February 14, 2003
NEW EUROPEAN DESIGN LAWS
It is now possible to apply to register designs in Europe on a Community-wide basis. A Registered Community Design provides a number of advantages over separate national registrations, principally in cost savings and convenience.
Designs, or as they are also called, industrial designs, consist of features that establish an article's appearance. Examples of designs can be seen in the shape of an automobile body, the pattern on a dinner plate, the cut or styling of a dress, or the configuration of a control panel for a CD player. While designs are essentially artistic works, in most countries there are limitations on the protection available for designs by copyright; instead, a separate scheme of legal protection is usually provided for designs.
Introduction of the Registered Community Design represents the third of three major initiatives undertaken in recent years by the European Community and its member countries to overhaul their design laws. The other two steps are the harmonization of national design laws, which is in progress, and the introduction of Community-wide protection for unregistered designs, which has been in effect since March, 2002.
Different Levels of Protection
Unregistered Community Design rights arise automatically, at no cost. However, the new Registered Community Design scheme provides three important advantages.
First, Registered Community Designs may be protected for up to 25 years. Unregistered Community Design rights offer protection for only three years from the date when a new industrial design is first marketed in the European Community.
Secondly, Registered Community Designs provide an exclusive monopoly, akin to patent rights, whereas Unregistered Community Design rights protect only against copying, similar to copyright.
A third advantage of a Registered Community Design is that it provides a certificate of registration which carries evidentiary advantages or presumptions of ownership and subsistence of rights. An Unregistered Community Design has no such advantages or presumptions; in any infringement action, the burden rests on the plaintiff to establish that Community design rights exist, and that it is the proprietor of those rights.
In other aspects, the new Registered Community Design scheme is very similar to that for Unregistered Community Design rights, particularly in regard to protectable subject matter, the types of acts that constitute infringement, as well as ownership of rights, and the geographic scope of protection.
Unitary Character
Like Community trade marks, Community design rights, whether registered or unregistered, cover the entire European Community. Thus, a successful challenge of invalidity will eliminate protection throughout the European Community. Exhaustion of rights also applies throughout the European Community; the proprietor of a Community design for an article that is lawfully sold in one member country cannot prevent the article from subsequently being exported to other countries within the European Community.
Ownership
Ownership of Community design rights also extends throughout the entire European Community. Community design rights can only be transferred on a Community wide basis.
The initial owner, or proprietor, is the designer, unless the designer created the design in the course of his employment, in which case the designer's employer is the first owner of the Community design. There are no nationality requirements for the proprietor, and there is no requirement that a design be first published within the European Community to qualify for protection.
Subject Matter
The subject matter that may be protected by Community design rights is very broad, extending to virtually any aspect of the appearance of a product or any part of a product, whether two dimensional or three dimensional. This may include features of shape and surface ornamentation, as in Canada and the U.S., and may also include features of colour, material and texture that give an article a distinct appearance. Expressly recognized as protectable subject matter, moreover, are graphic designs, symbols, and typefaces.
Functionality
There is no requirement that a design must have any aesthetic quality to qualify for Community design protection. However, excluded from protection are designs that are dictated by function, but only to the extent that the design could not be made in any other shape. Shapes of mechanical interfaces, and shapes of component parts which are hidden in normal use are also expressly excluded.
Novelty
Designs must, of course, be new to be protected by Community design rights. In addition to mere novelty, that is, not being identical to any design previously made available to the public, Community design protection requires that a design must possess "individual character", meaning that it creates an overall impression on an informed user that is different from earlier designs. As with the requirement of "originality" in Canada, or "non-obviousness" in the U.S., it is expected that "individual character" will likely feature prominently in future design disputes.
Infringement
Acts that constitute infringement are unauthorized manufacture, supply, use, import, export, or other dealing. As noted above, an Unregistered Community Design right is infringed only if the design was copied. However, a Registered Community Design can be infringed even where the infringer was not aware of the design's prior existence.
Unlike design protection in Canada and the U.S., which applies to an identified article, Community design protection extends to any article. In other words, it is the design, itself, that is protected, and not the application of the design to a specific article.
Because of this, owners of new graphic trade marks, such as corporate logos, should consider Community design protection to supplement trade mark protection. The reason is that trade mark protection is based on a likelihood of public confusion as to product origin, which in turn, may depend on whether the parties' respective goods or services are similar or related. Community design rights may be infringed even if there is no likelihood of confusion of source because the parties' goods are totally unrelated and would not be expected to come from a common source.
The scope of protection for Community design rights, whether registered or unregistered, not only covers the unauthorized use of the identical design, but also extends to any other design that is so closely resembling that it does not produce a different overall impression on an informed user. This is also an area that will undoubtedly provide much room for debate in future litigation.
Excluded from being considered infringements are acts done privately for non-commercial purposes, experimental uses, and any reproduction of a design for the purpose of teaching provided that such reproduction is compatible with fair trade practice and does not unduly prejudice the normal exploitation of the design.
Application Procedure
An application for a Registered Community Design may be filed directly in the Office for Harmonization in the Internal Market, located in Alicante, Spain, or through the national office of any European Community country. Applications have been accepted since January, 2003, but those received through until the end of March are deemed to have been filed on April 1, 2003, which is the date the Registered Community Design scheme officially comes into effect.
Priority may be claimed from corresponding applications filed within the preceding six months in any member state of the Paris Convention. There is also a one year grace period: disclosures of the design by the designer or his successors, or anyone who derived knowledge of the design from them, do not invalidate a subsequent registered Community design provided that they took place less than a year before the application filing date, or applicable Convention priority date.
Multiple Designs
A single application can include any number of designs. Such designs do not need to have a common feature, but three-dimensional designs can only be combined where the specified products are in the same class under the Locarno Convention for classifying industrial designs. Combining multiple designs in one application offers a significant cost savings, and is particularly advantageous for industries and businesses that develop and market designs for whole product lines concurrently.
Examination and Challenges
Registered Community Design applications are given essentially no substantive examination. Provided they meet the formal requirements and the appropriate fees are paid, applications are to be accepted for registration. In most cases, an application will be published in the Community Designs Bulletin shortly after acceptance, but it is possible to defer publication up to thirty months from the filing date, or Convention priority date, if the proprietor desires to keep the design temporarily secret.
There is no pre-registration opposition procedure. Challenges of invalidity can though subsequently be raised before the Office for Harmonization in the Internal Market, or in civil actions in the appropriate national courts.
Term of Registration
The initial term of a Registered Community Design is five years from the filing date. A registration may be renewed for four further five year periods, to a total term of 25 years.
Costs
The costs for preparing and filing an application for a Community Design Registration are generally substantially less than the costs for preparing and filing corresponding separate national applications in any three member countries, and in some cases, less than the cost for national applications in just two member countries. The savings can be even greater for applications that include multiple designs. Thus, apart from any designs that have value in only one European country, it is expected that the significant cost savings of the Registered Community Design will result in very few new national design applications being filed in Europe.
Conclusion
Designs by their nature straddle the realms of form and function. Legal schemes to protect designs typically borrow from both copyright and patent concepts. In providing two levels of protection for registered and unregistered designs, the European Community is following a different approach from that of Canada and the U.S., but it is an approach that should appeal to many design owners.
The European Community currently includes most of western Europe and in 2004, much of eastern Europe will join: a total of twenty-five nations with a combined population of approximately 440 million. Registered Community Designs provide a very cost effective form of long term protection that should be considered by our clients for any new, or recently disclosed, designs.
For further information on protecting industrial designs in Europe, North America, and elsewhere, contact Bob Storey or David Langton.
|
