Trademarkroom Guide to EU Registered Designs

It is proven that the more attention business pay to design, the more successful they are. A good design is therefore crucial to a business’ success.

Intellectual property defines and protects human innovations and creations. Design is both an art and a science and it is the way customers identify a business or a product. A great design focuses on the user as well as combines aesthetic, economic and practical values. It is a way to define and protect an innovation and a company asset, which can be used for trading or as collateral and it rewards creative effort. Basically, the design acts as your IP signature and is therefore of importance for businesses to keep protected.

Except from computer programs, more or less any industrial or handicraft item can be entitled to design protection. If you do business in more than one EU country, you should consider the option of obtaining a design right that is valid throughout the entire EU.

There are two ways of protecting a design right within the European Union. One can protect it with OHIM by registering it before commercialise and thereby obtain a registered Community design (RCD) alternatively, commercialise it without registration and rely on unregistered Community design rights (UCD).

The two differ in terms of scope of protection and duration. A RCD is initially valid for five years from the date of filing and can be renewed in blocks of five years up to a maximum of 25 years.To be registerable, a design needs to be ‘new’ and possess ‘individual character’. A UCD on the other hand, is given protection for a period of three years from the date on which the design was first made available to the public within the territory of the European Union. After three years, the protection cannot be extended. To get protection, it is important to be able to prove when the design got disclosed.A UCD is only protected if the copy was intentional, in contrast, a RCD is protected to any similar design, no matter intention.

Both forms of design rights offer the protection that it is considered illegal to manufacture, putting on the market, offering for sale, marketing or importing/exporting a product incorporating a protected design (or to which the design is applied) without the consent of its proprietor.

If you have disclosed your design and later decide that you want to apply for a RCD, you can do so within one year of disclosure, this is the so called ‘grace period’.

As the proprietor, it is of importance to look after the rights in the design. The proprietor is entitled to prevent all third parties not having consent from using it in the course of trade. To enforce this right is as important as registering your design.

The proprietor is the one responsible for enforcing a design right. Competitors will be warned that the right exists (if it is a RCD) but it is up to the proprietor to make sure no one uses the design, or a design similar to the design, without their consent and it is the proprietor’s duty to take action to stop them.

Malin Persson