Now the registration fees are fixed it’s now possible to contemplate filing an application to register a Community Design. Will this be a chance for this under-used registrable intellectual property right to lose its “Cinderella” status?
Topic: Design
Who: The Office for Harmonisation in the Internal Market ("OHIM") in Alicante and the European Commission
When: December 2002
Where: Brussels and Alicante
What happened:
The European Commission took the final steps in the process of setting up the European Community Design protection system which has been previously reported on marketinglaw. The idea is that in parallel with EU member states' national design protection systems, such as our own design registration process, designers will be able to obtain EU-wide protection for their designs with a single application.
Holders of a registered "Community Design" will have exclusive rights to use the design and to prevent any third party from using it anywhere within the European Union for up to 25 years. Before December 2002, the mechanisms were already in place for registration, appeals and cancellation of designs, but the last stage of the process has seen the fixing of the fees payable to OHIM, which already handles the registration of Community Trade Marks and will now deal also with the whole Community Design registration process.
The basic fee for a first design registration will be €230 with lower fees for any further design registered at the same time. There will also be renewal fees, payable every 5 years throughout the 25 year term of the design right. This will increase throughout the 25 year term, so that on first renewal a fee of €90 will be payable and on the fourth renewal €180. The very first Community Designs to be registered will take effect from 1 April 2003, but design owners who want to get into the queue can file their applications now.
Why this matters:
Design registration continues to be the European Cinderella of intellectual property right registration systems, with trade marks and patents way ahead in terms of their popularity and utilisation. On the other hand, EU design protection systems do not win prizes for simplicity, in that broadly from April 2003 there are likely to be at least four different species of right which potentially could protect a European design.
First there will be the Community Design which this piece focuses on, then there will be the EU unregistered design right available against deliberate copying even without prior registration. Then there will be individual EU member state design registration systems (which now benefit from a separate EU harmonisation measure) and fourthly there will be the existing systems in each EU member state for protecting designs without the need for registration.
Whether European designers will latch on to this new right to make full use of it remains to be seen. But whether they bother to register or not, it will be a good idea to search the Community Designs Register before exploiting any supposedly new design. Otherwise, an infringement action could stop them in their tracks.
