Transcript No Slide Title

The Registered Community Design
Seminar on Trademarks and Designs
Warsaw, 28. November 2006
Dr. Jörg Weberndörfer
What is a design?
WHAT IS A DESIGN?
“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
materials
ornamentation
Difference between
a trade mark and a design
TM = distinctive sign to identify products and
services
Design
= appearance of a product, new
and with individual character
An applicant may protect the same item
both as a TM and as a design
Trade marks registered by
OHIM
The Community Design a two tier protection system
• The Unregistered Community Design
(UCD) automatic creation as from first
disclosure
• The Registered Community Design
(RCD) creation by registration at OHIM
Registered or Unregistered
Community Design
Common elements (1)
• Unitary character
(equal effect throughout the Community)
• Definitions
(design, product, complex product)
• Protection requirements
(novelty, individual character)
Registered or Unregistered
Community Design
Common elements (2)
• Exclusion of protection
(non visible parts, technical functions,
interconnections, against public policy or
morality)
• Scope of protection
Registered or Unregistered
Community Design
Differences (1)
• Birth of right
– RCD  application for registration
– UCD  making available to the public within the
Community
• Term of protection
– RCD  5 years renewable 4 times
Max. 25
years
– UCD  3 years from disclosure
Registered or Unregistered
Community Design
Differences (2)
Rights conferred:
• RCD - exclusive right to use and prevent:
making, offering, putting on the market,
importing, exporting, using or stocking for
such purposes, products incorporating the
design
• UCD - right to prevent only if use results
from copying
The advantages of the registered
Community design
• A stronger right with a unitary character in
the entire EU
• Easy, flexible and affordable filing and
registration procedure (one filing language,
one application, one fee system, no upper
limit to designs in one application)
• Long term of protection (up to 25 years)
• Grace period of 12 months.
Examination
Mainly formalities
• elements provided in application
• priorities
• whether professional representation is
required
+ 2 grounds for non-registrability
• not a design application
• against public policy and morality
Examination
No examination on
verification of protection requirements
relative grounds
whether the applicant is entitled
Procedure should be fast and user-friendly
______________________
Community Design Workflow
Mail Room
Mail Dispatch
Examination
Registration
Publication
Deferment
Languages
• The filing of the application may be made in
any of the official languages of the
Community (20)
• The applicant must indicate a second
(different) language which must be a
language of the Office, that is Spanish (ES),
German (DE), English (EN), French (FR) and
Italian (IT)
Filing procedures - who can
file
Any natural or legal person without any
restrictions as to nationality or state of
incorporation
Who has the right
• The designer or his successor in title
• Joint ownership
• Designs developed by employees
Where and how to file
• Electronically
• by fax - not advised for designs
• by post or courier
• by hand - either in Alicante or via National
IP Office
Registration fee
• first design
• from 2nd to 10th design
• from 11th onwards
230 €
115 €
50 €
Publication fee
• first design
• from 2nd to 10th design
• from 11th onwards
120 €
60 €
30 €
Deferment fee
• first design
• from 2nd to 10th design
• from 11th onwards
40 €
20 €
10 €
Renewal fee
•
•
•
•
first renewal
second renewal
third renewal
fourth renewal
90 €
120 €
150 €
180 €
Publications
• The “Community Designs Bulletin”
– Periodic editions
– Only electronic
– Contains registrations and entries in the
Register
• Data base of registered Community
Designs: RCD-ONLINE
Deferred publication
• To be requested when application is filed
• Maximum 30 months as from filing or
priority date
• Deferment may be interrupted at any time
• Possibility of filing a specimen if two
dimensional design
• Except for very limited information, the
designs remain secret until holder decides
to publish
The Office accepts
• Dotted lines to indicate
the elements for which
no protection is sought
or to indicate portions
of the design which
are not visible in that
particular view, i.e.
non-visible lines
CD 30606-0005
The Office accepts
• Boundaries to be
used to surround
features of the
design for which
protection is sought
CD 164611-0004
The Office accepts
• Colouring to be used
on a black and white
drawing to highlight
the features of the
design for which
protection is sought
only
CD 229752
Designs drawn by hand are
acceptable
CD 51560
Views must relate to the
same design
• The maximum 7 views must always relate to
the same design, otherwise it must be split into
a multiple application or into two separate
applications
• However, it is acceptable that one view shows
the design as a whole and the other views
show specific portions of it
Not acceptable as one design
(2 different tables)
CD 281118-0003
One product (a toy),
accepted as one design
CD 293006-0002
Views relate to the same design
CD 238092-0001
Complex products
• A product consisting of multiple components
which can be replaced permitting
disassembly and re-assembly
• The Office requires that at least one of the
maximum 7 views shows the product in its
assembled form if it is not clear whether the
application is a single or multiple application
• However, such a view is requested for only if
it could be easily produced by the applicant
The Office accepts
CD 225503
Set of articles
• The Office accepts a set of articles as one
design, provided the articles have features in
common which closely link the articles in such
a way that it is clear that protection is sought
for a design resulting from the combination of
the articles
• In addition, the articles should ordinarily be on
sale or intended to be used together
• For a set of articles at least one view must
show the set of articles together
The Office accepts
CD 63664
CD 88562
CD 187018
Specimens
• Only two-dimensional designs and deferred
publication
•
•
•
•
5 copies
Pasted on A4 paper
Sent in single mail with application
Dimensions
– A4 not folded
– 50 grams
– 3 mm thickness
• Not perishable or dangerous
Multiple applications
Features
– no upper limit for number of designs
– saves costs for applicant
– each design included will have its own
independent life (deferred or not,
invalidity, surrender, renewal, etc …)
BUT must be in same class of Locarno
Example of a multiple
application (class 06)
Invalidity
Two ways to invalidate a registered CD
1) Application to the OHIM
2) Counterclaim in infringement proceeding
before a Community design Court
Grounds for Invalidity
- not a design
- does not fulfil requirements of novelty,
individual character, offends public policy or
morality etc.
- holder not entitled
- anticipated by prior design
- interfering earlier rights
- improper use of certain emblems etc.
Registered Community Design Statistics
General Statistics
Accumulated RCDs
Total:- 212, 821
70,000
63,673
60,000
54,885
53,892
50,000
40,640
40,000
30,000
20,000
10,000
0
2003
2004
2005
2006
Accumulated RCD Publications
Total: 204,451
80,000
67,875
70,000
59,008
57,710
60,000
50,000
40,000
30,000
19,882
20,000
10,000
0
2003
2004
2005
2006
Top Ten RCD Filing Countries
Austria
2.4%
Switzerland
2.5%
Netherland
3.6%
Japan
3.6%
Spain
6.8%
7.6%
UK
8.1%
France
USA
9.1%
Italy
15.5%
Germany
0.0%
23.9%
5.0%
10.0%
15.0%
20.0%
25.0%
30.0%
Top Ten RCD Owners
Sony Corporation
851
Thun Spa
870
Colgate-Palm olive AG
930
Villeroy & Boch AG
941
974
Eglo Leuchten Gm bH
Daim lerChrysler AG
994
Sam sung Electronics
1,164
BSH Bosch und Siem ens
1,204
The Procter & Gam ble Com pany
1,630
Nike International
1,816
0
200
400
600
800
1,000
1,200
1,400
1,600
1,800
Top Ten RCD Representatives
J. Isern Patentes y Marcas
1,158
Studio Bonini SRL
1,225
Bureau Gevers
1,243
Modiano
1,272
Marks & Clerk
1,278
Boulte Wade Tennant
1,315
Boehmert & Boehmert
1,322
R.G.C. Jenkins & co.
1,328
Dott. Prof. Franco Cicogna
1,353
GLP S.R.L.
2,856
0
500
1,000
1,500
2,000
2,500
3,000
Registered Community Design Statistics
RCD Statistics for
POLAND
RCDs Filed from Poland
Total:- 2,102
1,000
960
920
880
840
800
760
720
680
640
600
560
520
480
440
400
360
320
280
240
200
160
120
80
40
0
965
799
253
85
2003
2004
2005
2006
Polish RCDs Published
Total:- 1,878
1,000
960
920
880
840
800
760
720
680
640
600
560
520
480
440
400
360
320
280
240
200
160
120
80
40
0
968
697
138
75
2003
2004
2005
2006
Top Ten Polish RCD Filers
Nepentes Sp. z.o.o.
14
Tan Viet International
15
Agros Nova Sp. z.o.o.
15
Valvex S.A.
16
17
Przedsiêbiorstwo WIM
ASA Sp. Z.o.o.
18
Agencja Wydawnicza 'Technopol'
18
V&S Luksusowa Zielona Góra
21
Tymbark S.A.
21
Kamis-Przyprawy S.A.
21
0
5
10
15
20
25
Top Ten Polish Representatives
KancelariaPatentowa Hanna...
30
Patent Service Kancelaria
32
Rumpel
33
Kancelaria Patentowa ..
33
Dennemeyer & Associates
37
Kancelaria Patentowa Chrystian…
38
Kulikowska I Kulikowski SP
39
Dreszer Grenda & Partners
39
Dr. Hoffmeister & Tarvenkorn
64
Kancelaria Patentowa Property…
73
0
10
20
30
40
50
60
70
80
WEB-PAGE: OAMI - ONLINE
ALICANTE-News
OAMI-Newsletter
has been
substituted by
Alicante News
and is
available
online
General
Information:

(+ 34) 965 139 100

(+ 34) 965 131 344

[email protected]

Office for Harmonization in the Internal
Market (Trade Marks and Designs)
Avenida de Europa, 4
E-03008 Alicante
SPAIN