In law, 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.
Why protect your designs?
The design or shape of a product can be synonymous with the branding and image of a company and can become an asset with increasing monetary value. If you do not apply for protection others may benefit from your investments.
What is a product?
A product can be any industrial or handicraft item including packaging, graphic symbols and typefaces but excluding computer programmes. It also includes products that are composed of multiple components, which may be disassembled and reassembled.
What is the difference between a design and other Industrial Property Rights such as patents and trade marks?
All industrial property rights are intended to protect the creativity of businesses and individuals. However they do not cover the same aspects.
- A design only covers the appearance of a product. A design cannot protect the function of a product.
- A trade mark identifies the origin of goods and services of one undertaking to differentiate them from those of its competitors.
- A patent covers the function, operation or construction of an invention. To be patentable, a function must be innovative, have an industrial application and be described in such a fashion to permit reproduction of the process.
The Hague Agreement Concerning the International Deposit of Industrial Designs, also known as the Hague system provides a mechanism for registering an industrial design in several countries by means of a single application, filed in one language, with one set of fees.
The system is administered by WIPO (World Intellectual Property Organization )
The Hague Agreement consists of several separate treaties, the most important of which are: 1. the London Act of June 2, 1934, 2. the Hague Act of November 28, 1960,and 3. the Geneva Act of July 2, 1999.
Applicants can qualify to use the Hague system on the basis of any of the following criteria:
- the applicant is a national of a Contracting Party (i.e. member country)
- the applicant is domiciled in a Contracting Party
- the applicant has a real and effective industrial or commercial establishment in a Contracting Party
- the applicant has its habitual residence in a Contracting Party (only available if the Contracting Party in question has adhered to the 1999 (Geneva) Act)
An applicant who does not qualify under one of these headings cannot use the Hague system. The Contracting Parties include not only individual countries, but also intergovernmental organisations such as the African Intellectual Property Organization (OAPI) and the European Union. This means an applicant domiciled in an EU member country that is not a Contracting Party, such as Austria or the United Kingdom, can nevertheless use the Hague system on the basis of his or her domicile in the European Union.
The members of Hague Union now (17 March 2011) are : 58.
The Locarno Classification is based on a multilateral treaty administered by WIPO. This treaty is called the Locarno Agreement Establishing an International Classification for Industrial Designs, which was concluded in 1968. This Classification is commonly referred to as the Locarno Classification. The Agreement is open to States party to the Paris Convention for the Protection of Industrial Property. The Classification is a system of all goods that can be registered as Industrial design. It consist of 32 classes and 211 subclasses.
The Community Designs Regulation was adopted on 12 December 2001. Unregistered Community design protection has existed since 6 March 2002 and registered Community design protection has existed since 1 April 2003.
The registered Community design (RCD)
An RCD is an exclusive right for the outward appearance of a product or part of it, resulting from the features (in particular, the lines, contours, colours, shape, texture and/or materials) of the product itself and/or its ornamentation.
Scope and validity
An RCD is valid in the European Union as a whole. It is not possible to limit the geographic scope of protection to certain Member States.
An RCD initially has a life of 5 years from the date of filing and can be renewed in periods of five years up to a maximum of 25 years.
Level of protection
Holders of valid registered designs have exclusive rights to use the design concerned and to prevent any third party from using it anywhere within the European Union. They will be protected against both deliberate copying and the independent development of a similar design.
The rights cover, in particular, the making, offering, marketing, importing, exporting or use of a product in which the design is incorporated or to which it is applied, or holding stock of such a product for those purposes.
A single legal system applies to Community designs, providing strong and uniform protection throughout the European Union.
The RCD system consists of a simple registration procedure:
- a single application
- a single language of filing
- a single administrative centre
- a single file to be managed
- a single payment
- the possibility to file multiple applications (i.e. to include several designs in one application, such as a whole range of similar products)
- the possibility to keep the design confidential for up to 30 months
During the examination, the applications are checked mainly for formalities (e.g. no search for novelty).
The RCD confers on its holder the exclusive right to use it in the 27 Member States of the European Union. It prevents any third party of using the RCD without the consent of the holder.
After any future enlargement of the European Union, any RCD registered or applied for will automatically be extended to the new enlarged territory without any need to make any application or pay fees.
Enforcing your rights
The registered Community design (RCD) grants its proprietor an exclusive right to prevent unauthorised use of the design in trade. More specifically, the proprietor is entitled to prevent an unauthorised third party from making, offering, marketing, importing, exporting or using a product in which the design is incorporated or to which it is applied, or holding stock of such a product for those purposes.
If an unauthorised third party engages in any of these practices, they are guilty of infringing the exclusive right of the proprietor.
The proprietor of a RCD can act against these infringements by taking measures expressly provided for disputes concerning the infringement and validity of Community designs under the CDR (Section 2 of Title IX) and in particular via:
- Proceedings at the Community design courts established under the CDR
- Filing requests for action with the customs authorities. This administrative procedure permits proprietors of a RCD to request the EU customs authorities to retain suspected counterfeit goods while under their control
Source : www.oami.europa.eu