EU designs

Question 1

what does “unitary character” mean?

Answer 1

equal effect throughout the community

shall not be registered, transferred or surrendered, or be the subject of a decision declaring it invalid, nor shall its use be prohibited, save for respect of the whole community

Question 2

employee’s designs

Answer 2

where a design is developed by an employee

in the execution of his duties, or following instructions given by the employer

the right to the design shall vest with the employer

unless otherwise agreed or specified by national law

(UK: merely “in the course of his employment”)

Question 3

entitlement proceedings

Answer 3

if RCD has been applied for or registered in the name of a person who is not entitled to it, the person entitled to it may, without prejudice to any other remedy available, claim to become recognised as the legitimate holder of the RCD. Also applicable for joint holders.

Legal proceedings are barred 3 years after the date of publication of RCD, except where the person who is not entitled to the RCD was acting in bad faith at the time when RCD was applied for or disclosed or assigned to him

The following shall be entered in the register:

(a) the mention that entitlement proceedings have been instituted
(b) the final decision or any other termination of the proceedings
(c) any change in ownership of the RCD resulting from the final decision

Question 4

right of the designer to be cited

Answer 4

the designer has the right (as does the applicant for or holder of an RCD) to be cited as such before the Office and in the register

If the design is a result of teamwork, the citation of team may replace the citation of individual designers

Question 5

Term

Answer 5

5 years from the date of filing

Question 6

Renewal

Answer 6

Who? At the request of the right holder or any person expressly authorised by him

How? Pay the renewal fee, within a period of 6 months ending on the last day of the month in which protection ends

The EUIPO shall inform the right holder and any person having a right entered in the register in respect of the RCD of the expiry of registration in good time of the expiry, however, failure to do so shall not involve the responsibility of the EUIPO.\

Renewal takes effect from the date on which the existing registration expires and shall be entered in the register.

Question 7

Surrender

Answer 7

Application to the EUIPO, in writing, by the right holder

Can only surrender the RCD in respect of the whole Community.

Shall not have effect until it has been entered in the register.

Shall be registered only with the agreement of the proprietor of the right entered in the register. If there is a licence, surrender shall only be entered if the right holder proves that he has informed the licensee of his intention to surrender.

The entry shall be made on expiry of the period of 3 months after the date on which the proprietor proves that he has informed the licensee(s).

If a CD which is subject to deferment of publication is surrendered, it shall be deemed from the outset not to have had the effects…

A RCD may be partially surrendered, provided that its amended form complies with the requirements of protection and the identity of the design is retained.

If an action relating to entitlement to a RCD has been brought before a CD court, surrender shall not be registered without the agreement of the Claimant.

Question 8

Restitutio in integrum

Answer 8

standard: in spite of all due care required by circumstances having been taken
procedure: in writing (grounds + facts) + fee, within two months of the removal of the cause of non-compliance with the time limit. The omitted act must be completed in that period. The application shall be admissible within the year immediately following the expiry of the unobserved time limit.

Unavailable: in respect of priority period and the deadline for filing an application for restitutio in integral

Question 9

restitutio - intervening rights

Answer 9

After re-establishment, rights may not be invoked against a 3rd party who, in good faith, in the course of the period between the loss of rights and the publication of the mention of re-establishment, has put on the market products in which a design included within the scope of protection of the RCD is incorporated into or to which it is applied.

Within 2 months from the date of publication of mention of re-establishment, a 3rd party who has the rights above may bring proceedings against the decision re-establishing the rights.

Question 10

Dealing with CD

Answer 10

A CD shall be dealt with in its entirety, and for the whole Community, as a national design right of the Member State in which:

• the right holder has his seat or domicile on the relevant date, or
• if the above does not apply, has an establishment on the relevant date

This is based on what is entered in the register

Question 11

RCD - joint holders

Answer 11

if only one joint holder is seated, domiciled or established in a MS, then the law of that MS applies

if more than one, then the law of the MS of the owner first mentioned in the register applies

if none, then Spain (seat of the EUIPO)

Question 12

UCD - joint holders

Answer 12

no determinative entry in the register

if different MS, MS determined by reference to the relevant joint holder designated by the common agreement

if none, then Spain (seat of the EUIPO)

Question 13

RCD assignment

Answer 13

at the request of one of the parties, transfer is recorded in the register and published; evidence required unless the same person represents both parties

until the transfer is entered on the register, the transferee cannot enforce the RCD or otherwise deal with it

However, the transferee can make statements to the Office in the cases where there are time limits to be observed before the Office once a request for recordable of transfer has been received by the office.

Same applies to RCD applications.

Question 14

RCD - licensing

Answer 14

can be licensed for the whole or part of the community

can be exclusive or non-exclusive

Question 15

RCD - remedies for licensor

Answer 15

a CD holder can (in addition to any available contractual remedies) sue a licensee for design infringement if the following provisions of the licence are contravened:

• duration
• form in which the design may be used
• range of products for which the licence is granted
• quality of products manufactured

Question 16

RCD - proceedings brought by licensee

Answer 16

Unless otherwise agreed in a licensing contract, the licensee may bring infringement proceedings only with the consent of the CDR owner.

However, can bring proceedings without consent if he notifies the holder and the holder does not himself commence proceedings within the appropriate period.

The licensee can also intervene in infringement proceedings brought by the holder for the purpose of obtaining compensation for damage suffered.

Licence may be entered in the register at the request of one of the parties.

Question 17

RCD - licensing, 3rd party rights

Answer 17

The effect of a transfer or a licence on a 3rd party:

is governed by the law of the MS as per CDR 27 (CDs are dealt with as national rights)

does not come about until the transfer/licence has been recorded on the register, unless the 3rd party acquired the rights knowing of the unregistered transfer/licence

Question 18

Grounds for invalidity

Answer 18

1. The design is not a “design”
2. The design is not novel, does not have individual character, is solely dictated by the product’s technical function, is a design of interconnections, is contrary to public policy or morality
3. By virtue of court decision, the right holder is not entitled to the design. [ only by the person entitled to the CD]
4. If the design is in conflict with a prior design which has been published after the date of filing or priority of the later design, but which is protected from a date prior to said date:
   (i) by a RCD or an application for such a design, or
   (ii) by a RD right of a Member State, or by an application for such a right, or
   (iii) by a Hague Agreement design
5. If a design uses a distinctive sign and community law or the law of the relevant Member State governing that sign confers on the right holder of the sign the right to prohibit such use
6. If the design constituted an authorised use of a work protected under copyright law of a Member State.

[only the applicant for or holder of the earlier right]

7. If the design constitutes an improper use of any of the items listed in Art. 6ter of PC, or of badges, emblems and escutcheons other than those covered by the said Art. 6ter and which are of particular public interest in a Member State.

[by the person or entity concerned by such use]

Earlier design and emblems attacks may also be raised by the appropriate authority of the Member State in question on its own initiative.

Question 19

RCD - maintenance in an amended form

Answer 19

the form must comply with the requirements for protection and the identity of the design must be retained

this may include registration accompanied by a partial disclaimer by the holder of the RCD
or entry in the register of a court decision or a decision by the EUIPO

Question 20

RCD invalidity - who, how and procedural

Answer 20

Any natural or legal person, as a well as a public authority empowered to do so

Written reasoned statement + fee

Application shall not be admissible if an application relating to the same subject matter and course of action and involving the same parties

has been adjudicated on by a CD court and has acquired the authority of a final decision.

if declared invalid to any extent, shall, as from the outset, be deemed not to have had any effect to that extent

Question 21

RCD invalidity - retroactive effect of invalidity

Answer 21

Shall not affect:

(a) any decision on infringement which has acquired the authority of a final decision and has been enforced prior to the invalidity decision
(b) any contract concluded prior to invalidity decision, insofar as it has been performed before the decision, however, repayment to an extent justified by the circumstances of sums paid under the relevant contract may be claimed on the grounds of equity

subject to the national provisions relating either to claims for compensation for damage caused by negligence or lack of good faith on part of the holder of the CD or unjust enrichment

Question 22

RCD validity - declaration of invalidity

Answer 22

1. May be made on the grounds of invalidity as per Art. 25 CDR
2. The action or the counterclaim may be brought solely by the person entitled under the relevant provisions is the grounds relate to Art. 25(2)-25(5).
3. If the counterclaim is brought in a legal action to which the right holder is not already a party, he shall be informed thereof and may be joined as a party to the action in accordance with the conditions set out in the law of the MS in which the court is situated.
4. The validity of a CD cannot be put in issue in an action for a declaration of non-infringement.

Question 23

Scope of protection

Answer 23

Includes any design which does not produce a different overall impression on the informed user.

In determining this, the degree of freedom of the designer in developing the design shall be taken into account.

Question 24

Community design infringement

Answer 24

registered:

owner can use and prevent any third party not having his consent from using it, i.e. making, offering, putting on market, importing, exporting or using of a product or stocking the product for these purposes

unregistered: make, offer, put on market, import, export, use or stock product for these purposes, but only if the contested use results from copying the protected design.

Not copying if it results from an independent creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the right holder.

This will also apply to a registered design which has been subject to deferment of publication as long as the relevant entries in the register and the file have not been made available to the public at the end of the period of deferment,

Question 25

Community design infringement exemptions

Answer 25

(a) acts done profitably and for non-commercial purposes
(b) acts done for experimental purposes
(c) acts of reproduction for the purpose of making citations and teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design and that mention is made of the source
(d) the equipment on ships and aircraft registered in the 3rd country when these temporarily enter the territory of the community
(e) the importation into the community of spare parts and accessions for the purpose of repairing such craft, and
(f) the execution of repairs on such craft

Question 26

Exhaustion of rights

Answer 26

The rights conferred by a CD shall not extend to acts relating to a product in which a design included within the scope of protection of the community design is incorporated or to which it is applied, when the product has been put on the market in the community by or with consent of the CD holder

Question 27

CD prior use

Answer 27

If, before the date of filing/priority, a person has in good faith commenced use within the community or has made serious and effective preparations to that end, of a design included in the scope of protection of the RCD, has a right of prior use, unless the design has been copied from the latter.

Can exploit the design for the purposes for which its use has been effected or for which serious and effective preparations were made before the filing/priority date.

Cannot grant a licence to another person.

Cannot be transferred, unless in the case of a business, along with that part of the business in the course of which the act was done or the preparations were made.

Question 28

CD infringement remedies

Answer 28

Where, in an action for infringement or for threatened infringement, a CD court finds that the defendant has infringed or threatened to infringe a CD, it shall, unless there are special measures for not doing so, order the following measures:

(a) an order prohibiting the defendant from proceeding with the acts which have infringed or would infringe the CD
(b) an order to seize the infringing products
(c) an order to seize material and implements predominantly used to manufacture the infringing goods, if their owner knew the effect for which such use was intended or if such effect would have been obvious in the circumstances
(d) any order imposing other sanctions appropriate under circumstances which are provided by the law of the MS in which the acts of infringement or threatened infringement are committed, including its private international law.

The CD court shall take such measures in accordance with national law as are aimed at ensuring that the orders above are complied with.

Question 29

consequences of invalidity

Answer 29

the ex tunc effect of invalidity shall not affect:

(a) any decision on infringement which has acquired authority of a final decision and has been enforced before the invalidity decision
(b) any contract concluded prior to the invalidity decision insofar that it has been performed prior to the decision; repayment to an extent justified by circumstances of sums paid under the relevant contract can be claimed on grounds of equity

subject to national law relating to claims for compensation for damage caused by negligence or lack of good faith on part of the holder or to unjust enrichment