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special to the national law journal Scott B. Schwartz is a partner at Philadelphia’s Cozen O’Connor, where he specializes in counseling a wide range of businesses on trademark and copyright issues. A phone that looks like a football? A lamp in the shape of an airplane? Wallpaper peppered with cars? As of April 1, these three designs are afforded new protection as “registered Community Designs” (RCDs) under the new European Community registered design right. With this change in the law, the European Union harmonizes the assortment of European national laws on the registration and protection of designs and provides a single body of law offering broad protection for designs and design owners. The legislation provides protection in all 15 of the European Union member states plus automatic extension of protection to the 10 additional countries that will join the European Union on May 1, 2004. Given this scope of protection, the RCD is something every company doing business in Europe should consider. Understanding the European Community registered design right requires a view different from “traditional” trademark, copyright and patent law. As contrasted with U.S. trademark law, for example, the RCD provides protection for designs without evidence of secondary meaning-an association by consumers with a design as a trademark or designation of origin rather than just as a design-whereas U.S. trademark law now requires proof of secondary meaning to enforce claimed rights in trade dress. See Wal-Mart Stores v. Samara Bros. Inc., 529 U.S. 205 (2000). Instead, the European Community registered design right is better understood as a separate amalgam of intellectual property rights providing owners with an effective monopoly right for up to 25 years throughout the European Union to prevent unauthorized use of registered designs without the need to demonstrate any likelihood of confusion, the hallmark test for trademark infringement. The designs protected The protection granted extends to a wide variety and application of two- and three-dimensional designs. The legislation broadly defines “design” as “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.” The designs covered could include everything from the overall shape and design of a product (such as the design of a car or the shape of a phone) and parts of a product (such as a lampshade) to the patterns applied to the surface of a product (such as the fabric design on wallpaper) as well as logos and typefaces. Specifically excluded from protection are designs related to features of products that are not seen during normal use or that are dictated by their technical functions or mechanical connections, such as computer software; designs contrary to public policy; and emblems. For example, the layout of a circuit board in a toaster oven or an engine’s piston, no matter how artfully created, would not be subject to projection as designs because they would not typically be seen during normal use. Similarly, the parts of a toaster oven that facilitate its standard electrical connection to a wall socket would likely also be prohibited from protection. In addition to these requirements, the legislation mandates that designs be “new” and have an “individual character.” While seemingly simple, these requirements can result in complicated consideration and forethought in order to preserve the ability to claim rights in a design. In order for a design to be “new,” it must not have been previously disclosed. That is, no identical design can have been available to the public before the application date of the RCD. The legislation does, however, provide a grace period for design owners to file an application up to one year after its first disclosure anywhere. A design disclosed publicly on May 17, for example, would have to be the subject of an application filed by no later than May 17, 2004, and the owner has this time to decide whether the design is successful and warrants the expense of filing an application. However, there is a significant potential downside to waiting to file an RCD-if a third party discloses an identical design before the first party files its application, the third party’s disclosure destroys the novelty of the first party’s design despite the fact that the first party is still within the grace period. The second requirement is for the design to possess an individual character, meaning that the overall impression it produces on an informed user differs from the overall impression produced on such a user from any other prior design. In practical terms, this requirement is likely to be understood to mean that the design is recognizably different from any existing registered or unregistered design. Registration process As with European Community trademark applications, the Office for Harmonization in the Internal Market (OHIM) oversees the relatively simple application process for RCDs. The opening filing date for RCDs was April 1, although the OHIM accepted RCD applications as of Jan. 1, with these earlier applications receiving an April 1 filing date. Any individual or entity can file an application, regardless of nationality, and applications must contain basic identifying information about the applicant, its representative, any claims of priority from earlier design applications filed in any country that is party to the Paris Convention and the design(s) in the application. Applicants must provide an image of the design or a specimen of it and, while it doesn’t limit the scope of protection from an ensuing RCD, a brief description of the products associated with the design(s), and classification of the products using the Eurolocarno classification system, a more detailed version of the international Locarno classification, which allows for more precise classification. Applications will not be substantively reviewed but only checked by the OHIM to confirm they meet the formal filing requirements, and it is estimated that applications may be able to proceed from filing to publication to registration within a period of three months. A novel aspect of the RCD applications is the ability of applicants to designate an unlimited amount of designs in each application based on the sliding-fee scale. This allows applicants to make more cost-effective use of an application and to cover an entire catalog’s work of designs in a single RCD application. Under this sliding scale, a single design application has a filing fee of 115 euros and a publication fee of 120 euros while the second to 10th designs in an application have a filing fee of 50 euros each and a publication fee of 60 euros each. In addition, applicants can request that publication of their designs be deferred for up to 30 months. Since designs in an application remain confidential until publication, deferring publication allows an applicant to continue market research and other related activities while maintaining confidential protection for the design. Deferment of publication, however, does not extend the duration of an RCD; registrations last for five years from filing, with applicants having the ability to renew the RCD for additional five-year terms up to a maximum of 25 years from filing. Unregistered designs In seeming recognition that not every design owner will have the means to, or interest in, filing RCDs for their designs, the European Community registered design right is accompanied by legislation that grants automatic protection for unregistered designs, albeit with limited protection. Accordingly, as of March 6, any design that is disclosed and for which no application is filed within one year can be considered to have unregistered community design status and protection. This protection is limited to three years of protection from the date of first disclosure. In asserting this protection, a plaintiff claiming rights in an unregistered community design must prove that the defendant actually copied the design; a defendant can overcome a claim of infringement by providing that its design was independently created. This measure of protection is sharply contrasted with the protection provided to an RCD. An RCD provides its owner with an essential monopoly over use of the registered design. Under the European Community registered design-right legislation, the holder has the exclusive right to prevent unauthorized use of the design, regardless of the potential independent creation of the defendant’s design. In addition, the scope of protection extends to any use of the registered design without the need to prove likelihood of consumer confusion. For example, the owner of an RCD for the design of a motorcycle gas tank would have the ability to prevent any use of the identical design, including the seemingly otherwise unrelated use of the design on wallpaper, as an icon on a computer screen or even as a child’s toy. When enforcing its rights, the owner of an RCD would bring the case before a Community Design Court in one of the member states. These courts have the authority to grant European Community-wide injunctions upon a finding of infringement and are also empowered to order seizure of the infringing goods and the materials used to make them, assess damages or compensatory awards against the defendant and for the plaintiff, and order any other remedies provided for under the national law of the Community Design Court where the case is being heard. The individual Community Design Court’s jurisdiction over a case is determined by where the defendant or plaintiff is domiciled or has an establishment in a member state, where the infringement occurred or the parties’ agreement on a specific Community Design Court. While independent creation is not a defense to infringement of an RCD, a defendant can file an invalidity action before the OHIM or assert invalidity as a counterclaim against the RCD holder. A defendant in an action by the holder of an unregistered community design can similarly bring an invalidity action in a member state’s national court or raise invalidity as a counterclaim against the party asserting the claim to ownership. It is anticipated that the OHIM will, over time, generate a body of decisions from invalidity actions that will serve as a case law for reference in gauging the chances of success in bringing an invalidity action. These decisions, though, will not necessarily serve as binding precedent. Business strategies The European Community registered design right does not replace, but instead supplements, other forms of intellectual property rights and should be treated accordingly. For example, a company claiming rights for a newly designed toaster oven in the shape of a locomotive and using a new heating technology (“coal fired toast anyone?”) may file a trademark application for the brand name, utility patent applications for inventions related to the oven’s heating technology and copyright applications for the specially commissioned artwork on the product packaging. Under the European Community registered design right, the business could now also, for example, register the overall design of the toaster oven and register separately the handles on the sides and front of the oven. Given the different bundle of protections afforded by the European Community registered design right, even if a company is not specifically doing business in Europe, an RCD could be a potent source of relief against multinational infringers that are doing business in Europe. The nature of protection differs from what is available in the United States so that even if a company cannot stop an infringer under U.S. law, it could be possible to enjoin infringement in Europe using the European Community registered design right as the remedy. Ultimately, companies doing business in Europe will likely want to update their intellectual property protection procedures whereby the registration of designs is part of the same decision-making and monitoring process related to other forms of intellectual property. The date of first disclosure of a design should be documented and docketed to ensure that an application, if desired, is filed in a timely fashion. This will assist in overcoming invalidity actions against an RCD and help prevent having the decision made for a company when the design is disclosed and no application is filed within the one-year grace period. Conversely, companies may also want to develop strategies whereby designs that have very limited life spans-significantly less than three years-are not registered and the associated registration costs eliminated.

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