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a. Introduction

The protection of designs and models in the member states of the European Union was until recently the result of a mosaic of different national legislations. Consequently, the level, the quality and the duration of such a protection sometimes varied significantly from one state to another. In 1998, a European directive (Directive 98/71/EC) tried to harmonise the legislation of the different member states. Nevertheless, this directive did neither harmonise the procedure for granting design and model protection, nor the level of protection on offer, which remained at a national level. The coming into force of the new European regulation no. 6/2002 dated 12 December 2001 will remedy these difficulties.

Indeed, this new regulation establishes a unified system for obtaining a design or a model, benefiting therefore from a uniform protection and creating uniform effects throughout the entire territory of the European Union.

b. Definition of a community design

Article 3 of the Regulation defines the community design as "the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/ or materials of the product itself and/ or its ornamentation."

A product can only be protected as a Community design or model to the extent that it is new and has individual character. It is not required that the product has a utilitarian function, it may be purely decorative.

A product is novel when it has not been made available to the public, namely when the specialised domains of the sector concerned, operating within the Community could not reasonably have become informed of this product throughout the normal course of business. A grace period of 12 months preceding the filing date of a registered design is nevertheless accorded.

The product will be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design or model which has already been made available to the public.

Furthermore, a component part (incorporated in a complex product) can be protected, provided that this component remains visible during its normal use and fulfils in itself the requirements of novelty and distinctiveness.

c. Double protection system

The scheme foreseen by the Community Regulation consists of a double protection system in order to be able to respond to the needs of the different industries.

The Regulation provides the protection of an "Unregistered Community Design" (UCD). This right is automatically acquired from the simple fact that products incorporating these designs or models are made available to the public. This right is limited to 3 years and only prohibits the utilisation of copies of the original designs or models. It is aimed essentially at the clothing industry, which renews its collection every season.

The second right provided by the Regulation is the right to a "Registered Community Design" (RCD) requiring a filing with the Office of Harmonisation in the Internal Market (OHIM), which will then publish the designs and models after their registration. The RCD benefits from a protection of 5 years and can be renewed 4 times (therefore guaranteeing a protection of maximum 25 years).

Apart from a longer duration the RCD also offers a superior quality of protection compared to the protection offered by the UCD. Indeed, the UCD only endows the right holder with the right to prohibit the utilisation on the market of designs based on copies of the original protected creations. Whereas, the RCD authorises the right holder to prohibit the putting on the market of any design or model that does not produce a different overall impression in comparison to the protected design or model. Which means that the right holder of the RCD can exclude all recent creations without having to prove that these are based on his original designs or models (something which the right holder of the UCD has to prove).

d. Rights of a community design or model

The rights of a community design or model belong to its creator. However, if the creator is employed and produces the design within the scope of his duties and/or instructions, the rights belong to the employer, unless otherwise agreed upon.

e. Registration of a community design (RCD)

Naturally, this part deals with the RCD since the UCD does not require any registration.

Every natural or legal person, including bodies of public law, can file an application for the registration a community design or model. Nevertheless, the nationals of non-member states of the European Union must be represented by an authorised professional representative at the OHIM.

The filing can be effected in one of the official languages of the European Union, namely English, French, German, Spanish, Dutch, etc. This filing may be effected at a National Office or, preferably, directly at the OHIM.

The community filing can of course claim the priority of a national filing. What is more, the priority of a community filing can be claimed in most countries of the world.

There is no limit on the number of designs that can be applied for in a single filing. However, all the designs that are part of such a single multiple application must be destined to be incorporated in objects belonging to the same classification class of designs and models (Classification of Locarno). The latter is currently being revised in order to be a more complete and more useful tool for indicating the registered models.

f. Examination

1. Examination of the formal requirements

The OHIM verifies whether the application is in accordance with the dispositions of the implemented regulations, namely those related to the photographs and the graphic representations of the designs. It will also conduct an examination of the other formal requirements to be fulfilled by the application, namely verification of the payment of the official taxes, reception of the power of attorney, the correct and complete description of the design(s), etc. The applicant will be informed of any irregularities and has 2 months to regularise.

2. Examination of the absolute and relative grounds for refusal

The OHIM can only refuse registration based upon 2 reasons:

• The product does not correspond to the definition of article 3 of the Regulation (cf. supra)
• The product is contrary to public policy or morality

If the design meets the formal requirements and the 2 capital requirements, then the OHIM will register the application, attribute a registration number, forward the certificate of registration to the right holder or his authorised representative and will publish the design in the Community Designs Bulletin. This publication may be adjourned upon request of the applicant during a period of maximum 30 months starting from the filing date of the community model or when a priority is claimed as of the date of priority.

g. Application for revocation of a registered design

After the registration any natural or legal person, as well as well as a public authority empowered to do so, may introduce before the OHIM an application for a declaration of invalidity of a RCD.

This must be a written and motivated application, subject to the payment of a tax.

When a tribunal has already issued a ruling in a parallel invalidity procedure, the application will be inadmissible before the OHIM.

If the OHIM judges that the application is admissible, it will examine the grounds for invalidity, which are mentioned in article 25 of the Regulation. These grounds mainly are:

• The design does not correspond to the definition of article 3
• it is not novel
• it does not present an individual character
• ...

The procedure before the OHIM will involve all parties concerned (eventually during an oral proceeding) and every third party, which requests this, and which is subject to an infringement procedure with regard to the design in question.

The party who loses the invalidity procedure will have to bear all the costs (taxes and defence costs) of the opposite party.

An appeal is provided before the Boards of Appeal of the OHIM, eventually followed by an appeal before the Court of Justice of the European Communities.