Registration protects the design in the entire territory of the European Union: Austria, Belgium, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, the Netherlands, Latvia, Lithuania, Luxembourg, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden (for a total of 4,326,000 square kilometers and 446 million inhabitants).
Designs must meet registrability requirements: the design for which protection is sought must be new and have individual character, meaning that the overall impression produced by the design on the informed user must differ from the overall impression produced by any other design previously made available to the public.
Bi- and tri-dimensional industrial and handicraft items and their visible parts, packaging, get-up, graphic symbols and typographic typefaces fulfilling the requirements of novelty and individual character.
The range of registrable products is actually quite vast, including figurative designs to be applied on products as a decoration or characterization. The weft of a fabric, an unusual visible stitching, the shape of a pocket or of other parts of articles of clothing or designs that can be applied thereto are registrable, as are marks consisting of graphic elements which are not registrable as trademarks or are used only temporarily, etc.
Components of complex products are registrable only if they remain visible during normal use by the consumer and if the visible features of the component fulfil the requirements as to novelty and individual character.
No design rights subsist in designs dictated by their technical function, or in features of a product which must be reproduced necessarily in their exact form and dimensions in order to connect the product to another product so that either product may perform its function.
Novelty – Disclosure
Novelty must, as a rule, be absolute: disclosure by third parties of the design before the filing date of the application for design registration or before the priority date can make the registration void. Disclosure of the design on the part of the author does not prejudice novelty providing that the application is filed within 12 months following such disclosure. Moreover, registrability of a design is not prejudiced by disclosures that are not reasonably available to specialised and interested circles during normal trade within the European Union.
Any natural or legal person may apply for a Community design registration.
Applicants may only be represented professionally by qualified design attorneys enrolled in a special list held by the European Union Intellectual Property Office (EUIPO) or by attorneys at law.
Where to File the Application
Applications can be filed at the European Union Intellectual Property Office (EUIPO) in Alicante (Spain) or at the Italian Patent and Trademark Office or at a national patent office of one of the European Union Member States.
The official languages to be used before the EUIPO are French, English, Italian, Spanish and German.
With a single application, and upon payment of a supplementary fee, it is possible to request protection for a group of designs as long as they belong to the same class of goods of the international classification of Locarno on designs.
It is possible to claim the priority of an earlier first design filed in a member country of the Paris Convention or of the World Trade Organization (or in a state that guarantees reciprocity of treatment) within 6 months of that first design’s filing date. If, however, it is a first filing, the design application can be the basis for a priority claim when applications for the same object are filed in other countries party to the Paris Convention.
Accessibility to Third Parties
Upon filing the application, the applicant may request that the application be made accessible to third parties only in a subsequent period which cannot exceed 30 months from the filing or priority date.
Rights Conferred by the Application
The applicant can prevent third parties from using the Community design, and may bring court actions and request interlocutory injunctions for this purpose.
There is no substantial examination of the novelty and individual character requirements. However, any natural or legal person – and even a public authority entitled to do so – can file with the Office a request for annulment of the design registration.
Publication of the Application
Applications are published in the Community design Bulletin.
No opposition procedure exists.
Rights Conferred by the Registration
The registration of a Community design confers upon the owner the exclusive right to prevent any unauthorised use of the design throughout the European Union.
Duration and renewals
Design registrations have a duration of 5 years following the filing date. Renewals are possible for a maximum total duration of 25 years.
Maintenance fees for Community design registrations can be paid in 5 5-year instalments, the first of which is paid upon filing the application.
Licensing, Assignment, Rights of Security
A community design registration as property is assimilated to a national design registration. Italian law allows the licensing and assignment of design registrations, which may also be used as rights of security.
Unregistered Design Rights
Unregistered Community design rights, which afford a certain degree of protection even in the absence of registration, are acquired automatically and with no need for formalities. The unregistered design right is more limited in scope as well as duration (3 years) than the registered design right: the essential features of both forms of protection are compared in our table “Registered/Unregistered Community designs” (Link).
Term for Registration of Disclosed Designs
There is a term to be observed for the registration of disclosed designs: within 12 months from the design’s first disclosure, it is necessary to decide whether to seek registration (term of protection up to 25 years) or whether to be satisfied with the unregistered design right (term of protection 3 years from first disclosure).
A Community design application or registration gives the owner the right to request customs protection (Link), involving the seizure of counterfeit products at customs.
Applicable International Agreements
The Paris Convention and the TRIPs Agreement (World Trade Organization members).