Definition and Legal Basis of the Community Design
The Community design is a Union-wide intellectual property right for designs in the European Union. It provides uniform protection for the appearance of a product throughout all EU member states. This right was introduced by Council Regulation (EC) No. 6/2002 on Community designs and is centrally administered by the European Union Intellectual Property Office (EUIPO) in Alicante.
Purpose and Significance of the Community Design
The Community design was established to enable companies and designers to obtain effective, cost-efficient, and uniform protection for innovative designs. In this way, design innovation is promoted within the EU and protection against imitation is improved.
Subject Matter of Protection: Appearance of a Product
What is protected is the appearance of a product or a part thereof. This in particular includes the lines, contours, colors, shape, surface texture, and materials of the product itself and/or its decoration.
Definition of “Product”
A “product” within the meaning of the Community Design Regulation is any industrial or handicraft item, including parts that may be assembled into a complex product, packaging, get-up, graphic symbols, and typographic typefaces. Computer programs, however, are excluded.
Requirements for Protection
In order for a Community design to obtain protection, the following requirements must be met:
Novelty
A design is considered novel if, before the filing date (or priority date), no identical design has been made available to the public. Designs are considered identical if they differ only in insignificant details.
Individual Character
A design has individual character if the overall impression it produces on the informed user differs from that of an already existing design. The comparison is made with already known designs (including Community designs and national designs of the member states).
Grounds for Exclusion
Certain designs are excluded from protection. These include appearances determined solely by the product’s technical function, designs that contravene public policy or accepted principles of morality, as well as designs containing official symbols and other protected emblems.
Creation and Duration of Protection
Registered Community Design
A Community design is generally created by registration with the EUIPO. After successful formal and substantive examination, protection is granted for a maximum of 25 years from the filing date, divided into five-year renewal periods. Renewal must be applied for in good time.
Unregistered Community Design
Protection also exists for unregistered Community designs. This arises automatically upon the first publication within the EU and is valid for three years. However, the scope of protection is limited to imitations.
Scope of Protection
The Community design grants the right holder the exclusive right to use the protected design and to prohibit third parties from using it without consent. This particularly includes manufacturing, offering, marketing, importing and exporting, as well as storing for the aforementioned purposes.
Protection relates to any design that produces the same overall impression as the registered or unregistered design.
Rights Arising from the Community Design
Negative Rights: Prohibitions against Third Parties
The right holder may prohibit all third parties from:
- using the protected design without consent,
- manufacturing, offering, holding products for sale, selling, importing, exporting, or storing products,
- distributing or otherwise commercially exploiting products in which the design is embodied.
Positive Rights: Permission to Use
The right holder may grant third parties rights of use (licenses) and transfer his design.
Exceptions and Limitations to the Rights
Several legal limitations are provided in order to protect the interests of the public and third parties. These particularly include:
- Acts for private and non-commercial purposes,
- Acts for experimental purposes,
- Reproduction for citation purposes, provided this complies with fair trade practice and does not unreasonably prejudice the normal use of the design.
Additionally, the repair clause principle allows, in certain cases, the use of designs for spare parts for repair purposes.
Legal Protection and Enforcement of the Community Design
Infringement and Legal Consequences
In the event of an infringement, the owner has various claims, including injunction, damages, destruction, and recall of the infringing products. Enforcement typically takes place before the competent design courts of the member states.
Invalidity Proceedings
The Community design can be declared invalid upon application by any person before the EUIPO if the requirements for protection have not been met or grounds for exclusion exist.
Relationship to National Design Rights
The Community design exists autonomously alongside national design rights and does not replace them. As far as a design is registered as both a Community design and as a national design, both rights can be exercised independently of each other.
International Protection Options
Through the Hague Agreement concerning the International Registration of Industrial Designs, companies have the option to apply for international design protection in several countries outside the EU in parallel. The Community design, however, applies only within the territory of the European Union.
Sources and Further Information
- Council Regulation (EC) No 6/2002 on Community Designs
- European Union Intellectual Property Office (EUIPO): euipo.europa.eu
- Directive 98/71/EC on the Legal Protection of Designs
Note: This article is intended as an objective overview of the topic of Community designs and provides a comprehensive insight into the definition, requirements, effects of protection, and enforcement of the Community design in the European Union.
Frequently Asked Questions
What rights does the Community design grant its holder?
The Community design grants the holder the exclusive right to use the registered design throughout the European Union and to prohibit third parties from using it. In particular, the legal protection position includes the right to prohibit the manufacture, offering, marketing, import, export, and use of products in which the design is incorporated or used. Storage for these purposes is also prohibited. This protection applies to both identical designs and to designs that produce no different overall impression for the informed user. The protection is not limited to a specific product category, but relates to the concrete appearance as recorded in the registration. Furthermore, the holder may take action against acts of infringement and imitation and assert claims for injunction and damages in court proceedings.
What are the requirements for registering a Community design?
To successfully register a Community design, certain legal requirements must be met. The design must be new, meaning that no identical or only insignificantly different design may have been made available to the public before the filing date. In addition, it must have individual character, i.e., differ in its overall impression from existing designs. Furthermore, the design must not be dictated by technical functions or solely by technical necessity, otherwise protection is excluded (so-called exclusion of the “form-shaping function”). Certain designs, such as those that violate public order or morality, are also excluded from registration. The application is filed with the European Union Intellectual Property Office (EUIPO) and must satisfy certain formal requirements, such as submitting depictions of the design.
How long is the Community design legally protected and how can the protection be extended?
The Community design is initially registered for a period of five years from the filing date. This protection may be renewed for further five-year periods, but for a maximum of 25 years overall. For each renewal, a renewal fee must be paid to the EUIPO in due time before the expiry of the respective protection period. If the owner fails to renew, the design protection right expires at the end of the elapsed period. After the maximum term has expired, the design passes into the public domain.
What legal remedies are available in case of infringement of a Community design?
If a Community design is infringed, the owner may assert various claims by legal means. These primarily include claims for injunctive relief, aimed at preventing the continuation or repetition of the infringement. There is also a claim for removal of unlawfully marked goods, claims for information regarding the origin and distribution channels of the infringing products, as well as claims for damages to compensate for financial losses. Jurisdiction for claims usually lies with the special court for Community designs in the member state where the defendant is domiciled or, if not, with the court at the claimant’s domicile. In addition, border seizure is a possible measure to prevent the importation of infringing goods.
What role does the “informed user” criterion play in the law of Community designs?
The “informed user” criterion is central in assessing both the protectability and possible infringement of a Community design right. It is a legal fiction describing a person who has adequate knowledge in the relevant field and is attentive, but need not be an expert. When determining whether a design produces a different overall impression on the informed user compared to a known design, the perception of this user is decisive. The criterion is essential both for the assessment of individual character and for the evaluation of infringement issues, because minor differences that would not be noticed by an informed user do not lead to a new overall impression.
What rights does the holder of an older national design have in relation to a Community design?
If a Community design is registered which conflicts with an older national design existing in a member state, the older national right remains unaffected. This means that the holder of the older national right may prohibit the holder of the later Community design from using it in the respective country. The protection from the Community design is limited insofar as there are pre-existing national design rights with priority. There is also the possibility of invalidity proceedings before the EUIPO, by which the Community design may be declared invalid due to conflicting prior rights.
What is the difference between a registered and an unregistered Community design in legal terms?
Legally, the Community design distinguishes between the registered and unregistered variant. The registered Community design enjoys comprehensive protection for a maximum of 25 years throughout the entire EU single market and must be expressly applied for and registered. In contrast, protection for the unregistered design arises automatically and requires no registration; however, this protection is limited to three years after first disclosure within the EU. The legal effects differ mainly in scope: While the registered design provides absolute protection against any use, the unregistered design only protects against imitations that are deliberate copies. The burden of proving imitation lies with the holder of the unregistered Community design.
