The visual appearance of your goods plays an integral role in their success. By investing in and developing innovative designs, you can use your product design to engage your target audience, stand out from your competitors, and secure your place in the market.
An asset as valuable as product design must be factored into your overall brand protection strategy. Registered community design right provides a convenient, cost-effective way of protecting your designs against copycats throughout Europe.
Here, our intellectual property solicitors explain what a registered community design is, what it can protect and how to obtain one.
Contents:
- What is a registered community design?
- What can be protected by a registered community design?
- Who can apply for a registered design?
- Do you need a solicitor to register a community design?
- Can you register a design after it has been disclosed publicly?
- Can you register multiple designs at once?
- How long does a registered community design last?
- How much does a registered community design cost?
- How long does it take to register a community design?
- How to register a community design
- Can I defer the publication of my design?
- What happens if my registration is challenged?
- Summary
What is a registered community design?
A registered community design protects your design’s appearance, including its lines, contours, shape, texture, materials, ornamentation, and get-up. You can seek registration for the whole of your design or a part of it.
Registered design rights are territorial, meaning that they protect your design only in the territory they are registered. Traditionally, to obtain protection in several countries, brand owners had to file design right applications on a territory-by-territory basis. Since 2003, when registered community design was introduced, brand owners can obtain Europe-wide protection for their design through a single application. When you own a registered community design, you have the exclusive right to use, sell, import and export any product incorporating the design throughout the European Union.
At the time of writing, the members of the European Union are Austria, Belgium, Bulgaria, Croatia, Republic of Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden.
Registered community design is a powerful right. It is monopolistic, meaning you can enforce it against any third party using your design or something too similar, whether or not they copied your design or developed theirs independently. A registered community design is far easier to enforce against copycats than unregistered design right. Whilst unregistered design rights arise automatically and so have no filing requirements, they protect your design only against copying. If a third party can show that they arrived at their design independently of yours, they are not liable for infringement, and you cannot force them to stop using their design. Registered community designs have greater longevity than their unregistered counterparts, lasting 25 years when properly renewed. Unregistered community design right lasts for three years.
What can be protected by a registered community design?
Registered community design right can protect both 2d and 3d designs. It does not apply to any design features dictated solely by the product’s function or need to connect to another product.
The types of designs that might qualify for protection as registered community designs are wide and varied. They include the following:
- Furniture
- Toys
- Packaging
- Logos
- Computer icons
- Typefaces
- Maps
- Mobile phones
- Tablets
- Cars
- Luggage
- Shop interiors
To qualify for design right, your design does not need artistic merit. It does need to fulfil the following two criteria:
- It must be novel, and
- It must have individual character.
Both tests are concerned with ensuring that your design is not too similar to any already available to the public.
To be new, your design must not be identical, or differ only in material details, to any previous designs. To be deemed to possess ‘individual character’, your design must create a ‘different overall impression’ on the ‘informed user’ to that produced by any previous design.
The ‘individual character’ test is more difficult to assess than that for novelty and requires an appreciation of comparable designs and an understanding of the relevant case law. Our intellectual property solicitors can help you find out if your design meets the criteria.
Who can apply for a registered design?
You can only apply for a registered community design if you are legally entitled to do so. If you register a design you do not own, your registration may be declared invalid.
The owner of a registered design can be an individual or a company. As a general rule, the right to apply for a registered community design vests in the designer or anyone to whom they have assigned their rights. An important exclusion applies to employment situations. When an employee creates a design during the course of their employment, it is the employer rather than the employee who has the right to apply for a registered community design.
When you collaborate with others to create a design, it is important to understand that the right to apply for a registered community design vests in you all jointly. If you wish to deviate from this default position, you must enter into a comprehensive, unequivocal agreement that clearly states how the design was developed and who owns the design right. It is sensible to work with specialist intellectual property solicitors, like ours, when preparing the agreement, to ensure it is watertight, and reduce the risk of acrimonious disputes later.
If you commission a third party who is not an employee to create a design on your behalf, it is crucial to put the requisite documentation in place assigning the rights in the design to you. If you don’t, you may find yourself in the unenviable position of having paid for a design you cannot register or, worse still, that someone else registers and gains the exclusive rights to use.
Do you need a solicitor to register a community design?
You are not legally required to use an intellectual property solicitor when filing an application for a registered community design. Given the complexities of the registered design right system, most brands choose to do so, to ensure the appropriate protection is obtained.
Following Brexit, if you are not domiciled or have your principal place of business within the European Economic Area (EEA), you must have professional representation for all dealings with the European Union Intellectual Property Office (EUIPO), the body responsible for administering all registered community designs. You must indicate your chosen representative in your application. If you don’t, the EUIPO will ask you to appoint one within two months, failing which your application will be rejected.
At the time of writing, the EEA includes all EU countries as well as Iceland, Liechtenstein and Norway.
Can you register a design after it has been disclosed publicly?
A design must be new and possess individual character to qualify for registered community design protection, meaning it cannot be too similar to anything already available to the public. If a design has been disclosed to the public before you apply for a registered community design, your application will likely fail.
A disclosure does not need to have been made within the EU to invalidate your entitlement to a registered community design; a disclosure made anywhere in the world will have the same effect. Disclosing it to just a handful of people will likely enough to invalidate your entitlement to register the design.
This general rule can be problematic for designers wishing to test the effectiveness of their design before committing to a widescale roll-out, or who need to get investors on board. To reflect this commercial reality, the law incorporates specific exclusions to the disclosure prohibition.
The most important exclusion applies to disclosures within the ‘grace period’. Any disclosure by the designer within the 12 months leading up to their registered design application will not count for the purposes of establishing novelty or independent character. This enables a designer to showcase the design at trade fairs, meet with investors and generally test the viability of their design without risking the validity of any subsequent design registration.
Any disclosure you make must be carefully thought through. Not all countries operate comparable grace periods, and some, such as China, do not allow for such periods at all. So, if you intend to use the design globally, you must take legal advice on the potential ramifications of your proposed disclosure before proceeding. To avoid jeopardising your position, the safest course of action is to apply for your registered design before you disclose it to any third parties. If this is not commercially viable, speak to us. We will devise a strategy that reflects your commercial reality and protects your rights.
Can you register multiple designs at once?
You can include multiple designs in your application, making registered community design a particularly cost-effective means of brand protection.
Each design must have the same owner and representatives and be in the same class under the Locarno Classification. The Locarno Classification breaks down goods into 32 classes, and a design is registered in the relevant class, enabling brand owners to search for any pre-existing designs more easily. Each class is fairly broad.
How long does a registered community design last?
A registered community design lasts for an initial period of five years but can be renewed up to a maximum of 25 years.
How much does a registered community design cost?
The EUIPO charges registration and publication fees for each registered community design. Currently, the total cost of registering one design is €350. Additional fees apply for each additional design included in your application.
Your legal representative’s fees are payable in addition to those charged by the EUIPO.
How long does it take to register a community design?
The EUIPO will only examine your application to confirm that it meets the formal requirements. It will not search for any prior designs that may defeat your claims of novelty and originality. Registered community design protection can be obtained in a matter of weeks, unlike other forms of intellectual property, such as patents, applications for which can take many years to process.
How to register a community design
A general overview of the registration process for a community design is as follows:
Conduct the relevant searches
Whilst not a formal requirement, it is advisable to carry out searches to identify any designs already registered or on the market that may invalidate your design registration or render you liable for design right infringement.
Prepare the application
Given that the purpose of design right is to protect how a product looks, it will come as no surprise that the most crucial aspects of your application are the graphic representations of the design. The representations may be by way of line drawings, photographs or CAD drawings, and must enable the EUIPO and anyone viewing your registration to easily identify and understand your design. If your design is two-dimensional, it may be possible to represent the design by way of specimen rather than drawings or photographs.
Since these graphic representations will dictate the scope of the protection your registration will provide, they must be carefully prepared and sufficiently precise. Our intellectual property solicitors will advise on the representations required to send with your application and assist you in collating them where necessary.
File the Application
Once your solicitor is happy that your application is accurate, they will file it at the EUIPO along with the relevant fee.
If you have applied to register the same design in another country within the six months preceding your application for a registered community design, you may be able to use the date of the previous application as the ‘priority date’ at the time of filing. This allows you to backdate your application and obtain protection from the date of your earlier application.
Examination
Upon receipt of your application, the EUIPO will examine it to check that it meets all technical filing requirements. It will not undertake searches of previous designs to confirm that yours is new and has individual character. Once the EUIPO has completed its examination, it will register and publish your design.
Can I defer the publication of my design?
Whilst the speed with which a registered design is ordinarily published is generally considered a positive, it can sometimes prove problematic. For example, you may be gearing up for a highly anticipated product launch in respect of which secrecy and surprise are crucial, and publication prior to the launch may jeopardise the campaign.
To cater for such scenarios, the EUIPO will refrain from publishing your design for up to 30 months in return for payment of a fee. You can then request publication at the appropriate time. You should note that you cannot enforce your registered design rights against third parties during the deferment period, unless they have been made aware of your registration.
What happens if my registration is challenged?
Design applications are not heavily scrutinised, and there is no opposition procedure akin to the one applicable to EU trade mark filings. The system enables designs to be registered swiftly and keeps costs down.
Following registration, your design may be the subject of an invalidity application, which, if successful, will result in its removal from the register. As a registered community design is a unitary right, any finding of invalidity will apply across the entire EU.
A registration can be attacked on a variety of grounds, including the following:
- The design is not new.
- The design does not possess individual character.
- The design’s appearance is dictated solely by the product’s technical function.
- The rights holder is not the legal owner of the design.
It can be disastrous to register your design and begin using it commercially only for its validity to subsequently be challenged. Not only do you risk having to pay the other side’s costs if their invalidity application succeeds, but you may also forego the goodwill and reputation you have developed in the design. You may be liable for design infringement.
Our intellectual property solicitors have vast experience of the community design registration procedure and will ensure your registration has the best possible chance of withstanding any subsequent challenges. If your registration has been challenged, our solicitors will defend the challenge on your behalf, seeking a quick, cost-effective resolution that protects your business interests.
Summary
Registered community designs provide brand owners with a quick, low cost and highly effective form of brand protection. One application can incorporate numerous designs, and registration grants you a monopoly over them all. Once registered, you can enforce your design against copycats and commercialise it as required, such as through licensing programmes. Whilst registered community design is usually used in conjunction with other crucial forms of intellectual property protection, such as trade marks, it is a distinct and valuable right in itself, providing a unique means through which to protect your brand’s aesthetics. Registered community designs provide protection in the European Union, if you want to protect your design in the UK read our guidance on how to register a design in the UK.
