about design protection

Design protection is not automatic, you have to file applications with national or regional offices to enjoy the exclusive right of your design for up to 25 years. You can obtain national design protections by filing your application with any national patent office, for example with USPTO in the USA. 

If you seek to have a registered design in at least two European countries, it is advised to obtain a registered Community design (RCD) in the EU. RCDs are valid for all the countries in the EU, currently 27 countries, and are governed by a single legal system, providing strong and uniform protection throughout the European Union. From 1 January 2021, registered Community designs (RCDs), will no longer be valid in the UK.

A design only covers the appearance of a product. A design does not protect the function of a product. However, it is possible to obtain several forms of protection for a product, for example, a patent for the production of the function, a trademark for the distinctiveness of the sign, and a design for the appearance of a product.

Registered Community designs are protected against similar designs even when the infringing design has been developed in good faith.

How long is a registered design valid for?
A registered Community design (RCD) is initially valid for 5 years from the filing date and can be renewed for five-year periods, up to a maximum of 25 years, whereas an unregistered design only grants protection for three years from the date of its first public disclosure within EU territory.

Different laws define different terms, in the US, as an example, registered designs are valid for 15 years.

Unregistered designs in the EU
An unregistered Community design grants the same rights as an RCD but is only protected for three years from the date on which it was made available to the public. An unregistered Community design grants its holder the right to prevent copying.

what can be a registered design?

The design is the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.

Almost any industrial or handicraft item can be eligible for design protection, for example: 

• packaging of a product,

• set of products,

• parts of products,

• logos, computer icons,

• drawings and artwork,

• typefaces,

• web design, or

• Ornamentation.

benefits of an eu design

A design is a practical way to define and protect your innovation. A design is a company asset that can be traded or used as collateral, that rewards your creative effort, that acts as your IP signature. 

Obtain a registered design for 27 countries in 2 weeks, with

• a single application,

• a single language of filing,

• a single payment,

• the possibility of filing multiple applications (i.e. to include several designs in one application, such as a whole range of similar products),

• the possibility of keeping the design undisclosed for up to 30 months (so it is not revealed to competitors).

The design system offers a ‘bulk discount‘. For a multiple application, the fees for registering the 2nd to the 10th design are subject to a 50% discount while, for the 11th design onwards, the fee is just 25% that of the basic fee per design.

Grace period
A designer (or subsequent owner of a design) can apply for protection up to a year after they first disclose a design, without their own disclosure being detrimental for registration. In other words, a design is considered a novel for one year after disclosure.

DESIGN application procedure in the eu

Representation before the EUIPO
If the applicant does not have a domicile, principal place of business in the European Economic Area (EU and Iceland, Liechtenstein and Norway), there is an obligation to be represented by a legal practitioner or a professional representative before the EUIPO.

Priority
Anyone who has filed a design application in any state of the Paris Convention may claim priority. The subsequent filing with EUIPO must be made within six months of the first application.

Presentation of the design
The design should be represented by at least one view, but up to seven views per design submitted, plus three extra unprotected views. The same applies to multiple applications, with up to seven views permitted for each design applied for.

Filing
An applicant may file as many designs as they wish in one multiple application, the only condition being that the products to which the design is applied belong to the same Locarno class, in other words, that they pertain to the same type of goods.

In case the applicant chooses deferred publication, a request for deferment must be made on the initial application form. (The design can be kept undisclosed for up to 30 months from the filing date or from the date of the earliest priority claimed, so that it is not revealed to competitors.)

Examination
Only formalities are checked in the applications. There is no in-depth, substantive examination, except to verify that the application is for a design and that the design is not contrary to public policy or morality. Unlike the EU trademark system, there is no opposition procedure.

Excluded from examination
The Office will not, of its own motion, check whether your design is new or if it possesses individual character. Third parties can request that your design be declared invalid. The invalidity procedure can only be launched against a design once it has been registered and not during the registration process.

A design application is examined by EUIPO’s examiners, and if everything is in order the design will be registered and published immediately.

The whole time-frame for registering a European design with Pintz & Partners is about 2-3 weeks.