Design Rights

EU Industrial Designs

The EU industrial design right is in similar terms to that under the domestic industrial design. It provides for a unitary EU-wide industrial design. it has effect throughout the European Union automatically without being recognised specifically in particular states.

The European Union design right is administered by the European Union intellectual property office. Applications are made to it for registration of the design right.

Procedure

The procedure is broadly similar to that for the domestic industrial design right. The office determines whether the object is eligible for protection in accordance with EU legislation. The examination is limited to the formal requirements rather than the substantive requirements for novelty and individual character.

The publication of the design can be deferred for up to 30 months, and the initial fees are reduced accordingly. Upon registration, the community design is registered in the official Gazette of the European Union intellectual property office. The community design is presumptively valid upon registration.

Third parties may object to the invalidity. Appeals can be taken against decisions of the office to the board of appeals of the European Union intellectual property office referred to the general court and ultimately to the Court of Justice of the European Union.

Internatioanl Design Right

The Hague Agreement on International Registration of Industrial Designs was first adopted in 1925. Ireland has protected industrial designs since the 1927 industrial property legislation. The EU acceded to the modern version of the agreement, the Geneva Agreement 1999, in 2007.

Applications for international registration can be filed with the WIPO or with a national or regional office. The languages of the agreement are English, Spanish and French. The agreement contains a list of requirements with which an application for international registration must comply.

Unregistered Rights

There is a limited right of protection for unregistered community designs for up to 3 years. In order to qualify, the design must meet the standard requirements of novelty and individual character.

It must have been made used or available to the public within the territory of the EU. The rights holder must prove that the infringer was familiar with the design. Subject to this severe limitation, many of the principles applicable to a registered design also apply to an unregistered design.

Duration

The community design lasts for up to 25 years. However, the initial protection is five years with four further extensions, subject to paying the fees.

The design may be used without registration for up to 12 months, but the application for registration must be filed within this period. If it is not registered, in may continue to be protected for a further two years on the basis of the unregistered design right.

Appearance & Features

As with the domestic design right, the community design right applies to the appearance of products or parts of products resulting from features of, in particular, the lines contour, colour, shape, texture and/or materials of the product itself or its ornamentation.

The Court of Justice of the European Union has effectively clarified that appearance refers to aspects that are visually evident. There are arguments for a wider interpretation.

Criteria

Novelty in the case of industrial design, refers to the identity of the product relative to what is already in the public domain. Individual character refers to the overall impression produced on the informed user. This must be distinct from the designs available at that point in time.

An informed user lies somewhere between that of the average consumer and an expert with technical expertise. This hypothetical person knows the various designs which exist in the sector and has a certain degree of knowledge regarding the features of those designs.

Account is taken of the degree of freedom of the designer, which will be constrained by the requirements of the product. The informed user has some knowledge of the constraints limiting the designer’s freedom.

Parts of complex products may be protected as designs in themselves. The design itself must comply with the novelty and individual character requirements. It must not be derived merely from the complex as a whole.

Exclusion

The grounds for exclusion from protection are broadly similar to those under the domestic design rights legislation. These include that it does not correspond to the required definition, is in conflict with the prior design, constitutes an authorised use of work protected by copyright, is excluded by requirements of public interest in public morality, and conflicts with an earlier prior design.

Protection

Following registration, designs are protected for up to 5 years with the possibility of extension for a further 20 years in total. The design right holder has the right to restrain commercial exploitation of the same or a similar design by a third party.

This includes making, offering, putting on the market, importing, exporting or using the product in which the design is incorporated or to which it is applied or stocking such a product for those purposes.

Infringement

Infringement is judged with reference to the same criteria as apply to judging the individual character. Therefore the overall impression on an informed user, taking into account the degree of freedom of the designer, is considered.

In court proceedings, it is presumed that the design right is valid when registered. Validity can be contested by a counterclaim in infringement proceedings. It may be challenged on the basis that it does not meet the definitional requirements for an industrial design. The claimant must prove that the design was copied and was not an independent creation.

Limits to Rights

There are limits to the rights conferred by industrial design. Acts done in the private use of a design for experimental purposes and certain teaching and citation is permissible.

As with other intellectual property rights, the principle of exhaustion applies. Once something has been lawfully put on the market within the European Union (EEA), no further design rights can be asserted restraining the further sale of that particular product.

Property Aspects

Rights in the design vest in the designer and successors. There may be joint proprietors.

Transfers assignments and Licenses may be granted. They must be recorded and registered. There are limitations on the ability to enforce where the assignment or licence has not been registered.