Community Designs

Originally published in August 2002

As part of a continuing process of harmonization of laws within the European Community¹ , a new intellectual property right, the Community design, is in the course of being introduced. The unregistered Community design came into force on 6 March 2002 and gives protection against the copying of a design for three years; the registered Community design is intended to come into being in 2003 and will give a monopoly right in the design for up to 25 years. Both registered and unregistered Community designs are the subject of European Council Regulation EC 6/2002.

The new Community design, in both its unregistered and registered form, is likely to have a far reaching, and significant, effect on those doing business within the European Community and should be given serious consideration. Furthermore, unlike certain other rights currently available (for example the UK "unregistered design right"), the Community design is available to US based citizens and corporations.

Prior to the introduction of the Community design, the protection of designs varied widely from one EC Member State to another—and the protection given was confined to the territory of the EC Member State concerned. Regulation EC 6/2002 introduces a unified system for obtaining a Community design to which uniform protection is given with uniform effect throughout the entire territory of the European Community. This Community design gives an additional layer of protection since the existing laws providing design protection in each of the EC Member States will remain in place; the provisions of the Regulation are "without prejudice" to any provisions of Community Law or of the law of the European Community Member States relating to "unregistered designs, trade marks or other distinctive signs, patents and utility models, type faces, civil liability and unfair competition".

Basically, the Community design will cover any design which is new² and has individual character³ . The term "design" is defined to mean "the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product or its ornamentation". "Product" includes "any industrial or handicraft item, including … parts intended to be assembled into a complex product, packaging, get up, graphic symbols and typographic typefaces but excluding computer programs". Indeed, the Community design will cover virtually all features of the appearance of a product, except those which are solely dictated by a product's technical function.

An important provision is that disclosures of the design:

• by the designer;
• by a person other than the designer in consequence of information provided or other action taken by the designer

in the 12 months prior to an application for a registered Community design are not taken into account when assessing whether a design is "new". Thus disclosure of a design before an application for a registered Community design is made (or treated as having been made) will not automatically defeat the application.⁴ Although this 12 month period gives time to assess whether it is commercially worthwhile applying for registration, it may still be preferable to apply for registration as soon as possible so as to minimise the possibility of a third party obtaining rights in that or a similar design.

The Community design, particularly in its registered form, is likely to be regarded as a very powerful commercial weapon. An application for a registered Community design has to be made by the designer to the Office for Harmonization in the Internal Market ("OHIM") which is in Alicante, Spain. A registered Community design will confer the exclusive right to use not only the design which has been registered but also any other design "which does not produce on the informed user a different overall impression". This exclusive right will include the right to prohibit others making, offering, putting on the market, importing or exporting products in which the design is incorporated or to which it is applied. The right applies even if the design is intended for one type of product but is actually used on another.

So, for example:

• a design for a vehicle could be used to prevent a manufacturer producing a toy (or any other product) to the same design;
• the design for a logo or packaging or other get-up could be used to prevent the use of that logo or packaging or other get-up on any product;
• the design for a pattern on a tie could be used to prevent the use of that design on any other product;
• any of the designs above could be used to prevent the use on any other product of another design which gives the same overall impression.

The protection provided by an unregistered Community design is the same as that provided by a registered Community design with the exceptions that the protection:

• only lasts for three years; and
• only applies where the contested use results from copying the protected design.

However, the unregistered Community design arises automatically on the making available of the design to the public within the European Community, provided certain conditions are met. As its name implies, it does not require registration.

The new Community design brings with it both opportunities and risks for those doing business in the European Community. It provides a vehicle for greater protection for many types of designs, but the corresponding risk is that whoever introduces into or uses a design in the European Community will have to make sure both that no product with an identical or similar design has been introduced previously into the European Community and that no registered Community design proves a threat. (In some instances it may be impossible to eliminate the risk entirely since it is possible when filing an application for a registered Community design to request that the publication of the application be deferred for up to 30 months from filing (or the priority date), and an infringement action can successfully be brought against a party whether or not they knew of the existence of the design).

It is recommended that:

1. where a new product (or other material capable of protection as a design, such as a logo, packaging or get-up) is to be introduced into the European Community, the position is reviewed now to see if it is possible to obtain a Community design in, or otherwise relating to, that product etc; and
2. the protection you presently have for trade marks in the European Community is reviewed, particularly because of the opportunity to obtain design right in circumstances where the protection given by a registered trade mark is less broad.

This note is only a brief summary of what is a complicated right, with far reaching effects. Indeed full details of the cost and precise manner of applying for a registered Community design still have to be announced. However, we are arranging a series of seminars on the Community design, and how it compares with other intellectual property rights available in the European Community. If you would like to be informed of details of these seminars in due course or have any queries, please contact Ian Wood in our London office.

Copyright © 2007, Mayer, Brown, Rowe & Maw LLP. and/or Mayer Brown International LLP. This Mayer Brown article provides information and comments on legal issues and developments of interest. The foregoing is not a comprehensive treatment of the subject matter covered and is not intended to provide legal advice. Readers should seek specific legal advice before taking any action with respect to the matters discussed herein.

Mayer Brown is a combination of two limited liability partnerships: one named Mayer Brown LLP, established in Illinois, USA; and one named Mayer Brown International LLP, incorporated in England.