LICENSING EXECUTIVES SOCIETY BRITAIN AND IRELAND Tuesday 11 November 2003 ERIC POTTER CLARKSON

The Community Registered Design John Peacock and Helen Johnstone The First Six Months John Peacock and Helen Johnstone Eric Potter Clarkson ERIC POTTER CLARKSON

Overview of EU Registered Design System Mechanics of filing Unregistered EU Designs ERIC POTTER CLARKSON

Overview of EU Registered Design System ERIC POTTER CLARKSON

Basic Facts Came into force 1 April 2003 Single registration of a unitary right to cover EU Low cost Quick registration New opportunities Applies to any product e.g. goods, packaging, get up ERIC POTTER CLARKSON

Cost One off cost Less than cost of 2 national registrations ERIC POTTER CLARKSON

Approximate Costs  ERIC POTTER CLARKSON

New Opportunities Now commercially viable to register designs throughout EU Mechanism to assist trade mark registration ERIC POTTER CLARKSON

Relevance to Trade Marks Can be used to protect trade marks and also those which are otherwise unregisterable prima facie provided trade mark comprises 3D object 2D representation of 3D object design eg. label, pack design, logo colour combinations others ERIC POTTER CLARKSON

Examples Of Trademarks That Could Be Protected ERIC POTTER CLARKSON

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Details of the Community Registered Design ERIC POTTER CLARKSON

What is registrable? Patterns Shapes Ornamentation Texture Designs Logos Type faces Colours ERIC POTTER CLARKSON

Exceptions Features dictated solely by technical function Must fit Not visible during normal use ERIC POTTER CLARKSON

BUT Designs applied to or incorporated in a product which constitutes a component part of a modular system are registrable ERIC POTTER CLARKSON

Other Points Not limited to product to which design is applied No substantive Examination Can defer publication for up to 30 months Grace period Can file multiple applications ERIC POTTER CLARKSON

Definitions New No identical design made available to public within the EEA ERIC POTTER CLARKSON

Definitions Individual Character Different overall impression ERIC POTTER CLARKSON

Application for a Registered Community Design - Where? OHIM Central Industrial Property Office of a Member State ERIC POTTER CLARKSON

Representations Drawings, photographs If 2 Dimensional Design and deferred publication requested specimen may be used in filing ERIC POTTER CLARKSON

Other Requirements Identify classification Identify designer(s) ERIC POTTER CLARKSON

Multiple Applications All within one class except cases of ornamentation May be dealt with separately ERIC POTTER CLARKSON

Examination - Grounds for Non-registrability Does not correspond to definition under Article 3(a) i.e. not a design Contrary to public policy or morality ERIC POTTER CLARKSON

Article 3(a) ‘Design’ means the appearance of the whole or part of a product resulting from the features of, in particular, the lines, containers, colours, shape, texture and/or materials of the product itself and/or its ornamentation. ERIC POTTER CLARKSON

Registration & Renewal Published on registration unless deferred publication requested on filing Renewable for 4 x 5 year periods - total of 25 years ERIC POTTER CLARKSON

Invalidity Counter claim in infringement proceedings Application for a declaration of invalidity ERIC POTTER CLARKSON

Grounds Does not correspond to the definition under Article 3(a) Does not fulfill the requirements of Articles 4 to 9 Right holder not entitled Earlier right in a Member State Unauthorised distinctive sign Breaches copyright in Member State In breach of Article 6 ter of Paris Convention ERIC POTTER CLARKSON

Mechanics of Filing ERIC POTTER CLARKSON

Application/representation sent by fax First case confirmation copy received RCD application by fax 01/05/2003 29/05/2003 01/05/2003 Confirmation copy (within 1 month) Date of receiving deemed to be date of fax Filing date of application ERIC POTTER CLARKSON

Application/representation sent by fax Second case RCD application by fax Confirmation copy is received 01/05/2003 29/05/2003 29/05/2003 Confirmation copy (within 1 month) Fax was illegible or of poor quality Filing date = date of receipt of confirmation copy ERIC POTTER CLARKSON

Application/representation sent by fax Third case RCD application by fax No confirmation copy is received Receipt of original within 2 months 01/05/2003 02/06/2003 30/07/2003 Confirmation copy (within 1 month) Notification of deficiency (2 months) Date of filing ERIC POTTER CLARKSON

Application/representation sent by fax Fourth case RCD application by fax No confirmation copy is received Receipt of original (over 2 months) 01/05/2003 02/06/2003 30/08/2003 Confirmation copy within 1 month Notification of deficiency (2 months) No date of filing ERIC POTTER CLARKSON

Representation of design (Art 4 (1)IR) A graphic or photographic reproduction of the design in black and white or colour – maximum of 7 views only Reproduced or pasted on white, opaque A4 paper (only one copy) It should clearly show the details of the design for which protection is sought. ERIC POTTER CLARKSON

Representation of the design - poor quality ERIC POTTER CLARKSON

Representation of the design - poor quality ERIC POTTER CLARKSON

Example of representation ERIC POTTER CLARKSON

First RCDs published 000000013-0001 Casio Computer Company Filed, registered and published on 01/04/2003 ERIC POTTER CLARKSON

Filed, registered and published on 01/04/2003 First RCDs published 000000021-0001 DaimlerChrysler AG Filed, registered and published on 01/04/2003 ERIC POTTER CLARKSON

First RCDs published Design 1029-1, registered for AUTOBAR PACKAGING SPAIN, S.A. Barbera del Valles Design 989-4, registered for Intel Corporation ERIC POTTER CLARKSON

First RCDs published Design 3116-2, registered for Shimano Inc. , OSAKA Design 3132-2, registered for ASTRA GAMES LTD. ERIC POTTER CLARKSON

(the “EUROLOCARNO” list) Products/Classification Indication of products should be worded to allow classification according to the Locarno Agreement The products should preferably be identified by using terms appearing in the list of products of the classification The Office has prepared such a list of products in the 11 EU languages and can now be searched online (the “EUROLOCARNO” list) ERIC POTTER CLARKSON

A multiple application ERIC POTTER CLARKSON

Published multiple application Multiple Registration, designs 2332-1 to 5, registered for Cristina Muls Delassue & Cristina Valls-Taverner Muls ERIC POTTER CLARKSON

Not a multiple application ERIC POTTER CLARKSON

How to speed up your registrations use EuroLocarno whenever possible for your indication of product indicate in the application whether priority will be claimed or not be flexible on elements which do not influence scope of protection (product, class) send confirmation copy a.s.a.p. if fax filing ERIC POTTER CLARKSON

Community Unregistered Design Right ERIC POTTER CLARKSON

Have individual character Must be new Have individual character ERIC POTTER CLARKSON

In force from 6 March 2002 Applies to products first made available to public in EEA on or after 6 March 2002 ERIC POTTER CLARKSON

Short term - 3 years from date of publication Less legal certainty Can only be used to prevent copying ERIC POTTER CLARKSON

Summary Register design in the EU New opportunities Cheap Quick registration (2-3 months) Gives protection for up to 25 years New opportunities Do not rely on unregistered design right protection ERIC POTTER CLARKSON