DESIGNS

Keil & Schaafhausen's attorneys have long year experience and expertise in design rights. We provide our clients with advice and service relating to issues ranging from developing filing strategies to enforcing design rights (for example in Frankfurt fairs). We also represent our clients in invalidity proceedings, either to maintain the design rights of our clients or to invalidate the design rights of the competitors of our clients.  

A design is 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.

I. Community Design

1. Details

A registered Community design is valid and enforceable in all countries of the European Union. It is particularly powerful right to be enforced in different international fairs, including international fairs in Germany.

The design regulation requires a design to be new and to possess individual character. A design is new if no identical design has been disclosed before it. If two designs differ only in immaterial details, they will still be considered identical.

A design possesses individual character if the overall impression conveyed to the informed user differs from that conveyed by any other previous designs. When assessing the individual character, the degree of freedom of the designer when developing the design is also considered.

The maximum protection term of a registered Community design is 25 years, calculated from the application date.

2. Filing

A Community design application is filed before the European Union Intellectual Property Office (EUIPO).

3. Priority and Grace period

If a Community design application claims priority of a previous national design application, the Community design application must be filed within 6 months of the filing date of the national design application.

A disclosure shall not be taken into consideration for the purpose of assessing novelty and individual character,  if  a  design  for  which  protection  is  claimed  under  a  registered  Community  design  has  been  made available to the public:

(a) by the designer, his successor in title, or a third person as a result of information provided or action taken by the designer or his successor in title, or if  the  design  has  been  made  available  to  the  public  as  a  consequence of an abuse in relation to the designer or his successor in title; and

(b) during the 12-month period ("grace period") preceding the date of filing of the application or, if a priority is claimed, the date of priority.

Priority, if any, must be claimed within one month of filing of the community design application, and the application number as well as a copy of the priority application must be filed within three months of filing of the community design application.

4. Multiple design application

A Community design application can comprise multiple applications, provided that all these applications are from the same applicant and the products of all of the applications belong to one Locarno class.

5. Deferment of Publication

Upon request, publication of a Community design can be deferred by up to 30 months from the filing date or the priority date.

6. Examination and Registration

The EUIPO carries out formal examination of the Community design application. No examination regarding novelty and individual character is carried out by the EUIPO. An electronic certificate is issued if the application fulfills all formal requirements.

7. Renewal

A registered Community design (RCD) is valid for five years. It can be renewed for a maximum of 25 years, for five years at a time.

8. Invalidity proceedings

A  registered  Community  design  shall  be  declared  invalid  on  application  to  the  Office  or by a Community design court on the basis of a counterclaim in infringement proceedings. A Community design may be declared invalid even after the Community design has lapsed or has been surrendered. An unregistered Community design shall be declared invalid by a Community design court on application to such a court or on the basis of a counterclaim in infringement proceedings.

The application for a declaration of invalidity shall be filed in a written reasoned statement. It shall not be deemed to have been filed until the fee for an application for a declaration of invalidity has been paid.

If the Office finds that the application for a declaration of invalidity is admissible, the Office shall  examine  whether  the  grounds  for  invalidity  prejudice  the  maintenance of the registered Community design. In  the  examination  of  the  application,  which  shall  be  conducted  in  accordance  with  the  implementing  regulation,  the  Office  shall  invite  the  parties,  as  often  as  necessary,  to  file  observations, within a period to be fixed by the Office, on communications from the other parties or issued by itself.

If  the  holder  files  no  observations,  the  Office  may  base  its  decision  concerning  invalidity  on  the evidence before it.

The decision declaring the registered Community design invalid shall be entered in the register upon becoming final.

9. Protection of non-registered Community Design

An non-registered Community  design  can be protected for  a  period  of  three  years  as  from  the  date  on  which  the  design  was  first  made available to the public within the Community. A design shall be deemed to have been made available to the public  within  the  Community  if  it  has  been  published,  exhibited,  used  in  trade  or  otherwise  disclosed  in  such  a  way  that,  in  the  normal  course  of  business,  these  events  could  reasonably  have  become  known  to  the  circles  specialised  in  the  sector  concerned,  operating  within  the  Community. The design shall not, however, be deemed to have been made available to the public for  the  sole  reason  that  it  has  been  disclosed  to  a  third  person  under  explicit  or  implicit  conditions of confidentiality.

II. German Design

1. Details

The protection of a registered design is based on the features of the appearance, which is visibly represented in the application.  

The design regulation requires a design to be new and to possess individual character in order to be protected.

A design is new if no identical design has been disclosed before it. If two designs differ only in immaterial details, they will still be considered identical.

A design possesses individual character if the overall impression conveyed to the informed user differs from that conveyed by any other previous designs. When assessing the individual character, the degree of freedom of the designer when developing the design is also considered.

The maximum protection term of a registered German design is 25 years, calculated from the application date.

A registered German design has only protection in Germany. However, it is worth mentioning that once the design is published, it obtains automatically protection within the entire EU for a period of three years through unregistered Community design protection (see above). If the client needs protection in EU longer than three years, he shall still file an application for registered Community design.

2. Filing

A community design application is filed wiht the DPMA.

3. Priority and Grace period

If a German design application claims priority of a previous national design application, the design application shall be filed within 6 months of the filing date of the national design application.

A disclosure shall not be taken into consideration for the purpose of assessing novelty and individual character,  if  a  design  for  which  protection  is  claimed  under  a  registered  German  design  has  been  made available to the public: (a) by the designer, his successor in title, or a third person as a result of information provided or action taken by the designer or his successor in title, or if  the  design  has  been  made  available  to  the  public  as  a  consequence of an abuse in relation to the designer or his successor in title; and (b) during the 12-month period ("grace period") preceding the date of filing of the application or, if a priority is claimed, the date of priority.

Priority, if any, must be claimed within sixteen month of filing of the German design application, and the application number, application date as well as a copy of the priority application must be filed within this time period.

4. Multiple design application

A German design application can comprise up to 100 multiple applications, provided that these applications are from the same applicant. There is no requirement that the products of these applications shall belong to the same Locarno classification.

5. Deferment of Publication

Upon request, publication of a German design can be deferred by up to 30 months from the filing date or priority date.

6. Examination and Registration

The DPMA carries out formal examination of the German design application. No examination regarding novelty and individual character is carried out by the Office. The examination usually takes around three months. The German design is usually published after registration of the design (if no request for deferment of publication has been filed).

6. Renewal

A registered German design is valid for five years. It can be renewed for a maximum of 25 years, for five years at a time.

7. Invalidity proceedings

A  registered  Community  design  can be  declared  invalid  on  application  to  the  DPMA  or on the basis of a counterclaim in infringement proceedings.

The application for a declaration of invalidity shall be filed in a written reasoned statement. It shall not be deemed to have been filed until the fee for an application for a declaration of invalidity has been paid.

The DPMA notifies the holder of the German design regarding the request of invalidity and stipulates that the holder shall respond to the request within one month period of time. Should the right holder not respond to the request in due time, the German design will be declared invalid.  

Both parties can appeal the decision of the invalidity proceedings before the federal patent court.

III. International Design Registration

It is further possible to register designs using the International Design System (so-called Hague System).

There it is possible to register up to 100 designs in more than 90 countries.

For more information please refer to the World Intellectual Property Organization.