Key Provisions of the Community Designs Regulation

On 6 March 2002 the Community Designs Regulation (6/2002) (the "Regulation") entered into force creating new unitary registered and unregistered Community-wide design rights. The key provisions of the Regulation are summarised below:

• The Regulation establishes unitary registered and unregistered design rights having equal effect throughout the Community.
• Community Designs will be administered by the Office for Harmonisation in the Internal Market (OHIM).
• "Designs" shall mean "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". The same definition applies for registered and unregistered designs. Surface decoration is not excluded from the scope of protection.
• "Products" and "Complex Products" (being products composed of multiple components which can be replaced) are both defined in the Regulation.
• Community Designs shall only be protected to the extent that they are "new" – that is, not identical to, or differing only in material detail from, designs previously made available to the public.
• Community Designs shall only be protected to the extent that they have "individual character". A design shall be considered to have "individual character" if "the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public".
• Component parts of complex products may only be protected if the component part remains visible during normal use and the visible features satisfy the requirement as to novelty and individual character.
• The Regulation provides a 12-month grace period during which disclosures by the designer will not preclude protection.
• The Regulation excludes from protection:
  • Features solely dictated by technical function. (Note: this also applies for unregistered Community Designs);
  • "Must fit" features;
  • Designs contrary to public policy.
• The scope of protection conferred by a Community Design shall include any design which does not produce on the informed user a different overall impression.
• Unregistered Community Designs shall subsist for three years from the date on which the design was first made available to the public within the Community. Registered Community Designs shall subsist for an initial period of 5 years, renewable up to a total term of 25 years from the date of filing.
• The designer shall be the first owner of the Community Design unless the design is created by an employee in the execution of his duties. (Note that for commissioned works, the Community Design shall not automatically be owned by the commissioner.)
• Registered Community Designs shall provide a monopoly providing the holder the exclusive right to use the design. This shall include the right to conduct the following acts: making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or stocking such a product for those purposes. Unregistered Community Designs shall only prevent these acts if resulting from copying of the protected design.
• There are exclusions from infringement for private, non-commercial and experimental purposes.
• The Regulation expressly provides for the exhaustion of Community Design rights.
• The Regulation provides for a prior use right in respect of registered Community Designs where a third party has, before the date of filing of the application, commenced use within the Community or made serious and effective preparations to that end.
• There are also detailed provisions concerning dealings in Community Designs, the application and registration process and proceedings before OHIM. Such provisions are to be supplemented by an implementing regulation, a draft of which has recently been issued by the European Commission.
• Finally, Member States are required to nominate by 6 March 2005 a limited number of Courts of First and Second Instance to consider issues of infringement and validity of Community Designs. In the interim it is likely that the Patents Court in the United Kingdom shall fulfil this function.

For further information please contact Nick Beckett at [email protected] or on +44(0)20 7367 2490.