Register your Community Design in Europe

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.

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.

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 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.