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

2. The Community Registered Design John Peacock and Helen Johnstone
The First Six Months
John Peacock and Helen Johnstone
Eric Potter Clarkson
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3. Overview of EU Registered Design System Mechanics of filing
Unregistered EU Designs
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4. Overview of EU Registered Design System
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5. 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
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6. Cost One off cost Less than cost of 2 national registrations
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7. Approximate Costs 
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8. New Opportunities
Now commercially viable to register designs throughout EU
Mechanism to assist trade mark registration
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9. 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
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10. Examples Of Trademarks That Could Be Protected
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11. ERIC POTTER CLARKSON

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13. Details of the Community Registered Design
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14. What is registrable? Patterns Shapes Ornamentation Texture Designs
Logos
Type faces
Colours
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15. Exceptions Features dictated solely by technical function Must fit
Not visible during normal use
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16. BUT
Designs applied to or incorporated in a product which constitutes a component part of a modular system are registrable
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17. 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
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18. Definitions
New
No identical design made available to public within the EEA
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19. Definitions Individual Character Different overall impression
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20. Application for a Registered Community Design - Where?
OHIM
Central Industrial Property Office of a Member State
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21. Representations Drawings, photographs
If 2 Dimensional Design and deferred publication requested specimen may be used in filing
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22. Other Requirements Identify classification Identify designer(s)
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23. Multiple Applications
All within one class except cases of ornamentation
May be dealt with separately
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24. 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
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25. 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.
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26. Registration & Renewal
Published on registration unless deferred publication requested on filing
Renewable for 4 x 5 year periods - total of 25 years
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27. Invalidity Counter claim in infringement proceedings
Application for a declaration of invalidity
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28. 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
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29. Mechanics of Filing
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30. 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
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31. 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
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32. 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
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33. 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
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34. 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.
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35. Representation of the design - poor quality
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36. Representation of the design - poor quality
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37. Example of representation
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38. First RCDs published 000000013-0001 Casio Computer Company
Filed, registered and published on 01/04/2003
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39. Filed, registered and published on 01/04/2003
First RCDs published
DaimlerChrysler AG
Filed, registered and published on 01/04/2003
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40. First RCDs published Design 1029-1, registered for
AUTOBAR PACKAGING SPAIN, S.A.
Barbera del Valles
Design 989-4, registered for Intel Corporation
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41. First RCDs published
Design , registered for Shimano Inc. , OSAKA
Design , registered for ASTRA GAMES LTD.
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42. (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)
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43. A multiple application
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44. Published multiple application
Multiple Registration, designs to 5, registered for Cristina Muls Delassue & Cristina Valls-Taverner Muls
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45. Not a multiple application
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46. 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
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47. Community Unregistered Design Right
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48. Have individual character
Must be new
Have individual character
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49. In force from 6 March 2002
Applies to products first made available to public in EEA on or after 6 March 2002
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50. Short term - 3 years from date of publication Less legal certainty
Can only be used to prevent copying
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51. 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
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