With Regulation EC no. 6/2002 dated December 12, 2002 on Community
Designs, an instrument has been introduced which automatically
protects Designs throughout the European Union.
The Regulation provides for:
- unregistered designs (for a term of 3 years commencing from
the disclosure thereof to the public);
- registered designs (for a term of 25 years, consisting in renewable
5 year terms), commencing from the date of filing of the application.
Components of complex products (which are visible during the course
of their normal use) may, moreover, be protected, as may packaging,
presentations, graphic symbols and typographic typefaces. Features
to be mechanically connected shall not be protected, whereas features
allowing the multiple assembly or connection of mutually interchangeable
products within a modular system are protected.
The requisites for protection are Novelty and Individual Character.
In assessing the requisites for protection, reference must be
made to the Informed User, the margin of freedom of the author
and the margin allowed as a result of the crowded art.
The disclosure of the design by the holder thereof shall not produce
harmful effects for twelve months.
A registered design confers the exclusive right to use the design,
whereas an unregistered design allows the holder of the design
to contest the copying thereof.
The Community principle of exhaustion of the holder’s right
is also provided for.
The right to a Community Design is assimilated to that of a national
patent in the holder’s country of residence.
It is possible to include in the same application numerous designs,
all belonging to the same class (as defined in the Locarno classification).
The Community Design Courts (which should coincide with Community
Trademark Courts still to be designated by the Republic of Italy)
have exclusive competence in relation to the following actions:
- counterfeiting actions; non-counterfeiting actions; nullity
actions or counterclaims.
The competence of the aforementioned Courts follows that of the
Community Trademark Courts and the criteria for establishing their
competence may be classified in three groups:
In the 1st Group the criterion is established by applying the
following alternative Courts:
1. The defendant’s domicile or principal place of business
2. The plaintiff’s domicile or principal place of business
3. The courts of Spain.
In the 2nd Group the criterion is established on the basis of
an agreement reached between the parties who may choose the courts
of a Country preferred by both of them.
In the 3rd Group, lastly, the conclusive criterion is one which
is alternative to the previous ones, and is that of the courts
of a Country in which the design was actually infringed (in this
case the decision concerns only the disputed counterfeiting).
The nullity of Community designs introduced by the Regulation
identifies two different approaches:
a) a “relative” nullity which may be claimed only
by the holders of the prior rights specified in articles 25.2.3.4.5.
This provision, read in the light of article 25.1, highlights
how only the author of the design may, pursuant to article 14,
act against whomsoever has wrongfully registered such design;
only the holder of prior national or community designs published
after the date of filing of the Community Design may bring an
action claiming their community design against a conflicting community
design (this relative nullity appears relevant if one considers
that the period of secrecy may be extended for a term of thirty
months; only the holder of a national or Community distinctive
sign may enforce his right against a conflicting community design.
The same goes for third party copyright or emblems protected by
article 6 ter of the Paris Convention).
b) In relation to the lack of novelty or individual character
pursuant to articles 5 and 6 (like article 3 on the lack of the
requisites for the design) it appears that everyone is entitled
to request the nullity thereof pursuant to article 84.
- This defence seems to be possible only on the basis of a prior
design of the holder.
- The unregistered design is valid if proof is given that the
subject thereof has been published and used and that such design
is known in specialized circles.
By way of summary, the Regulation on community designs provides
for the protection of Registered Designs (commencing from January
1, 20030 and of Unregistered designs (commencing from March 6,
2002):
- The term for Registered Designs is of 25 years commencing from
the date in which the application is filed, whereas that of Unregistered
designs is of 3 years commencing from the first disclosure inside
the Community.
Although apparently the possibility of obtaining the protection
of a product by means of its simple commercialization or the advertising
thereof may seem extremely inviting, it must be borne in mind
that:
- the protection conferred upon unregistered designs is decidedly
less than that which may be obtained by registering a design;
- the disclosure of a product, if on the one hand it gives rise
to the protection thereof by means of an unregistered community
design right, on the other hand may represent a serious obstacle
to the registration of such design, as well as to the registration
of other industrial property rights in non-EU Countries such as
India, Taiwan, China, Japan, South Korea, which do not provide
for a period of grace in relation to the novelty requisite;
- the enforceability of an Unregistered Design vis-à-vis
third parties is subjected to incontrovertible proof provided
by the holder of the design as to the date of first use thereof
inside the European Community.
