European Design Application - An Overview
There exist two different types of Community Designs:Registered Community Design (RCD). A registered Community design is initially valid for five years from the date of filing and can be renewed in blocks of five years up to a maximum of 25 years.Unregistered Community Design (UCD)An unregistered Community design is given protection for a period of three years from the date on which the design was first made available to the public within the territory of the European Union. After three years, the protection cannot be extended.
In the following, we focus mainly on the Registered Community Design.
• RCDs are governed by a single legal system, providing strong and uniform protection throughout the European Union.
• An RCD is easy to register. There is one application, one language of filing and one file to manage and to be renewed.
• RCD registration offers the possibility to file multiple applications (i.e. to include several designs in one application, such as variations of the same design).
Prerequisites for protection of a design
The design regulation requires that the design, whether an RCD or a UCD, is new and possesses individual character.A design is new if no identical design has been disclosed before it. If two designs differ only in immaterial details, they will still be considered identical.A design possesses individual character if the overall impression conveyed to the informed user differs from that conveyed by any other previous designs.
Presentation of the design
The purpose of graphical representation is to display all the features of the design applied for. The quality of the representation is paramount to your client's design protection.In practical terms, the quality of the graphical representation must allow the design to be reduced or enlarged to a size no greater than 8 cm by 16 cm for entry in the Register of Community Designs and for publication.
It is possible to file up to seven different views to represent the design. The views may be plain, in elevation, cross-sectional, in perspective or exploded. The views have to relate to the same design and represent a visible part of the design.If you file a complex product, i.e. a product composed of multiple components that can be replaced, allowing the product to be taken apart and reassembled, at least one of the views must show the complex product in assembled form. The same applies to a set of articles such as a chess-board and its pieces or a set of cutlery. However, in such case a multiple design application directed to the individual members of the set may confer better protection
The set of representations of the design may be made either in black and white or in color. It is not permitted to mix color types, e.g. to file three views in black and white and four in color for the same design. But there is the possibility of filing multiple designs which may contain colored designs as well as black and white designs. Multiple design application means that a bundle of designs is submitted, e.g. black and white and different colors of the identical design or a series of designs, which is more cost effective. However, the designs will be processed and renewed as single designs and will be listed in the register with different, distinguishable numbers.
The representation of your design must be displayed on a neutral background. The design should be clearly distinguishable from its environment.
If your client wants to highlight certain parts of the design; either to show that you only claim that specific part or that you expressly do not claim a certain part of the design, you can use one of the following identifiers
• Broken lines for indicating elements for which no protection is required
• Boundaries for outlining features of the design for which you do want protection
• Color shading and blurring for excluding a number of features from protection
• Separations for indicating that the precise length of the design is not claimed.
No explanatory text, wording or additional symbols may be used in the design views.
5. Official examples of OHIM for kinds of pictures which might be registered:
As you can see, photos as well as drawings may be filed. Even a combination within one design may be possible, if exactly the same is displayed. However, the drawings are different from usual patent drawings. It cannot be a typical technical drawing but a perspective drawing as shown above is always possible. Most commonly photos or computer simulations are used and we typically advise to use drawings only where photos or computer simulations fail (glass flasks etc.).
Locarno Classification - the International Classification for Industrial Designs
The Locarno Classification is an international classification for industrial designs. OHIM has developed a search tool called Eurolocarno, which automatically classifies the product into the correct classes and subclasses. It is based on, and has the same structure as, the Locarno Classification and is available in all the official EU languages.
It is possible to claim the priority of a design already applied for in any state which is party to the Paris Convention for the Protection of Industrial Property or to the Agreement establishing the World Trade Organization claim priority. The subsequent filing with OHIM must be made within six months of the first application. The documentation relating to the right of priority claimed should contain a depiction of the prior design.Even if the registration of an RCD is rejected in the course of the examination procedure, a subsequent filing with OHIM can be made claiming the priority of the prior RCD application or in other word an application suffices to claim priority.
Validation of a registered design and non-registered design
An RCD is initially valid for five years from the filing date and can be renewed for five-year periods, up to a maximum of 25 years, whereas the UCD grants protection for three years from the date of the first public disclosure within the territory of the EU.
Publication of Community design
A Community design has to be published. Publication may be delayed for up to 30 months, however, and the product can therefore be kept confidential until your client is ready to disclose it. Should your client choose not to publish the RCD at all, the registration will lapse after the 30-month deferment period.To publish a design after a period of deferment of publication, the relevant publication fees must be paid and, where necessary, the depiction of the design (if the application included a specimen) must be submitted within 27 months at the latest from the filing date or from any priority date.
A designer (or subsequent owner of a design) can apply for protection up to a year after he/she first discloses a design, without that his/her own disclosure counts against the registration. In other words, the design will be considered as novel for one year after disclosure. This allows a proprietor to determine whether seeking protection for a design is likely to be worth the money and time required. The drawback of this is some legal uncertainty for third parties as to whether a design is going to be registered or not and in practice there is the risk that a third party will file prior to the actual filing date, if the designer has made use of the grace period.