Unregistered Community Designs
In particular, community designs give their owners the exclusive right to prevent third parties from producing, using, offering or commercializing products having features which are similar or identical to registered ones. This right lasts 5 years starting from the registration date and it can be postponed up to 25 years.
Contrary to other legislations, the standards to assess the validity of a community design are not about the “aesthetic quality”. In fact, the fundamental requirements that both a registered and an unregistered design should have are:
- the “novelty”, so it has to be different from all other forms belonging to its sector;
- the “individual character”, so it should give the public a general impression distinguishing it from other well known designs in the sector.
The need of Unregistered Community Designs
Starting from the end of the last century, industries just began to develop a huge quantity of new forms around the clock. However, only a small part of those designs was actually commercially exploited, given that the great majority of them was not capable to face the market.
Besides, as for the fashion sector, new models are still launched every now and then and commercialized for limited time frames.
Therefore, it doesn’t make much sense to invest resources to register designs or models which would have a likely short commercial life.
This led to the introduction of Unregistered Community Designs which give an immediate though temporary protection lasting 3 years starting from the disclosure date, so when they become available to the public.
Such disclosure has to be done within the EU in order to be effective and has to be reasonably knowable by people from the specialized circles in the concerned sector (such as trade fairs, exhibitions or – as for the fashion industry – international shows).
Moreover, it is very convenient that the unregistered design owner has the chance to file the application to register the design or model within 12 months from the first disclosure (the so-called “grace period”), as if such dissemination never happened.
Differences between Registered Designs and Unregistered Designs
The first obvious difference between Registered Designs and Unregistered Designs is that the former can benefit from protection starting from the date when the application is filed at the entitled institutions (such as UIBM or EUIPO), thus implying an effective action carried out by the right owner and a certification given by the institutions. On the other hand, Unregistered Designs need no formal procedure in order for the right to be valid, as it is sufficient to disseminate the design to the community.
Another fundamental difference is that unregistered designs owners can prevent third parties from using their design exclusively in case it is indeed the result of a counterfeiting activity.
In addition, with a design registration procedure, the right owner can choose to protect only some characteristics of a product, thus avoiding that third parties can make possible variation of the same resulting in a different product as a whole but having such features.
In other words, while rights arising from the registration follow it automatically, it is much more complicated for unregistered designs owners to hold their claims in legal actions to protect their right.
In fact, it’s worth considering that during judicial proceedings about registered designs, these can benefit immediately from a presumption of validity, that is to say a registered design is considered valid until proven otherwise. Validity has to be demonstrated instead in cases involving unregistered designs, regarding which the case law deems more appropriate to talk about “presumption of protection” rather than validity.
In absence of a registration procedure, first and foremost it is important to establish the right’s boundaries, namely the requirements allowing a design to be considered as such. In fact, it will be up to the design owner to prove the novelty and individuality and only after succeeding, then he/she will be able to benefit from the advantages of unregistered community designs.
Normally, while matters regarding registered designs discussed in courts focus on the real resemblance with a counterfeit product, in judicial proceedings regarding unregistered designs, besides demonstrating the real similarity between the original and the counterfeit design, right owners shall also prove:
- date and place of dissemination and the impossibility of being unaware of such design for people belonging to specialized circles in the concerned sector. In this regard, the EU Court of Justice, in the ruling n. C-479/12 on 13/02/2014 “GAUTZSCH vs MBM JOSEPH DUNA”, elaborates on these concepts clarifying that, on one hand, specialized circles are meant to be those contests capable of conceptually influencing a product’s design and, on the other hand, a dissemination outside the EU does not guarantee that third parties can reasonably get to know about the design, thus making it more difficult to implement measures for its protection.
- that the alleged counterfeiter has undoubtedly copied the unregistered design in order to make his/her creation. This task is not always easy for the right owner and it’s worth specifying that the court should provide support if there are substantial and objective similarities between the compared models. This can be done for example by giving orders to collect evidences at the alleged infringer’s premises, such as access his/her database (as indicated in the judgment of the EU Court of Justice n° C-479/12 on 13/02/2014 “GAUTZSCH vs MBM JOSEPH DUNA”).
On the other hand, a recent ruling of the Court of Milan (judgment n° 6397/2015 “MAX MARA vs LIU JO”) suggests that there should be an actual likeness between the compared models. However, this doesn’t take into account the original mindset which led to the creation of the Regulation (in particular, the content of the “Green paper on the legal protection of industrial design” drafted by the EU Commission on 1991), which addressed an interpretation of unregistered designs on a par with registered ones, implying that a simple connection among the distinctive characters of the two models would be sufficient.
In the light of the above, the risks run by those owners choosing not to register their designs are clear, while they think to count only on unregistered designs’ protection. In fact, as previously mentioned, unregistered designs owners who want to prevent counterfeiters from using an identical design should prove that such design is not the result of the counterfeiter’s independent work or, in other words, that the counterfeiter became aware of the previous dissemination and copied it.
In conclusion, if Unregistered Community Designs can certainly represent a convenient alternative to protect some products, on the other side they should be used very carefully, always considering their limitations and the consequences that could result from their incautious use.