Client Alert - New Design Protection in the European Union

01.03.2003

The new European Regulation on Community Designs introduces a single, unified European Union-wide system for the protection of designs. Up until now, the long-term protection of designs involved a long and costly procedure of applying in each of the 15 member states of the European Union for a patchwork of rights. Starting January 1, 2003, however, it is possible to file for a single Community Design Registration ('CDR') that will grant long-term, European Union-wide rights (although existing national registration systems will still be in effect for those seeking protection in just one country).

Definition of 'Design' Is Broad

The Regulation defines a 'design' as the appearance of the whole or a part of a product (excluding computer programs) resulting from its features, such as the lines, contours, colors, shape, texture, and/or materials of the product itself and/or its ornamentation.

Unlike U.S. design patent protection, which requires 'non-obviousness,' or European Union trademark protection requiring 'distinctiveness,' the new Regulation will apply to 'novel' designs having 'individual character.' In other words, the design must be new (i.e., not previously made 'available to the public') and must create a different overall impression to an informed user from any previously available design.

Two-Tier System of Protection

The Regulation introduces a two-tier system of protection: (1) a short-term unregistered design, and (2) a longer-term registered design.

The Unregistered Design (3-year protection). As of March 6, 2002, any new design 'made available to the public' in the European Union is automatically protected from copiers for three years from the date of the design's availability to the public.

The Community Design Registration (up to 25-year protection). By contrast, the CDR offers broader and longer-lasting rights than an unregistered design. The term of a CDR is five years from its filing date, and it is renewable for five-year terms up to a maximum of twenty-five years. The right conferred by a CDR is a patent-like 'monopoly' in the design. Thus, the design owner need not show that an infringer copied its design.

In addition, while the application for a CDR must indicate the product on which the design is applied or into which it is incorporated, the scope of protection of the registration is not limited to that particular product.

Community Design Registration Is Simple and Fast

Applications for the CDR will be processed by the European Office for Harmonization in the Internal Market ('OHIM') in Alicante, Spain. No substantive examination of applications for novelty or individual character will be conducted by the OHIM before a registration issues. Thus, it is anticipated that the registration process may take weeks or just a few months from the application date.

One application covering multiple designs for the same (or a similar) product will be possible. For a small additional fee, the details of a design application may be kept confidential for up to thirty months from the date of application, allowing a design owner to keep its design secret until the product incorporating the design is launched.

Applications for the CDR will be accepted starting on January 1, 2003, but the effective filing date of those applications will be April 1, 2003. While applications will be processed as they arrive, no registrations will issue before April 1.

Community Design Registration Is Low Cost

The Official filing fee for a CDR covering up to three designs is approximately US$350. Additional designs over three may be included in one application for an additional discounted Official fee. The Official fee to defer publication of a design application for up to thirty months from the date of application is approximately US$40.

Many Industries Will Benefit

The Regulation will benefit all industries where designs are important. The unregistered design will be especially important for those companies (such as in the fashion industry) whose products have a short market life or that produce large numbers of designs, only a few of which are eventually commercialized. The registered design, on the other hand, will be particularly advantageous for companies that require broad, long-term protection for their designs, either because their products have a long market life (e.g., automobiles, toys) or have become classics (e.g., liquor bottles, perfume bottles).

U.S. Design Owners Should Consider Acting Quickly

There is a twelve-month grace period after a design is 'made available to the public' to apply for a CDR. However, it remains to be seen how the European courts will interpret the rules pertaining to the grace period. Marketing a design outside the European Union may start the clock running on the grace period if a significant number of European consumers encounter the design in their travels. Thus, U.S. designers should consider applying for a CDR as soon as possible.