by Annette Kur
1. Subject matter and objective
The concept ‘Community Design’ constitutes a legal title that has been established by virtue of Reg 6/2002 (Community Design Regulation, CDR) which confers intellectual property protection on the appearance of products. From the aspect of the essential contents—protected subject matter, requirements for protection, scope of protection and limitations to protection—the substantive provisions of the CDR correspond to those of Dir 98/71 (Design Directive) and thus conform to the industrial design law in force in Germany and the other EU Member States.
The creation of a unitary legal title with Union-wide effect in the field of design law is intended to overcome the territoriality of national property rights and thus counteract the compartmentalization of the common market. Moreover, in this manner, an attractive far-reaching protection has been put at the disposal of companies that operate at the supranational level. A particularly simple, user-friendly registration procedure is intended to provide an incentive to make extensive use of the protection available. To the extent that gaps in protection remain, as the registration of designs for highly fashion-dependent branches of design-oriented industries at the national or Union level may not seem worthwhile, the ‘Unregistered Community Design’ confers short-term protection against imitation for eligible designs published within the European Union.
Like the Community trade mark, the Community design coexists with current systems of protection at the national level. Protection can be acquired simultaneously at both levels. Designs that are only protected nationally and are made available to the public in the course of acquiring the right automatically lead to the creation of unregistered Community designs, and therefore enjoy protection against imitation in all other Member States, at least for their terms of validity.
At the Union level, overlaps between the two regimes may result from the fact that shapes and graphic symbols can be protected as Community marks and are likewise eligible for protection under Community design law. In form and/or content, however, the legal concepts as well as the requirements for protection and the registration procedure exhibit considerable differences. At the level of national law, there are crucial questions of compatibility and demarcation, primarily in the relationship between unregistered Community designs and the provisions in the German Act against Unfair Competition (UWG) or corresponding legal principles applying in other European countries. At the core is the issue of whether, after expiration of the short-lived protection under Union law, imitation of the originally protected form must generally be regarded as permissible or whether recourse may be had to the principles of unfair competition law protection against imitation. Pursuant to the German Federal Supreme Court (15 September 2005, GRUR 2006, 79, 80 – Jeans), the latter is possible at least if the unfairness of the act of imitation does not lie in the adoption of the valuable (unique) form but in its distinctive character, so that different factors are decisive for granting protection.
2. The Community design in detail
For the details of substantive protection of Community designs, the corresponding commentary on industrial design law can be referred to. Therefore only those aspects of Community design law need be addressed—such as the registration procedure in particular—that, contrary to the Design Directive, are explicitly regulated in the CDR.
Registration of Community designs is carried out at the OHIM, which was established in Alicante as the competent Union authority at the time the Community trade mark system was created. Applications may either be filed directly at the OHIM or via the national patent offices; in the latter case, the offices forward the application documents directly to the OHIM without examining them themselves. The application must contain particulars of the applicant’s identity as well as a reproducible representation of the form for which protection is desired (‘design’); furthermore, those products are to be specified in which the design is incorporated or for which it is intended to be applied (Art 36 CDR). The OHIM determines whether the registered object corresponds to the registered object as defined in Art 4 CDR and whether it is excluded from protection for being contrary to public policy or morality; examination is otherwise limited to the formal requirements—ie completeness of the mandatory information and payment of fees (Art 45 CDR). To the extent that protection is sought for several designs, costs can be saved by combining them in a multiple application, on condition that the products in which the designs shall be incorporated belong to the same class of the international classification system which is used by the OHIM (Art 37 CDR). Furthermore, the applicant can request that the publication of the design be deferred for a period of up to 30 months; application fees are then reduced accordingly. At the expiry of the deferment period the publication fees must be paid in order to maintain the right, otherwise it lapses (Art 50 CDR).
After registration, Community designs are published in the Official Journal of the OHIM; in case of deferment, publication is limited to information identifying the applicant (Art 49; Art 50(3) CDR). Registration establishes a presumption of validity of the Community design (Art 85(1)). Third parties who wish to raise objections to validity may apply to the Invalidity Division of OHIM (Art 52 CDR); this can be pursued in an appeal to the Boards of Appeal of the OHIM as well as to the General Court of the European Union (GC) and, where appropriate, to the European Court of Justice (ECJ) (Arts 55 ff). Invalidity can also be invoked in the form of a counter-claim within the framework of infringement proceedings. In this respect national courts which are designated by the Member States as Community design courts have jurisdiction (Arts 80, 81 CDR).
Registered Community designs are protected for five years from the application date. Protection can be extended for terms of five years up to a total of 25 years (Art 12 CDR). Any form of the design within the scope of protection is covered, regardless of whether the creator of the infringing design was familiar with the protected design (Art 10 CDR). There are two exceptions to this principle. First, as long as publication of the design is deferred, protection is limited to imitations (Art 19(3) CDR). Secondly, any third party who at the date that application for the Community design was filed (or, if priority was claimed pursuant to Art 4 Paris Convention, at the relevant priority date) had commenced using a corresponding design in good faith or had made substantial preparations to do so is also entitled to continue to use the design to the same extent as before (right of prior use, Art 22 CDR).
Besides registration at the OHIM, a design right at the Union level can also be acquired by use or other means of making a design available to the public (unregistered Community design). Thus, for the first time, a Union right has been created that does not require registration. In order to be protected, the design must meet the general requirements of novelty and individuality; furthermore, the design must have been used or made available to the public within the Union (Art 11 in combination with Art 110a(5) CDR). The term of protection is three years with no possibility of extension; the right holder is protected against imitations, ie the infringer must have been provably familiar with the design (Art 19(2) CDR).
Otherwise, the scope of protection is the same for registered and unregistered Community designs and thus also corresponds to the provisions of national law harmonized on the basis of the Design Directive. Contrary to the Design Directive, which largely leaves this question to national law, Art 110 CDR provides that, until entry into force of a final Union-wide solution, the manufacture and distribution of parts of complex products for repair purposes cannot be prevented, to the extent that the parts must necessarily be exactly replicated in order to restore the appearance of the original product.
Community designs can be the subject of simple or exclusive license agreements; furthermore, they can be given as security or be the subject of rights in rem (Arts 29, 32 CDR). In case of assignment of a registered Community design, the transfer of rights to third parties does not take effect until a corresponding registration has been made in the Community design register (Art 28(b) CDR). The same applies to licences and other rights in rem related to registered Community designs, to the extent that the third party did not know of the act at the date on which the rights were acquired (Art 33(2) CDR).
In disputes concerning the infringement of Community designs, the courts designated by the Member States as Community design courts have jurisdiction (Arts 80, 81 CDR). Where an infringement or suspected infringement has been determined, the CDR stipulates the following sanctions: grant of an injunction; seizure of the infringing products as well as the materials and implements predominantly used to manufacture them; and an order imposing other sanctions appropriate under the circumstances which are provided by the law of the Member State in which the acts of infringement or threatened infringement are committed (Art 89(1)(a)–(d) CDR).
Uma Suthersanen, Design Law in Europe (2000); David Musker, Community Design Law—Principles and Practice (2002); Alexander Bulling, Gemeinschaftsgeschmacksmuster (2003); Oliver Rühl, Gemeinschaftsgeschmacksmuster (2007); Birgit Reinisch, Das nicht eingetragene Gemeinschaftsgeschmacksmuster und sein Verhältnis zum wettbewerbsrechtlichen Leistungsschutz (2008); Helmut Eichmann and Annette Kur (eds), Designrecht (2009).