Registered community design (RCD) is an intellectual property owner’s exclusive industrial design right to utilize a visual design within the European Union. The registered community design grants the owner a registration that is valid in all 27 European Union Nations. In two stages, uniform, EU-wide design rights protection was implemented. The design is protected across western Europe once it is filed, with the exception of Norway, Switzerland, Monaco, Andorra, Liechtenstein, UK, and San Marino.

Intellectual property rights have traditionally been gained and enforced on a national level. However, increased harmonization of federal intellectual property laws has resulted from increased economic cooperation and deeper integration among EU member states. The EU authorities have started to build a unified approach to intellectual property rights across Europe. The EU Designs Protection Directive (98/71/EC) first integrated existing national design legislation. Second, the Community design right, which includes both registered and unregistered Community design rights, was established by EU Regulation 6/2002.

What can be registered as a design?

Any 2D or 3D object’s visual design can be its shape, configuration, or composition. Whereas textures, materials, colors, curves, lines, and other visual qualities are examples of unique design elements. Packaging, composites, parts, logos, icons, fonts, online and graphic designs, and maps are among the various types of design that the European Union Intellectual Property Office (EUIPO) acknowledges for protection. 

Differences between RCD and UCD (Unregistered Community Design)

While there are significant distinctions in terms of existence, duration, and scope of protection between registered and unregistered Community design rights, the protection requirements are comparable.

Applicants for a registered Community design must submit an application and pay the required fees to the Office of Harmonization for the Internal Market (OHIM) in Spain. 

On the other hand, Unregistered Community designs arise naturally when a design is made available to the public within the European Union, as long as it complies with specific legal conditions. It is not necessary to register the design or notify OHIM in order for it to be protected. However, the unregistered Community design right’s simplicity is also its weakness, as rights holders may have difficulties proving the existence of their rights.

Registered Community designs have a longer duration of protection. Indeed, a registered Community design is protected for five years from the date of filing the application, with the option to renew for up to another 25 years. Unregistered Community designs are only protected for three years from the day they were first published inside the Community.

Registered Community Holders have exclusive rights to use the design. They can prevent any unauthorized third party from creating, offering, putting on the market, importing, or exporting products that include or apply the design. This exclusive right also applies to any design that does not give the educated user a different overall impression. As a result, even if the design is the result of independent labor, rights holders have the right to assert their rights against any design that fails to convey a different overall impression.

Only infringement acts resulting from copying can be prevented by holders of unregistered Community designs. There is no copying if the design is the result of “an independent work of invention by a Designer who may be reasonably considered not to be familiar with the Design made available to the public by the holder,” according to EU Regulation 6/2002. This means that a third party who creates an identical design independently will not be judged to have infringed on a design. A rights holder must prove that the defendant really copied its design by demonstrating the defendant’s awareness of the design’s existence in order to build an infringement case based on an unregistered Community design.

Benefits of Registered Community Designs

RCD registration is a straightforward, quick, and inexpensive process. On the merits, the EUIPO (previously “OHIM“) does not review the legality of an RCD application (i.e. protectability). The examiner merely looks to see if the design in question qualifies as a design in general (for example, an RCD would not be available for fresh fruit) and if it has any elements that would violate public policy or morality (e.g. if the design contains racist messages).

In particular, unlike trademarks, there are no legal grounds for refusing an RCD (e.g. descriptiveness, lack of distinctiveness). Furthermore, the registration method does not allow for opposition by prior third-party rights holders. Third parties, on the other hand, may, after registration, request that the design’s registration be declared null and void.

A single RCD application (a “multiple application“) can contain many designs as long as they all belong to the same Locarno class (i.e. they belong to the same type of goods). Each extra design (for example, a change in the style or colour of a product) is quite inexpensive. In order to keep the design’s registration hidden, it is possible to request a postponement of publication for a maximum of 30 months if the product will only be revealed to the public later.

PMS International Group Plc v Magmatic Limited [2016] UKSC 12

This is the first Community Registered Design case to reach the UK Supreme Court, and the Court has rendered a landmark judgment on how Community Registered Designs should be interpreted. Magmatic, the creator of the Trunki ride-on luggage for children, filed a claim against PMS, the seller of the Kiddee Case, which is also a ride-on suitcase for children, for infringement of its Community Registered Design. In July 2013, Arnold J ruled that the Community Registered Design was only for the shape of a suitcase and that the Kiddee Case had infringed on it.

The Court determined that the overall image formed by the Community Registered Design is that of a horned animal, which was reinforced by the absence of adornment on the suitcase’s surfaces, according to Lord Neuberger’s leading decision. Furthermore, Arnold J had made a mistake by failing to consider the tone contrast between the various parts. As a result, the Court of Appeal’s conclusion of infringement stood. Furthermore, despite explicitly declaring that its ruling on this point was obiter, the Court indicated the strong belief that the absence of adornment can be a feature of a registered design in principle and that this feature can be portrayed on a CAD image.

The matter having been decided in this manner, the Supreme Court determined that the appeal did not raise any issues that the CJEU should address.

Conclusion: Companies doing business in the European Union, particularly those launching new goods, should ensure that their IP assets are adequately protected and take advantage of the potential extra value that design rights can provide to an IP portfolio.

The growing number of Community design rights applications (14,031 in 2004 vs 19,232 in 2008, totalling 78,106 Community designs) illustrates that the Community design right has gained traction in the business. Germany (20,078) was the leading country in terms of Community design filings in 2008, followed by Italy (10,434) and France (10,434). (6,537).

The number of Community designs filed from Japan (2,414) remains low, but the number of files from the United States (6,469) is increasing, presumably due to increased interest in the system. Therefore, it is paramount that other countries consider Community Design as a way of registering one’s ideas. 

References: 

  1. Why registered Community designs (RCDs) are a helpful tool against infringers in the EU-Bird & Bird
  2. https://www.twobirds.com/en/insights/2016/global/designwrites-may-2016/eu-why-registered-community-designs
  3. Registered Community Design- the Basics-Mewburn Ellis
  4. https://www.mewburn.com/law-practice-library/registered-community-designs-the-basics#:~:text=A%20registered%20Community%20design%20gives%20its%20proprietor%20the%20exclusive%20right,design%20if%20it%20is%20ornamentation.
  5. Using Community design rights to protect creativity-JF Bretonniere and Frédérique Fontaine Baker & McKenzie file:///C:/Users/HP/Downloads/europe using-community-design-rights-to-protect-creativity.pdf
  6. Registered Community Design: Why Its Important and how to do it-Jaccobaci&Partners
  7. https://www.jacobacci.com/en/publications/registered-community-design-why-its-important-and-how-to-do-it
  8. PMS International Group Plc v Magmatic Limited [2016] UKSC 12

Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.

Authors

  • Title

    Vivek is a 1st-year law student from BML MUNJAL University. He has a keen interest and experience in writing blogs and legal research articles.

  • Title

    Franco Oriti, born in Australia, lived in Sydney and since 1991 has been working in the field of protection, filing, prosecution, surveillance and maintenance of Intellectual Property (IP). He was graduated in International Political Science at the State University of Milan (IT). He currently carries out this IP activity in Lugano (CH) in Oriti Patents since 2015 after having carried it out in Milan for a chemical company of the Montedison Group and for Notarbartolo & Gervasi and in Lugano from 1999 for N&G Patent Services. He has considerable experience in the renewal of patents, designs, utility models, complementary protection certificates, textile models, plant varieties and trademarks Worldwide. He is a Swiss Trademark, Patent and Design Representative, a European (n.4688) and Italian (n.793M) Trademark and Design Attorney and also a Trademark Attorney in San Marino (n.USBM-078R M). He has acquired a lot of knowledge to create special databases to manage IP renewals, official IP deadlines and reporting, and in a short time, he is able to set up an internal office for Companies to pay directly low-costs of IP maintenances Worldwide and to have, anywhere and at everytime, all IP Due Dates under own control in an electronic format with notifications automatically sent by e-mail to whom and when you desire.