Copycat in hell’s chance for the counterfeiters

The EU has introduced a new arrow in the quiver of intellectual property protection – the Registered Community Design.

How often do you come up with a new design idea, only to have it copied by a competitor? New EU-wide registered protection for designs may provide your answer.

Following the success of the European Community Trade Mark, in 2002 the EU introduced pan-European protection for innovative industrial and ornamental designs, with the aim of giving greater certainty to business across Europe, and of reducing costs.

Since the registration process began in early 2003, more than 55 000 applications have been filed, creating registered protection across the 25 member countries of the EU. The EU-wide scheme is a big improvement on its predecessor, which made it necessary to apply for registration country by country, and laws differed significantly between jurisdictions.

Legal background

Registered Community Designs protect the appearance of the whole or part of a product resulting from its features: the lines, contours, colours, shape, texture and/or materials of the product itself, or its ornamentation. Protection is therefore available for a vast range of products – household goods; textiles, clothing and footwear; jewellery; industrial equipment and tools; vehicles; and packaging for food and drink.

Protection is limited to designs that are ‘new’ and have ‘individual character’, perhaps best summarised by the déjà vu test – looking at the design, does the user get a sense of déjà vu? Early court decisions will hopefully add some clarity to exactly what this means.

Once registered, an RCD can be used to obtain injunctions, damages and costs against infringers anywhere in the EU, with only one court application needed for the whole of the EU. This is a significant step towards a common EU market.

Trends in usage

To get an idea of who is registering new designs, we reviewed the first 1000 design applications filed in January 2003 and another 1000 design applications filed a year later in early 2004. The results are largely consistent between the two groups, and show a significant up-take on the new form of protection.

A sizable portion of applications have been filed by those involved in the fashion sector, with more than 22 per cent of applications made for clothing, footwear and accessories. Building parts and hardware (15.3 per cent), household goods (15.7 per cent) and furniture (11.7 per cent), packaging (11.2 per cent) and toys (7.3 per cent) are all well represented. Applications for electrical goods appear low (5.6 per cent), but this may reflect the fact that these goods are more usually protected by patents for their innards – not just how they look from the outside.

Some interesting uses of the new system include registrations for the design of a tyre tread, paper towel patterns, logos, buildings, a shopping trolley, and toothbrush heads. The legislation has been broadly drafted – many things now qualify for design protection which would not have under the old law.

Opportunities untapped

Our review provides an interesting overview of the sorts of products being protected, and the industries seeking protection. Some manufacturers are filing applications to protect their whole seasonal product range – a single application may contain as many designs as the owner wants, so whole catalogues of new clothing designs or household goods are being filed.

RCDs are inexpensive – only €350 (£231) in fees for the first design, falling to €80 (£53) for the 11th and more designs – and comparatively quick to obtain (three months), so it is possible to apply for an RCD prior to manufacture, and then print the registration number on the product itself (or its packaging). This provides a disincentive to copying, both by competitors and counterfeiters.

Many companies still rely on trademarks to protect 3D product and packaging designs. Trademark registrations can be more difficult to obtain, and are more costly. An RCD, on the other hand, provides a 25-year monopoly, which may be sufficient protection for many design articles. Intellectual property protection in Europe requires a holistic approach, taking available protection whether by patent, trademark, copyright or design law.

Notes of caution

Unlike patents, the EU design office does not examine applications for RCDs, other than on technical and administrative grounds – there is no review to see if the designs are ‘new’ or of ‘individual character’. This means that some registrations would appear to be invalid, or have very limited scopes of protection.

Our favourites are four registrations for shapes of sliced bread – a triangle, a square, a circle and a rectangle. Bread in these shapes has been around for years, so it’s difficult to see how these registrations could be valid. But registrations exist, and may be used against people without the resources to invalidate the registrations. So beware when you eat your sandwiches!

Isabel Davies and David Stone are solicitors in the Intellectual Property Group of international law firm Howrey Simon Arnold & White

Registered Community Design – the facts

• EU-wide registered legal protection for ornamental and industrial designs commenced on 1 April 2003 – since then, more than 55 000 applications have been filed

• Registered Community Designs have been warmly welcomed as providing potential cost-savings and greater consistency and ease for many sectors of industry

• RCDs protect the innovative appearance of all or part of a product, including packaging, trade dress, logos and fonts

• The broad scope of the new law means design protection may overlap with trademarks and some patents, and may be quicker and cheaper to achieve. RCDs last for up to 25 years

• An application for registration must be filed within 12 months of the product being made available for the first time anywhere in the world (with a technical exception)

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