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

ERIC POTTER CLARKSON

LICENSING EXECUTIVES SOCIETY

BRITAIN AND IRELAND

Tuesday 11 November 2003


The Community Registered Design

The First Six Months

John Peacock and Helen Johnstone

Eric Potter Clarkson


• Overview of EU Registered Design System

• Mechanics of filing

• Unregistered EU Designs


Overview of EU Registered Design System


• 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

Basic Facts


• One off cost

• Less than cost of 2 national registrations

Cost


Approximate Costs

Activity Costs (£)

Application (includingpublication)

500

Multiple Applications

2 – 10 (per additional application) 200

11 - (per additional application) 100

Deferred Publication 80

1st Renewal (approximately) 100


• Now commercially viable to register designs throughout EU

• Mechanism to assist trade mark registration

New Opportunities


• 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

Relevance to Trade Marks


Examples Of Trademarks That Could Be Protected


Details of the Community Registered Design


• Patterns

• Shapes

• Ornamentation

• Texture

• Designs

• Logos

• Type faces

• Colours

What is registrable?


• Features dictated solely by technical function

• Must fit

• Not visible during normal use

Exceptions


• Designs applied to or incorporated in a product which constitutes a component part of a modular system are registrable

BUT


• 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

Other Points


• No identical design made available to public within the EEA

New

Definitions


• Different overall impression

Individual Character

Definitions


• OHIM

• Central Industrial Property Office of a Member State

Application for a Registered Community Design - Where?


• Drawings, photographs

• If 2 Dimensional Design and deferred publication requested specimen may be used in filing

Representations


• Identify classification

• Identify designer(s)

Other Requirements


• All within one class except cases of ornamentation

• May be dealt with separately

Multiple Applications


• Does not correspond to definition under Article 3(a) i.e. not a design

• Contrary to public policy or morality

Examination - Grounds for Non-registrability


• ‘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.

Article 3(a)


• Published on registration unless deferred publication requested on filing

• Renewable for 4 x 5 year periods - total of 25 years

Registration & Renewal


• Counter claim in infringement proceedings

• Application for a declaration of invalidity

Invalidity


• 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

Grounds


Mechanics of Filing


confirmation copyreceived

Confirmation copy (within 1 month)

Date of receiving deemed to be date of

fax

01/05/2003 29/05/2003 01/05/2003

Filing date of application

Application/representation sent by fax

First case

RCD applicationby fax


Confirmation copy is received

Confirmation copy (within 1 month)


Fax was illegible or of poor quality

01/05/2003 29/05/2003 29/05/2003

Filing date = date of receipt of

confirmation copy

Second case



No confirmation copy is received

Confirmation copy (within 1

month)


Receipt of original within 2 months

Notification of deficiency (2 months)

01/05/2003 02/06/2003 30/07/2003

Date of filing

Third case



No confirmation copy is received

Confirmation copy within 1

month


Receipt of original (over 2 months)

Notification of deficiency (2 months)

01/05/2003 02/06/2003 30/08/2003

No date of filing

Fourth case



• 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.

(Art 4 (1)IR)

Representation of design


Representation of the design - poor quality


Example of representation


000000013-0001

Casio Computer Company

Filed, registered and published on 01/04/2003

First RCDs published


000000021-0001DaimlerChrysler AG

Filed, registered and published on 01/04/2003



Design 989-4, registered for Intel Corporation

Design 1029-1, registered forAUTOBAR PACKAGING SPAIN, S.A.

Barbera del Valles



Design 3116-2, registered for Shimano Inc. , OSAKA

Design 3132-2, registered for ASTRA GAMES LTD.



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)

Products/Classification


A multiple application


Multiple Registration, designs 2332-1 to 5, registered for Cristina Muls Delassue &

Cristina Valls-Taverner Muls

Published multiple application


Not a multiple application


• 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

How to speed up your registrations


Community Unregistered Design Right


• Must be new

• Have individual character


• In force from 6 March 2002

• Applies to products first made available to public in EEA on or after 6 March 2002


• Short term - 3 years from date of publication

• Less legal certainty

• Can only be used to prevent copying


Summary

• Register design in the EU– 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 LICENSING EXECUTIVES SOCIETY BRITAIN AND IRELAND Tuesday 11 November 2003.

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