Community design protection

Community design protection

What is Community design protection?
Community design protection is uniform protection covering the whole of the European Community, the holder of which is identical with respect to each Member State, and which comes into existence and becomes terminated with respect to each Member State simultaneously and uniformly.

Community design protection is a legal instrument in the European Union that takes an important role in the operation of the uniform internal market by facilitating the free flow of commodities and services between the Member States.

The Community design protection system was established by Council Regulation (EC) No 6/2002 on Community designs, and on the basis of the said regulation, registered Community design protection has been available since 1 April 2003. The above-mentioned Community regulation is implemented by Commission Regulation (EC) No 2245/2002 as well as by Commission Regulation (EC) No 2246/2002 on the fees payable in respect of Community design protection.

The Community design  system is run by the Office for Harmonization in the Internal Market (OHIM), which has accepted applications for Community design protection since 2 January 2003. From the date of entry into force, i.e. 6 March 2002, the Community Regulation has also provided protection to unregistered designs.

What are the types of community design protection?
Contrary to the Hungarian regulations, the Community design system makes a difference between the protection of registered and unregistered Community designs. The basic conditions of eligibility for protection are identical in both cases: the design may be protected if it conforms with the requirements of novelty and individual character, furthermore the scope and the effect of design protection are identical, and so is the field of conditions under which - should they be prevailing - the design may not be protected, or the declaration of invalidity of the protection may be requested (grounds for refusal).

The differences between the two types of protection can be summarised as follows:

• Manner of obtaining protection: designs protected without registration provide uniform protection with an effect covering all Member States without conducting any  procedure. Protection shall take effect upon the first  making available to the public within the European Union. In the case of registered Community designs, protection can be obtained for the design on the basis of the  application filed with the OHIM, by conducting the procedure specified in the Community Regulation, and through the registration of the design.

• The term of protection: the term of protection is three years in the case of Community design protection without registration, and five years in the case of registered designs, which may be extended on four occasions, which means that the term of protection may cover 25 years in the case of registered designs.

• Rights conferred by the design: in the case of Community design protected without registration the protection takes the nature of competition law: the holder of the design protection may proceed against acts qualified as  use without consent of the design only if these acts have been carried out by copying the design, i.e. this type of protection is only effective against intentional copying. At the same time, the holder of the Community design protected on the basis of registration may also proceed against bona fide, independent developers,  designers as well as entities who infringe the design protection unintentionally.

What are the advantages and the drawbacks of Community design protection?
The advantage of the protection of registered Community designs is that protection may be obtained through one single application, in one language, against a single fee, simultaneously in the territory of all 28 Member States of the European Union, and within the framework of one single procedure.

Therefore, the protection does not require the launch of a time-consuming and expensive procedure in each and every Member State coping with the difficulty of different languages, fees and legal regulations. Notwithstanding this fact, if it is not justified to obtain protection in all Member States with a view to the planned market introduction of the product, it is also possible to obtain protection only in specific Member States on the basis of the national legal regulations, moreover, both Community and national protection may be obtained for the same design. Namely, national and Community design protection do not exclude each other, and they may exist parallel with each other.

It is also an advantageous feature that - in conformity with the national legal regulations - the making available to the public of the design does not prejudice novelty (i.e. it does not represent an obstacle that excludes the obtaining of protection) if the designer or his/her legal successor files the application for the design with OHIM within 12 months calculated from the date when it was made available to the public. The 12-month grace period provides the opportunity to consider and to decide whether it is worth obtaining design protection through registration under the specific market conditions.

Protection of unregistered designs offers a tailor-made solution for industries that manufacture quickly-changing or depreciating products, for example, clothes or footwear. At the same time, the uncertainty related to the  establishment of protection may prove to be a risk factor in a legal dispute, i.e. evidencing the date of making available to the public, what the protection actually covers as well as whether the case of intentional copying prevails.

What can Community design protection be obtained for?
A protected design may refer to the appearance of a part or the whole of a product, which results from the external characteristic features of the product itself or its decorative elements - especially the figure, the contour, the colours, the shape, the surface as well as the features of the materials. Accordingly the design is always attached to a given product. However, it is also important to note that the protection refers to the design itself, and it is not necessarily restricted to the product indicated in the  application. The product may be any industrial or handicraft commodity, except for computer programmes. The circle of products also covers, among others, packaging, get-up, graphic symbols, typographic typefaces as well as the parts (components) serving the assembly of a complex product.

When can the design be granted Community design protection?
The two basic requirements of design protection are novelty and individual character, furthermore the design should not be excluded from protection. It is to be noted here that although novelty and individual character are conditions of  design protection, the examination of these requirements is not a part of the Community design registration procedure. In practice, this means that the design of the applicant is also registered if it does not conform with the above requirements. The examination of the eligibility for protection can be conducted only in the form of an invalidity procedure initiated by an adverse party.

When is the design regarded as new?
A design is regarded as new if no identical design has been made available to the public prior to the date of filing of the design application, or - in the case of unregistered Community design - prior to the date when the design was made available to the public. Designs shall be deemed to be identical if their external characteristics differ only in immaterial details. Therefore, in specific cases, the judgement of identity requires consideration.

What is the individual character?
The design carries an individual character if it gives informed users an overall impression that it is different from any design which has been made available to the public. The different overall impression must prevail before the filing of the design application, or - in the case of unregistered design protection - prior to being made available to the public. In order to decide whether a design is of individual character, it shall at all times be taken into consideration what degree of freedom the designer had when developing the design in question. The technical conditions and functions performed by various products set a limit to the creative freedom: obviously, the creator's scope is larger when designing a piece of jewel than a car windscreen.

What may not be granted Community design protection?
Those external characteristics may not be protected as Community design that derive only and exclusively from the technical function of the product. In a similar manner, those external characteristics of a product are also excluded from protection that are necessary to be reproduced exactly in the same form and size in order to be structurally connected with, or placed into, near or on another product in a manner that each product can perform its function. However, an exception to the last ground for exclusion - regarding products that can be structurally connected - is when the purpose of the design is to facilitate various forms of assembly in a system of pre-fabricated elements or the connection of mutually exchangeable products. Therefore, on the basis of this rule, protection may be granted to modular products, for example, building blocks as well as furniture or other game systems that work on an identical principle.

No protection may be granted to a design if it is against the public policy or morality. Designs against the morality include, for example, those ones that contain vulgar and offensive expressions or obscene images or that hurt the public taste due to their strong sexual contents. With regard to its contents, public policy covers the joint basic institutions and principles of the European Union and its Member States. Therefore, designs featuring, for example,  symbols of despotism are against the public policy.

A design may not be granted Community protection either if any of the grounds for invalidity - as specified in the Community Regulation - prevail. In this case, a procedure for declaring the invalidity of design protection may be initiated before the OHIM or before competent courts. In the case of invalidity, the design protection shall cease to exist with a retroactive effect to its date of establishment.

Who may  file an application for Community design protection?
Applications for Community design protection may be filed by any legal entity or natural person, irrespective of citizenship or corporate seat, thus, also Hungarian designers and enterprises.

The  right to design protection, i.e. the entitlement to file an application for protection of the given design  with the OHIM and to obtain protection, is - as a main rule - due to the  designer as well as to the person to whom the  designer transferred this  right, or to whom this  right was assigned by virtue of a legal regulation or a public authority act (official, court decision). In the spirit of the Community Regulation, if the design was created by an employee while performing his/her obligation deriving from employment or by following the instructions of his/her employer, the claim for Community design protection is due to the employer unless the parties agreed otherwise or unless otherwise provided by the legal regulations of the country concerned.

The commencement and the term of protection of registered Community designs
Designs meeting the requirements of the Community Regulation are granted protection on the basis of registration by OHIM. The term of protection is five years starting from the date of filing. The applicant may extend the protection - at his/her discretion - at most four times, against the payment of a fee, with the proviso that the total term of protection may not exceed 25 years.

 Rights conferred by, and  limitations  of protection
The  rights conferred by design protection are provided by the  entitlements that are due to the holder  on the basis of the protection. On the one hand, the holder of design protection has an exclusive right to use the design. Among other things, use shall cover the manufacturing,  the  offering and putting on the market of the product,  exporting, importing and using it and warehousing it for these purposes. On the other hand, the holder may proceed against all third parties who use the design without his  consent, which also means that everybody is obliged to refrain from using the design without a  consent.

In the case of the protection of unregistered designs  as well as registered designs for which the deferment of publication was requested, the holder may proceed against users without a  consent if such use is the consequence of copying the design. The Community Regulation sets forth a  presumption with regard to copying: it may not be regarded as copying-related use if the  contested use is the result of the independent creative work of a designer  who can be reasonably presumed not to have known the design made available to the public by the holder. Accordingly, in the case of infringement the holder must in the first place prove the eligibility of the design for protection as well as the fact whether he has made the design available to the public in the territory of the European Union, as well as that the infringer can be reasonably presumed to know (or to have known) it, i.e. the infringing product was (could have been) created not independently but by copying the design.

The rights deriving from design protection may not be exercised in the cases specified in the Community Regulation, and the holder of the design protection is obliged to tolerate certain acts in connection with the design. These are the following:

• Acts done privately and for non-commercial purposes;
• Acts done for experimental purposes;
• Acts of reproduction for the purpose of making citations and teaching, provided that such acts are compatible with the fair trading practice and do not unduly prejudice the normal exploitation of the design and that mention is made of the source;
• The equipment of ships and aircraft registered in a third country when these temporarily enter the territory of the Community, the importation in the Community of spare parts and accessories for the purpose of repairing such craft, the execution of repairs on such craft.
• Using the design of the product constituting the component of a complex product if it serves repair aimed at restoring the original appearance of the complex product;
• Exhaustion of rights;
• Rights of prior use.

On the basis of the exhaustion of rights, the rights deriving from Community design protection do not cover further acts in connection with the design-related product that was  put on the market in the European Community by the holder of design protection or through his/her express consent. Accordingly, the holder cannot prohibit, for example, other persons from bringing into, and  putting on the market in Hungary the design-related product that was  put on the market by him/her in Germany.   

The right of prior use in the case of registered Community design protection also constitutes a limitation on the rights deriving from design protection. A right of prior use shall exist for any third person who can establish that before the date of filing of the application he has in good faith commenced use within the Community, or has made serious and effective preparations to that end, of a design included within the scope of protection of a registered Community design, which has not been copied from the latter.