Unregistered Community design – copyright-like protection against copying in Europe

In the European Union, where the most of the legislation concerning copyrights is still based on national laws, an unregistered Community design right (UCD) may be an exceptionally good tool for intervening with the copying of a design, especially in cases in which a registered Community design (RCD) has not been applied for.

The UCD became a part of the European Union’s design legislation with the Community design regulation in 2002. This exceptional form of protection was created as a new cost-effective form of protection for fields in which the products and product ranges mature or change rapidly. One of the main fields benefitting from the UCD was considered to be the textile and clothing industry, especially ‘Haute Couture’ or ‘prêt-à-porter’ fashion houses with 2-4 collections presented each year. The entire collections could prove to be too expensive to be registered with a RCD due to the costs related to the protection of the collections and managing of the registration portfolios, which could potentially prevent the industry from protecting itself against counterfeits and copying.

What is an unregistered design and how does it commence?

An UCD gives protection to new and individual products and/or parts thereof. The requirements for protection and restrictions on e.g. acquiring the protection are same as those for a RCD. This is where the similarity ends, however. The scope of protection of an UCD differs significantly from that of a RCD. UCDs provide protection only against direct copying. RCDs, on the other hand, protect the design against all designs that are not sufficiently different from the overall appearance of the registered design from the point of view of an informed user. Hence, a RCD provides for a much more solid ground for enforcing a design against copying or imitation.

As the title of the right reveals, it may not be registered. In order to get protection, an UCD must be disclosed in order to become reasonably known to the relevant circles in the European Union. In other words, the disclosure should take place in such a way that those working in the field become aware of the design. The design should be disclosed e.g. in a relevant trade fair, in a public product launch, expositions, Internet or similar manner, depending on the design and the product group. The disclosure should be documented with materials proving the identity of the discloser and the date of the disclosure, which is the first date commencing the unregistered right. An UCD for a design is valid 3 years from the date of its commencement.

Using the unregistered Community design

In the event of a disagreement concerning the right to a design, the date of the commencement of the right and/or of the scope of the protection, as often is the case without having a protected RCD, a suit concerning an UCD has to be brought before a Community design court. These courts are national courts of EU member states that are competent in matters concerning intellectual property rights; in Finland this court is now the Market Court.

Dealing either with an unauthorized use or deliberate infringement of an UCD, the case is based on a presumption of validity of the UCD and on the proof of existence of the UCD. Hence, an UCD may also be compared to a copyright, which requires similar proof of passing the threshold of a work under copyright law. The commencement of the UCD and the deliberateness of the possible counterfeiter’s actions have to be proven. Owing to this, the disclosure and its documentation are key factors when the usability of the right is evaluated.

When using an UCD, it must be especially noted that the claimant bears the burden of proof in a possible case of infringement. The claimant must show that a) the design has been disclosed in manner required by the regulation less than three years ago, b) the created design fulfils the requirements for an UCD, and c) the defendant’s infringement is specifically based on copying the UCD. At present, there is an interesting case before the Court of Justice of the European Union (ECJ), Karen Millen v. Dunnes Stores (C-345/13), in which the ECJ is anticipated to define more clearly the burden of proof of an UCD claimant in relation to the requirements for registration of the UCDs. It is anticipated that the decision will further support the enforceability of the EU-wide unregistered Community design.

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