M&D provide a a full IP service to our clients, and this includes some of the less well known aspects of IP, including advice on design and copyright. We will be hosting a webinar on Wednesday, 30th September at 12.30 to discuss these aspects in more detail. You can book a place at our webinar here. However, to give some introduction to the topics, today we are going to discuss the European Community Design.
The Community Design regulation has far reaching consequences for all businesses in the European Union. Since it was created in 2003, the pan-European design right has proved to be very attractive. To date, more than 450,000 registrations have been granted and are in force across the European Union.
The Community Design
The Regulation created two forms of protection, namely (1) an unregistered community design and (2) a registered community design. Designs which are new and which have individual character are protectable by these rights. A design is new if it has not been published within a grace period of one year before the date of application or priority date. Novelty can be destroyed if an identical design (or a design which differs only in immaterial details) has been prior published. Individual character is present where the overall impression created by the design on the informed user differs from the overall impression created by any design made available to the public before the filing or priority date.
A “design” is defined as 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 a product and/or its ornamentation. A “product” is defined as any industrial or handicraft item including packaging, get-up, graphic symbols and typographic typefaces but excluding computer programmes. Both three dimensional shapes and two-dimensional representations can be protected as community designs. Visible components of complex products are also protectable.
Any feature of a design the purpose of which is wholly functional is excluded from protection. Also excluded is any feature which is present to enable the product to fit with another product so that either product can perform its function. No community design right applies to a design which is contrary to public policy or accepted moral principles.
Every qualifying design is automatically entitled to protection as an unregistered community design for a non-extendable period of three years from the date upon which the design was first published in the European Union. No unregistered community design right exists where a design was first published outside the territory of the European Union. If publication occurs first in a non EU country, then protection within the EU is available only by way of a registered community design filed within one year of the date of the foreign publication.
A registered community design gives protection for an initial period of five years, renewable at five yearly intervals to a maximum term of twenty five years.
An unregistered community design is infringed by the unauthorised copying of the protected design whereas a registered community design gives the owner the exclusive right to the use of the design and that right is infringed by its unauthorised use irrespective of whether or not the registered design has been copied.
The exclusive right to the use of a community design is vested in the designer or the designer’s successor in title, except when the design is created on behalf of the designer’s employer, in which case the design belongs to the employer.
Notwithstanding an administrative requirement to name a product to which the design can be applied and to nominate a class of goods within which the product falls, the registration itself will not be limited to any product or class, because a registered community design protects the “design” per se, irrespective of the product to which the design is applied.
A community design is unitary in character and gives protection for the design in all Member States of the European Union. Design protection is also available in other countries based on a Community design application. Applications for corresponding protection abroad must be filed within six months from the date of filing of the initial design application, if the priority date is to be claimed.
A European Community Design Registration currently covers the 27 Member States of the EU and the United Kingdom. A new UK National Design Registration will be created automatically for all Community Design Registrations in force on 1st January 2021 when the transitional period for Brexit expires.
National Irish law has been harmonised with the Community Design provisions and consequently national Irish registered rights are also available. Irish registered designs can be obtained as an alternative to community rights or can co-exist with community rights.
If you cannot make our webinar on 30th September, but would like to know more, please register anyway and we will share the recording of the webinar with you after.