Directive 98/71/EC of the European Parliament and of the Council on the legal protection of designs
Directive 98/71/EC was aimed at the harmonisation of national provisions relating to the eligibility and protection of registered designs in order to ensure the free movements of good and freedom of competion within the European Union. It offers this key definition of design: “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation” (art.1). This design may be protected, by a design right guaranteed trough the registration, if it respects 2 requirements:
- Novelty: “A design shall be considered new if no identical design has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority” (art. 4).
- Individual character: “A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority” (art. 5).
Once the design is registered, the right holder may obtain protection for one or more periods of 5 years up to a maximum of 25 years from the date of filing. The Directive sets out also the conditions for the refusal of registration for designs and, if they are already registered, the conditions for invalidity (art. 11). Concerning the rights conferred by the registration, the right holder can use the design right and authorize or prevent any third party from using it, in particular in “making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes” (art. 12). Nevertheless, these rights can be limited in presence of acts done for some purposes such as teaching, making citations, non-commercial and experimental acts. Finally, the Directive states that other rights in the field of intellectual property are not affected by design right and that copyright discipline is in the competence of Member States. However, art. 17 clarifies that a registered design remains eligible for copyright protection.
Council Regulation No. 6/2002/EC (Community Designs Regulation)
Council Regulation No. 4/2002/EC created for the firs time a Community Design aimed at obtaining uniform protection and a reliable system of designs for the better functioning of the European internal market. The system provided returns to the definition of design contained in 98/71/EC and requires as well the presence of the two criteria of novelty and individual character. The designs respecting these criteria can be covered by the different systems of protection provided by the Regulation:
Registered Community design (RCD): applications for a RCD are managed by the Office for Harmonisation in the Internal Market (OHIM) that is responsible for the procedure. The registration confers exclusive rights to the proprietor in terms of protection against copying and development of a similar design. The design right lasts for five years and it can be renewed every 5 years op to a maximum of 25 years.
Unregistered Community design (UCD): no registration is required for a UCD that is intended to protect products that have a short economic life. Indeed, UCDs are protected for a period of three years from the date on which the designs were first made available to the public within the European Union. However, unregistered designs are protected only against copying and, in case of infringing acts, the proprietor has the burden of proof: he must prove that a UCD, belonging to him, exists and has been copied.
OHMI is responsible for refusal of registration, invalidity and surrender. Its decisions are open to appeal before the Board of Appeal and, in certain cases, the ECJ. Moreover, the Council regulation guarantees the coexistence of Community and national designs, and national courts have exclusive jurisdiction on RCDs and UCDs.