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IP in Fashion - Community Registered Designs - A Brief Overview

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author/source: Geoff Caesar
ipfasioncommunitydesigns
Blackcurrant Stain HJOL for Prangsta (c) Steve Nyman

What is a registered Community design?

A registered Community design protects the appearance of a product or part of a product and enables the owner to enforce its rights against infringers within the EU.

Why register a design?

  • Speed: Protection starts from the application date. Registration is likely to take place within two to four weeks of filing the design with EUIPO.
  • Geographical scope: The right provides EU-wide protection with the possibility of further international protection.
  • Enforcement: A pan-European injunction may be available and is a cost-effective way of protecting a design in a number of different markets.

How long does protection last?

Protection lasts for an initial period of five years before further costs arise for renewal of the design. The maximum number of renewals is four, providing for a maximum term of 25 years.

What will registration cost?

  • The basic registration fee for a first design for five years of protection is EUR350.
  • There are lower fees for further designs registered at the same time.
  • Renewal fees are set at EUR90 for the first, rising to EUR180 for a maximum fourth renewal.

When should a design be registered?

Although there is a 12-month grace period (see further below), an application to register a design should ideally be lodged prior to publication where possible, ideally the day before or the same day that the design is presented to the public.

What rights does a designer have if a third party infringes the registered design?

  • A design owner can prevent third parties from producing, selling, importing or exporting products in which the design is incorporated. If a court finds that a defendant has infringed a Community design, it may order, among other things, the seizure of infringing products, and the seizure of materials and implements predominantly used in the manufacture of the infringing goods.
  • Design rights may be enforced in certain circumstances via a single action throughout the entire EU. The scope of the right will automatically extend in line with EU enlargement.
  • Shipments can be stopped at the EU border in the case of infringement by presenting the registration certificate. As Community registered designs are quickly available, it can be convenient to use this form of protection as a first line of defence.

What if a design that was not registered becomes very popular: is it too late to register it?

There is a 12-month grace period which starts on the date of publication. However, filing after publication can potentially lead to uncertainty regarding the ability to claim that the design meets the requirements of registrability if third parties enter the market in the grace period. Where possible, an application should therefore ideally be lodged prior to launch.

What are the requirements for registration?

Designs which are “new” and have “individual character”.

What cannot be protected?

  • Non-visible parts (that is, component parts which cannot be seen once the product is made).
  • Features of the appearance of a product which are solely dictated by the technical function of the product.
  • Designs which go against public policy or morality.

On what basis may a design be deemed to be unregistrable?

  • If the design does not satisfy the requirements for protection (namely novelty, individuality, non-functionality, respect for public policy and morality).
  • If the design conflicts with a third party’s prior right or violates a third party’s copyright.

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