The Registered Community Design

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The Registered Community Design Seminar on
Trademarks and Designs Warsaw, 28. November
2006 Dr. Jörg Weberndörfer
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What is a design?
WHAT IS A DESIGN?

design means the appearance of the whole or a
part of a product resulting from the features of,
in particular, the ...
lines
colours
texture
shape
contours
materials
ornamentation

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Difference betweena trade mark and a design

• TM distinctive sign to identify products and
  services

Design appearance of a product, new and with
individual character
An applicant may protect the same item both as a
TM and as a design
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Trade marks registered by OHIM
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The Community Design - a two tier protection
system

• The Unregistered Community Design (UCD) automatic
  creation as from first disclosure
• The Registered Community Design (RCD) creation by
  registration at OHIM

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Registered or Unregistered Community Design
Common elements (1)

• Unitary character
• (equal effect throughout the Community)
• Definitions
• (design, product, complex product)
• Protection requirements
• (novelty, individual character)

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Registered or Unregistered Community Design
Common elements (2)

• Exclusion of protection
• (non visible parts, technical functions,
  interconnections, against public policy or
  morality)
• Scope of protection

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Registered or Unregistered Community Design
Differences (1)

• Birth of right
• RCD ? application for registration
• UCD ? making available to the public within the
  Community
• Term of protection
• RCD ? 5 years renewable 4 times
• UCD ? 3 years from disclosure

Max. 25 years
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Registered or Unregistered Community Design
Differences (2)
Rights conferred

• RCD - exclusive right to use and prevent making,
  offering, putting on the market, importing,
  exporting, using or stocking for such purposes,
  products incorporating the design
• UCD - right to prevent only if use results from
  copying

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The advantages of the registered Community design

• A stronger right with a unitary character in the
  entire EU
• Easy, flexible and affordable filing and
  registration procedure (one filing language, one
  application, one fee system, no upper limit to
  designs in one application)
• Long term of protection (up to 25 years)
• Grace period of 12 months.

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Examination

• Mainly formalities
• elements provided in application
• priorities
• whether professional representation is required
• 2 grounds for non-registrability
• not a design application
• against public policy and morality

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Examination
No examination on verification of protection
requirements relative grounds whether the
applicant is entitled
X
______________________
Procedure should be fast and user-friendly
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Community Design Workflow
Mail Room Mail Dispatch
Examination
Registration
Publication
Deferment
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Languages

• The filing of the application may be made in any
  of the official languages of the Community (20)
• The applicant must indicate a second (different)
  language which must be a language of the Office,
  that is Spanish (ES), German (DE), English (EN),
  French (FR) and Italian (IT)

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Filing procedures - who can file
Any natural or legal person without any
restrictions as to nationality or state of
incorporation
Who has the right

• The designer or his successor in title
• Joint ownership
• Designs developed by employees

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Where and how to file

• Electronically
• by fax - not advised for designs
• by post or courier
• by hand - either in Alicante or via National IP
  Office

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• Registration fee
• first design 230
• from 2nd to 10th design 115
• from 11th onwards 50
• Publication fee
• first design 120
• from 2nd to 10th design 60
• from 11th onwards 30

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• Deferment fee
• first design 40
• from 2nd to 10th design 20
• from 11th onwards 10
• Renewal fee
• first renewal 90
• second renewal 120
• third renewal 150
• fourth renewal 180

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Publications

• The Community Designs Bulletin
• Periodic editions
• Only electronic
• Contains registrations and entries in the Register

• Data base of registered Community Designs
  RCD-ONLINE

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Deferred publication

• To be requested when application is filed
• Maximum 30 months as from filing or priority date
• Deferment may be interrupted at any time
• Possibility of filing a specimen if two
  dimensional design
• Except for very limited information, the designs
  remain secret until holder decides to publish

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The Office accepts

• Dotted lines to indicate the elements for which
  no protection is sought or to indicate portions
  of the design which are not visible in that
  particular view, i.e. non-visible lines

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The Office accepts

• Boundaries to be used to surround features of the
  design for which protection is sought

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The Office accepts

• Colouring to be used on a black and white drawing
  to highlight the features of the design for which
  protection is sought only

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Designs drawn by hand are acceptable
CD 51560
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Views must relate to the same design

• The maximum 7 views must always relate to the
  same design, otherwise it must be split into a
  multiple application or into two separate
  applications
• However, it is acceptable that one view shows the
  design as a whole and the other views show
  specific portions of it

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Not acceptable as one design (2 different tables)
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One product (a toy), accepted as one design
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Views relate to the same design
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Complex products

• A product consisting of multiple components which
  can be replaced permitting disassembly and
  re-assembly
• The Office requires that at least one of the
  maximum 7 views shows the product in its
  assembled form if it is not clear whether the
  application is a single or multiple application
• However, such a view is requested for only if it
  could be easily produced by the applicant

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The Office accepts
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Set of articles

• The Office accepts a set of articles as one
  design, provided the articles have features in
  common which closely link the articles in such a
  way that it is clear that protection is sought
  for a design resulting from the combination of
  the articles
• In addition, the articles should ordinarily be on
  sale or intended to be used together

• For a set of articles at least one view must show
  the set of articles together

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The Office accepts
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Specimens

• Only two-dimensional designs and deferred
  publication
• 5 copies
• Pasted on A4 paper
• Sent in single mail with application
• Dimensions
• A4 not folded
• 50 grams
• 3 mm thickness

• Not perishable or dangerous

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Multiple applications

• Features
• no upper limit for number of designs
• saves costs for applicant
• each design included will have its own
  independent life (deferred or not, invalidity,
  surrender, renewal, etc )
• BUT must be in same class of Locarno

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Example of a multiple application (class 06)
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Invalidity

• Two ways to invalidate a registered CD
• Application to the OHIM
• Counterclaim in infringement proceeding before a
  Community design Court

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Grounds for Invalidity

• not a design- does not fulfil requirements of
  novelty, individual character, offends public
  policy or morality etc.- holder not entitled -
  anticipated by prior design - interfering
  earlier rights - improper use of certain emblems
  etc.

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Registered Community Design Statistics

General Statistics

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Accumulated RCDs


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Accumulated RCD Publications


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Top Ten RCD Filing Countries


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Top Ten RCD Owners


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Top Ten RCD Representatives


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Registered Community Design Statistics

RCD Statistics for POLAND

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RCDs Filed from Poland


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Polish RCDs Published


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Top Ten Polish RCD Filers


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Top Ten Polish Representatives


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WEB-PAGE OAMI - ONLINE
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ALICANTE-News

• OAMI-Newsletter has been substituted by Alicante
  News and is available online

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General Information ? ( 34) 965 139 100 ? (
34) 965 131 344 ? information_at_oami.europa.eu
? Office for Harmonization in the Internal
Market (Trade Marks and Designs) Avenida
de Europa, 4 E-03008 Alicante SPAIN