Design protection is an important business asset for companies of all sizes, not just bigger ones. According to article 3 of the Design Regulation from EUIPO, the design is defined as “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”.
To be registered successfully, the product design must new, distinctive and should not describe the details of what you sell. Furthermore, your design should respect public policy and certain morality standards.
You have two choices: either protect your design with the European Union Intellectual Property Office (EUIPO) before you commercialise it and obtain a registered Community design (RCD) or, alternatively, commercialise it directly without registration by relying on what is known as the unregistered Community design (UCD) right.
The option you eventually choose will depend on the impact that it has on your design portfolio strategy.
Registered Community design or unregistered Community design?
Both offer the following protection:
- Manufacturing a product incorporating a protected design (or to which the design is applied) without the consent of its proprietor would be considered illegal.
- Putting a product on the market incorporating the protected design (or to which the design is applied) without the consent of its proprietor would be considered illegal.
- Offering a product for sale incorporating a protected design without the consent of its proprietor would be considered illegal.
- Marketing a product incorporating the protected design without the consent of its proprietor would be considered illegal.
- Importing/exporting a product incorporating the protected design without the consent of its proprietor would be considered illegal.
- However, RCDs and UCDs are quite different in terms of scope of protection and duration.
Differences in duration
RCD is initially valid for five years from the date of filing and can be renewed in blocks of five years up to a maximum of 25 years.
UCD is given protection for a period of three years from the date on which the design was first made available to the public within the territory of the European Union. After three years, the protection cannot be extended.
The act of making available to the public is called ‘disclosure'. Disclosing a design and being able to prove it are key to design protection.
Differences in scope
RCD is protected against similar designs even when the infringing design has been developed in good faith, i.e. without knowing of the existence of the earlier design.
UCD grants the right to prevent commercial use of a design only if that design is an intentional copy of the protected one, made in bad faith, i.e. knowing of the existence of the earlier design.
The legal protection conferred by a registered design is stronger and more transparent. On the other hand, it is not always easy to prove that you have disclosed a design in the European Union (EU) at a particular time. It can also be difficult to prove that your design has been intentionally copied and that the infringer should have been aware of the existence of your design. However, a registered design provides you with a certificate, which makes it easy to prove ownership.