Community Designs – a success story

(IPRinfo Special Issue, September 2006)
Dimitrios Andrianopoulos
Chief Design examiner
OHIM – Designs Department

The Community design confers on its holder the exclusive right to use it and prevent any third party, not having his consent, from using it in the European Union.

The Community system for the protection of designs has enabled applicants to apply for registered Community designs since 1 April 2003. The system was set up under the Council Regulation 6/2002/EC. The Regulation (CDR) entered into force on 6 March 2002. By spring 2006, over 180.000 Community designs had been filed at the Office for Harmonization in the Internal Market (OHIM).

Why a Community design
The Community design system simplifies the administrative processes, as it only requires:
– a single application for all the Member States of the EU,
– a single language of filing,
– a single administrative centre (OHIM),
– a single payment.

The Community design confers on its holder the exclusive right to use it and prevent any third party, not having his consent, from using it in the European Union.

Community design protection is directly enforceable in each Member State. As of the accession of the ten new Member States on 1 May, 2004, Community designs registered or applied for before that date have been extended to the territory of the new Member States, in order to have equal effect throughout the enlarged Community (article 110a CDR).
A Community design initially has a life of five years that can be renewed in blocks of five years up to a maximum of 25 years.

Open to everybody worldwide
Any natural person or legal entity from any country in the world may file an application. According to the Regulation, however, the applicants not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the Community must be represented before the Office.

An application form should be completed in any of the 20 official languages of the Community, and it must be accompanied by a representation of the design suitable for reproduction. The payment of the requisite fees must be included. An application may be made by post, by fax, electronically (e-filing) or in person at OHIM or via national Offices. As the quality of the representations of the design is important, the transmission by fax is not recommended.

When a design application reaches the OHIM, it is scanned (if received by mail) and directly saved into a global informatics secured storage system together with the applications filed through electronic filing and fax. Then, when the electronic documents are created, they are linked to files handled by a division responsible for the key-in of the data relating to the applicants and their representatives.

This is when the data is keyed-in and electronically linked to the numbered documents that constitute the files located in the system, which are accessible to design examiners. The first task handled by a specific person is to send the filing receipts with a certain number of bibliographic details of the applicant and the application.

The second step is the assignment of the files – they are assigned strictly in the order of arrival and according to language skills to the examiners of OHIM’s Designs department. They are in charge of all processes aimed at the registration of a design application until its publication. The objective of the design examiners is to publish each design within 3 months from the date of filing, if no deficiency is found.

No substantive examination
There is no in deep substantive examination of the application (novelty, original character of the design, identity or similarity with earlier designs) except to verify that the following requirements are fulfilled:
-it is a design application, and
-the design is not contrary to public policy or morality. Designs that contain obscene, immoral or racist images are not acceptable. Images of famous people (except terrorists) can be registered without their permission. National or religious symbols are acceptable provided they are used in a proper and decent way.

The filing date is granted when the Office has received a request for a design registration together with the necessary information identifying the applicant and the representations of the design.

Formalities are checked by OHIM
Applications are mainly checked for formalities.

Firstly, the representations of a design should clearly show the details of the design for which protection is sought. They must be reproduced on a neutral background (maximum 7 views). Drawings, photographs (except slides), computer-made representations or any other graphical representation in black & white or in colour are acceptable provided they are suitable for reproduction.

Any graphic or photographic reproduction may contain only one view. All these views must relate to the same design and should not contain explanatory text, wording, letters, numbers and/or symbols which are not part of the design.

Secondly, the application must contain an indication of products. This term should indicate the nature of the products and allow them to be classified in only one class of the Locarno Classification. The applicants are encouraged to use product terms from the OHIM extended list of products (EuroLocarno) which is available in all the official EU languages and searchable online on the web site of OHIM.

The application may include a description of the product not exceeding 100 words. The indication of products, the classification and the description do not affect the scope of protection of a Community design.

Priority may be claimed within one month from filing, on the basis of a previous filing of a design or utility model (but not a patent) filed in or for a State party to the Paris Convention or a member of the World Trade Organization. The filing date of the Community design application must fall within the period of 6 months from the claimed priority date.

The fourth thing to be checked is that the payment has been made at the time of filing the application. It includes fees for registration and publication and, when deferment is requested, a deferment fee.

The application may include a citation of a designer or a team of designers or the indication that the designer(s) have waived the right to be cited. The citation or the absence of any indication regarding the designer(s) is not subject to examination.

Multiple applications are possible in one product class
The applicant may file as many designs as he wishes in one application, the only condition being that the products belong to the same Locarno class. This condition does not, however, apply to ornamentation: a design for ornamentation (class 99) can be combined with a design applied for another class without affecting the unity of class.

Multiple applications are subject to additional registration, publication or deferment fees for each design. A certain discount is applicable after the second design up to the tenth. From the eleventh design on even a further discount is granted.
When applying through e-filing there is a technical limitation of 99 designs in one application.

Deferment of publication is possible
At the time of filing of the application the applicant may request that the publication of the design be delayed for a period up to 30 months from the date of filing or, where applicable, from the date of priority. This period gives the applicant an opportunity to further develop his marketing strategy or to finalise the preparations for the production without the competitors being aware of his design.

The registration and deferment fees must be paid at the time of filing. The applicant has the choice of paying the publication fees at the time of filing, or later, when the publication is requested. Upon registration only very basic details will be supplied to the Register, the substance of the design will remain confidential.

The applicant can cancel his deferment by asking the Office to publish the design. This request must not, however, arrive later than 3 months before the end of the deferment period together with the publication fees, if they have not been paid at the time of filing. Moreover, in the case of a multiple application, a clear indication is needed as to which designs will be published or withdrawn or for which ones the deferment is to be continued.

In the case of a deferred publication for a two-dimensional design the applicant, if he wishes, may file a specimen of the design in five copies. The specimen shall not exceed 26.2×17 cm in size, 50 grams in weight and 3mm in thickness, and shall not be perishable or dangerous. When a specimen is filed, the representations of the design can be submitted at a later stage, when the publication is requested.

A design is never rejected without expressed and written reasoning. The applicant is always given the possibility to remedy deficiencies found in his application.

Unless an application contains a request for deferment, the designs are published immediately after registration in the Community Designs Bulletin, an electronic weekly publication available on the web site of OHIM.

All published designs accessible in one database
The Register of Community Designs is a database containing particulars of all designs registered and published by the Office. The Register is constantly updated, including any changes, such as e.g. a transfer of ownership, a change of name or address, the granting of a license.

The Register is public and accessible free of charge. Furthermore, files are available for inspection, subject to a written request and paying the charges.

In the case of a deferred design, no inspection will be admissible until the publication, unless with the consent of the owner or if any of the other limited exceptions provided by the regulations is applicable. A design that is never published will never be open to public inspection.

No opposition procedure available
Unlike the Community Trade Mark system there is no opposition procedure.

When a design has been registered and published, third parties may request that the design be invalidated. Applications for invalidity together with the payment of a relevant fee may be made to the OHIM by any natural or legal person as well as a public authority.

The procedure is inter partes: it happens between the holder and the opposing party who demands the invalidation of the registered design. The invalidity division of the OHIM organises the procedure. When they consider that the submissions and evidence provided are sufficient, they render a decision. The invalidity division consists of three members.

An appeal can be made to the Board of Appeal of OHIM by any party adversely affected by a decision. A notice of appeal including the appropriate fee must be filed in writing within two months of the issuing of the decision.

In addition to the decisions of the Invalidity Division, appeals can also arise from decisions of examiners, the Administration of Trade Marks and Designs Department or the Legal Division.

———————————————————————————
What is a design?
A design is the outward appearance of a product or part of it resulting from the lines, contours, colours, shape, texture, materials and/or its ornamentation. The design of a product can be synonymous with the branding and image of a company and can become an asset with a monetary value that could increase.
———————————————————————————

For more information about the Community Designs
Starting point:
http://oami.europa.eu/en/design/default.htm

Statistics:
http://oami.europa.eu/en/office/stats.htm

Forms:
http://oami.europa.eu/en/design/form.htm

Decisions on invalidity:
http://oami.europa.eu/en/design/decispending.htm