INTRODUCTION TO THE RCD SYSTEMEUIPO webinar, 24 March 2020

Frédéric Glaize

01 Introduction and Definitions02 Conditions for protection03 Examination – registration04 Prerogatives - Scope of protection05 Cancellation actions

Introduction & definitions

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RCD 005216116-0001

EUIPO DESIGN FOCUS 2010 TO 2019 EVOLUTION

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https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/news/EUIPO_DS_Focus_Report_2010-2019_Evolution_en.pdf

More than 813,000 Registered Community Designs were in force on January 1st, 2020.

on the legal protection of designs

approximating the design protection laws of the Member States for the smooth functioning of the internal market

(Recital 3)

DIRECTIVE 98/71 of 13 October 1998.

on Community designs

Introducing EU-wide design protection via:

Registered Community Designs (RCD)

Unregistered Community Design (UCD)

Regulation No 6/2002 of 12 December 2001

Legal framework

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"design"

means 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

"product"

means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs

"complex product"

means a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product

Definitions

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Examples of designs

Complex product and partial design

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002112003-0001

RENAULT s.a.s.

002302950-0001VALEO VISION Signalling lights for vehicles (part of -)

Examples of designs

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Partial designs

Examples of designs

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Examples of designs

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Examples of designs

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005880044-0005Siemens

Aktiengesellschaft

006064200-0001FEARLESS SRL

005619871-0011Verisure Sàrl

Examples of designs

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RCD 006159513-0002SPILLER 2.0 S.R.L

Logos, Surface patterns, Graphic symbols, Graphic symbols [comicfigures], Ornamentation

RCD 001852690-0006Nokia Corporation

Typographic typefaces

Examples of designs

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004519593-0012

ACCOR

Get-up [arrangement of the interior of a room]

01 Introduction and Definitions02 Conditions for protection03 Examination – registration04 Prerogatives - Scope of protection05 Cancellation actions

Conditions for protection

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RCD 005940459-0015

Apple Inc.

Conditions for protection

Novelty Individual character

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A design has the requested individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public.

In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.

A design is if no identical design has been made available to the public.

A design is identical if its features differ only in immaterial details.

“According to case-law, the status of ‘user’ implies that the person concerned uses the product in which the design is incorporated, in accordance with the purpose for which that product is intended (22/06/2010, T-153/08, Communications equipment, EU:T:2010:248, §46; 09/09/2011, T-10/08, Internal combustion engine, EU:T:2011:446, §24).

The qualifier ‘informed’ suggests, in addition, that, without being a designer or a technical expert, the user is familiar with the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them (22/06/2010, T-153/08, Communications equipment, EU:T:2010:248, §47; 20/10/2011, C-281/10P, Metal rappers, EU:C:2011:679, §59).”

The informed user:

Individual character

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1. The sector of product in which the compared designs are incorporated or to which they are applied

2. The informed user of the products, according to their purpose.

• The degree of knowledge of the state of the art • The degree of attention in the comparison of the designs

3. The degree of freedom of the designer in the development of the designs

4. The result of the comparison of the designs, taking into account the overall impression produced on the informed user by the design at stake and the earlier design.

The “four-step review” used by EUIPO:

Individual character

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Prior art [which is also referred to as a “design”] is deemed to have been made available to the public if it has been published by an IP Office or exhibited, used in trade or otherwise disclosed, except where “these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community”.

Exceptions

But disclosure will not be taken into account if the design was made available to the public

• by the designer in the 12 months before the filing date (or the date of priority)

• or as a consequence of an abuse in relation to the designer

Disclosure of prior art

Validity

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A design applied to or incorporated a component part of a complex product must also remain visible during normal use of the complex product.

"Normal use" means use by the end user, excluding maintenance, servicing or repair work.

Parts of complex products: visibility during normal use

Validity

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002112003-0001

RENAULT s.a.s.

A design can not be contrary to public policy or to accepted principles of morality.

Public morality

Validity

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A Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function.

(article 8.1)

Appearance solely dictated by the product’s function

01 Introduction and Definitions02 Conditions for protection03 Examination – registration04 Prerogatives - Scope of protection05 Cancellation actions

Examination – registration

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006178513-0001SC MARMURA PRODUCT SRL

Still, objections may relate to:

• The definition of a design / a product

• Consistency of the views: each view must relate to the same product

• The payment of official taxes

No substantive examination

Examination – registration

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RCD n°1943283-0001(refused)

-12 months

- 6 months

Day ZERO

about + 4 days

+ 30 months

Self disclosure

Convention Priority

Application

Registration

End of deferment of publication

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Deferment of publication

01 Introduction and Definitions02 Conditions for protection03 Examination – registration04 Prerogatives - Scope of protection05 Cancellation actions

Prerogatives of the design rights owner -Scope of protection

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RCD 003866201-0002

A registration lasts for 5 years from the application date.

Can be renewed for another period of five years, up to four times.

Maximum duration of a RCD: 25 years.

Duration

Prerogatives of the design rights owner - Scope of protection

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Article 19

A RCD confers the exclusive right to use it and to prevent any third party not having his consent from using it.

Use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.

Rights conferred to the owner of a design

Prerogatives of the design rights owner - Scope of protection

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A UCD shall, however, confer such exclusive rights only if the contested use results from copying the UCD, i.e. if the contested design does not result from “an independent work of creation by a designer who may be reasonably thought not to be familiar” with the UCD.

Article 10 can be seen as the mirror of article 6 (individual character):

Scope of protection

Prerogatives of the design rights owner - Scope of protection

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1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.

2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.

the indication of the product, a possible description explaining the representation or the specimen, or the classification of the product “shall not affect the scope of protection of the design as such”.

Article 36.6 adds that:

Exceptions (1/3)

Prerogatives of the design rights owner - Scope of protection

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The rights conferred by a Community design shall not be exercised in respect of:

• acts done o privately and for non-commercial purposes;o for experimental purposes;o for the purpose of making citations or teaching, under certain conditions.

• equipment on ships and aircraft registered in a third country when these temporarily enter the European Union;

Exceptions (2/3)

Prerogatives of the design rights owner - Scope of protection

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Exhaustion of rights:

when the product has been put on the market in the EU by the holder of the Community design or with his consent.

Exceptions (3/3)

Prerogatives of the design rights owner - Scope of protection

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Spare parts (article 110 which appears as a “Transitional provision”):

Protection as a Community design shall not exist for a design which

• constitutes a component part of a complex product • used for the purpose of the repair of that complex product • so as to restore its original appearance.

These are cumulative conditions: they must all be met for this exception to apply.

01 Introduction and Definitions02 Conditions for protection03 Examination – registration04 Prerogatives - Scope of protection05 Cancellation actions

Cancellation actions

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RCD 005953064-0001P.P.H. PRIMART Marek Łukasiewicz

Cancellation actions against RCDs -> filed at the EUIPO.

Cancellation actions against UCD -> filed before national courts.

Cancellation of a Community Design can also be requested before court, as a counterclaim in infringement proceedings.

Cancellation actions

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(a) if the design does not correspond to the definition of a design

(b) if the design does not meet the conditions for validity

(novelty, individual character, not being dictated by the technical function, not being contrary to public policy or morality);

Absolute grounds for invalidity (can be invoked by anyone)

Grounds for invalidity

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(c) if, by virtue of a court decision, the right holder is not entitled to the Community design under Article 14;

(d) if the Community design is in conflict with a prior design

(e) if a distinctive sign is used in a subsequent design, and Community law or the law of the Member State governing that sign confers on the right holder of the sign the right to prohibit such use;

(f) if the design constitutes an unauthorised use of a work protected under the copyright law of a Member State;

(g) if the design constitutes an improper use of any of the items listed in Article 6ter of the "Paris Convention" or of badges, emblems and escutcheons which are of particular public interest in a Member State.

Relative grounds for invalidity (can be invoked only by the entitled person / entity / the applicant for or holder of the earlier right)

Grounds for invalidity

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Possible appeals

EUIPO

Invalidity Division 3rd Board Of Appeal General Court CJEU

Court of Justice

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…

005306172-0013Michelina Porro

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Some TAKE AWAY points

• Protection of the appearance of products or parts of products

• No substantial examination

• No principle of specialty

• « Grace period » of 12 months for self divulgation

• Maximum duration of registration: 25 years

• Very fast registration process / Possible deferment of publication (30 months)

• Cancellation action before EUIPO

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THANK YOU FOR YOUR ATTENTION!