What is a design?
Design is the genuine appearance of a product or part of a product which can originate from its shape, colour, contour, texture, material or ornamentation. For example a new shape of a television apparatus may fall under protection in case the design is registered.
What is an RCD?
A Registered Community Design provides design protection for the entire territory of the European Union. With the unitary mechanism one single application made at OHIM will result in the same legal protection in each and every member state.
What is a product?
Any handcrafted or industrially manufactured item is considered to be a product, even if it is only a visible part of an actual product or is made from pieces.
What designs can be protected by RCD?
The two basic criteria set before gaining design protection is novelty and individual character. Not surprisingly, a novelty can be destroyed in case previously registered identical designs are revealed. The criterion of individual character is fulfilled if the design makes a different overall impression from previously disclosed ones. Law provides a one-year grace period from date of disclosure to use the novelty.
What is a grace period?
The period of 12 months provided for the owner to apply his or her RCD. The grace period begins with the date of disclosure. Failure to apply the design in due time results in losing novelty.
What does disclosure mean?
Disclosure is the act of making the design available to the public so that interested circles operating within the Community can become aware of the existence of the design. Documentation of the disclosure is highly recommended (e.g. trade mails, review on it) as it can later serve as evidence in a number of cases.
Is the material used for manufacturing also covered by the design protection?
No. Design protection applies solely to the appearance of a product. Material is protected only to the extent that it influences the overall impression of the product.
Is there a difference between an RCD and UCD?
Yes, there is. For starters, an RCD owner has the exclusive right to use the design which means he can prevent third parties from producing, offering, launching, importing and exporting his graphical solution. Protection is granted for 5 years, which can be renewed every 5 years up to 25 years. In comparison, a UCD (Unregistered Community Design) owner is entitled to step up only against the copying of his design. Another difference is that a UCD protection, which does not require registration, endures only for 3 years from the date of disclosure and cannot be renewed. Altogether, it is very much recommended to have a registered design since the granted legal protection is much wider and it helps making the existence of a protected design transparent.
What is the difference between a 3D trademark and a design?
A trademark is a sign used to identify the products or services of a particular company, whereas design is the appearance of a good. Although being different, they do not exclude one another and therefore it is possible to obtain both one simultaneously. 3D trademark registration is recommended if the shape is not only able to characterize a company but it is also abstract enough to function as a logo (e.g. bottle of Coca Cola). Nonetheless, it is important to note, that the conditions and the period of legal protection are different in the two cases.
What is the difference between a patent and a design?
A patent protection is always connected to the construction or operation of an invention. On the contrary, design protection regards only the appearance of a product, in which case the nature of the product is irrelevant.
What is the deferment of publication?
It is the delay of a design publication which can be requested for an extra fee for a maximum of 30 months. It serves rather practical purposes, as for example in case the market entrance of a product takes longer time and for the time being the applicant wishes to keep the design concealed. Please note that Pintz & Partners does not accept on-line authorization including deferment of publication. If so, please send your order letter to us in the regular way.
How can be an RCD requested?
RCD protection can be applied for at the OHIM, in which case a completed application must contain the representation of the design. With its unquestionable expertise, Georg Pintz & Partners will happily take your case and represent you before the Office.
Who can apply for RCD?
Any person may file an application.
Is legal representation compulsory?
Representation by a local attorney is compulsory only for applicants who do not have their domicile or place of business in the Community. Nonetheless, it is highly recommended for EU-citizens as well.
Is it possible to file more designs in one single application?
Yes, as long as the designs belong to the same Locarno class. However, filing a multiple application is not possible.
What is Locarno classification?
It is an international classification of products solely for the purpose of design registration. It contains the list of products in 32 classes and 223 subclasses.
What does the registration procedure look like?
As novelty search is not part of the process, the OHIM examines applications only for formalities. The Office always notifies the applicant in case it finds failures regarding legal requirements. Deficiencies may be restored by modifying our application.
How long does it take to have a design registered?
Registration is usually completed in a very short period of time ca. 3 months in case no formal deficiencies occur. Due to the short duration of the process, there is no space for substantive examination.
What is an invalidity procedure?
It is the cancellation of a design which may be requested from the OHIM. The procedure requires only exchanges of correspondence between the parties and ends with a decision made by the OHIM.
What are the grounds for invalidation?
The grounds for invalidity are determined by Article 25 of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs. According to the article, the design is invalid
- if it is not a design
- if it does not comply with the legal requirements (e.g. novelty, individual character)
- if the right holder is not entitled to RCD
- if the RCD is in conflict with a prior design (even if the prior design is made public only after the RCD filing or priority date of application)
- if a distinctive sign is used in a subsequent design and the holder has the right to prohibit the use of that distinctive sign
- if the design is in conflict with copyright protection or protected signs.
What is the design register?
Although there exists an official database of registered and published RCDs, online search facilities are not yet available at OHIM. Anyhow, the good news is that Trademark.eu has a searchable database accessible to anyone which includes also designs from January 1, 2006.