Community Design Registration (EU)
A Registered Community Design (RCD) confers simultaneous protection in the whole European Union when filed with the European Union Intellectual Property Office (EUIPO) placed in Alicante, Spain. The registration procedure for designs and models is ruled by the Community Design Regulation (EC) 6/2002. The whole process can take less than one month until it is registered and published. Community designs are registered on a first-to-file basis. The application and publication fees shall be paid at the time the Community design is filed. Registration is granted for a period of five years from the date of filing, renewable for subsequent periods of five years and up to a maximum of twenty five years. Once it has been granted, the owner is entitled to use it,to prevent use or exploitation of said design by unauthorized third parties and to obtain compensation if any other uses it without the owner’s consent, after the design has been granted and published.
The Community design registration procedure is ruled by the European Union Intellectual Property Office (EUIPO), located in Alicante, Spain, which anciently and until March 23, 2016 was called the Office for Harmonization in the Internal Market (OHIM).
E.U. Countries. The European member states which are protected simultaneously by the Registered Community Design system are:
(CZ) Czech Republic
(GB) United Kingdom
Main Points of Community Designs.
What Can Be Registered? The external visual appearance, ornamental or aesthetic aspect of any product or industrial or handicraft item, including packaging, graphic symbols and typefaces can be protected, as well as any three-dimensional product or two-dimensional patterns, lines or combination of colours, as long as it is new and has individual character. Complex products or parts of products that can be taken apart and reassembled can also be protected as a design in the European Community.
Multiple Design Applications. A Community design allows multiple designs or variations in a single application (unlimited number) taking advantage of a bulk discount, provided that all belong to the same Locarno class, while they do not need to be classified in the same subclass, except ornamentations which have a precise class, and their nature is clearly indicated. The manner in which a product is specified or its Locarno class would not affect nor determine the scope of protection of the registered Community design.
Grace Period. The grace period will allow applying for registration of an industrial design after it has been disclosed or commercialized, without destroying the required novelty of the industrial design, provided it will be applied for in the country concerned within a period of one year from the date of that first disclosure or use, with the EUIPO.
Registered and Unregistered Designs. Both registered and unregistered designs confer protection to its owner against any unlawful action, such as for putting the product on the market, offering, manufacturing, importing or exporting the product, without the consent of his proprietor. However, there are some important particulars and differences to consider before you take the choice: 1. Registered Designs. The validity of a registered designin the European Union is of five years from the date of filing and can be renewed in blocks of five years up to a maximum of 25 years, conferring a quite long term protection. Once your design is registered you can then use the ® symbol on your product or packaging, coming to confirm it is registered and act as a warning to any unfair competitors seeking to commercialize your design. The enforceable protection not only confers the right to prevent others from marketing identical copies of a product marketed but also against confusing imitations of the product or object covered by the registered design. 2. Unregistered Designs. An unregistered design would be protected for a maximum term of three years in the whole EU from the date on which the design was first disclosed within any country of the European Union. When you are not sure if it will be profitable, you may be able to commercialize it directly and if it is likely successful, then you may apply for registration before one year from that first disclosure, the so-called “grace period”. If it has not been registered before said one-year grace period, the unregistered design protection will expire after three years, without being possible to extend this right. Therefore, it is preferable to register your design, because without registration it can be very difficult to prove your rights originating from that first disclosure in the marketplace and to prevent others from using the same or a similar design of your product. Furthermore, it will be significantly easier to bring legal action against third party’s infringements or unfair competition acts based on your registered design.The enforceable protection in this case will only confer the right to prevent others from marketing identical copies of that product. The protection period of three years conferred to unregistered designs (without the need for registration) is very helpful for those industrial and commercial sectors that are engaged in producing large numbers of designs for products that have a short life in the market, in particular for the fashion industry, being a practical, adequate and a reasonable term of protection.
Who May Apply? All natural persons and legal entities, regardless of their citizenship or residence.
Designer. You may indicate the name of the designer(s) or creator(s) in the RCD application, however it would not be mandatory and you may waive the right to be cited.
Classification of Designs. A design or multiple designs included in one application must be correctly classified, indicating the nature and purpose of the product according to the Locarno Classification.
Validity. The Community design is granted for an initial period of five years which can be renewed for further periods of five years on payment of design renewal fees up to a maximum of twenty five years. All rights in a Community design registration date back to the filing date or when it was first disclosed and not when the design is granted.
Priority Claim. The European Union is member of both the World Trade Organization and of the Paris Convention, ensuring Spanish and European nationals certain protection of their rights in all other signatory countries; The applicant of a Community design application may claim priority within a non-extendable six-month period of filing as support for an international filing of the design registration abroad. Also, any person or entity who has filed a design application in one of the signatory countries of the Paris Convention has a right to claim that filing date within the non-extendable priority period of six months for design registration in the EU.
Deferment of Publication. The publication of a design may be deferred for a maximum period of 30 months at the applicant’s request.
Courts for Design Infringement. Enforcement action under civil law, concerningcommunity designs infringement or unfair competition in the Spanish territory are to be brought at the competent Commercial Court of Alicante, Spain. Appeals lodged against decisions made by the Commercial Court of Alicante are revised by the Provincial Court of Appeal of Alicante.
How Abecsa Can Help You. The value-added services we provide for community design registration can be summarized as follows:
Plan Your IP Strategy. We can help you plan your IP protection strategy in the related territories, according to your needs and budget, but always with the aim to obtain the widest protection as possible by also avoiding common filing mistakes that could suppose a threat to the validity of your IP rights in the future.
Free Search. We will conduct a free basic search by owner or designer in all Registers with effect in the European Union (EUIPO, WIPO, OEPM) to help you finding if your product is not registered by a certain owner or cited designer and it is likely available before we apply for a Community design. If you wish, we could also carry out an accurate and comprehensive search (currently, no accurate search retrieving designs based on similarity can be done inexpensively) along with our written search report and a risk assessment, by using tools and databases that are not publicly available. This is a highly skilled work that should be conducted by a specialized IP professional.
Filing. We would file the Community design application on your behalf, foreseeing the relevant aspects and the correct manner it should be applied for, depending on the kind of product to be registered, the type and number of views; up to 7, that can best represent each design or variation (plain, in elevation, cross-sectional, in perspective, exploded), colours to be used if pertinent, etc. We have fixed fees for filings as well as for design prosecution in this regional Office so you can foresee the estimated costs for your design protection in the EU.
Prosecution and Management. We will monitor the process of your design until its registration is finally published and duly inform you of every official communication we receive from this Office, along with our preliminary advice on the step to take, if needed, as well as by sending you the publications and informing you of all deadlines to have in mind, including reminders and next renewal due notices, well before the given time limit, in order to avoid extra charges or any resulting loss of rights.
Defense. – Office Actions. If your design application is objected by the EUIPO, based on the formalities check or substantive examination that a Community design application must go through, or if it is challenged by a third party after grant (declaration of invalidity), we can study the cited grounds for refusal or the relevance and differences of the earlier right on which the cancellation has been based and file the Office action response in defense of your rights within the given time limit, by planning the adequate strategy so we likely ensure success and uphold the desired registration of your design, and hence a solid enforceable registered design protection. – Litigation. In enforcement, we can represent and assist either the claimant or the defendant in design rights infringement proceedings both with the Spanish or European Courts.
Other Actions. We can handle any associated matter on Community designs such us the recordal of licenses, change of names and ownership transfers.
Representation Before the Office. All persons or legal entities outside of the EU without a domicile or valid address for notifications in the EU are required to appoint a representative for the RCD. Applicants who are non-EU members always need to be represented by an attorney or a registered legal practitioner with the EUIPO. We would be glad to be your agent! You can enquire us about the representation of our firm and included associated services.
Community Design Registration Procedure and Time Taken. The entire registration process would be straightforward, taking less than one month.
- Filing of the Design Application in the EC. The application must be filed including the identification of the proprietor and of the designer, a representation of up to 7 views for each design; the Locarno class along with a definition of the product covered by the design and the adequate application fees for each design included. The filing date of a Community design will confer a temporary right for this design while it is being examined and follows the mandatory proceedings.
- Formalities Check. Once the European design application is filed, its formalities will be examined to make sure the classification and indication of the product is correct, the representation of the views are clear enough, the fees cover all the designs applied for or if the applicant is required to be represented by an attorney and confirm that it is legible and not contrary to public policy or morality. If any objection or deficiency is found, the design will be suspended by the examiner, and the EUIPO will notify the applicant of the absence of formal requirements or deficiencies, having two months for remedying the aroused objection or for filing his own observations in reply. Novelty Check: The EUIPO will not check earlier design rights nor the novelty or individual character of your design application during the proceedings. This means that only third parties can challenge your design registration by filing a declaration of invalidity after the design is registered, never during the examination procedure.
- Registration and Publication. If no official objections arise or, if there were but by the decision of the EUIPO these are found remedied and overcome, the design will proceed to registration in the EU for an initial period of five years from its application date. Registration shall be published in the Official Bulletin and the EUIPO will issue the certificate of registration electronically. This decision can be challenged any time after the publication of registration.
- Cancellation Action. The design may be challenged by formally filing a declaration of invalidityany time after the publication of registration. The Invalidity Division of EUIPO would establish the procedure and provide with the opportunity to exchange observations between the declarant (cancellation) and the holder (defense) who will set-out the time limits; commonly giving one or further rounds of two months to enable each party to file their respective allegations in reply. Both the cancellation action and the defense of the challenged design require to be properly argued, as of the result of a final decision, the examiner may declare the Community design invalidor the design registration canbe upheld.
- Refusal. The design can be denied entirely or in part if the cancellation proceedings were successful or the objection was upheld by the EUIPO. This decision can be appealed within two months from the notification of the adverse decision and the statements of grounds should be filed within the next four months.
International Designs Protecting the EU. International designs that elect the European Union (pursuant to the Hague Agreement) will have the same legal effect as a Community design and as if it was filed directly with the EUIPO, which must follow an analogous process and comply with the same requirements.
Information and Requirements to File a CommunityDesign Application:
- The full name and address of the applicant(s)-holder(s).
- The nationality or country of establishment of the applicant(s)-holder(s).
- VAT Number (NIF/NIE), only if the applicant is Spanish or established in a country of the EU.
- Name and nationality of the designer(s).
- Full details of the design and if appropriate, and a good representation of all the needed views of the design in JPG or similar.
- Short description of the product(s) or design(s) to be registered.
- The details of the application on which Convention Priority is to be claimed, if appropriate, within 6 months from first application date, along with the Certificate of Priority.
- First disclosure of the product(s) or design(s) in a specific country of the European Union and place, if any.
- Your instructions on how we should proceed and approval of the likely costs.
- Your immediate payment by bank transfer from invoice issue.
Please do contact us via our contact form if you need advice or our fees on any design issues such as:
- Registering your design in the EU or an International Design Registration designating the EU.
- Seeking our Attorney’s representation and appointment in your design registration.
- Opposing or declaring invalid a Community design registration applied for by others.
- Defending your challenged Community design or International Design Registration designating Spain, from an opposition, a declaration of invalidity or an appeal.
- Taking legal action against infringement of your registered or unregistered design right in Europe being used by another person or company.
- Renewing your Community design for an additional five-year-period.
- Licensing the use of your designs or selling them ensuring the recordal of assignment of the designs to others.
Confidentiality. If this is the first filing of your design, it is convenient that you do not disclose the aesthetic characteristics to others until you have applied for design protection, this may mean, in some cases, that you might not be able to protect it, or your design may be declared invalid by anyone who proves this preceding disclosure (lack of novelty). However, you can safely discuss it with us, because as registered patent attorneys and lawyers, any information you disclose to us is legally privileged and confidential, using it strictly for the purpose or needed service we are instructed to handle in your name.