Notes on UCD

Question 1

What are the sources of law for UCD?

Answer 1

The unregistered Community design is created by provisions scattered throughout Regulation 6/2002 (the CDR), notably Arts 11, 19(2), 85(2) & 110a(5).

Question 2

Where does UCD in relation to other design rights?

Answer 2

The unregistered Community design lies between copyright (for which the prerequisite is originality and the infringement requires copying) and a registered design (for which the prerequisite is novelty and the infringement does not require copying). It requires the same novelty and individual character standards as Registered Community Designs, but can only be infringed by copying, and hence cannot be asserted against those dealing with independently developed competing designs.

The validity of the unregistered Community design is governed by the same conditions as the registered design, with the substitution of the date of first disclosure a filing or priority date.

Question 3

What are the rights conferred by a UCD?

Answer 3

Article 19 CDR

1. A registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the 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.
2. An unregistered Community design shall, however, confer on its holder the right to prevent the acts referred to in paragraph 1 only if the contested use results from copying the protected design. The contested use shall not be deemed to result from copying the protected design if it results from an independent work of creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder.

Question 4

What is the burden of proof of copying?

Answer 4

The burden of proof of copying was considered by the CJEU in Case C-479/12 Gautzsch Großhandel. The case was referred from the German courts, before whom disclosure and cross-examination are rarely available. The CJEU held that:

1. The onus of proving copying rests with the holder, whereas the onus of proving independent creation rests with the opposing party.
2. However, if a Community design court finds that the fact of requiring that holder to prove that the contested use results from copying that design is likely to make it impossible or excessively difficult for such evidence to be produced, that court is required, in order to ensure observance of the principle of effectiveness, to use all procedures available to it under national law to counter that difficulty, including, where appropriate, rules of national law which provide for the burden of proof to be adjusted or lightened (e.g. reversed “if there are material similarities between the design and the contested use” to quote the question referred).

Question 5

What is the commencement and term of right of a UCD?

Answer 5

Article 11 CDR

1. A design which meets the requirements under Section 1 shall be protected by an unregistered Community design for a period of three years as from the date on which the design was first made available to the public within the Community.
2. For the purpose of paragraph 1, a design shall be deemed to have been made available to the public within the Community if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.

Question 6

What are the differences compared to a CRD?

Answer 6

–No registration, so you can choose design of part
of product only
–Shorter life, so quick litigation or interim measures are needed
–Need to prove copying, or infer it

–Need to:
• Show date of first disclosure in the EU
• Indicate areas of individual character