In 1993, the Commission of the European Union issued proposals for harmonization of design laws within the various countries of the EU and the creation of an EU designs registry for granting design registrations that would be effective throughout the EU with a design registration office located with the Trademark Office in Alicante, Spain. However, such plans initially fell afoul of the problem of what, if any, protection should be given to spare parts and their use in repairs, particularly for cars, this also being the main point of contention between Parliament and the Council, having regard to the Directive. The Council wished to have them covered. Parliament wished to include provisions that would permit the use of articles covered by a registered design to repair "complex products" as long as the source of the repair part is indelibly marked on it and fair compensation for use of the design has been offered to the right holder. Thus, the adoption of a European Union-wide single registration system has been delayed for at least a few years and the harmonization Directive was adopted essentially leaving the issue of the use of component parts for the repair of a complex product to national law until at least 2004 (see our March 1999 Newsletter). However, agreement was ultimately reached on a Regulation to establish an EU Design Right and this was adopted on December 12, 2001 and published in the Official Journal on January 5, 2002.

The Regulation provides for unitary design right protection throughout the European Union, although not precluding national rights, and has several similarities to the Community Trade Mark Regulation, including use of the same office in Alicante, Spain but also draws on provisions that were included in the yet-to-be-implemented Community Patent Convention.

The Design Regulation creates two distinct Community design rights which are directly applicable throughout the European Union: 1) a right obtained by registration at the Office for Harmonization of the Internal Market (Trade Marks and Designs) (OHIM) at Alicante which will have a maximum duration of twenty-five years from filing the corresponding application; and 2) an unregistered right which will have a duration of three years from the date on which the design was first made available to the public within the EU. The provisions relating to the unregistered right came into effect on March 6, 2002. Those relating to the registered right will only come into effect after the adoption of implementing regulations. It is expected that the implementing regulations will be adopted this year and that the first filing of applications for the registered Community design right will take place in the spring of 2003.

The reason given for the two types of right is that a Community design should, as far as possible, serve the needs of all sectors of industry in the Community. Some of those sectors produce large numbers of designs for products frequently having a short market life where protection without the burden of registration formalities is an advantage and the duration of protection is of lesser significance. On the other hand, there are sectors of industry which value the advantages of registration for the greater legal certainty it provides and which require the possibility of a longer term of protection corresponding to the foreseeable market life of their products.

Whereas a registered design right will give rights similar to those given by a patent, the unregistered right will be infringed only if copying is proved. These two rights will co-exist with national design rights and other relevant national rights such as copyright, unregistered design rights, trademarks, patents, utility models, typeface rights and rights under unfair competition law.

Designs capable of protection by either of the Community design rights relate to the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation. The term "product" is itself defined broadly as "any industrial or handicraft item" including parts intended to be assembled into a multi-component product of which the "components...can be replaced permitting disassembly and reassembly." Such component parts are, however, only capable of protection if they remain visible during the normal use of the product within which they are incorporated and as so seen meet the requirements for novelty and individual character discussed below. Furthermore, in view of the continuing political difficulties over protection for spare parts, for the time being protection as a Community design shall not exist for a design which constitutes a component part of a complex product "... for the purpose of the repair of a complex product so as to restore its original appearance." The result seems to be, therefore, that the designer of, say, a new bumper for an automobile has the right to prevent competing automobile manufacturers from using such a bumper in their products without authorization but not to stop the production and use of such bumpers to repair its own automobiles.

Whether registered or unregistered, the basic requirement for protection is that the design is new and has an "individual character." Novelty is defined in slightly different terms from many national statutes in that designs which differ in only immaterial details from a prior disclosure will not be regarded as being new. Individual character means that the overall impression of the design is such that "it produces on the informed user" a different overall impression from that of any prior design that has been made available to the public. OHIM officials have indicated that what is meant by an "informed user" is someone intermediate between an ordinary user and an expert. For some types of products it has been suggested that such a person might be a retailer of the product in question. In making a determination of overall impression "the degree of freedom of the designer in developing the design shall be taken into consideration."

Despite the apparently broad definition of what is protectable, there is a specific prohibition on protection for "features of appearance of a product which are dictated solely by its technical function" or by features which must be exactly reproduced to permit the product in question to fit with another product to enable either of these products to perform its function. This prohibition does not apply, however, to mutually interchangeable products that are to be used in a modular system.

The dates at which the requirements of novelty and individual character are to be determined are the dates of filing or validly claimed priority with respect to registered design rights and the date on which the design itself was first made available to the public for the unregistered right. In considering questions of novelty and individual character, all designs made available to the public prior to the relevant dates are to be taken into account, whether by publication, use or otherwise except for 1) situations where the events in question "could not reasonably have become known in the normal course of business to the circles in the sector concerned operating within the EU"; and 2) for registered rights only where the disclosure was by the designer him or herself or someone obtaining the design from him or her within the twelve-month period prior to the filing of the application for the registered right. The effect of these provisions is to allow a designer a one-year period within which a newly launched design is protected by the unregistered right before he or she has to incur the cost of registration. Furthermore, the first exclusion goes beyond the provision in the European Patent Convention which discounts a disclosure if made in confidence or, for a six-month period only, if made in evident abuse of the applicant's rights, and apparently excuses, for example, chance oral disclosures at dinner parties, etc., particularly if they occur outside the EU.

The scope of protection afforded by both registered and unregistered design rights is defined in similar terms to the definition of individual character, giving rise to speculation that no right can infringe any other right, an issue which the courts will decide in due course. The definition of the scope of protection is:

It should be noted that this definition is not tied to any particular product. Thus, despite the fact that for registered protection a product will have to be indicated, it appears that protection will extend to all products incorporating the design. For example, a design originally produced for a car would be infringed by a tea-cozy of the same shape.

Applications for a registered design right will be able to be filed at OHIM or at the central industrial property office of any of the member states or at the Benelux Design Office. The application will be able to be in the language of any member state but the applicant will have to specify a second language which he accepts as a possible language of the proceedings. At present, the possible second languages are English, French, German, Spanish and Italian. Provision is made for the filing of a description explaining the design and in some cases for the supply of a sample at the applicant's option. Applications covering multiple designs will be generally permitted, subject to all of the designs being classified in the same class. Such multiple designs may, however, be dealt with separately for purposes of licensing and certain other matters. Examination will be confined to formal matters and questions of whether that for which protection is sought complies with the definition of a "design" or whether protection for it is contrary to public policy or accepted principles of morality.

Normally, once examination is completed, the design will be registered and published. OHIM officials have indicated that they hope that, except in cases where delay in publication of the design has been requested, publication will occur within three months of filing. However, the applicant may request that publication be deferred for a period of thirty months from its filing date. In such a case a party who can show that the right holder "has taken steps with a view to invoking against him" a Community design right shall have right of access to the file and, in any case, institution of legal proceedings for infringement of an unpublished right is subject to the defendant being given "the information contained in the register and in the file."

Once registered, protection will run initially for a period of five years and will be subject to the possibility of renewal for four further five-year periods providing for a possible maximum duration of twenty-five years.

As noted previously, registered rights give protection against anyone using the design in question, even if the publication of the design has been deferred, whereas unregistered rights give protection only against copying. The protection given by registered rights is itself subject to some limitations. These include:

Enforcement of design rights will be by certain designated courts in each member state which will be designated as "Community Design Courts." Such courts will have the power to revoke a Community design right if its validity is successfully challenged in the course of an infringement action. Otherwise, challenges to the validity of Community design rights will have to be brought before OHIM. Any decision on such an issue is subject to an appeal to an OHIM Board of Appeal and ultimately to the European Court of First Instance and, if a question of law is involved, to the European Court of Justice in Luxembourg. The Regulation does not preclude simultaneous national and Community protection for the same design. It does, however, contain provisions relating to attempts to enforce such rights. These are that, if an action is brought between the same parties on a national right that is for protection of the same design that has already been the subject of litigation on the basis of a Community design (apparently registered or unregistered), the court shall reject the action based on the national right and that, where actions on national rights and Community rights are brought before courts of different countries, the second court to be seized of its action shall of its own motion decline jurisdiction.