European Union Community Design Protection:
What Type is Appropriate for You?
by Oliver S. Bajracharya

Last year, the new European Union Community Design Regulation became effective. Companies that need immediate, low-cost protection against deliberate copying, or that require a longer term and protection against independent creation by non-copyists, now have two avenues to pursue. The Regulation allows an applicant to obtain Community Design protection throughout the European Union*¹, either by making a product design publicly available (the unregistered approach) or by filing a single application to register the design (the registered approach).

How is Protection Obtained?
A Community Design is a product design entitled to protection against copying throughout the EU. The new Community Design Regulation encompasses two types of design protection: unregistered and registered. An unregistered design is protected for three years from the date on which the design is first made available to the public within the EU. Protection without the burden of registration may be more advantageous to those companies producing numerous designs for products having a short market life where the duration of protection is less important.

An alternative, as well as supplemental, form of design protection can be obtained in the EU by registering a design with the Office for Harmonization in the Internal Market (OHIM). Upon registration by the Office, a Community Design is protected for five years from the filing date of the application. The term of protection can be renewed for one or more 5-year periods, up to a total term of 25 years from the filing date. An applicant may also claim more than one independent design per application so long as all designs are in the same formal category, known to practitioners as the Locarno Agreement class. Registered designs are protected from deliberate copying and from independent creation of an identical design.

What is Protected?
As defined by the Regulation, "design" means "the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation." Industrial products and handcrafted items are included, as are parts intended to be assembled into a complex product, packaging, set-up, graphic symbols, and typographic typefaces. Computer programs are not included in the product definition; however, user interfaces and internet homepages can be protected by a Community Design. Also not protected under the Regulation are spare parts or accessories. The Regulation was approved with a compromise that the spare parts protection issue will be resolved later. However, protection of spare parts continues to be available under existing national laws.

In order to be protectible, a design must meet the standard of novelty. According to Article 4(1) of the Regulation, "[a] design shall be protected by a Community Design to the extent that it is new and has individual character." A design is considered "new" if no identical design has been made available to the public within the EU as of the priority date. Designs differing only in immaterial details will be considered identical. The "individual character" of a design will be assessed to determine if the overall impression produced on an informed user viewing the design clearly differs from the impression produced on him by existing designs, taking into consideration "the nature of the product to which the design is applied or in which it is incorporated, and in particular, the industrial sector to which it belongs, and the degree of freedom of the designer in developing the design."

A design is considered to be available to the public in the EU if it has been "published, exhibited, used in trade or otherwise disclosed such that these events could reasonably have become known to the circles specialized in the sector concerned, operating within the Community." Thus, it is possible for an unregistered design that has been publicly introduced in Europe to bar registration of that design at a later date. However, companies (as well as individuals) considering registration of a design are allotted a one-year grace period within which to file. That should prevent a company's public disclosure of its design from barring registration. The grace period allows a company to publicly disclose a design up to 12 months before filing for registration, during which the design is afforded unregistered protection.

Infringement and Invalidity Disputes
As noted above, the key difference between unregistered and registered designs, besides the duration of protection, is that registered designs are protected from deliberate copying and independent creation of an identical design, while unregistered designs are only protected from deliberate copying. However, OHIM will check submitted applications only for compliance with the formal requirements for registration, not for legal validity. Examination of legal validity will only take place if an infringement or invalidity action is brought.

Community Design Courts, national courts designated by each EU member, have jurisdiction over infringement actions and invalidity declaration actions. Claims not involving design validity will be decided under the national design laws of the EU member Community Design Court exercising jurisdiction over the matter. Claims for invalidating a Community Design, on the other hand, will be decided based on whether the design meets the requirements for protection, as discussed above.

_______________________
¹ Twenty-five states are members of the European Union (EU), including ten new members as of May 1, 2004.