Council Regulation (EC) 6/2002 of 12 December 2001 on Community Designs introduced registered and unregistered design rights covering the entire European Union. Previously designers had to bring separate court actions under the laws of each country where their designs were being infringed.
The Community design rights protect "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". Protection may apply to both 2D and 3D designs provided that the design is visible in normal use and that it is not dictated solely by its technical function.
The registered Community design right is a monopoly right, giving the holder the exclusive right to use a design. "Use" covers the making, offering for sale, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied or stocking such a product for those purposes. The right lasts for an initial period of five years from registration and can be renewed for further five-year periods up to a maximum of 25 years.
A design must be novel and possess individual character to qualify for registration. A design is "novel" if no identical design has been disclosed to the public.
Importantly, designers have a 12-month grace period during which they can test the market for their designs by showing their work to the public before registration without compromising their design's novel status. To avoid the grace period starting a designer should ensure that the viewer signs a confidentiality agreement so that the viewing is not considered to be a public disclosure.
An advantage of the registered Community design system over UK design law is that several different designs can be registered in a single application, helping to reduce registration fees. This can be done even if the designs are sold separately and have a completely different appearance.
If a designer believes that their registered Community design has been infringed within the EU they can, depending on the circumstances, bring action against the infringer in the member state where the infringer is located, where the designer is located, or in the member state where the infringement was committed or threatened.
Since this is a monopoly right, a designer need only prove that the infringing design is similar to their registered one. There is no need to show that there was an intention to copy their registered design meaning that anyone replicating a registered design, even by accident, could face action.
The unregistered Community design right comes to automatic existence if the design meets the same criteria required for registered Community designs and also applies throughout the EU. It occurs as soon as an original design is made available to the public within the EU and lasts for three years.
Unlike the registered Community design right, direct copying must be proven to establish infringement. There will be no copying if the alleged infringement is the independent work of someone who is not familiar with the original design.
In the first UK case involving the Community unregistered design right, Mattel Inc v Simba Toys, the Court held that Simba had breached Mattel's unregistered Community design right in a new range of dolls. The Court ordered payment of damages, legal costs and granted an EU-wide injunction against Simba to stop it manufacturing, distributing and selling its dolls.
The EU-wide reach of the Community design rights should help to make the protection of designs easier and the Simba Toys case should encourage designers to enforce their Community design rights to protect their designs.