EU: Why registered Community designs (RCDs) are a helpful tool against infringers in the EU

While each of the possibilities has advantages and disadvantages, the registered design rights may, in many cases (if filed in the appropriate manner), be a very useful tool against copycats as they can be easier to enforce than other IP rights and unfair competition law claims.

Easy acquisition of RCDs

The registration procedure for RCDs is very quick, simple and cheap.

The EUIPO (formerly "OHIM") does not examine the validity of an RCD application on the merits (i.e. protectability). The examiner only checks whether the design which is the subject of the RCD application qualifies as a design in general (e.g. an RCD would not be available for fresh fruit) and whether it contains any element that might offend public policies or morality (e.g. if the design contains racist messages).

In particular, there are no absolute grounds for refusal of an RCD as there are for trade marks (e.g. descriptiveness, lack of distinctiveness). Further, the registration procedure does not provide for oppositions from the owners of prior third party rights. However, third parties may, after the registration of the design, request that it be declared invalid.

Many different designs can be included in the same RCD application (a "multiple application") provided that they all fall under the same Locarno class (i.e. they belong to the same type of goods). The costs for each additional design (e.g. a variation in the style or colour of a product) are relatively low. Where the product is only to be disclosed to the public at a later stage, it is possible to request the deferment of publication for a maximum period of 30 months in order to keep the design's registration confidential.

The registration process at the EUIPO is also very fast, especially when compared to equivalent processes for trade marks and patents. A registration certificate can be obtained within a few days from application.

Object of protection

The enforceability of RCDs largely depends on the object of protection, namely the item for which protection was sought in the RCD application.

Generally speaking, the designer has various possibilities to protect the design of his work product. For example, it is possible to file photos of the work product, three-dimensional images or line drawings. The representation may be in colour or in black and white. Further, depending on the design, one can apply for protection for the entire product (e.g. a chair, a bottle etc.) or only for parts of it (e.g. lunette of a watch, wheel rims etc.).

There is no rule of thumb as to which is the best way to protect a design. Rather, the best means of protection should be considered on a case-by-case basis.

In any case, it should always be kept in mind that RCD protection requires that the design is new and has individual character. A design is considered "new"if it varies in more than just "immaterial details" from other existing designs. The test of "individual character" is a bit more complex as it is necessary to assess whether the design, compared to earlier designs, creates the overall same impression on the "informed user" (i.e. a notional person with knowledge of designs in the applicable field of activity).

There is a 12 month grace period, enabling the designer to disclose a new design to the public (e.g. to investors or at a trade show) and apply for an RCD up to 12 months later. This allows the designer to 'test' their designs on the market before committing to the expense of filing.

Scope of protection and maintenance of rights

An RCD enjoys unitary protection in all 28 EU Member States. Whereas a registered trade mark can potentially be renewed indefinitely, an RCD lasts for a maximum of 25 years, requiring renewals every five years.

Another difference between RCDs and trade marks is that an RCD may theoretically cover all goods but trade marks only cover those specific goods for which the trade mark is registered. Further, as there is no requirement to use a design, an RCD cannot be subjected to cancellation proceedings for non-use, unlike trade marks.

Enforcement of RCDs

An RCD gives the owner an exclusive right to use the design in the course of trade. Protection extends to any later design creating the same overall impression on the informed user.

The owner of an RCD can seek to enforce its rights through a main action or a motion for preliminary injunction before a Community Design Court.
Due to the fact that RCDs are valid throughout the EU, it is possible in certain circumstances for a court to grant pan-European relief and prevent further sale of the infringing product anywhere in the EU.

Further, the owner of an RCD may also file an application with the customs authority in one or more EU Member States requesting that customs authorities search for and seize suspected infringing products entering or exiting the EU.

Advantage of RCDs compared to other IP rights

In addition to RCDs, other IP rights, such as unregistered design rights, copyright and trade marks, may also be used as a tool for the protection of a design. Further, national competition law (or passing off in the UK) can provide additional protection. The IP right or the combination of IP rights that are the most appropriate for the protection of a design should be evaluated on a case by case basis.

For instance, enforcing an Unregistered Community Design, which has a relatively short period of protection (three years), might be a challenge as in order to establish title to the design, the designer will need to prove in detail how, when and by whom the design was created. It is often the case that the only available documentation does not meet the strict requirements set by the courts.

Designs may also be protected under copyright law but, as there is no European-wide harmonised copyright law, the requirements and the scope of protection of the law differ between the various EU Member States. While some countries are more copyright-owner friendly (e.g. the Netherlands or France), copyright enforcement is rather more difficult in other countries (e.g. Germany and the UK).