European design protection may be faster, cheaper and better than trademark protection under some circumstances.
You may find it cheaper and better to protect your product design or logo in the European Union ("EU") as a Registered Community Design ("RCD") instead of registering it as a trademark in each EU country or even registering it as a Community Trade Mark ("CTM") which, like the RCD, covers all member countries. Of course, it also is possible to register it as both if the design functions as a source identifier for a product or service.
Definition of 'Design' Is Broad
A "design" is broadly defined as the external appearance of the whole or a part of a product's features or its ornamentation (including its lines, contours, colors, shape, texture and materials). This includes
--Typefaces (but not the computer programs that generate them)
--The visible appearance of parts assembled into a complex product
The design must be "new," that is, not previously disclosed or made available publicly in a way it would be known in the EU.
It also must be "novel" in that it creates a different overall impression, to an informed user, from any previously available design.
In addition, it may not be composed of features dictated solely by their technical function.
Two-Tier System of Protection
The EU has a two-tier system of design protection: (1) a short-term unregistered design ("UCD"), and (2) a longer-term registered design ("RCD").
Unregistered Community Design
Any new design "made available to the public" in the EU is automatically protected against copying.
The term is three years from the date of the design's availability to the public.
Registered Community Design
(up to 25-year protection).
You have a twelve-month grace period after a design has been "made available to the public" anywhere to apply for an RCD.
While the application for an RCD must indicate the product to which it relates, the scope of protection of the registration is not limited to that particular product. It provides a patent-like "monopoly" that does not require you to show that an infringer copied your design.
The term of an RCD is five years from its filing date, and it is renewable for five-year periods up to a maximum of twenty-five years.
Simple and Fast
Applications for the RCD are processed by the European Office for Harmonization in the Internal Market ("OHIM") in Alicante, Spain. No substantive examination of applications for novelty or individual character is conducted by OHIM, so the registration process normally takes only weeks. You can "fast track" examination to as little as two working days.
You can include as many designs as you wish in a single application..
For a small additional fee, the details of your design application may be kept confidential for up to thirty months from the date of application, so you can keep your design secret before launch.
At current currency conversion rates, the official filing fee for one design is about US$ 250 plus a publication fee of about US$ 130. Additional designs may be included at lower official fees. The official fee to defer publication is approximately US$ 45.
Many Industries Will Benefit
The unregistered design is especially useful for products with a short market life, like fashion apparel. It also is useful for large numbers of designs, only a few of which eventually will be commercialized.
The RCD, on the other hand, is particularly advantageous for broad, long-term protection of the designs with a long market life (such as automobiles or toys) or that have become classics (such as liquor bottles or perfume bottles) to prevent any unauthorized party from making, supplying, importing, exporting, using, or otherwise dealing in products that incorporate the design.
You Should Consider Acting Quickly
Someone who sees your design might apply for it first, and this could cause legal headaches. So a designer should consider applying for an RCD as soon as possible.
Although you can file an RCD application directly with OHIM, you may find it desirable to use an attorney to avoid technical pitfalls and to answer any questions OHIM may raise.
For further information, please contact William M. Borchard or Jeffrey H. Epstein.
This ON MY MIND™ Blog post © 2016 by Cowan, Liebowitz & Latman, P.C., New York, NY.
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- Senior Counsel
Before Jeff became semi-retired, he concentrated on domestic and international trademark law.
Jeff handled the worldwide intellectual property portfolios of multinational corporations based in the United States, as well as the ...
Bill advises on domestic and international trademark matters at the highest level. His practice consists of counseling clients and handling domestic and international trademark and copyright matters including clearance ...