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Design Protection in Europe Design Protection in Europe www.bardehle.com 2 Content 5 1. Requirements for design protection in Europe 5 2. Overlap of design law and other IP rights 6 3. Design law in Germany and international design law 6 4. Design protection through registration or use 7 5. Procedure for obtaining registered design rights 8 6. Invalidity proceedings against registered Community or German designs 9 7. Enforcing design rights in Europe (main proceedings) 9 7.1 Competent courts and jurisdiction 11 7.2 Main procedural principles 11 7.3 Claims on the merits in proceedings 13 7.4 Length of proceedings and time limits 14 7.5 Costs 14 8. Enforcing design rights in Europe (preliminary proceedings) 14 8.1 General remarks 15 8.2 Specific procedural principles and timing 16 8.3 Preliminary injunctions and main actions 3 Introduction A design is defined in the Community Designs Regulation and in the Designs Directive as the outward appearance of a product or a part of a product which results from the lines, contours, colours, shape, texture, materials and its ornamentation. In order to qualify for protection, designs must be new and must have individual character. Furthermore, a design shall not subsist in features of appearance of a product which are solely dictated by its technical function. Designs make a product attractive and appealing; hence they may add significantly to the commercial value of a product and increase its marketability. Design protection is a significant element of IP law. Designs as unique creations with individual character require and deserve protection against imitators just as copyrighted works or trademarks. 4 1. Requirements for design protection in contrast to trademark cases, where the average Europe consumer will compare the asserted mark with other marks he has in mind (“imperfect Design law in Europe consists of European recollection”), the comparison in design law is Key requirements Union design legislation providing for registered performed with the design to be examined and and unregistered Community designs, governed the other designs side by side. In this respect, by Council Regulation (EC) No. 6/2002 of the informed user is “particularly observant and December 12, 2001 on Community designs has some awareness of the state of the prior art, (Community Designs Regulation – CDR) and that is to say the previous designs relating to the national design laws in the 27 Member States product in question”, according to recent case of the European Union, as to a substantial law. degree harmonised by Directive 98/71/EC of the European Parliament and of the Council of October 13, 1998 on the legal protection 2. Overlap of design law and other IP of designs (Designs Directive). Registered rights Community designs are administered by the Office for Harmonization in the Internal Market A product design or an element of a product Protection under other IP rights (Trade Marks and Designs) (OHIM), located design may, at the same time, amount to both in Alicante, Spain, which also administers a design right and qualify for protection under the European Union’s trademark law. In this other IP rights, particularly under copyright presentation, we will cover European and and trademark law. For example, a device German design law. mark may also be registered as a design (if new and individual), and the three-dimensional Key requirements for design protection in appearance of a product, which can be protected Europe are “novelty” and “individual character” as a design, may also be registered as a trade- as established under Article 5 and Article 6 mark (provided it is distinctive). Likewise, CDR, and in the parallel provisions in the logos, in principle, can be protected as designs Designs Directive. For establishing novelty, and trademarks. the new design needs to vary in more then just “immaterial details” from other existing Designs may also be protected under copyright designs. Whether or not it has individual law. Whether they qualify depends on the character depends on whether the design, applicable laws of the Member States of the compared to earlier designs, creates overall the European Union. Contrary to design and same impression on the “informed user”. This trademark law, no European-wide copyright imaginary user is a person with knowledge of law exists and the requirements for copyright designs in the applicable field of activity. In protection have not been harmonised. As 5 a rule, for a design to constitute a “work” 4. Design protection through registration protected under copyright law, the design or use must be the result of a personal intellectual Community designs creation, containing the imprint of its author’s Rights in designs are acquired through personality. This, in principle, implies a higher registration and through use. Community standard of originality than the requirements of designs are protected as registered Community “individual character” for design protection. designs after filing at OHIM and registration, without examination as to the most relevant substantive conditions of protection (novelty, 3. Design law in Germany and interna-­­ individual character). Protection through use tional design law for unregistered Community designs is acquired through the first publication or other use within Hague Agreement The German Designs Act (“Geschmacksmuster- the European Union of a design fulfilling the gesetz”) of 2004 has implemented the Designs conditions of protection. First disclosure or Directive, as has been the case in all the 27 use outside of the European Union does not Member States of the European Union. create any rights in Europe. German design law provides for registration of designs. German At the international level, design protection is law does not recognize unregistered designs. Of available through the international registration course, unregistered Community designs are of designs pursuant to the Hague Agreement on also valid in Germany. the International Registration of Designs (the most recent version being that of the 1999 Geneva A registration gives the design proprietor the Act). The Hague Agreement is administered by exclusive right to use the design in the course the International Bureau of the World Intellectual of trade. Protection extends to any later design Property Organization (WIPO). Germany is a creating a substantially identical impression member of the Hague Agreement. The European on the informed user. Protection is available Union is, since 2008, also a member of the Hague regardless of the category of product in which Agreement. Thus, protection for the European the design is incorporated. Registered designs Union as a whole, as well as for all of its Member are protected against both deliberate copying States which belong to the Hague Agreement, may and the independent development of a similar be obtained through the registration of designs at design. Further advantages of a registered the International Bureau of WIPO. In addition, design compared to an unregistered design are the European Union as well as its Member States a longer term of protection (up to 25 instead of are members of the WTO and thus bound by the three years) and a stronger position in case of TRIPS Agreement, which contains minimum infringement litigation. 6 standards on design protection. up to a maximum of 25 years. Unregistered As with a trademark, there are inter- Community designs are protected for three national and national registration years from the date of disclosure of the design procedures for designs: to the public within the European Union. – national registration with the German Community design protection is a preferred Patent and Trademark Office in Munich method of obtaining protection in Europe – registration as a Community design with because it is easily accessible, relatively the OHIM in Alicante inexpensive, provides unitary protection – international registration with the Inter- throughout Europe and can be enforced national Bureau of WIPO in Geneva Community-wide in specially designated Community design courts. The Hague System of international registration of industrial designs is applicable among the 5. Procedure for obtaining registered countries party to the Hague Agreement. At the design rights end of 2009, 56 countries were members of the Hague Agreement (important countries are not To register a Community or German design, Substantive requirements for members, such as the USA and China, but it is an application form must be filed, which has protection possible to designate the EU). An international to contain a representation of the design that registration produces the same effects in each is suited for publication and an indication of the designated countries as if the design had of at least one product in which the design been registered there directly, unless protection is intended to be incorporated or to which is refused by the competent office of that country. it is intended to be applied. The goods are To file an international application, no prior classified in accordance with an international national (basic) registration in a Member State classification system established by the of the Hague Agreement is required (contrary to Locarno Agreement, also administered by international trademark registrations under the WIPO. A multiplicity of designs can be included Madrid system). in one multiple application (German designs: up to 100; Community designs: no limit, up to 99 in The Community design gives the proprietor the case of online filing) provided
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