Protecting Product Designs in Europe has become Easier

Design protection is becoming an increasingly attractive option for clients who develop and introduce products at a relatively accelerated pace.  Exclusive rights in a design can be acquired in months, whereas the acquisition of patent rights can take years.  Design protection can also be advantageous when the client has a large product portfolio since the cost of acquiring design protection for a product is much less than the cost of acquiring patent protection for the product.  Since April 1, 2003, protection for product designs has been available in the European Union (EU) in the form of a "Community Design."  Generally, in comparison with U.S. law, the protection scheme most closely resembles copyright – relatively narrow protection and relatively easy acquisition.  Community Design protection is available in two forms, Registered Community Design (RCD) protection and Unregistered Community Design (UCD) protection.  Both forms of Community Design are enforceable in all twenty-five of the member states of the EU.  A limited number of courts have been assigned responsibility for resolving Community Design disputes to promote consistency in the application of the law.

As a legal right, a UCD is much like an unregistered copyright in that it comes into existence only when asserted against an alleged infringer.  An RCD can be acquired from the Office for Harmonization in the Internal Market (OHIM). http://oami.europa.eu/.  The system for acquiring a Registered Community Design has been designed to be simple, inexpensive and quick.  The application is examined only for formalities, the cost to file is about $450, and the RCD issues in three months.

Eligibility for Protection

To be eligible for protection as a Community Design, the proposed design must be new and have individual character.  The design is defined by 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. 

• For UCDs, a design is new if no identical design has been made available to the EU public prior to the date that the unregistered design was made available to the public.  Importantly, if the design is first made public in a non-EU jurisdiction, protection as a UCD is not available.

• For RCDs, a design is new if no identical design has been made available to the public prior to the filing date of the application or the date of priority.  However, the applicant has twelve-months from the initial disclosure to file for an RCD.

Designs that satisfy the requirements of novelty and individual character may still be denied protection.  Features dictated solely by technical function cannot be protected.  Mechanical fittings that engage two other modular products can be protected, but appear to be subjected to a higher scrutiny so that the inter-operability of component products of different makes will not be hindered.  Protection cannot be extended to component parts that are not visible during normal use of a product.   Designs contrary to public policy or morality cannot be protected.

Rights Afforded and Differences between UCDs and RCDs

The holder of a Community Design (UCD or RCD) has the exclusive right to use the design and prevent any third party from using the design.  "Use" includes making, offering, putting on the market, importing, exporting, or stocking.  The differences between the two forms of Community Design (UCD and RCD) become clear during the enforcement of rights.  The first difference between UCDs and RCDs relates to the burden of proving copying.

• The holder of a UCD has the burden of proving that an alleged infringer copied the design in order to make a prima facia case of infringement.  The alleged third party infringer is not required to prove independent creation.

• The holder of an RCD is not required to prove that an alleged infringer copied the design in order to make a prima facia case of infringement.

The second difference between UCDs and RCDs relates the consequences of independent creation.

• A third party independent creator has unfettered rights in the design relative to the "holder" of a UCD.

• A third party independent creator may have limited rights relative to the holder of an RCD if substantial efforts have been expended to commercialize the design.

Commencement and Term

For UCDs, rights arise on the date on which the design was first made available to the public within the EU and lasts for three years.  For RCDs, rights arise upon filing the application and last for five years.  The term may be renewed for five year periods up to a total term of twenty-five years.

Prosecution of an RCD Application

A single application for RCD may cover more than one design.  However, all of the designs must fall within the same Locarno Classification. See http://www.wipo.int/classifications/locarno/en/#P10_192.  The application can claim priority to a design patent or utility model filed within the previous six months.  A priority claim can be made upon filing the application and must be made at least one month from the filing date of the application.  Examination of the application is made to confirm that (1) the legal requirements of novelty and individual character are met and (2) the design is not contrary to public policy or morality.  The OHIM does not undertake searches for identical or similar designs.
 
The application will be published upon registration of the design unless deferment is requested.  The applicant may elect to defer publication up to 30 months.  The RCD can be granted prior to publication.  If the applicant wishes to institute legal proceedings on the RCD during the period of deferment, the applicant must communicate the contents of the registration file to the person against whom the action is brought. 

When does a Community Design make sense?

In view of the minimal cost and ease associated with the acquisition of an RCD, UCDs appear to provide very little value.  A UCD is best viewed as an option of last resort.  RCDs  appear to provide a valuable basis of exclusivity in several scenarios. 

• When the aesthetic appearance of the product is important – The implementing regulations for RCDs do not bar concurrent filing of application for RCD and application for utility model or design patent.  Thus, a design that is aesthetically valuable can be substantially immediately protected by an RCD while more robust protection is acquired.  
• When urgency is required – If the time between conception and production is short, an RCD can provide a expedited barrier to competition until a broader, more valuable utility patent issues.
• When the potential scope of a utility protection is narrow – If the scope of coverage of a utility patent is substantially commensurate with the scope of coverage of a Community Design, a Community Design is much less costly and can be obtained much quicker than a utility patent.