The protection of unregistered designs

The most important and curiously still quite unknown right for short-lived designs is the Un-registered Community Design. Some courts also have little experience with this right.

No protection against parallel design

Unlike a German Registered Design or Registered Community Design, an Unregistered Community Design does not protect against independently created parallel designs.

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Overview, protection requirements and scope of protection

Kurzübersicht

  • Novelty, individuality, disclosure within the European Union
  • Term of protection: Three years from first disclosure
  • Scope of protection: European Union
  • Scope of protection: Protection against "conformity in the overall impression": interaction of individual character, intensity of conformity taking into account the "design density" and the freedom of design in the respective product class, only protection against imitation (i.e. in contrast to registered designs and registered Community designs no protection against parallel designers)
  • Typical problems of infringement: novelty, individual character, overall impression, freedom of design, ownership: full burden of proof in a lawsuit on the side of the design owner

Legal presumption of validity

EuGH v. 19.06.2014, C-345/13 – Karen Millen Fashions/Dunnes Stores

As with the Registered Community Design and the (German) Registered Design, the validity of the Unregistered Community Design is also presumed by law (Article 85 II CDR). However, this presumption of legal validity is somewhat limited in comparison to the registered rights: Anyone invoking an Unregistered Community Design must indicate the individual character of his design (ECJ of 19.06.2014, C-345/13 - Karen Millen Fashions v Dunnes Stores). Thus, as with the Registered Community Design and the German Registered Design, it is the defendant's responsibility to attack the individual character.

Anyone invoking an Unregistered Community Design must therefore provide substantiated information on the individual character in the lawsuit. Otherwise, an examination of the individual character is impossible from the outset. The scope of protection can only be determined against the background of the individual character described in more detail by the designer himself. Because its assessment depends on the degree of the freedom available to the designer in the development of the respective design.

Disclosure within the European Union

Since its entry into force in 2002, the Unregistered Community Design has protected any design that is new and unique. "Individual character" has a design if it is distinguishable from other designs. The design must also have been published ("disclosed") in the European Community. This also applies if the design is published outside the European Community but has become known within the Community. (BGH GRUR 2009, 79 - Gebäckpresse).

Proof of ownership

In a lawsuit, the holder of an Unregistered Community Design must present and prove the conditions for protection. He must therefore prove that the design has been published ("disclosed") and that he is the owner of the Unregistered Community Design (see: BGH v. 13.12.2012 - I ZR 23/12 - Bolerojäckchen). This is in practice the most important difference to the registered design (today: registered design). This is because these conditions for protection and thus the legal validity of the design are presumed by law (§ 39 DesignG, Art 85 Abs. 1 GGV).

Scope of protection of the unregistered Community design, Article 10 CDR

The Unregistered Community Design does not only protect identical designs. It also protects any similar design that does not create a different overall impression on the informed user. Here there is an interaction of design freedom and pattern density in the relevant product class on the one hand and distinguishability on the other: the higher the pattern density, the less the pattern has to differ from others. The aforementioned treasure of forms determines not only the novelty, but also the uniqueness of a design.

The Unregistered Community Design thus often offers basic protection against counterfeiting, especially for short-lived designs. If you want longer and more comprehensive protection, you can apply for your design at the respective offices. However, an initially unregistered design can only be reinforced to a limited extent. Firstly, it must be registered no later than 12 months after initial publication. On the other hand, however, there may already be a lack of novelty for a subsequent application abroad if the foreign legal system does not know of a grace period for novelty.

Any questions? Call us: +49 69 915076-0

Your contact person:

Thomas Seifried, Attorney at Law (Rechtsanwalt) and Specialist Lawyer for Intellectual Property (Fachanwalt für gewerblichen Rechtsschutz)

Author: Attorney at Law (Rechtsanwalt) for Design Law and Specialist Lawyer for Intellectual Property (Fachanwalt fuer gewerblichen Rechtsschutz) Thomas Seifried