Professional Documents
Culture Documents
The substantive provisions of Regulation 6/2002 are modelled on the Design Directive 98/71, while its
formal provisions are modelled on the Community Trade Mark Regulation 40/94.9
Infringement
UCD is a right only to prevent copying, not independent work by designers who are reasonably
unfamiliar with the design17 ; UCD also covers secondary infringements as it extends to trade in
products embodying infringing designs,18 regardless of good faith.19 RCD is an exclusive right against
the whole world, including independent designers20 save (bona fide) personal right of prior use.21
Unlike UCD, a RCD holder enjoys (rebuttable) presumptions of ownership22 and validity23 in
infringement proceedings.
actions (as opposed to counterclaims) for a declaration of invalidity of a registered (not unregistered)
Community design, which fall within the OHIM's exclusive jurisdiction.33
In the absence of an agreed forum (which has to be a CDC),34 CDCs may have international
jurisdiction in accordance with two alternative sets of connecting factors:
(1) Domicile scale: Member State of the defendant's domicile or establishment; failing that (e.g. US
defendant), Member State of the plaintiff's domicile or establishment; failing that, Spain.35
(2) Act or threat of infringement.36
Such alternative connecting factors entail quite different scopes of jurisdiction:
(1) If domicile scale or contractual forum: the CDC has jurisdiction in respect of acts of infringement
committed or threatened within any of the Member States37 ;
(2) If act or threat of infringement: the CDC has solely jurisdiction on its territory.38 This is, however,
without prejudice to the co-defendants rule embedded in Art.6.1 of the Regulation 44/200139 under
which the CDC may have jurisdiction to order measures having effect in any of the Member States
where a co-defendant is domiciled.
Where the CDC finds against the defendant in infringement proceedings, it is obliged, 40 unless
special reasons are given, to order the basic uniform sanctions laid down in Art.89 of the Regulation:
(1) injunction (also in case of threatened infringement41 ); (2) seizure of infringing products; and (3)
where actual or constructive knowledge, seizure of materials. Any other appropriate remedy under the
national law of the place of infringement, including damages or an astreinte (penalty for
non-compliance), may also be granted. Thus a CDC may sanction differently infringing acts
committed in several Member States.
In addition, Art.90.1 of the Regulation provides that territorial provisional, including protective,
measures (PPM) may be applied for to any national court (whether a CDC or not) in any Member
State (irrespective of jurisdiction on the merits). Moreover, pursuant to Article 90.3, a CDC whose
jurisdiction is based on Article 82(1-4) (domicile scale or contractual forum) *E.I.P.R. 71 has
jurisdiction to grant extra-territorial PPM which, subject to recognition and enforcement under the
Brussels Convention of September 27, 1968,42 are applicable in any Member State.
To sum up, both pan-European injunctions (Arts 83.1 and 89(a)) and pan-European provisional and
protective measures (Art.90.3) are available before any Community design court having jurisdiction
under Art.82(1-4), (domicile scale or contractual forum) whether on the basis of a registered or
unregistered design. By way of comparison, copyright holders seeking Community-wide injunctions or
provisional measures would have to file 15 national suits.
included. Moreover, products should encompass environmental designs, whether interior (shop,
restaurant, pub, club, TV set ) or exterior (amusement park, garden ).
In addition, complex product means a product which is composed of multiple components which
can be replaced permitting disassembly and re-assembly of the product.52 The intricate issues which
revolve around component parts of complex products will not be dealt with here, save for saying that
their protection is subject to
--a requirement of visibility during normal use (thereby excluding under the bonnet parts)53 on top of
novelty and individual character; and
--a transitional provision to the effect that until [the Regulation is amended], protection as a
Community design shall not exist for a design which constitutes a component part of a complex
product used for the purpose of the repair of that complex product so as to restore its original
appearance.54 Thus this defence to infringement for the purpose of repair (as distinct from a blanket
exclusion from protection) may be invoked right from the start, unlike earlier proposals for a
three-year-delayed repair clause or compulsory licensing schemes.
--as for UCD, disclosure, i.e. making available to the public of the asserted design; or
--as for RCD, filing of application or priority date.65
Novelty is clear-cut (in theory) but individual character is elusive. As a starting point the informed
user who serves as a reference should be more informed (and thus more perceptive of possible
differences) than the average consumer, yet less so than the expert or the man skilled in the art--he
or she is a connoisseur, yet not an initiate. Thence we could follow a four-stage approach suggested
by Uma Suthersanen,66 hereby roughly outlined:
(1) identify the concerned sector (having regard to classes67 of products indicated in the application (if
any) and, in any case, market structure68 );
(2) assess (1)'s informed user's knowledge and perceptiveness (using expert witnesses or market
surveys as evidence);
(3) circumscribe the design corpus or prior art of earlier designs69 ;
(4) compare the overall impressions on (2) of both the asserted design and any element of (3).
An additional factor in assessing individual character, the degree of freedom of the designer in
developing the design 70 conjures up subjective originality. But Recital 14 provides further precision:
just as the industrial sector, that degree of freedom is only one particular element defining the nature
of the product, which itself helps assess individual character. So the designer's room for manoeuvre
between technical or marketing constraints should not tinge the individual character objective test with
subjectivity. The reference person is the informed user, not the creator; individual character is to be
more objective than originality. This has been harmonised by several copyright Directives71 as a
standard meaning its author's own intellectual creation, irrespective of the prior art.
That being said, individual character may well turn out to be interpreted as unconfessed original
novelty. In theory, there is no oxymoron in associating novelty and originality as both standards may
perfectly well supplement each other. But in law, the conjunction or separating novelty and
originality in Art.25.1 of the TRIPs constitutes an insuperable obstacle to blatantly blending them.
promising products for which a registered Community design is desirable; abusive disclosures are
equally neutralised. The grace period incidentally allows UCD and RCD to coexist peacefully as
UCD-triggering disclosures do not sabotage RCD's novelty. It is only one among the practical
attractions of the new regime.77
*E.I.P.R. 74 Formalities
hire vest in the employer unless otherwise agreed or specified under national law 98 ; thus the last
word rests with contract or national law.99 The wordings in the execution of his duties or following
the instructions should be construed more strictly than just in the course of the employment
relationship: a specific duty or instruction should be carried out or followed when developing the
design. By contrast, commissioners seem to enjoy no presumption of ownership.
Entitlement to a Community design may be claimed within three years of UCD disclosure or RCD
publication; the three-year bar does not apply if the person non entitled was acting in bad faith.100
National courts other than CDC also have jurisdiction.101 As the Regulation solely applies to invalidity
proceedings (see ground (c)102 ), entitlement proceedings are governed by national law.
Perhaps correspondingly, unless otherwise provided by the Regulation, a Community design, or its
application, as an object of property shall be dealt with in its entirety, and for the whole area of the
Community, as a national design right of the Member State of (1) the holder's seat or domicile on the
relevant date 103 ; or (2) failing (1), the holder's establishment; or (3) failing (2), as a Spanish design.
104
That provision aims to preserve the unitary character of Community design. Transfer, rights in rem,
levy of execution, insolvency proceedings and licensing in respect of such a national right are then
somewhat regulated.105
Infringement
*E.I.P.R. 76 Exceptions--Articles 20 to 23
Exceptions are provided for
(1) acts done privately and for non-commercial purposes;
(2) acts done for experimental purposes;
(3) acts of reproduction for the purpose of making citations or of 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.112
The former two defences are classic in patent law and should be interpreted along the same lines.
The latter draws inspiration from copyright; it oddly exempts reproduction but not other uses; it is
subject to specific purposes as well as a Berne-style three-step test.113 Other classic defences include
Community (though not international) exhaustion114 and, as for RCD, a personal right of prior use (in
good faith).115
Advantages
Compared with 15 national copyrights, one single Community design offers a huge procedural
advantage.
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Rights in rem
More appropriately than copyright and UCD, RCD may be given as security or be the subject of rights
in rem. 122
Ownership
Both regimes will ultimately depend on national laws.123 Employers will prefer design's presumption of
ownership to droit d'auteur rules favouring creative employees.
Drawbacks
Compared with copyright, designs present shortcomings.
International protection
As soon as a work is created, it is protected by copyright in all Member States of the Berne Union
without any formalities. Indeed, the national treatment and automatic protection principles
automatically qualify foreign authors for copyright protection without discrimination in every unionist
country.
Like its UK forerunner, UCD is not internationally mature. First, foreign designers are hampered by its
formality in disguise (first disclosure within the Community). Conversely, European designers may
not rely on UCD to qualify for equivalent foreign protection.
Advantages
Compared with trade marks, designs offer a great deal of advantages.
(ii)137 was construed more strictly than the corresponding design exclusion138 by Advocate General
Colomer in his opinion in Philips v Remington. 139 A.G. Colomer argued that multiplicity of shapes
applies to designs but not trade marks, so that alternative shapes necessarily producing the same
technical result may save designs yet not three-dimensional trade marks.140 The European Court of
Justice has *E.I.P.R. 78 recently followed that opinion as to trade marks, saving designs for later
delights.141
Scope of protection
Design scope is less fickle, compared with trade marks. First, most trade marks are subject to the
speciality of goods principle, although the aristocracy of famous trade marks is protected across the
board. Design may arguably not be subject to any such speciality rule.142 Secondly, trade mark scope
varies according to its use by the holder and its perception by the public. Although Art.36.6 of the
Regulation143 gives more leeway than strict patent claims, design scope is in theory invariable.
Revocation
Trade marks are frail angels--they may be revoked for non-use or degeneration (fall into the hell of
common signs).144 Designs are not so precarious--they may not be revoked.
Drawbacks
Compared with trade marks, designs present shortcomings.
Term of protection
Like diamonds, trade marks (if renewed and not revoked) are forever. Like Socrates, designs are
mortal.
A Community trade mark is registered for a period of 10 years from the date of filing of the
application. Registration may be renewed for further periods of 10 years to infinity.150 Let us recall that
RCD subsists for a period of five years as from the date of the filing of the application provided that
the rightholder may have the term of protection renewed for one or more periods of five years each,
up to a total term of 25 years from the date of filing.151 Note, however, that UCD, though only for a
period of three years, commences earlier than trade mark (first disclosure within the Community).152
Conclusion
At least in jurisdictions where copyright generously bestows its favours, (e.g. the Benelux), design
was sometimes scorned as being the poor relative within the intellectual property family. But fairy
European Community has now endowed this Cinderella with charms that should not be disregarded,
such as Arts 11 and 83.1 of the Regulation. Revamped at Community level, the new design is
definitely more attractive than it used to be--it should not remain a hidden treasure.
E.I.P.R. 2003, 25(2), 68-78
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1. Throughout this article, design takes on either of the following meanings according to context: (1) outer appearance of
a product; or (2) intellectual property right subsisting in (1).
2. Directive 98/71 of the European Parliament and of the Council of October 13, 1998 on the legal protection of designs
[1998] O.J. L289/28-35.
3. Only three Member States, Italy, France and Denmark, met the deadline--the United Kingdom and Ireland were slightly
late. Since October 28, 2001, litigants in the 10 Member States lagging behind are entitled to invoke the famous
Marleasing jurisprudence whereby incompliant national laws are, as far as possible, to be construed consistently with
an unimplemented Directive.
4. Council Regulation 6/2002 of December 12, 2001 on Community designs [2002] O.J. L03/1.
5. Office for Harmonisation in the Internal Market (Trade Marks and Design). See Arts 102-106 of the Regulation.
6. See Commission Regulation 2245/2002 of October 21, 2002 implementing Council Regulation 6/2002 on Community
designs [2002] O.J. L341/28 and Commission Regulation 2246/2002 of December 16, 2002 on the fees payable to the
OHIM in respect of the registration of Community designs [2002] O.J. L341/54. It is understood that the filing of RCD
applications might commence after Christmas 2002, but with effect as of April 1, 2003.
9. Council Regulation 40/94 of December 20, 1993 on the Community Trade Mark [1994] O.J. L011/1.
11. Art.11 of the Regulation. As to such a vague commencement date, see below.
16. Art.24.1 of the Regulation referring to either Arts 51-61 (especially 52) of the Regulation or Arts 79-94 (especially 84-87)
of the Regulation.
24. Arts 28-29 of the Regulation. As for UCD, refer to the national law designated by Art.27.
26. Beware of the pitfall in Art.38.2 of the Regulation as to the date of filing. Two months delay in forwarding cancels out the
first filing date.
29. The natural plaintiff (design holder) should briskly take infringement action (in particular by claiming threatened
infringement) before the most favourable CDC having jurisdiction before the defendant may apply for a declaration of
invalidity to the OHIM (otherwise Art.91.1 shall apply). Then both invalidity and infringement issues will be swiftly dealt
with by that first seized CDC unless this wishes to stay the proceedings on either party's request pending second
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seised OHIM's decision on invalidity (Art.91.2, second sentence)--if the court so stays, make sure that you request
provisional, including protective, measures for the duration of the stay (Art.91.3).The natural defendant (alleged
infringer) should briskly apply for a declaration of invalidity to the OHIM before it is being sued before a CDC (otherwise
Art.91.2, first sentence shall apply). It may then take advantage of the appeals pyramid (Board of Appeal, Court of
First Instance, possibly European Court of Justice--Arts 55-61 of the Regulation) to create a judicial quagmire with a
view to settling out of court. Where already sued, the defendant should apply to the OHIM (or be joined under Art.54)
and have a go with Art.91.2, second sentence before the first seised CDC as, after all, that provision is quite
legitimately aimed at European-scale uniformity.
30. So litigants may even engage in unbridled European forum-shopping on the basis of parallel national design rights! It
remains to be seen whether all national courts will be prepared to comply with that strict obligation in case of blatantly
abusive forum-shopping.
32. Art.81 of the Regulation. Forum-shopping enthusiasts will note the references to national laws in respect of threatened
infringement under 81(a). Note, in contrast, that torpedoes under Art.81(b) are getting damp owing to both Art.84.4
(validity cannot be challenged) and, crucially, Art.91.1 (the second seised court is under no obligation to stay
proceedings).
35. Art.82.1-3 of the Regulation. For example, a Belgian company may sue before a Belgian court a US corporation only
infringing in the United Kingdom.
39. Council Regulation 44/2001 of December 22, 2000 on jurisdiction and the recognition and enforcement of judgments in
civil and commercial matters [2001] O.J. L12/1.
40. Thus, unlike an interlocutory judge, he or she cannot strike a balance of convenience.
42. Actually, this reference to the Brussels Convention must be updated since Regulation 44/2001 (see above) entered into
force on March 1, 2002, replacing the Brussels Convention in respect of all Member States but Denmark.
44. Benelux Court of Justice, May, 22 1987, [1988] R.C.J.B. 567. The marked [or clear] artistic character requirement for
copyright to subsist in Benelux designs was equated to a mere originality threshold. After remittal a copyright claim for
car sunscreens was accordingly upheld.
45. Functional or utilitarian features (design) and aesthetic or ornamental features (copyright) are severable.
46. By Government Decree 95/2001, which brought Italian law in line with Directive 98/71 and entered into force on April
19, 2001.
52. Art.3(c) of the Regulation. The criterion of permitted disassembly and re-assembly seems overly broad. A higher degree
of technical integration should be required so as still to include fitted bathrooms and kitchens yet not personal
computers or hi-fi systems.
71. Computer programs (Art.2), Duration (Art.6 as to photographs) and Databases (Art.3).
78. See Amended Proposal for a Council Regulation (EC) on Community Design, COM/99/0310 final--CNS 93/0463, [2000]
O.J. C248/3. The explanation as to Art.12 (at the time) is unclear.
79. The best solution may consist in disclosing on the internet and simultaneously notifying both foreign and Community
circles by email.
80. See the Amended Proposal, n.78 above, Explanation as to Art.1: Paragraph 2 a. specifies that contrary to a copyright
approach (under which a creation is protected independently of any formalities), the unregistered design must fulfil a
condition in order to benefit from the protection: the design must have been made available to the public.
87. The fees for 1 design in 1 class are: 230## for registration + 120## for publication (+40## for deferment of publication).
88. See Art.50 of the Regulation for details. Note Art.50.6 as to communication to the defendant in legal proceedings.
91. How about UCD? See Vctor Sez, The Unregistered Community Design [2002] E.I.P.R. 585, at 590.Art.25.2-5 of the
Regulation.
92. How about UCD? See Vctor Sez, The Unregistered Community Design [2002] E.I.P.R. 585, at 590.Art.25.2-5 of the
Regulation.
99. It is not clear whether this national law is the lex contractus (as it should be) or the lex fori.
100. Art.15 of the Regulation. Then national statutes of limitations presumably apply.
107. Compare with the Kinderkapperstoel ruling, Dutch Hoge Raad, March 10, 1995 [1995] N.J. 670.
115. Art.22 of the Regulation. This right was inadvertently omitted in the Directive.
116. Arts 80, 82, 83 and 89 of the Regulation and Art.6.1 of Regulation 44/2001.
124. Council Directive 93/98 of October 29, 1993 harmonising the term of protection of copyright and certain related rights
[1993] O.J. L290/9-13.
133. T-88/00, Mag Instrument v OHIM, February 7, 2002. Mag Instrument had had its Mag Lite torch shape registered as a
3-D trade mark in the Benelux, France, Germany, Switzerland, the United Kingdom, the United States, etc. The OHIM
examiner nevertheless refused its Community application on the ground that the torch shape was devoid of inherent
distinctiveness (Art.7(1)(b) of CTM Regulation 40/94). The Board of Appeal dismissed Mag's appeal. The (EC) Court of
First Instance upheld that decision. Broadly, the CFI found that the shape's aesthetic qualities and its unusually original
design appeared as variants of a common torch shape because after all, the Mag Lite torch had a cylindrical shape like
all torches and a cylinder was an indication as to the nature, not the origin, of the product. The CFI rightly dismissed
some use factors as only being relevant under Art.7(3) of the CTM Regulation (as to secondary meaning).
134. As recalled by the CFI in Mag Lite, ibid. at 38: although the average consumer of the goods in question habitually
perceives a word mark as a sign that identifies the goods, the same is not necessarily true of a mark consisting of the
shape of the goods themselves.
139. C-299/99, Philips Electronics NV v Remington Consumer Products Ltd. Opinion delivered on January 23, 2001.
140. ibid. at 30-42.Though providing an appropriate solution for these extreme facts, this all-encompassing view is
questionable when applied to more plausible three-dimensional trade marks.
141. C-299/99, Philips Electronics NV v Remington Consumer Products Ltd, June 18, 2002. See at paras 78-84, especially
84: a sign consisting exclusively of the shape of a product is unregistrable if it is established that the essential
functional features of that shape are attributable only to the technical result. Moreover, the ground for refusal or
invalidity of registration cannot be overcome by establishing that there are other shapes which allow the same
technical result to be obtained.
149. Secondary meaning (or inburgering in Dutch, meaning acclimatisation) means that a trade mark may acquire distinctive
character through use. However, signs excluded under Art.7.1(e) of the CTM Regulation may never acquire
distinctiveness through use since Art.7.3 only cross-refers to Art.7.1(b-d), not (e). Obviously a design may not acquire
novelty or individual character (as defined above) over time, quite the contrary.