The Registered Community Design Seminar on Trademarks and Designs Warsaw, 28. November 2006 Dr. Jörg Weberndörfer.

The Registered Community Design

Seminar on Trademarks and DesignsWarsaw, 28. November 2006

Dr. Jörg Weberndörfer

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 ...

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WHAT IS A DESIGN?

TMTM = distinctive sign to identify products and services

DesignDesign = appearance of a product, new and with individual character

An applicant may protect the same item both as a TM and as a design

Difference betweena trade mark and a design

Trade marks registered by OHIM

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

Registered or Unregistered Community Design

• Unitary character

(equal effect throughout the Community)

• Definitions

(design, product, complex product)

• Protection requirements

(novelty, individual character)

Common elements (1)

Registered or Unregistered Community Design

• Exclusion of protection

(non visible parts, technical functions,

interconnections, against public policy or

morality)

• Scope of protection

Common elements (2)

Registered or Unregistered Community Design

• 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

Differences (1)

Max. 25 years

Registered or Unregistered Community Design

• 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

Rights conferred:

Differences (2)

• 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.

The advantages of the registered Community design

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

Examination

____________________________________________Procedure should be fast and user-friendlyProcedure should be fast and user-friendly

No examination on No examination on

verification of protection requirements

relative grounds

whether the applicant is entitled

Examination

Community Design Workflow

Mail RoomMail Dispatch

Examination

Registration

Publication Deferment

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)

Any natural or legal person without any restrictions as to nationality or state of incorporation

Filing procedures - who can file

Who has the right

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

• Electronically

• by fax - not advised for designs

• by post or courier

• by hand - either in Alicante or via National IP Office

Where and how to file

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 €

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 €

• The “Community Designs Bulletin”– Periodic editions– Only electronic – Contains registrations and entries in the

Register

Publications

• Data base of registered Community Designs: RCD-ONLINE

• 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

Deferred publication

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

CD 30606-0005

The Office accepts

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

CD 164611-0004

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

CD 229752

CD 51560

Designs drawn by hand are acceptable

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

Not acceptable as one design (2 different tables)

CD 281118-0003

One product (a toy), accepted as one design

CD 293006-0002

Views relate to the same design

CD 238092-0001

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

The Office accepts

CD 225503

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

The Office accepts

CD 63664 CD 88562 CD 187018

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

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

Multiple applications

Example of a multiple application (class 06)

Two ways to invalidate a registered CD

1) Application to the OHIM

2) Counterclaim in infringement proceeding

before a Community design Court

Invalidity

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.

Registered Community Design Statistics

General Statistics

Accumulated RCDs

Total:- 212, 821

40,640

53,892

63,673

54,885

0

10,000

20,000

30,000

40,000

50,000

60,000

70,000

2003 2004 2005 2006

Accumulated RCD Publications

Total: 204,451

19,882

57,710

67,875

59,008

0

10,000

20,000

30,000

40,000

50,000

60,000

70,000

80,000

2003 2004 2005 2006

Top Ten RCD Filing Countries

23.9%

15.5%

9.1%

8.1%

7.6%

6.8%

3.6%

3.6%

2.5%

2.4%

0.0% 5.0% 10.0% 15.0% 20.0% 25.0% 30.0%

Germany

Italy

USA

France

UK

Spain

Japan

Netherland

Switzerland

Austria

Top Ten RCD Owners

1,816

1,630

1,204

1,164

994

974

941

930

870

851

0 200 400 600 800 1,000 1,200 1,400 1,600 1,800

Nike International

The Procter & Gam ble Com pany

BSH Bosch und Siem ens

Sam sung Electronics

Daim lerChrys ler AG

Eglo Leuchten Gm bH

Villeroy & Boch AG

Colgate-Palm olive AG

Thun Spa

Sony Corporation

Top Ten RCD Representatives

2,856

1,353

1,328

1,322

1,315

1,278

1,272

1,243

1,225

1,158

0 500 1,000 1,500 2,000 2,500 3,000

GLP S.R.L.

Dott. Prof. Franco Cicogna

R.G.C. Jenkins & co.

Boehmert & Boehmert

Boulte Wade Tennant

Marks & Clerk

Modiano

Bureau Gevers

Studio Bonini SRL

J. Isern Patentes y Marcas

Registered Community Design Statistics

RCD Statistics for POLAND

RCDs Filed from Poland

Total:- 2,102

965

799

253

85

04080

120160200240280320360400440480520560600640680720760800840880920960

1,000

2003 2004 2005 2006

Polish RCDs Published

Total:- 1,878

138

968

697

75

04080

120160200240280320360400440480520560600640680720760800840880920960

1,000

2003 2004 2005 2006

Top Ten Polish RCD Filers

21

21

21

18

18

17

16

15

15

14

0 5 10 15 20 25

Kamis-Przyprawy S.A.

Tymbark S.A.

V&S Luksusowa Zielona Góra

Agencja Wydawnicza 'Technopol'

ASA Sp. Z.o.o.

Przedsiêbiorstwo WIM

Valvex S.A.

Agros Nova Sp. z.o.o.

Tan Viet International

Nepentes Sp. z.o.o.

Top Ten Polish Representatives

73

64

39

39

38

37

33

33

32

30

0 10 20 30 40 50 60 70 80

Kancelaria Patentowa Property…

Dr. Hoffmeister & Tarvenkorn

Dreszer Grenda & Partners

Kulikowska I Kulikowski SP

Kancelaria Patentowa Chrystian…

Dennemeyer & Associates

Kancelaria Patentowa ..

Rumpel

Patent Service Kancelaria

KancelariaPatentowa Hanna...

WEB-PAGE: OAMI - ONLINE

ALICANTE-News

OAMI-Newsletter has been

substituted by Alicante News

and is available

online

General

Information: (+ 34) 965 139 100

(+ 34) 965 131 344

[email protected]

Office for Harmonization in the Internal Market (Trade Marks and Designs)Avenida de Europa, 4E-03008 AlicanteSPAIN