The Registered Community Design Seminar on Trademarks and Designs Warsaw, 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... linescolourstexture contours materials ornamentation shape WHAT IS A DESIGN?

TM TM = distinctive sign to identify products and services Design Design = 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 between a 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-friendly No examination on verification of protection requirements relative grounds whether the applicant is entitled Examination

Community Design Workflow Mail Room Mail Dispatch Examination Registration PublicationDeferment

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 design115 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 design20 from 11th onwards10 Renewal fee first renewal 90 second renewal120 third renewal150 fourth renewal180

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

The Office accepts Boundaries to be used to surround features of the design for which protection is sought CD

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

CD 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

One product (a toy), accepted as one design CD

Views relate to the same design CD

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

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 CD 88562CD

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

Accumulated RCD Publications

Top Ten RCD Filing Countries

Top Ten RCD Owners

Top Ten RCD Representatives

Registered Community Design Statistics RCD Statistics for POLAND

RCDs Filed from Poland

Polish RCDs Published

Top Ten Polish RCD Filers

Top Ten Polish Representatives

WEB-PAGE: OAMI - ONLINE

ALICANTE-News OAMI-Newsletter has been substituted by Alicante News and is available online

General Information: (+ 34) (+ 34) Office for Harmonization in the Internal Market (Trade Marks and Designs) Avenida de Europa, 4 E Alicante SPAIN