Post on 01-Apr-2015
transcript
ERIC POTTER CLARKSON
LICENSING EXECUTIVES SOCIETY
BRITAIN AND IRELAND
Tuesday 11 November 2003
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The Community Registered Design
The First Six Months
John Peacock and Helen Johnstone
Eric Potter Clarkson
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• Overview of EU Registered Design System
• Mechanics of filing
• Unregistered EU Designs
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Overview of EU Registered Design System
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• Came into force 1 April 2003
• Single registration of a unitary right to cover EU
• Low cost
• Quick registration
• New opportunities
• Applies to any product e.g. goods, packaging, get up
Basic Facts
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• One off cost
• Less than cost of 2 national registrations
Cost
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Approximate Costs
Activity Costs (£)
Application (includingpublication)
500
Multiple Applications
2 – 10 (per additional application) 200
11 - (per additional application) 100
Deferred Publication 80
1st Renewal (approximately) 100
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• Now commercially viable to register designs throughout EU
• Mechanism to assist trade mark registration
New Opportunities
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• Can be used to protect trade marks and also those which are otherwise unregisterable prima facie provided trade mark comprises– 3D object– 2D representation of 3D object– design eg. label, pack design, logo– colour combinations– others
Relevance to Trade Marks
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Examples Of Trademarks That Could Be Protected
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Details of the Community Registered Design
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• Patterns
• Shapes
• Ornamentation
• Texture
• Designs
• Logos
• Type faces
• Colours
What is registrable?
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• Features dictated solely by technical function
• Must fit
• Not visible during normal use
Exceptions
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• Designs applied to or incorporated in a product which constitutes a component part of a modular system are registrable
BUT
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• Not limited to product to which design is applied
• No substantive Examination
• Can defer publication for up to 30 months
• Grace period
• Can file multiple applications
Other Points
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• No identical design made available to public within the EEA
New
Definitions
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• Different overall impression
Individual Character
Definitions
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• OHIM
• Central Industrial Property Office of a Member State
Application for a Registered Community Design - Where?
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• Drawings, photographs
• If 2 Dimensional Design and deferred publication requested specimen may be used in filing
Representations
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• Identify classification
• Identify designer(s)
Other Requirements
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• All within one class except cases of ornamentation
• May be dealt with separately
Multiple Applications
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• Does not correspond to definition under Article 3(a) i.e. not a design
• Contrary to public policy or morality
Examination - Grounds for Non-registrability
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• ‘Design’ means the appearance of the whole or part of a product resulting from the features of, in particular, the lines, containers, colours, shape, texture and/or materials of the product itself and/or its ornamentation.
Article 3(a)
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• Published on registration unless deferred publication requested on filing
• Renewable for 4 x 5 year periods - total of 25 years
Registration & Renewal
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• Counter claim in infringement proceedings
• Application for a declaration of invalidity
Invalidity
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• Does not correspond to the definition under Article 3(a)
• Does not fulfill the requirements of Articles 4 to 9
• Right holder not entitled
• Earlier right in a Member State
• Unauthorised distinctive sign
• Breaches copyright in Member State
• In breach of Article 6 ter of Paris Convention
Grounds
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Mechanics of Filing
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confirmation copyreceived
Confirmation copy (within 1 month)
Date of receiving deemed to be date of
fax
01/05/2003 29/05/2003 01/05/2003
Filing date of application
Application/representation sent by fax
First case
RCD applicationby fax
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Confirmation copy is received
Confirmation copy (within 1 month)
RCD applicationby fax
Fax was illegible or of poor quality
01/05/2003 29/05/2003 29/05/2003
Filing date = date of receipt of
confirmation copy
Second case
Application/representation sent by fax
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No confirmation copy is received
Confirmation copy (within 1
month)
RCD applicationby fax
Receipt of original within 2 months
Notification of deficiency (2 months)
01/05/2003 02/06/2003 30/07/2003
Date of filing
Third case
Application/representation sent by fax
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No confirmation copy is received
Confirmation copy within 1
month
RCD applicationby fax
Receipt of original (over 2 months)
Notification of deficiency (2 months)
01/05/2003 02/06/2003 30/08/2003
No date of filing
Fourth case
Application/representation sent by fax
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• A graphic or photographic reproduction of the design in black and white or colour – maximum of 7 views only
• Reproduced or pasted on white, opaque A4
paper (only one copy)
• It should clearly show the details of the design for which protection is sought.
(Art 4 (1)IR)
Representation of design
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Representation of the design - poor quality
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Representation of the design - poor quality
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Example of representation
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000000013-0001
Casio Computer Company
Filed, registered and published on 01/04/2003
First RCDs published
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000000021-0001DaimlerChrysler AG
Filed, registered and published on 01/04/2003
First RCDs published
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Design 989-4, registered for Intel Corporation
Design 1029-1, registered forAUTOBAR PACKAGING SPAIN, S.A.
Barbera del Valles
First RCDs published
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Design 3116-2, registered for Shimano Inc. , OSAKA
Design 3132-2, registered for ASTRA GAMES LTD.
First RCDs published
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Indication of products should be worded to allow classification according to the Locarno Agreement
The products should preferably be identified by using terms appearing in the list of products of the classification
The Office has prepared such a list of products in the 11 EU languages and can now be searched online
(the “EUROLOCARNO” list)
Products/Classification
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A multiple application
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Multiple Registration, designs 2332-1 to 5, registered for Cristina Muls Delassue &
Cristina Valls-Taverner Muls
Published multiple application
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Not a multiple application
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• use EuroLocarno whenever possible for your indication of product
• indicate in the application whether priority will be claimed or not
• be flexible on elements which do not influence scope of protection (product, class)
• send confirmation copy a.s.a.p. if fax filing
How to speed up your registrations
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Community Unregistered Design Right
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• Must be new
• Have individual character
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• In force from 6 March 2002
• Applies to products first made available to public in EEA on or after 6 March 2002
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• Short term - 3 years from date of publication
• Less legal certainty
• Can only be used to prevent copying
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Summary
• Register design in the EU– Cheap
– Quick registration (2-3 months)
– Gives protection for up to 25 years
• New opportunities• Do not rely on unregistered design right protection