application.
- Publication fee: €120 for the first design, €60 each for two to 10 additional designs and €30 each for 11 or more additional designs in the same application.
- Deferment of publication: €40 for the first design, €20 each for two to 10 additional designs and €10 each for 11 or more additional designs in the same application.
Publication and registration fees are paid when filing the application provided that deferment of publication is not requested. If deferment is requested, deferment and registration fees are usually paid at the time of filing and publication fees are paid when publication is requested.Grace period
Is there a grace period for filings?
Article 7(2)(b) of the Community Design Regulation provides a 12-month long grace period preceding the filing date of the Community design application or the priority date during which the design is not considered to be disclosed. The grace period starts on the date when the design has become public for the first time.