Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs

TITLE I

GENERAL PROVISIONS

Article 1

EU design

A design shall be protected:

(a) by an ‘unregistered  EU design’, if made available to the public in the manner provided for in this Regulation;

(b) by a ‘registered  EU design’, if registered in the manner provided for in this Regulation.

Article 2

European Union Intellectual Property Office

The European Union Intellectual Property Office (“the Office”), established by Regulation (EU) 2017/1001 of the European Parliament and of the Council (¹), shall carry out the tasks entrusted to it by this Regulation.

Article 2a

Capacity to act

For the purpose of implementing this Regulation, companies or firms and other legal bodies shall be regarded as legal persons if, under the terms of the law governing them, they have the capacity in their own name to have rights and obligations of all kinds to make contracts or accomplish other legal acts, and to sue and be sued.

TITLE II

THE LAW RELATING TO DESIGNS

Section 1

Requirements for protection

Article 3

Definitions

For the purposes of this Regulation, the following definitions apply:

(1) “design” means the appearance of the whole or a part of a product resulting from the features, in particular the lines, contours, colours, shape, texture and/or materials, of the product itself and/or of its decoration, including the movement, transition or any other sort of animation of those features;

(2) “product” means any industrial or handicraft item, other than a computer program, regardless of whether it is embodied in a physical object or materialises in a non-physical form, including: (a) packaging, sets of articles, spatial arrangements of items intended to form an interior or exterior environment, and parts intended to be assembled into a complex product; (b) graphic works or symbols, logos, surface patterns, typographic typefaces, and graphical user interfaces;

(3) “complex product” means a product that is composed of multiple components which can be replaced, permitting disassembly and reassembly of the product.

Article 4

Requirements for protection

A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character:

(a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter; and

(b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.

Article 5

Novelty

A design shall be considered to be new if no identical design has been made available to the public:

(a) in the case of an unregistered  EU design, before the date on which the design for which protection is claimed has first been made available to the public;

(b) in the case of a registered  EU design, before the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority.

Article 6

Individual character

A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public:

(a) in the case of an unregistered  EU design, before the date on which the design for which protection is claimed has first been made available to the public;

(b) in the case of a registered  EU design, before the date of filing the application for registration or, if a priority is claimed, the date of priority.

Article 7

Disclosure

A disclosure shall not be taken into consideration for the purpose of applying Articles 5 and 6 if the disclosed design, which is identical with or does not differ in its overall impression from the design for which protection is claimed under a registered EU design, has been made available to the public:

(a) by the designer, his successor in title, or a third person as a result of information provided or action taken by the designer or his successor in title; and

(b) during the 12-month period preceding the date of filing of the application or, if a priority is claimed, the date of priority.

Article 8

Designs dictated by their technical function and designs of interconnections

Article 9

Designs contrary to public policy or morality

A EU design shall not subsist in a design which is contrary to public policy or to accepted principles of morality.

Section 2

Scope and term of protection

Article 10

Scope of protection

Article 11

Commencement and term of protection of the unregistered  EU design

Article 12

Commencement and term of protection of the registered EU design

Section 3

Right to the  EU design

Article 14

Right to the  EU design

Article 15

Claims relating to the entitlement to an EU design

In the case of a registered EU design, the following shall be entered in the Register of EU designs referred to in Article 72 (“the Register”):

(a) an indication that proceedings under paragraph 1 have been instituted before the competent court or authority of the Member State concerned;

(b) the date and particulars of the final decision of the competent court or authority of the Member State concerned on the entitlement to the EU design or any other termination of the proceedings;

(c) any change in the ownership of the registered EU design resulting from the final decision of the competent court or authority of the Member State concerned on the entitlement to the EU design.

Article 16

Effects of a final decision on entitlement to a registered EU design

Article 17

Presumption in favour of the registered holder of the design

The person in whose name the registered  EU design is registered or, prior to registration, the person in whose name the application is filed, shall be deemed to be the person entitled in any proceedings before the Office as well as in any other proceedings.

Article 18

Right of the designer to be cited

The designer shall have the right, in the same way as the applicant for or the holder of a registered EU design, to be cited as such before the Office and in the Register. If the design is the result of teamwork, the citation of the team may replace the citation of the individual designers. That right shall include the right to enter a change of the name of the designer or of the team in the Register.

Section 4

Effects of the  EU design

Article 18a

Object of protection

Protection shall be conferred for those features of the appearance of a registered EU design which are shown visibly in the application for registration.

Article 19

Rights conferred by the EU design

The following, in particular, may be prohibited under paragraph 1:

(a) making, offering, placing on the market or using a product in which the design is incorporated or to which the design is applied;

(b) importing or exporting a product referred to in point (a);

(c) stocking a product referred to in point (a) for the purposes referred to in points (a) and (b);

(d) creating, downloading, copying and sharing or distributing to others any medium or software which records the design for the purpose of enabling a product referred to in point (a) to be made.

The right referred to in the first subparagraph of this paragraph shall lapse, if, during proceedings to determine whether the EU design has been infringed, initiated in accordance with Regulation (EU) No 608/2013 of the European Parliament and of the Council (²), evidence is provided by the declarant or the holder of the products that the holder of the registered EU design is not entitled to prohibit the placing of the products on the market in the country of final destination.

The contested use referred to in the first subparagraph shall not be deemed to result from copying the unregistered EU design if it results from an independent work of creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder.

Article 20

Limitation of the rights conferred by an EU design

The rights conferred by an EU design shall not be exercised in respect of:

(a) acts carried out privately and for non-commercial purposes;

(b) acts carried out for experimental purposes;

(c) acts of reproduction for the purpose of making citations or of teaching;

(d) acts carried out for the purpose of identifying or referring to a product as that of the design right holder;

(e) acts carried out for the purpose of comment, critique or parody;

(f) the equipment on ships and aircraft that are registered in a third country and that temporarily enter the territory of the Union;

(g) the importation into the Union of spare parts and accessories for the purpose of repairing ships and aircraft referred to in point (f);

(h) the execution of repairs on ships and aircraft referred to in point (f).

Article 20a

Repair clause

Article 21

Exhaustion of rights

The rights conferred by an EU design shall not extend to acts relating to a product in which a design included within the scope of protection of the EU design is incorporated or to which it is applied, when the product has been placed on the market in the European Economic Area (EEA) by the holder of the EU design or with the holder’s consent.

Article 22

Rights of prior use in respect of a registered  EU design

Article 23

Government use

Any provision in the law of a Member State allowing use of national designs by or for the government may be applied to  EU designs, but only to the extent that the use is necessary for essential defence or security needs.

Section 5

Invalidity

Article 24

Declaration of invalidity

Article 25

Grounds for invalidity

An EU design may be declared invalid only in the following situations:

(a) the EU design does not correspond to the definition under Article 3, point (1);

(b) the EU design does not fulfil the requirements laid down in Articles 4 to 9;

(c) by virtue of a decision of the competent court or authority, the right holder is not entitled to the EU design under Article 14;

(d) the EU design is in conflict with a prior design which has been made available to the public prior to or after the date of filing of the application, or if priority is claimed, the date of priority of the EU design, and which is protected from a date prior to the date of filing of the application, or if priority is claimed, the date of priority of the EU design: (i) by a registered EU design, or an application for such a design subject to its registration, (ii) by a registered design right of a Member State, or by an application for such a right subject to its registration, or (iii) by a design right registered under the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs of 1999 (“the Geneva Act”), which has effect in the Union, or by an application for such a right subject to its registration;

(e) a distinctive sign is used in a subsequent design, and Union law or the law of the Member State governing that sign confers on the right holder of the sign the right to prohibit such use;

(f) the design constitutes an unauthorised use of a work protected under the copyright law of a Member State;

(g) the design constitutes an improper use of any of the items listed in Article 6ter of the Paris Convention for the Protection of Industrial Property (“the Paris Convention”), or of badges, emblems and escutcheons other than those covered by that Article and which are of particular public interest in a Member State, and the consent of the competent authorities to the registration has not been given.

The grounds for invalidity provided for in paragraph 1, points (a) and (b), may be invoked by the following:

(a) any natural or legal person; or

(b) any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, if that group or body has the capacity to sue and be sued in its own name under the law governing it.

The grounds for invalidity provided for in paragraph 1, points (d), (e) and (f), may be invoked solely by the following:

(a) the applicant for or the holder of the earlier right;

(b) the persons who are entitled under Union law or the law of the Member State concerned to exercise the right; or

(c) a licensee authorised by a proprietor of the earlier right.

Article 26

Consequences of invalidity

Subject to the national provisions relating either to claims for compensation for damage caused by negligence or lack of good faith on the part of the holder of the  EU design, or to unjust enrichment, the retroactive effect of invalidity of the  EU design shall not affect:

(a) any decision on infringement which has acquired the authority of a final decision and been enforced prior to the invalidity decision;

(b) any contract concluded prior to the invalidity decision, in so far as it has been performed before the decision; however, repayment, to an extent justified by the circumstances, of sums paid under the relevant contract may be claimed on grounds of equity.

Section 6

Notice of registration

Article 26a

Registration symbol

The holder of a registered EU design may inform the public that the design is registered by displaying on the product in which the design is incorporated or to which it is applied the letter D enclosed within a circle (). Such design notice may be accompanied by the registration number of the design or hyperlinked to the entry of the design in the Register.

TITLE III

EU DESIGNS AS OBJECTS OF PROPERTY

Article 27

Dealing with  EU designs as national design rights

Unless Articles 28, 29, 30, 31 and 32 provide otherwise, a  EU design as an object of property shall be dealt with in its entirety, and for the whole area of the  Union, as a national design right of the Member State in which:

(a) the holder has his seat or his domicile on the relevant date; or

(b) where point (a) does not apply, the holder has an establishment on the relevant date.

In the case of joint holders, if two or more of them fulfil the condition under paragraph 1, the Member State referred to in that paragraph shall be determined:

(a) in the case of an unregistered  EU design, by reference to the relevant joint holder designated by them by common agreement;

(b) in the case of a registered  EU design, by reference to the first of the relevant joint holders in the order in which they are mentioned in the register.

Article 28

Transfer of the registered EU design

An assignment of a registered EU design that does not comply with the requirements set out in the first subparagraph shall be void.

Article 28a

Conferral of implementing powers regarding transfer

The Commission shall adopt implementing acts specifying:

(a) the details to be contained in the request for registration of a transfer referred to in Article 28(3);

(b) the kind of documentation required to establish a transfer as referred to in Article 28(3), taking account of the agreements given by the registered holder and the successor in title.

Those implementing acts shall be adopted in accordance with the examination procedure referred to in Article 109(2).

Article 29

Rights in rem on a registered  EU design

Article 30

Levy of execution

Article 31

Insolvency proceedings

Article 32

Licensing

The holder may invoke the rights conferred by the EU design against a licensee who contravenes any provision in the licensing contract with regard to:

(a) the duration of the licence;

(b) the form in which the design may be used;

(c) the range of products for which the licence is granted;

(d) the quality of the products manufactured by the licensee under the licence.

Article 32a

Procedure for entering licences and other rights in the Register

The application for registration of a licence may contain a request to record such licence in the Register as one or more of the following:

(a) an exclusive licence;

(b) a sub-licence in the event that such sub-licence is granted by a licensee whose licence is recorded in the Register;

(c) a licence limited to a specific range of products;

(d) a licence limited to part of the Union;

(e) a temporary licence.

Where a request is made to record the licence as a licence referred to in the first subparagraph, point (c), (d), or (e), the application for registration shall indicate the specific product range, the part of the Union or the period for which the licence is granted.

Article 33

Effects vis-à-vis third parties

Article 33a

Procedure for cancelling or modifying registrations of licences and other rights

Article 34

The application for a registered EU design as an object of property

Articles 27 to 33a shall apply to applications for registered EU designs. Where the effect of one of those provisions is conditional upon an entry in the Register, that formality shall be performed upon entry of the registered EU design in the Register.

TITLE IV

APPLICATION FOR A REGISTERED  EU DESIGN

Section 1

Filing of applications and the conditions which govern them

Article 35

Filing of applications

Article 36

Conditions with which applications must comply

An application for a registered EU design shall contain:

(a) a request for registration;

(b) information identifying the applicant;

(c) a sufficiently clear representation of the design, which permits the subject matter for which protection is sought to be determined.

In addition, the application may contain:

(a) a description explaining the representation;

(b) a request for deferment of publication of the registration in accordance with Article 50;

(c) information identifying the representative if the applicant has appointed one;

(d) the classification of the products in which the design is intended to be incorporated or to which it is intended to be applied according to class and subclass of the Locarno Classification, as amended and in force at the date of filing of the application;