27 May 2010
A new design having individual character may be registered at OHIM (Office for Harmonization in the Internal Market), the EU designs and trade marks registration office, as a registered Community design for up to 5 renewable periods of 5 years each. Registration confers upon the holder the exclusive right to prevent a third party not having his consent from making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes throughout the European Union.
Sources of Law
The basic legislation is the Community Design Regulation (Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community Designs) as amended. It is implemented by the implementing and fees regulations which were adopted by the Commission on the 21 Oct and 16 Dec 2002 respectively. They are supplemented in the UK by the Community Design Regulations 2005 and a number of other statutory instruments.
The requirements for subsistence are substantially the same as for registered designs. A design must be new and have individual character. The definitions of design, novelty and individual character are also similar.
The right to the Community design shall vest in the designer or his successor in title. Where two or more persons jointly develop a design, the right vests in them jointly. However, where a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to the Community design shall vest in the employer, unless otherwise agreed or specified under national law.
EU member states are required to designate in their territories as limited a number as possible of national courts and tribunals of first and second instance to serve as “Community design courts”. The Community Designs (Designation of Community Design Courts) Regulations 2005 has designated the High Court, the Patents County Court and the Court of Appeal as the Community design courts for England and Wales.
Reg 2 of the Community Design Regulations 2005 provides that any person who is aggrieved by circulars, advertisements or other threats of proceedings for infringement of the right in a registered design may bring an action (known as a “threats action“) against anyone making such threat claiming a declaration that the threats are unjustifiable, an injunction against continuance of those threats and any damages that may be sustained.
A registration may be declared invalid by OHIM or a Community design court.