Artist Bjørn Bjørnholt

Protection of designs in the EU

Erik Sigh M.Sc. Electrical Engineering European Patent Attorney European Design Attorney T +45 33 63 93 46 E ers@pv.eu November 2012

Definitions A design is:

the visual 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 itself and/or its ornamentation

A product is: any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs

A complex product is: a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product

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Definitions Design is not:

- Technique, function

- Methods, instructions, mode of operation

- Software

- Taste

but only the visual appearance

Aesthetics (beautiful, ugly, pleasing, attractive …) is of no importance

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Protection of designs in the EU A design shall be protected by a European Community design to the

extent that

- the design is new and

- has individual character

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Novelty A design shall be considered to be new if no identical design has been

made available to the public:

- in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public – anywhere and by any means,

- in the case of a registered Community design, before the date of filing of the application of the design for which protection is claimed, or the priority date.

Designs shall be deemed to be identical if their features differ only in immaterial details

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Novelty Novelty is global and “subjective” novelty:

The design is not considered to have been made available to the public:

- In cases where the design could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union (this is a narrow exception!)

- In cases in which the design has been made available to the public by the designer himself during the 12 month period preceding the date of filing the application (grace period)

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Individual character A design shall be considered to have individual character if the overall

impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public:

- In the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public

- In the case of a registered Community design, before the date of filing the application for registration, or the priority date

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Individual character - The informed user is e.g. a person with an interest in the design,

such as a potential buyer

- In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration

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Individual character

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Individual character

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Individual character

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Protection of designs in the EU A design for a component part of a complex product is only considered

to be new and to have individual character if

- the component part, once it has been incorporated into the complex product, remains visible during normal use of the product, and

- the visible features of the component part fulfil the requirements as to novelty and individual character.

Normal use shall mean use by the end user, excluding maintenance, servicing and repair work.

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Protection of designs in the EU A design right cannot be obtained for the parts of a product’s appearance

which

- are solely dictated by the technical function of the product, or which

- must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function

However, a design right of a design may be obtained if the design serves the purpose of allowing the multiple assembly or connection of the mutually interchangeable products within a modular system.

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Registered Community Design, RCD The application is filed with OHIM in Alicante, Spain or with a national

authority

The application must include representations (drawings, photos) showing the design

Priority period: 6 months

Priority can be claimed from a design application or a utility model application (not a patent application!)

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Registered Community Design, RCD Applications are only examined for formalities.

Material requirements for novelty and individual character are not examined

When formalities are OK the design is registered and published by OHIM – usually within a few weeks

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Registered Community Design, RCD - Duration: 5 years from filing date

- Renewable for periods of 5 years to a maximum of 25 years from filing

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Registered Community Design, RCD - The scope of the protection includes

- any design which does not produce on the informed user a different overall impression – i.e. any design without individual character compared to the registered design is protected

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Invalidity of a Registered Community Design, RCD Any third party may file an application for having a Registered Community

Design declared invalid.

Application for invalidation must include a statement of grounds for invalidity

No time limit

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Unregistered Community design - After the first publication in the EU, the designer automatically has

3 years’ protection

- only direct copying is protected

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Spare parts - are parts used for repairing a complex product to restore its

original appearance

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