designs
1 September 2013Udo Pfleghar

A remarkable success story: the registered community design

When the first registered community design (RCD) applications were filed on April 1, 2003, no-one could have foreseen the resounding success of the system during the years that followed. In that first year alone some 40,500 applications for RCDs were filed with the Office for Harmonization in the Internal Market (OHIM)—far more than the management of the OHIM had expected. Some 10 years later, more than 690,000 applications have been filed.

The framework for the RCD is contained in the Community Design Regulation which came into force on March 6, 2002. This was a revolution in the protection of intellectual and industrial property rights in Europe similar to that caused by the introduction of the Community trademark some six years earlier.

Community designs grant an exclusive right in the external appearance of a product or part of it, to the extent that this appearance results from the features of the product itself and/or its ornamentation. Such features include in particular the lines, contours, colours, shape, texture and/or materials. The design simply needs to be novel and possess individual character.

The products concerned can be any industrially manufactured or manually produced items including packaging, graphics and symbols as well as typefaces. Applications can be filed within one year of the date that the design was made available to the relevant public in the EU, and RCDs can be protected for up to 25 years.

Alongside the RCD, the regulation also created the unregistered community design, which is protected for three years following disclosure to the public without any administrative steps. Unlike the RCD for which there is a registration certificate, its existence has to be established by evidence if proceedings against infringers are based on the unregistered right.

The strategic value of design rights has been very clearly demonstrated in the high profile court cases between the two IT giants Apple and Samsung concerning the design of smartphones and tablet computers.

A useful instrument

In January 2012, the District Court of Düsseldorf, Germany, granted Apple an interim injunction prohibiting Samsung from selling its Samsung Galaxy Tab 10.1 tablet computer on the basis of its outer appearance having infringed the rights of Apple in an RCD.

At the end of July of that year, the same court prohibited the sale of the Galaxy Tab 7.7 mini tablet computer while the Superior District Court in Munich ruled that the same device did not infringe Apple’s patent rights in touch screen technology. The Highest Dutch Court, on the other hand, held in May 2013 that the Galaxy Tab 10.0 did not infringe the rights of Apple in the RCD on which the action was based.

It is not important whether one agrees with one decision or the other. What these cases highlight is the value of RCDs in protecting a company’s IP rights and that major players have begun to use this instrument alongside patents and trademark registrations to defend not only their IP but also their market share.

This has led to increasing numbers of cases before the national Community Design Courts and the Courts of the EU in Luxembourg during the past years.

In an important decision at the end of 2012, the General Court held that in cases involving designs, the informed user has to be understood as a particularly observant one, either because of personal experience or due to extensive knowledge of the sector concerned. However, this does not mean that the informed user is automatically able to differentiate between elements of the appearance of a product which are merely dictated by its technical function and those which are pure design elements.

In an important step towards facilitating the search for earlier rights, in 2012 OHIM launched Designview, as part of the Cooperation Fund (CF) programme. This is an Internet platform allowing users to search the databases of those national offices participating in the programme, as well as that of OHIM itself, for design registrations. Like the TMView database, which is also maintained by OHIM, Designview is available in all official EU languages and is updated on a daily basis. The number of participating countries is increasing and currently, registrations in Bulgaria, the Benelux Office, Estonia, Spain, Greece, Latvia, Portugal, Slovakia and OHIM itself can be searched.

In addition, and also in the context of the CF programme, OHIM is developing the Search Image project. Its goal is to make it easier to search for images in databases and it is intended to apply to trademarks as well as to registered designs. Due to the multitude of shapes and forms designs can have, this seems a very ambitious project. If, however, it is successful, it should make searching for earlier rights considerably easier and more reliable.

Overall, there is no reason why the RCD should not continue to be the success story it has been to date. It will be up to the owners of design rights to work closely with their legal advisers in order to make the best possible use of this low-cost but efficient tool for defending the IP rights and the financial value of their companies.

The impending rise of 3D printers in particular may well bring new and important possibilities of mass infringement of design rights. It is the very purpose of such printers to exactly reproduce the shape of existing objects by scanning the original and then reproducing it layer for layer until as exact a copy as possible has been achieved.

It is in the interests of the owners of design rights to protect their designs against such potential infringement. This can be easily done by registering the designs for a period of up to 25 years in order to safeguard them against precisely this kind of piracy.

"It will be up to the owners of design rights to work closely with their legal advisers in order to make the best possible use of this low cost but efficient tool."

Since the costs involved in obtaining this protection are relatively low, this is a reasonably easy step to take, especially in addition to other forms of protection such as trademark registrations for product names and distinctive device elements such as logos.

The RCD should therefore be a part of the IP portfolio of a company in order to obtain comprehensive protection of IP rights without putting unreasonable strains on the available budget.

In view of the above, it is now up to the owners of design rights and their legal advisers to develop the correct strategies for developing, protecting and enforcing design rights.

During the development stage, it is important to ensure that no third party rights are infringed by the finished design and that the designs are not made public too early, as this could have detrimental effects on protection. At the time of protecting the rights it is important to find the appropriate balance between different types of rights and obtaining the necessary protection without incurring unnecessary costs.

And at the enforcement stage, issues such as border seizure, jurisdiction, suitable actions and earlier rights need to be addressed.

Udo Pfleghar is a partner at Best Rechtsanwälte. He can be contacted at: udo.pfleghar@best-ip.eu

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