Amended proposal for a COUNCIL REGULATION on Community design

(presented by the Commission pursuant to Article 250(2) of the EC Treaty)

EXPLANATORY MEMORANDUM

In 1993, the Commission submitted to the Council and the European Parliament proposals for a Regulation on the Community design [1] ("the Regulation") and for a Directive on the legal protection of designs [2] ("the Directive").

[1] OJ C 29, 31.1.1994, COM(93) 342 final.

[2] OJ C 345, 23.12.1993, COM (93) 344 final.

The Economic and Social Committee adopted a first opinion on 6 July 1994 [3] and an additional opinion on 22 February 1995 [4].

[3] OJ C 388, 31.12.1994.

[4] OJ C 110, 2.5.1995.

In 1995, the European Parliament decided to discuss the proposal for the Directive first and to conduct the second reading when it adopts a position on the proposal for a Regulation. Following this decision, Parliament adopted its opinion on the Directive during its plenary session of 9 to 13 October 1995 [5].

[5] OJ C 287, 30.10.1995.

The Commission presented its amended proposal for the Directive on 21 February 1996 [6]. Subsequently, the Council adopted its common position on the Directive on 17 June 1997 [7].

[6] OJ C 142,14.5.1996, COM(96) 66 final.

[7] OJ C 237, 4.8.1997.

Finally, after a Conciliation procedure, the Directive was adopted on 13 October 1998 [8].

[8] Directive 98/71/EC of the European Parliament and of the Council on the legal protection of designs, OJ L 289, 28.10.1998, p. 28.

On 21 June 1999, the Commission adopted an amended proposal for a Council Regulation based on Article 308 of the Treaty [9].

[9] COM(1999) 310 final - CNS 93/0463.

The Economic and Social Committee adopted an additional opinion on the Commission's amended proposal on 27 January 2000 [10].

[10] OJ C 75, 15.3.2000, p. 35.

The European Parliament adopted its opinion on the amended proposal at the sitting of 16 June 2000 [11].

[11] OJ C

Following the opinions of the European Parliament and the ECOSOC, and taking into account the development of the discussions at the Council, the Commission has prepared this amended proposal which, to a large extent, takes account of the comments made by these institutions.

This concerns, in particular, the recommendations contained in amendments 1, 2, 3, 4, 5, 7, 8, 9, 13, 14, 16, 18 and 20 of the European Parliament. For detailed comments on these changes, reference is made to the explanation as to the Articles.

Certain other amendments, i.e. 10, 11, 21, 22 and 23, which were not strictly in accordance with what has been agreed in the context of the Design Directive in 1998, have not been adopted by the Commission. In this respect, it should be noted that the Commission is very attached to the principle that the Regulation should not deviate from concepts which are embodied in the Directive.

In its opinion, the European Parliament also referred to the question of the protection of designs applied to spare components of complex products for repair purposes, which were the subject of amendments 6 and 12

This question, which was the subject of lengthy and complex negotiations within the framework of the Conciliation procedure of the Directive, was addressed in that instrument by the adoption of the so-called "freeze plus" compromise. In this context, in accordance with the compromise achieved when the Directive was adopted, the Commission undertook to further study this issue and to make a proposal in the framework of the Directive at the latest four years after the date of implementation of the Directive.

The EP amendments constitute in itself a repair clause, permitting the protection of a design applied to spare components of complex product when the product to which the design is applied is not used for repair purposes. Moreover, this approach would reopen the complex debate on the repair clause in the midst of the consultation procedure with the interested parties launched by the Commission on spare parts.

The Commission, being receptive to the amendments of the European Parliament, has discussed these amendments internally and with the Member States in the framework of the Council. As a result of these discussions, the Commission considers that the solution proposed in Article 10a of its proposal of 21 June 1999 which provides that spare parts cannot enjoy protection under Community design, permits, without prejudging the outcome of this debate, the smoothest possible administration of the Community design system, at least until a final solution on this has been agreed upon. In this light, it should be noted that this option was supported by the Economic and Social Committee [12].

[12] Paragraph 2.5 of the Opinion of the ECOSOC of 27 January 2000.

In this respect it must be recalled that the Commission undertook to launch a consultation exercise, immediately after the adoption of the Directive, involving the most concerned parties, and with a view to arriving at a voluntary agreement among these parties on the free use of spare parts for repair purposes and on their protection. The consultation exercise has in the meantime been initiated and is now under way.

As regards the Community unregistered design, some changes have been introduced in the Commission's amended proposal in order to clarify the scope of this form of protection and to ensure its legal certainty.

In its opinion of 27 January 2000, the Economic and Social Committee supported the importance of having a protection for an unregistered Community design. This form of protection will provide better design protection for products with a short real life span, such as textiles and toys. However, the Committee expressed the need to further clarify the concept and rights related to the unregistered Community design.

In this light, and in accordance with amendment 14 of the European Parliament, the Commission has deleted the reference to the "bad faith" principle contained in Article 20(2). Moreover, a clarification as to the scope of protection provided by the unregistered design has been included in recital 22.

These amendments are intended to make clear that the scope of protection of the unregistered Community design is identical as that of the registered Community design. However, the unregistered Community design does not allow the right holder to oppose designs which are the result of and independent creation by a second designer.

As regards amendment 15 of the European Parliament, the Commission agrees with the view of the Parliament concerning the need of the "right of information". However the Commission would prefer to deal with this issue in the framework of the fight against counterfeiting and piracy. In this light, the Commission's follow up communication on the "Green Paper on piracy and counterfeiting in the internal market" will address this very issue.

Concerning the compulsory assignment of the ownership of the infringing products to the holder of the design, as proposed by amendment 19 of the European Parliament, the Commission considers that this may not be an appropriate solution in all cases. Therefore, and considering that subparagraph (d) of paragraph 1 of Article 93 leaves the door open for the adoption of such measures by the national judge if deemed necessary, the Commission did not include a provision in line with this amendment.

Moreover, at the request of the European Parliament, some clarifications have been introduced as regards the commencement and term of protection (Article 12), the claims relating to the entitlement to an unregistered Community design (Article 16) and the presumption of validity of an unregistered Community design (Article 89).

Finally, in accordance with amendment 16 of the European Parliament and the recommendation contained in paragraph 3.6 of the Economic and Social Committee's opinion, Article 27(5) which provided for an exception to the unitary nature of the Community design, has been deleted.

the structure of the proposal

For the sake of clarity and in order not to complicate unnecessarily the task of examining this proposal with a new numbering, the numbering of the Articles has remained unchanged vis-à-vis previous proposals.

Nevertheless, it should be noted that, following to the deletion of the former Title VI "Term of protection of the registered Community design", Titles have been renumbered from Title V.

recitals and Articles

The wording of recital 2 has been clarified.

A reference to the Directive has been included in recital 3.

Recital 4 has been aligned with amendment 2 of the European Parliament, according to which the former wording of this recital was obscure and ambiguous.

Likewise, the reference to the establishment of a Community authority with Community powers in recital 5 has been deleted, in accordance with amendment 3 of the European Parliament, because such authority was already created by a decision of the Council of Ministers on 29 October 1993.

The wording of recitals 10 and 11 has been strengthened in accordance with amendments 4 and 5 of the European Parliament

Two new recitals, 12 and 14, which refer to component parts which are not visible during normal use of a product and to the definition of individual character have been added. These recitals reproduce recitals 12 and 13 of the Design Directive.

Finally, recital 13 of the Community Trade Mark Regulation, on the structure and the jurisdiction of the Court of Justice of the European Communities, has been included for the purposes of this Regulation, as recital 32.

Title I: General Provisions

Article 1: Paragraph 1 has been aligned with the wording of Article 1 of the Community Trade Mark Regulation, in line with the request made by the European Parliament in its amendment 7.

Paragraph 3 has also been aligned with Article 1 of the Community Trade Mark Regulation.

Title II: The law relating to designs

Section 1: Requirement for protection

In accordance with amendments 8 and 9 of the European Parliament, Articles 3(a) and 4(3) have been respectively aligned with Article 1(a) and Article 3(4) of the Directive.

Likewise, subparagraph (b) of paragraph 1 of Article 6 has been aligned with the corresponding provision of the Directive, Article 5(1).

Section 2: Scope and term of protection

In accordance with amendment 13 of the European Parliament, the reference to 'registration' contained in the second paragraph of Article 12 has been deleted.

Moreover, Article 54 of the original proposal has been transferred to this section, thereby, becoming the new Article 13 a. Consequently, the whole Title VI, which contained only one Article, has been deleted.

Section 3: Entitlement to the Community design

Articles 14 and 15 of the original proposal have been merged into one provision. Former Article 15, which becomes the second paragraph of Article 14, has been redrafted to provide for clear rules as to the conditions of exercise of joint ownership.

Article 16 contains a number of new features with respect to the original proposal.

The first paragraph of this Article has been redrafted in order to remove any ambiguity in relation to a person genuinely entitled to the unregistered Community design claiming rights in legal proceedings once the design is disclosed by a third person.

The words "applied for" have also been added to paragraph 1 in order to allow the person legitimately entitled to a Community design to claim his right as soon as it is applied for by a person who is not entitled to it under Article 14.

A reference to the competent jurisdiction to deal with claims relating to the entitlement to a Community design, the national courts, has been included in paragraph 3.

Finally, the reference to the date from which claims may be made has changed. The former date of reference "the date on which the design came into existence" has been changed by a more objective date which is the disclosure, in the case of unregistered Community designs, and the date of filing of the application, when dealing with registered Community designs.

As for the presumption in favour of the registered person contained in Article 18, an amendment has been made so that such presumption also applies to all proceedings and not just those before the Office.

Section 4: Effects of the Community design

According to amendment 14 of the European Parliament and to ensure that the protection conferred by Community unregistered designs is not excessively restricted, the reference to "bad faith" in paragraph 2 of Article 20 has been deleted.

Furthermore, the scope of protection of the unregistered Community design has been clarified with the new wording of recital 22, in which it is stated that the protection provided by an unregistered Community design should not extend to design products which are the result of a design arrived at independently by a second designer.

As regards the rights of prior use in respect of a registered Community design, the former drafting of Article 25 could give the wrong impression that a prior user had a general immunity from all effects of the registered Community design, rather than a limited protection relating to the particular type of use which was commenced or for which preparations were made. This provision has therefore been amended to clarify the scope of protection and the extension of the rights of the prior user. A new recital, recital 24, has been included for the same purpose.

Section 5: Invalidity

Article 27 contains a number of new features with respect to the original proposal.

Letter (c) of paragraph 1 has been redrafted and clarified.

The reference to the Member States in paragraphs 3 and 4 has been substituted by a clearer reference contained in the new paragraph 5.

In accordance with amendment 16 of the European Parliament, the former paragraph 5 which constituted an exception to the unitary character of the Community design, has been deleted

Finally, considering the competence of the Office to take decisions on invalidity established in Article 56, it appears necessary to include a reference to the Office in paragraph 6.

Title III: Community designs as objects of property

Article 33 on bankruptcy or like proceedings has been amended to comply with the provisions of the Council Regulation (EC) No 1346/2000 on insolvency proceedings [13].

[13] OJ L 160, 30.6.2000 p. 1.

Paragraph 1 provides for the unified treatment of the Community design by stating that the only Member State in which a Community design may be involved in bankruptcy or like proceedings shall be that in which the debtor has his principal centre of interest.

This rule is in line with the solution reached in the Regulation on insolvency proceedings. However, the latter Regulation is not applicable in Denmark.

Paragraph 2 specifies that, in the case of joint proprietorship, the same rule shall apply to the share of the joint proprietor.

Paragraph 3 concerns entry in the Register of Community Designs.

Title IV: Application for a registered Community design

Section 1: Filing of applications and the conditions which govern them

According to the third paragraph of Article 37, once the Office has received an application from a central industrial property office of a Member State or from the Benelux Design Office, it shall inform the applicant accordingly, indicating the date of receipt at the Office. Consequently, it is not deemed necessary that these offices also inform the applicant of the forwarding of his application again. The second paragraph of Article 37 has been changed accordingly.

A reference regarding the identification of the representative has been included in paragraph 3(c) of Article 39. Moreover, the paragraphs of this Article have been renumbered.

Article 40, on multiple application, contains a number of new features with respect to the original proposal. The instrument of "multiple application" aims to facilitate the filing of applications for those sectors of industry which produce a large number of designs and where the costs and the administrative burden of taking out single design rights for each of them would be too high.

Depending on the number of designs contained in the application, the applicant has to pay an additional registration and publication fee, which should correspond to a percentage of the basic fees for each additional design.

The new paragraph 4 of Article 40 clarifies that these designs are independent from each other and, consequently, they may be renewed, surrendered, invalidated, transferred, etc, individually. This principle is reinforced by the last sentence of recital 26.

For the sake of clarity as to the structure of the proposal for the Regulation, former Article 46 (equivalence of Community and national filings) has moved to Section 1 of Title IV becoming Article 41(a).

Finally, a reference to the version of the Locarno classification to be used by the Office has been included in Article 42.

Section 2: Priority

New paragraph 1a of Article 43 ensures the compatibility of the Community design Regulation with Article 4.E of the Paris Convention.

Title V: Registration procedure

Subparagraph (d) of the second paragraph of Article 48 has been deleted since the reference made in subparagraph (a) of the same paragraph to Articles 39 and 40 is considered sufficient.

A third paragraph has been added to Article 48 stating that the conditions for examination of the formal requirements, not being elements of substantive law, will be established in the Implementing Regulation.

The amendments contained in Article 49(3) are consequential to the restructuring of Article 48.

Article 49a has been amended to emphasise the limited scope of the examination carried out by the Office.

The last sentence of Article 50 has been redrafted to exclude any doubt as to the date entered in the registry.

The reference to the surrender of the Community design which is subject to a deferment of publication mentioned in Article 52(4) has been deleted. The surrender of a Community design which is subject to a deferment of publication is now dealt with in Article 55(2).

Article 52(5) has also been deleted given that a general rule on multiple applications has now been included in Article 40(4).

Title VI: term of protection of the registered community designs

Title VI has been deleted since its only remaining provision, Article 54 on renewal, has moved to the second section of Title II (Scope and term of protection), thereby becoming Article 13a.

The following Titles have been renumbered accordingly.

Title VI (former Title VII): Surrender and invalidity of the registered Community design

Article 55 contains a number of new features with respect to the original proposal.

- Paragraph 1 has been aligned with Article 49(2) of the Community Trade Mark Regulation.

- A provision regarding the surrender of the Community design which is subject to a deferment of publication is included in the new paragraph 2. The effects of surrendering a Community design which is subject to a deferment of publication are now the same as if the application had not complied with the requirements for publication pursuant to Article 52(4).

- The new paragraph 3 gives the possibility of surrendering those features of his design which cannot be protected, thereby avoiding a possible claim for partial invalidity as provided by Article 27(6).

- Finally, paragraph 5 ensures that the holder of a potentially invalid design cannot evade justice by surrendering his design.

Article 56 (Application for a declaration of invalidity) has been simplified and aligned with paragraphs 2 to 5 of Article 27.

Title IX (former title X): Jurisdiction and procedure in legal actions relating to Community designs

Article 83 has been renumbered, and Article 83a becomes Article 83(4)

Likewise Article 56, Article 88(2) has been simplified and aligned with paragraphs 2 to 5 of Article 27.

Article 86 (International Jurisdiction) has been slightly amended to address the situation where the defendant or plaintiff has an establishment in more than one Member State.

Article 89 (Presumption of validity, defence as to the merits) has been amended along the lines of amendment 18 of the European Parliament.

Title XI (former title XII): Supplementary provisions concerning the Office

The second paragraph of Article 116 (Invalidity Divisions) has been aligned with Article 129 of the Community Trade Mark Regulation.

Title XII (former title XIII): Final provisions

To reflect the changes in the "Comitology procedure" for the adoption of the Implementing Regulation and the Fees Regulation as laid down in Decision 1999/468/EC, a new Article 125 has been drafted and Articles 124(3) and 124a have been amended accordingly. A new recital, recital 35, has been added for the same purpose.

1993/0463 (CNS)

Amended proposal for a COUNCIL REGULATION on Community design

THE COUNCIL OF THE EUROPEAN UNION,

Having regard to the Treaty establishing the European Community, and in particular Article 308 thereof,

Having regard to the proposalfrom the Commission [14],

[14] OJ C 29, 31.1.1994, p. 20; (OJ C).

Having regard to the opinion of the European Parliament [15],

[15] OJ C

Having regard to the opinion of the Economic and Social Committee [16],

[16] OJ C 110, 2.5.1995 and OJ C 75, 15.3.2000, p. 35.

Whereas:

(1) The Treaty provides for the establishment of an internal market and includes the abolition of obstacles to the free movement of goods and the institution of a system ensuring that competition in the common market is not distorted. Therefore a unified system for obtaining a Community design to which uniform protection is given with uniform effect throughout the entire territory of the Community would further those objectives.

(2) Since only the Benelux countries have introduced a uniform design protection law, while in all the other Member States the protection of designs is a matter for the relevant national law and is confined to the territory of the Member State concerned, identical designs may be protected differently in different Member States and for the benefit of different owners. This inevitably leads to conflicts in the course of trade between Member States.

(3) The substantial differences between Member States' design laws prevent and distort Community-wide competition between the producers of protected goods, because in comparison with domestic trade in, and competition between, products incorporating a design, trade and competition within the Community are prevented and distorted by the large number of applications, offices, procedures, laws, nationally circumscribed exclusive rights and the combined administrative expense with correspondingly high costs and fees for the applicant. Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs [17] which approximates the design laws of the Member States, contributes already to remedying this situation.

[17] OJ L 289, 28.10.1998, p. 28.

(4) The effect of design protection being limited to the territory of the individual Member States whether or not their laws are approximated, leads to a possible division of the internal market with respect to products incorporating a design which is the subject of national rights held by different individuals, and hence constitutes an obstacle to the free movement of goods.

(5) This calls for the creation of a Community design which is directly applicable in each Member State because only in this way will it be possible to obtain, through one application made to the Office for Harmonisation in the Internal Market (Trade Marks and Design) in accordance with a single procedure under one law, one design right for one area encompassing all Member States.

(6) It is thus for the Community to adopt measures to achieve those objectives, which cannot be achieved by the Member States acting individually and which by reason of the scale and the effects of the creation of a Community design and a Community design authority can only be achieved by the Community.

(7) Since superior design is an important attribute of Community industries in competition with industries from other countries, and is in many cases decisive in the commercial success of the associated product, enhanced protection for industrial design not only promotes the contribution of individual designers to the sum of Community excellence in the field, but also encourages innovation and development of new products and investment in their production. Consequently a more accessible design-protection system adapted to the needs of the internal market is essential for Community industries.

(8) Such a design-protection system would constitute the prerequisite for seeking corresponding design protection in the most important export markets of the Community.

(9) The substantive provisions of this Regulation on design law should be aligned with the corresponding provisions in Directive 98/71/EC.

(10) Technological innovation must not be hampered by granting design protection to features dictated solely by a technical function. It is understood that this does not mean that a design must have an aesthetic quality. Likewise, the interoperability of products of different makes must not be hindered by extending protection to the design of mechanical fittings; consequently those features of a design which are excluded from protection for those reasons must not be taken into consideration for the purpose of assessing whether other features of the design fulfil the requirements for protection.

(11) The mechanical fittings of modular products may nevertheless constitute an important element of the innovative characteristics of modular products and present a major marketing asset and therefore must be eligible for protection.

(12) Protection should not be extended to those component parts which are not visible during normal use of a product, or to those features of such part which are not visible when the part is mounted, or which would not, in themselves, fulfil the requirements as to novelty and individual character. Therefore, those features of design which are excluded from protection for these reasons should not be taken into consideration for the purpose of assessing whether other features of the design fulfil the requirements for protection.

(13) Full-scale approximation of the laws of the Member States on the use of protected design of component parts of complex products for repair purposes could not be achieved through Directive 98/71/EC. Therefore, within the framework of the Conciliation procedure on the said Directive, the Commission undertook to review the consequences of the provisions of the Directive three years after the implementation date of the Directive for, in particular, the industrial sectors which are most affected by the ongoing discussions on the issue of a repair clause for component parts of complex products. Under these circumstances, it is appropriate to exclude the design of component parts of complex products from protection under this Regulation until the Council has decided its policy on this issue on the basis of a Commission proposal.

(14) The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.

(15) The provisions of this Regulation are without prejudice to the application of the competition rules pursuant to Articles 81 and 82 of the Treaty as regards, particularly, licence agreements.

(16) A Community design should, as far as possible, serve the needs of all sectors of industry in the Community, which are many and varied.

(17) Some of those sectors produce large numbers of designs for products frequently having a short market life where protection without the burden of registration formalities is an advantage and the duration of protection is of lesser significance. On the other hand, there are sectors of industry which value the advantages of registration for the greater legal certainty it provides and which require the possibility of a longer term of protection corresponding to the foreseeable market life of their products.

(18) It is appropriate to have two forms of protection, one being a short-term unregistered design and the other being a longer-term registered design.

(19) A registered Community design requires the creation and maintenance of a Register in which will be registered all those applications which comply with formal conditions and which have been accorded a date of filing. This registration system should in principle not be based upon substantive examination as to compliance with requirements for protection prior to registration, thereby keeping to a minimum the registration and other procedural burdens on applicants.

(20) A Community design should not be upheld unless the design is new in the sense that it is not identical to any other design previously made available to the public, and unless it also possesses an individual character in comparison with other designs.

(21) It is also necessary to allow the designer or his successor in title to test the products embodying the design in the market place before deciding whether the protection resulting from a registered Community design is desirable. To this end it is necessary to provide that, during a period of 12 months prior to the date of the filing of the application for a registered Community design, disclosures of the design by the designer or his successor in title, or abusive disclosures, should not be prejudicial in assessing the novelty or the individual character of the design in question.

(22) The exclusive nature of the right conferred by the registered Community design is consistent with its greater legal certainty. Therefore it is appropriate that the unregistered Community design should constitute a right only to prevent copying. This right, which should also extend to trade in products embodying infringing designs, should not extend, however, to design products which are the result of a design arrived at independently by a second designer.

(23) The enforcement of these rights is to be left to national laws and it is necessary therefore to provide for some basic uniform sanctions in all Member States. These should make it possible, irrespective of the jurisdiction under which enforcement is sought, to stop the infringing acts.

(24) Any third person who can establish that he has in good faith commenced use within the Community, or has made serious and effective preparations to that end, of a design included within the scope of protection of a registered Community design, which has not been copied from the latter, should be entitled to a limited exploitation of that design. To this purpose, "use" should be understood as any use or serious and effective preparations thereof, including use for commercial purposes, which had commenced before the date of filing of the application for the registered Community design.

(25) It is a fundamental objective that the procedure for obtaining a registered Community design should present the minimum cost and difficulty to applicants, so as to make it readily available to small and medium-sized enterprises as well as to individual designers.

(26) Those sectors of industry producing large numbers of possibly short-lived designs over short periods of time of which only some may be eventually commercialised will find advantage in the unregistered Community design. Furthermore, there is also a need for these sectors to have easier recourse to the registered Community design; therefore, the option of combining a number of designs in one multiple application would satisfy that need. However, the designs contained in a multiple application should be independent of each other for the purposes of declaration of invalidity, surrender and the enforcement of rights.

(27) The normal publication following registration of a Community design could in some cases destroy or jeopardise the success of a commercial operation involving the design; therefore, the facility of a deferment of publication for a reasonable period affords a solution in such cases.

(28) A procedure for hearing actions concerning the validity of a registered Community design in a single place would bring savings in costs and time compared with procedures involving different national courts; (29) It is therefore necessary to provide safeguards including a right of appeal to a Board of Appeal, and ultimately to the Court of Justice of the European Communities. Such a procedure would assist the development of uniform interpretation of the requirements governing the validity of Community designs.

(30) It is essential that the rights conferred by a Community design can be enforced in an efficient manner throughout the territory of the Community. Specific rules concerning litigation based on Community designs should therefore be provided in order to guarantee such a result. Moreover, for infringement actions and for actions for a declaration of invalidity, a limitation in the number of national courts having jurisdiction may promote the specialisation of the judges. To that end Member States should designate Community design courts.

(31) The litigation system should avoid as far as possible any element of choice between several judicial fora ('forum shopping'). It is therefore necessary to establish clear rules of international jurisdiction.

(32) According to Council Decision 88/59l/ECSC, EEC, Euratom of 24 October 1988 establishing a Court of First Instance of the European Communities [18], as amended by Decision 1999/291/ECSC, EC, Euratom [19], that Court will exercise at first instance the jurisdiction conferred on the Court of Justice by the Treaties establishing the Communities with particular regard to appeals lodged under the second subparagraph of Article 230 of the EC Treaty, and by the acts adopted in implementation thereof, save as otherwise provided in an act setting up a body governed by Community law. Therefore, the jurisdiction which this Regulation confers on the Court of Justice to cancel and reform decisions of the appeal courts shall accordingly be exercised at first instance by the Court in accordance with the above Decision.

[18] OJ L 319, 25.11.1988, p. 1, and corrigendum at OJ L 241, 17.8.1988, p. 4.

[19] OJ L 114, 1.5.1999, p. 52.

(33) This Regulation should not preclude the application to designs protected by Community designs of the industrial property laws or other relevant laws of the Member States, such as those relating to design protection acquired by registration or those relating to unregistered designs, trade marks, patents and utility models, unfair competition or civil liability.

(34) Pending harmonisation of copyright law, it is important to establish the principle of cumulation of protection under the Community design and under copyright law, whilst leaving Member States free to establish the extent of copyright protection and the conditions under which such protection is conferred.

(35) Since the measures necessary for implementing this Regulation are measures of general scope within the meaning of Article 2 of Council Decision 1999/468/EC of 28 June 1999 laying down the procedures for the exercise of implementing powers conferred on the Commission [20], they should be adopted by use of the regulatory procedure provided for in Article 5 of that Decision.

[20] OJ L 184, 17.7.1999, p. 23.

(36) The Treaty does not provide, for the adoption of this Regulation, powers other than those under Article 308,

HAS ADOPTED THIS REGULATION:

TITLE I

GENERAL PROVISIONS

Article 1

Community design

1. A design which complies with the conditions contained in this Regulation is hereinafter referred to as a "Community design".

2. A design shall be protected under the terms of this Regulation:

(a) as an 'unregistered Community design', if made available to the public in the manner provided for in this Regulation;

(b) as a 'registered Community design', if registered in the manner provided for in this Regulation.

3. A Community design shall have a unitary character. It shall have equal effect throughout the Community; it shall not be registered, transferred or surrendered or be the subject of a decision declaring it invalid, nor shall its use be prohibited, save in respect of the whole Community. This principle and its implications shall apply unless otherwise provided in this Regulation.

Article 2

Office

The Office for Harmonisation in the Internal Market (Trademarks and Designs), hereinafter referred to as "the Office", instituted by Council Regulation (EC) No 40/94 [21], hereinafter referred to as the "Regulation on the Community Trade Mark", shall carry out the tasks entrusted to it by this Regulation.

[21] OJ L 11, 14.1.1994, p. 1.

TITLE II

THE LAW RELATING TO DESIGNS

Section 1

Requirements for protection

Article 3

Definitions

For the purposes of this Regulation:

(a) "design" means the appearance of the whole or a part of a product resulting from the features of, and in particular the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation;

(b) "product" means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs;

(c) "complex product" means a product which is composed of multiple components which can be replaced, permitting disassembly and re-assembly of the product.

Article 4

Protection requirements

1. A design shall be protected by a Community design to the extent that it is new and has individual character.

2. 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.

3. "Normal use" within the meaning of paragraph 2(a) shall mean use by the end-user, excluding maintenance, servicing or repair work.

Article 5

Novelty

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

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

(b) in case of a registered Community 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.

2. Designs shall be deemed to be identical if their features differ only in immaterial details.

Article 6

Individual character

1. A design shall be considered to have individual character if the overall impression which 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 case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public;

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

2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.

Article 7

Date of reference

- deleted -

Article 8

Disclosure

1. For the purpose of applying Articles 5 and 6, a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date referred to in Articles 5(1)(a) and 6(1)(a) or in Articles 5(1)(b) and 6(1)(b), as the case may be, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.

2. A disclosure shall not be taken into consideration for the purpose of applying Articles 5 and 6 if a design for which protection is claimed under a registered Community 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 priority is claimed, the date of priority.

3. Paragraph 2 shall also apply if the design has been made available to the public as a consequence of an abuse in relation to the designer or his successor in title

Article 9

Designs dictated by their technical function; designs of interconnections

1. A Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function.

2. A Community design shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function.

3. Notwithstanding paragraph 2 a Community design shall under the conditions set out in Articles 5 and 6 subsist in a design serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system.

Article 10

Designs contrary to public policy or morality

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

Article 10a

Transitional provision

1. Until such time as amendments to this Regulation are adopted on a proposal from the Commission on this subject, a Community design shall not exist in a design applied to or incorporated in a product, which constitutes a component part of a complex product upon whose appearance the design is dependent.

2. The proposal from the Commission referred to in paragraph 1 shall be submitted together with, and take into consideration, any changes which the Commission shall propose on the same subject pursuant to Article 18 of Directive 98/71/EC.

Section 2

Scope and term of protection

Article 11

Scope of protection

1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.

2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.

Article 12

Commencement and term of protection of the unregistered Community design

1. A design which meets the requirements under Section 1 shall be protected by an unregistered Community design for a period of three years as from the date on which the design was first made available to the public within the Community.

2. For the purpose of applying paragraph 1, a design shall be deemed to have been made available to the public within the Community if it has been published in any way or exhibited, used in trade or otherwise disclosed therein, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.

Article 13

Commencement and term of protection of the registered Community design

Upon registration by the Office, a design which meets the requirements under Section 1 shall be protected as a registered Community design for a period of five years as from the date of the filing of the application. The right holder may have the term of protection renewed for one or more periods of five years each, up to a total term of 25 years from the date of filing.

Article 13a

Renewal of registered Community design

1. Registration of the registered Community design shall be renewed at the request of the right holder or of any person expressly authorised by him, provided that the renewal fee has been paid.

2. The Office shall inform the right holder in the registered Community design and any person having a registered right in respect of the registered Community design, of the expiry of the registration in good time before the said expiry. Failure to give such information shall not render the Office liable.

3. The request for renewal shall be submitted and the renewal fee paid within a period of six months ending on the last day of the month in which protection ends. Failing this, the request may be submitted and the fee paid within a further period of six months from the day referred to in the first sentence, provided that an additional fee is paid within this further period.

4. Renewal shall take effect from the day following the date on which the existing registration expires. The renewal shall be registered.

Section 3

Entitlement to the Community design

Article 14

Right to the Community design

1. The right to the Community design shall vest in the designer or his successor in title.

2. If two or more persons have jointly developed a design, the right to the Community design shall vest in them jointly. The conditions of exercise of this right shall be established by contractual agreement between co-owners or, failing this.:

(a) in the case of a registered Community design, by application of the law of the Member State where the registration has been applied for according to Article 37; or

(b) in the case of an unregistered Community design, by reference to the law of the Member State:

(i) in which all designers have their seat or their domicile on the relevant date;

(ii) where sub-point (i) does not apply, where all designers have an establishment on the relevant date;

(iii) where sub-points (i) and (ii) do not apply, the Member State referred to shall be the Member State in which the unregistered design was first made available to the public pursuant to Article 12.

3. Where a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to the Community design shall vest in the employer, unless otherwise provided by contract.

Article 15

Plurality of designers

-deleted -

Article 16

Claims relating to the entitlement to a Community design

1. If an unregistered Community design is disclosed by, or if a registered Community design has been registered or sought in the name of, a person who is not entitled to it under Article 14, the person entitled to it under that provision may, without prejudice to any other remedy which may be open to him, claim to become recognised as the legitimate holder of the Community design.

2. Where a person is jointly entitled to a Community design, that person may, in accordance with paragraph 1, claim to become recognised as joint holder.

3. Legal proceedings under paragraphs 1 and 2 may be instituted before a court only within a period of not more than two years after the date of publication of a registered Community design or the date of disclosure of the unregistered Community design. No time-limit shall apply if the person who is not entitled to the Community design was acting in bad faith at the time when such design was applied for, disclosed or was transferred to him

4. In case of a registered Community design, the following shall be entered in the Register:

(a) the mention that legal proceedings under paragraph 1 have been instituted;

(b) the final decision or any other termination of the proceedings;

(c) any change in the ownership of the registered Community design resulting from the final decision.

Article 17

Effects of a judgment on entitlement to a registered Community design

1. Where there is a complete change of ownership of a registered Community design as a result of legal proceedings under Article 16, licences and other rights shall lapse upon the entering in the Register of the person entitled.

2. If, before the institution of the legal proceedings under Article 16 has been registered, the holder of the registered Community design or a licensee has exploited the design within the Community or made serious and effective preparations to do so, he may continue such exploitation provided that he requests within the period prescribed by the Implementing Regulation a non-exclusive licence from the new holder whose name is entered in the Register. The licence shall be granted for a reasonable period and upon reasonable terms.

3. Paragraph 2 shall not apply if the right holder or the licensee was acting in bad faith at the time when he began to exploit the design or to make preparations to do so.

Article 18

Presumption in favour of the registered holder of the design

The person in whose name the registered Community 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 19

Right of the designer to be cited

The designer shall have the right, as against the applicant for or the holder of a registered Community 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.

Section 4

Effects of the Community design

Article 20

Rights conferred by the Community design

1. Registration of a Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or the stocking of such a product for those purposes.

2. An unregistered Community design shall confer on its holder the right to prevent the acts mentioned in paragraph 1 only if the use contested results from copying the design protected.

3. Paragraph 2 shall also apply to a registered Community design subject to deferment of publication as long as the relevant entries in the Register and the file have not been made available to the public in accordance with Article 52(4).

Article 21

Rights conferred by the registered Community design

- deleted -

Article 22

Limitation of the rights conferred by a Community design

1. The rights conferred by a Community design shall not be exercised in respect of:

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

(b) acts done for experimental purposes;

(c) acts of reproduction for the purpose of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source.

2. In addition, the rights conferred by a Community design shall not be exercised in respect of:

(a) the equipment on ships and aircraft registered in a third country when these temporarily enter the territory of the Community;

(b) the importation into the Community of spare parts and accessories for the purpose of repairing such craft;

(c) the execution of repairs on such craft.

Article 23

Use of a registered Community design for repair purposes

- deleted -

Article 24

Exhaustion of rights

The rights conferred by a Community design shall not extend to acts relating to a product in which a design included within the scope of protection of the Community design is incorporated or to which it is applied, when the product has been put on the market in the Community by the holder of the Community design or with his consent.

Article 25

Rights of prior use in respect of a registered Community design

1. A right of prior use shall vest in for any third person who can establish that before the date of filing of the application, or, if a priority is claimed, before the date of priority, he has in good faith commenced use within the Community, or has made serious and effective preparations to that end, of a design included within the scope of protection of a registered Community design, which has not been copied from the latter.

2. The right of prior use shall entitle the third person to exploit the design for the purposes for which its use had been effected, or for which serious and effective preparations had been made, before the filing or priority date of the registered Community design. The registered Community design shall not be effective against the third person with respect to such exploitation.

3. The right of prior use shall not extend to granting a licence to another person to exploit the design.

4. The right of prior use cannot be transferred except, where the third person is a business, along with that part of the business in the course of which the act was done or the preparations were made.

Section 5

Invalidity

Article 26

Declaration of invalidity

1. A registered Community design shall be declared invalid by the Office on application in accordance with the procedure in Titles VI and VII, or by a Community design court on the basis of a counterclaim in infringement proceedings.

2. An unregistered Community design shall be declared invalid by a Community design court on application to such a court or on the basis of a counterclaim in infringement proceedings.

3. A Community design may be declared invalid even after the Community design has lapsed or has been surrendered.

Article 27

Grounds for invalidity

1. A Community design may be declared invalid only in the following cases:

(a) if the design is not a design within the meaning of Article 3(a);

(b) if it does not fulfil the requirements of Articles 4 to 10a;

(c) if, by virtue of a court decision, the right holder is not entitled to the Community design under Article 14;

(d) if the Community design is in conflict with a prior design which has been made available to the public after the date of filing of the application or, if priority is claimed, the date of priority of the Community design, and which is protected from a date prior to the said date by a registered Community design or an application for such a design, or by a registered design of a Member State, or by an application for such a right;

(e) if a distinctive sign is used in a subsequent design, and Community 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) if the design constitutes an unauthorised use of a work protected under the copyright law of a Member State;

(g) if 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, hereinafter referred to as "the Paris Convention", or of badges, emblems and escutcheons other than those which are covered by Article 6ter of the said Convention and which are of particular public interest in a Member State.

2. The ground provided for in paragraph 1(c) may be invoked solely by the person who is entitled to the Community design under Article 14.

3. The grounds provided for in paragraph 1(d), (e) and (f) may be invoked solely by the applicant for, or holder, of the prior right.

4. The ground provided for in paragraph 1(g) may be invoked solely by the person or entity concerned by the use.

5. Paragraphs 3 and 4 shall be without prejudice to the freedom of Member States to provide that the grounds provided for in paragraphs 1(d) and (g) may also be invoked by the appropriate authority of the Member State in question on its own initiative.

6. A registered Community design which has been declared invalid pursuant to paragraph 1(b), (e), (f) or (g) may be maintained in an amended form, if in that form it complies with the requirements for protection and if the identity of the design is retained. Maintenance in an amended form may include registration accompanied by a partial disclaimer by the holder of the registered Community design or entry in the Register or of a court decision or a decision by the Office declaring the partial invalidity of the registered Community design.

Article 28

Consequences of invalidity

1. A Community design shall be deemed not to have had, as from the outset, the effects specified in this Regulation, to the extent that it has been declared invalid.

2. 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 Community design, or to unjust enrichment, the retroactive effect of invalidity of the Community 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.

TITLE III

COMMUNITY DESIGNS AS OBJECTS OF PROPERTY

Article 29

Dealing with Community designs as national design rights

1. Unless Articles 30 to 34 provide otherwise, a Community design as an object of property shall be dealt with in its entirety, and for the whole area of the Community, 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 subparagraph (a) does not apply, the holder has an establishment on the relevant date.

2. In the case of a registered Community design, paragraph 1 shall apply according to the entries in the Register.

3. In the case of joint holders, if two or more of them fulfil the condition under paragraph 1(a) or, where that provision does not apply, the condition under paragraph 1(b), the Member State referred to in paragraph 1 shall be determined:

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

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

4. Where paragraphs 1, 2 and 3 do not apply, the Member State referred to in paragraph 1 shall be the Member State in which the seat of the Office is situated.

Article 30

Transfer of the registered Community design

The transfer of a registered Community design shall be subject to the following provisions:

(a) at the request of one of the parties, a transfer shall be entered in the Register and published;

(b) until such time as the transfer has been entered in the Register, the successor in title may not invoke the rights arising from the registration of the Community design;

(c) where there are time-limits to be observed in dealings with the Office, the successor in title may make the corresponding statements to the Office once the request for registration of the transfer has been received by the Office;

(d) all documents which by virtue of Article 70 require notification to the holder of the registered Community design shall be addressed by the Office to the person registered as holder or his representative, if one has been appointed.

Article 31

Rights in rem on a registered Community design

1. A registered Community design may be given as security or be the subject of rights in rem.

2. At the request of one of the parties, rights mentioned in paragraph 1 shall be entered in the Register and published.

Article 32

Levy of execution

1. A registered Community design may be levied in execution.

2. As regards the procedure for levy of execution in respect of a registered Community design, the courts and authorities of the Member State determined in accordance with Article 29 shall have exclusive jurisdiction.

3. At the request of one of the parties, levy of execution shall be entered in the Register and published.

Article 33

Bankruptcy or like proceedings

1. The only Member State in which a Community design may be included in bankruptcy or like proceedings shall be that on whose territory the debtor has his principal centre of interest.

2. In the case of joint proprietorship of a Community design, paragraph 1 shall apply to the share of the joint proprietor.

3. Where a Community design is involved in bankruptcy or like proceedings, on request from the competent national authority an entry to this effect shall be made in the Register provided for in Article 50 and published in the Community Design's Bulletin referred to in Article 77(1).

Article 34

Licensing

1. A Community design may be licensed for the whole or part of the Community. A licence may be exclusive or non-exclusive.

2. The holder may invoke the rights conferred by the Community design against a licensee who contravenes any provision in his licensing contract with regard to its duration, the form in which the design may be used, the range of products for which the licence was granted and the quality of the products manufactured by the licensee.

3. Without prejudice to the provisions of the licensing contract, the licensee may bring proceedings for infringement of a Community design only if the right holder consents thereto. However, the holder of an exclusive licence may bring such proceedings if the right holder in the Community design, having been given notice to do so, does not himself bring infringement proceedings within an appropriate period.

4. A licensee shall, for the purpose of obtaining compensation for damage suffered by him, be entitled to intervene in an infringement action brought by the right holder in a Community design.

5. In the case of a registered Community design, the grant or transfer of a licence in respect of such right shall, at the request of one of the parties, be entered in the Register and be published.

Article 35

Effects vis-à-vis third parties

1. The effects vis-à-vis third parties of the legal acts referred to in Articles 30, 31, 32 and 34 shall be governed by the law of the Member State determined in accordance with Article 29.

2. However, as regards registered Community designs, legal acts referred to in Articles 30, 31 and 34 shall only have effect vis-à-vis third parties in all the Member States after entry in the Register. Nevertheless, such an act, before it is so entered, shall have effect vis-à-vis third parties who have acquired rights in the registered Community design after the date of that act but who knew of the act at the date on which the rights were acquired.

3. Paragraph 2 shall not apply to a person who acquires the registered Community design or a right concerning the registered Community design by way of transfer of the whole of the undertaking or by any other universal succession.

4. Until such time as common rules for the Member States in the field of bankruptcy enter into force, the effects vis-à-vis third parties in bankruptcy or like proceedings shall be governed by the law of the Member State in which such proceedings are first brought within the meaning of national law or the regulations applicable in this field.

Article 36

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

1. An application for a registered Community design as an object of property shall be dealt with in its entirety, and for the whole Community, as a national design right of the Member State determined in accordance with Article 29.

2. Articles 30 to 35 shall apply mutatis mutandis to applications for registered Community designs. Where the effect of one of these provisions is conditional upon an entry in the Register, that formality shall have to be performed upon registration of the resulting registered Community design.

TITLE IV

APPLICATION FOR A REGISTERED COMMUNITY DESIGN

Section 1

Filing of applications and the conditions which govern them

Article 37

Filing and forwarding of applications

1. An application for a registered Community design shall be filed, at the option of the applicant:

(a) at the Office; or

(b) at the central industrial property office of a Member State; or

(c) in the Benelux countries, at the Benelux Design Office.

2. Where the application is filed at the central industrial property office of a Member State or at the Benelux Design Office, that office shall take all steps to forward the application to the Office within two weeks after filing. It may charge the applicant a fee which shall not exceed the administrative costs of receiving and forwarding the application

3. As soon as the Office has received an application which has been forwarded by a central industrial property office of a Member State or by the Benelux Design Office, it shall inform the applicant accordingly, indicating the date of its receipt at the Office.

4. No less than ten years after the entry into force of this Regulation, the Commission shall draw up a report on the operation of the system of filing applications for registered Community designs, accompanied by any proposals for revision that it may deem appropriate.

Article 38

Forwarding of the application

- deleted -

Article 39

Conditions with which applications must comply

1. An application for a registered Community design shall contain:

(a) a request for registration;

(b) information identifying the applicant;

(c) a representation of the design suitable for reproduction.

2. The application shall further contain:

(a) an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied;

(b) 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;

(c) the citation of the designer or of the team of designers or a statement under the applicant's responsibility that the designer or the team of designers has waived the right to be cited.3. 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 52;

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

4. The application shall be subject to the payment of the application fee and the publication fee. Where a request for deferment under paragraph 3(b) is filed, the publication fee shall be replaced by the fee for deferment of publication.

5. The application shall comply with the conditions laid down in the Implementing Regulation referred to in Article 124 (hereinafter: "the Implementing Regulation").

6. The information contained in the elements mentioned in paragraph 2(a) and (b) and in paragraph 3(a) does not affect the scope of protection of the design as such.

Article 40

Multiple applications

1. Several designs may be combined in one multiple application for registered Community designs. Except in cases of ornamentation, this possibility is subject to the condition that the products in which the designs are intended to be incorporated or to which they are intended to be applied all belong to the same class of the International Classification for Industrial Designs.

2. Besides the fees referred to in Article 39(4), the multiple application shall be subject to payment of an additional registration fee and an additional publication fee. Where the multiple application contains a request for deferment of publication, the additional publication fee shall be replaced by the additional fee for deferment of publication. The additional fees shall correspond to a percentage of the basic fees for each additional design.

3. The multiple application shall comply with the conditions of presentation laid down in the Implementing Regulation.

4. Each of the designs contained in a multiple application or registration can be enforced, licensed, be the subject of a right in rem, a levy of execution or bankruptcy and like proceedings, surrendered or declared invalid, independently. The renewal may be requested for less than all of the designs contained in a multiple application. The details shall be laid down in the Implementing Regulation.

Article 41

Date of filing

1. The date of filing of an application for a registered Community design shall be the date on which documents containing the information specified in Article 39(1) are filed with the Office by the applicant, or, if the application has been filed with the central industrial property office of a Member State or with the Benelux Design Office, with that office.

2. By way of derogation from paragraph 1, the date of filing of an application filed with the central industrial property office of a Member State or with the Benelux Design Office and reaching the Office more than two months after the date on which documents containing the information specified in Article 39(1) have been filed, shall be the date of receipt of such documents by the Office.

Article 41a

Equivalence of Community filing with national filing

An application for a registered Community design to which a date of filing has been assigned shall, in the Member States, be equivalent to a regular national filing, even as regards any priority claimed for the said application.

Article 42

Classification

For the purpose of this Regulation, use shall be made of the latest available version of the classification for designs provided for in the Annex to the Agreement Establishing an International Classification for Industrial Designs, signed at Locarno on 8 October 1968.

Section 2

Priority

Article 43

Right of priority

1. A person who has duly filed an application for a design right in or for any State party to the Paris Convention, or to the Agreement establishing the World Trade Organisation or his successors in title, shall enjoy, for the purpose of filing an application for a registered Community design in respect of the same design, a right of priority of six months from the date of filing of the first application.

1a. Where a registered Community design is filed by virtue of a right of priority based on the filing of a utility model, a right of priority of six months, as provided for in paragraph 1, shall apply.

2. Every filing that is equivalent to a regular national filing under the national law of the State where it was made or under bilateral or multilateral agreements shall be recognised as giving rise to a right of priority.

3. Regular national filing means any filing that is sufficient to establish the date on which the application was filed, whatever may be the outcome of the application.

4. A subsequent application for a design which was the subject of a previous first application, and which is filed in or in respect of the same State, shall be considered as the first application for the purpose of determining priority, provided that, at the date of the filing of the subsequent application, the previous application has been withdrawn, abandoned or refused without being open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming priority. The previous application may not thereafter serve as a basis for claiming a right of priority.

5. If the first filing has been made in a State which is not a party to the Paris Convention, or to the Agreement establishing the World Trade Organisation, paragraphs 1 to 4 shall apply only in so far as that State, according to published findings, grants, on the basis of a filing made at the Office and subject to conditions equivalent to those laid down in this Regulation, a right of priority having equivalent effect.

Article 44

Claiming priority

An applicant for a registered Community design desiring to take advantage of the priority of a previous application shall file a declaration of priority and a copy of the previous application. If the language of the latter is not one of the languages of the Office, the Office may require a translation of the previous application into one of the languages of the Office.

Article 45

Effect of priority right

The effect of the right of priority shall be that the date of priority shall count as the date of the filing of the application for a registered Community design for the purpose of Articles 5, 6, 8, 25, 27(1)(d) and 52(1).

Article 46

Equivalence of Community filing with national filing

- This Article has become Article 41a -

Article 47

Exhibition priority

1. If an applicant for a registered Community design has displayed products in which the design is incorporated, or to which it is applied, at an official or officially recognised international exhibition falling within the terms of the Convention on International Exhibitions signed in Paris on 22 November 1928, as last revised on 30 November 1972, he may, if he files the application within a period of six months from the date of the first display of such products, claim a right of priority from that date within the meaning of Article 45.

2. An applicant who wishes to claim priority pursuant to paragraph 1 must file evidence of the display of the products in which the design is incorporated or to which it is applied under the conditions laid down in the Implementing Regulation.

3. An exhibition priority granted in a Member State or in a third country does not extend the period of priority laid down in Article 43.

TITLE V

REGISTRATION PROCEDURE

Article 48

Examination as to formal requirements for filing

1. The office shall examine whether the application complies with the requirements laid down in Article 39(1) for the assignment of a date of filing.

2. The Office shall examine whether:

(a) the application complies with the other requirements laid down in Article 39(2) to (5) and, in the case of a multiple application, Article 40(1) and (2);

(b) the application meets the formal requirements laid down in the Implementing Regulation for the implementation of Articles 39 and 40;

(c) the requirements of Article 81(2) are satisfied;

(d) the requirements concerning the claim to priority are satisfied, if a priority is claimed.

3. The conditions for the examination as to the formal requirements for filing shall be laid down in the Implementing Regulation.

Article 49

Remediable deficiencies

1. Where, in carrying out the examination under Article 48, the Office notes that there are deficiencies which may be corrected, the Office shall request the applicant to remedy them within the prescribed period.

2. If the deficiencies concern the requirements referred to in Article 39(1) and the applicant complies with the Office's request in due time, the Office shall assign as the date of filing the date on which the deficiencies are remedied. If the deficiencies are not remedied within the prescribed period, the application shall not be dealt with as an application for a registered Community design.

3. If the deficiencies concern the requirements, including the payment of fees, as referred to in Article 48(2)(a), (b) and (c) and the applicant complies with the Office's request within the prescribed period, the Office shall assign as the date of filing the date on which the application was originally filed. If the deficiencies or the default in payment are not remedied within the prescribed period, the Office shall refuse the application.

4. If the deficiencies concern the requirements referred to in Article 48(2)(d), failure to remedy them within the prescribed period shall result in the loss of the right of priority for the application.

Article 49a

Grounds for non-registrability

1. If the Office, in carrying out the examination pursuant to Article 48, notices that the design for which protection is sought:

(a) does not fulfil the requirement under Article 3(a), or

(b) is contrary to public policy or to accepted principles of morality,

it shall refuse the application.

2. The application shall not be refused before the applicant has been allowed the opportunity of withdrawing or amending the application or of submitting his observations.

Article 50

Registration

If the requirements that an application for a registered Community design must satisfy have been fulfilled and to the extent that the application has not been refused by virtue of Article 49a, the Office shall register the application in the Community design Register as a registered Community design. The registration shall bear the date of filing of the application referred to in Article 41.

Article 51

Publication

Upon registration, the Office shall publish the registered Community design in the Community Design Bulletin as mentioned in Article 77(1). The contents of the publication shall be set out in the Implementing Regulation.

Article 52

Deferment of publication

1. The applicant for a registered Community design may request, when filing the application, that the publication of the registered Community design be deferred for a period of 30 months from the date of filing the application or, if a priority is claimed, from the date of priority.

2. Upon such request, where the conditions set out in Article 50 are satisfied, the registered Community design shall be registered, but neither the representation of the design nor any file relating to the application shall, subject to Article 78(2), be open to public inspection.

3. The Office shall publish in the Community Designs Bulletin a mention of the deferment of the publication of the registered Community design. The mention shall be accompanied by information identifying the right holder in the registered Community design, the date of filing the application, any other particulars prescribed by the Implementing Regulation.

4. At the expiry of the period of deferment, or at any earlier date on request by the right holder, the Office shall open to public inspection all the entries in the Register and the file relating to the application and shall publish the registered Community design in the Community Design Bulletin, provided that, within the time-limit laid down in the Implementing Regulation the publication fee and, in the event of a multiple application, the additional publication fee are paid.

If the right holder fails to comply with these requirements, the registered Community design shall be deemed from the outset not to have had the effects specified in this Regulation.

5. - deleted - 6. The institution of legal proceedings on the basis of a registered Community design during the period of deferment of publication shall be subject to the condition that the information contained in the Register and in the file relating to the application has been communicated to the person against whom the action is brought.

Article 53

Term of protection

- deleted -

Article 54

Renewal

(This Article has become Article 13a)

- The whole former Title VI has been deleted -

TITLE VI

SURRENDER AND INVALIDITY OF THE REGISTERED COMMUNITY DESIGN

Article 55

Surrender

1. The surrender of a registered Community design shall be declared to the Office in writing by the right holder. It shall not have effect until it has been entered in the Register.

2. If a Community design which is subject to deferment of publication is surrendered it shall be deemed from the outset not to have had the effects specified in this Regulation.

3. A registered Community design may be partially surrendered provided that its amended form complies with the requirements for protection and the identity of the design is retained.

4. Surrender shall be registered only with the agreement of the proprietor of a right entered in the Register. If a licence has been registered, surrender shall be entered in the Register only if the right holder in the registered Community design proves that he has informed the licensee of his intention to surrender; this entry shall be made on expiry of the period prescribed by the Implementing Regulation.

5. If an action pursuant to Article 14 relating to entitlement to a registered Community design has been brought before a Community design court, the Office shall not enter the surrender in the Registry without the agreement of the claimant.

Article 56

Application for a declaration of invalidity

1. Subject to Article 27(2) to (5), any natural or legal person may submit to the Office an application for a declaration of invalidity of a registered Community design.

2. The application shall be filed in a written reasoned statement. It shall not be deemed to have been filed until a fee has been paid.

3. An application for a declaration of invalidity shall not be admissible if an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on by a Community design court and has acquired the authority of a final decision.

Article 57

Examination of the application

1. If the Office finds that the application for a declaration of invalidity is admissible, the Office shall examine whether the grounds for invalidity referred to in Article 27 prejudice the maintenance of the registered Community design.

2. In the examination of the application, which shall be conducted in accordance with the Implementing Regulation, the Office shall invite the parties, as often as necessary, to file observations, within a period to be fixed by the Office, on communications from the other parties or issued by itself.

3. The decision declaring the registered Community design invalid shall be entered in the Register upon becoming final.

Article 58

Participation in the proceedings of the alleged infringer

1. In the event of an application for a declaration of invalidity of a registered Community design being filed, and as long as no final decision has been taken by the Office, any third party who proves that proceedings for infringement of the same design have been instituted against him may be joined as a party in the invalidity proceedings on request submitted within three months of the date on which the infringement proceedings were instituted. The same shall apply in respect of any third party who proves both that the right holder of the Community design has requested that he cease an alleged infringement of the design and that he has instituted proceedings for a court ruling that he is not infringing the Community design.

2. The request to be joined as a party shall be filed in a written reasoned statement. It shall not be deemed to have been filed until the invalidity fee, as well as the one referred to in Article 56(2), has been paid. Thereafter the request shall, subject to any exceptions laid down in the Implementing Regulation, be treated as an application for a declaration of invalidity.

TITLE VII

APPEALS

Article 59

Decisions subject to appeal

1. An appeal shall lie from decisions of the examiners, the Administration of Trade Marks and Designs and Legal Division and Invalidity Divisions. It shall have suspensive effect.

2. A decision which does not terminate proceedings as regards one of the parties can only be appealed against together with the final decision, unless the decision allows separate appeal.

Article 60

Persons entitled to appeal and to be parties to appeal proceedings

Any party to proceedings adversely affected by a decision may appeal. Any other parties to the proceedings shall be parties to the appeal proceedings as of right.

Article 61

Time-limit and form of appeal

Notice of appeal must be filed in writing at the Office within two months after the date of notification of the decision appealed from. The notice shall be deemed to have been filed only when the fee for appeal has been paid. Within four months after the date of notification of the decision, a written statement setting out the grounds of appeal must be filed.

Article 62

Interlocutory revision

1. If the department whose decision is contested considers the appeal to be admissible and well founded, it shall rectify its decision. This shall not apply where the appellant is opposed by another party to the proceedings.

2. If the decision is not rectified within one month after receipt of the statement of grounds, the appeal shall be remitted to the Board of Appeal without delay and without comment as to its merits.

Article 63

Examination of appeals

1. If the appeal is admissible, the Board of Appeal shall examine whether the appeal is to be allowed.

2. In the examination of the appeal, the Board of Appeal shall invite the parties, as often as necessary, to file observations, within a period to be fixed by the Board of Appeal, on communications from the other parties or issued by itself.

Article 64

Decisions in respect of appeals

1. Following the examination as to the merits of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed against or remit the case to that department for further prosecution.

2. If the Board of Appeal remits the case for further prosecution to the department whose decision was appealed against, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same.

3. The decisions of the Boards of Appeal shall take effect only as from the date of expiration of the period referred to in Article 65(5) or, if an action has been brought before the Court of Justice within that period, as from the date of dismissal of such action.

Article 65

Actions before the Court of Justice

1. Actions may be brought before the Court of Justice against decisions of the Boards of Appeal on appeal.

2. The action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of this Regulation or of any rule of law relating to their application or misuse of power.

3. The Court of Justice has jurisdiction to annul or to alter the contested decision.

4. The action shall be open to any party to proceedings before the Board of Appeal adversely affected by its decision.

5. The action shall be brought before the Court of Justice within two months of the date of notification of the decision of the Board of Appeal.

6. The Office shall be required to take the necessary measures to comply with the judgment of the Court of Justice.

TITLE VIII

PROCEDURE BEFORE THE OFFICE

Section 1

General provisions

Article 66

Statement of reasons on which decisions are based

Decisions of the Office shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.

Article 67

Examination of the facts by the Office of its own motion

1. In proceedings before it, the Office shall examine the facts of its own motion; however, in proceedings relating to a declaration of invalidity, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought, except to the extent that the grounds of invalidity specified in Articles 27(1)(a), 10 and 10a are involved.

2. The Office may disregard facts or evidence which are not submitted in due time by the parties concerned.

Article 68

Oral proceedings

1. If the Office considers that oral proceedings would be expedient, they shall be held either at the instance of the Office or at the request of any party to the proceedings.

2. Oral proceedings, including delivery of the decision, shall be public, unless the department before which the proceedings are taking place decides otherwise in cases where admission of the public could have serious and unjustified disadvantages, in particular for a party to the proceedings.

Article 69

Taking of evidence

1. In any proceedings before the Office the means of giving or obtaining evidence shall include the following:

(a) hearing the parties;

(b) requests for information;

(c) the production of documents and items of evidence;

(d) hearing witnesses;

(e) opinions by experts;

(f) statements in writing, sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up.

2. The relevant department of the Office may commission one of its members to examine the evidence adduced.

3. If the Office considers it necessary for a party, witness or expert to give evidence orally, it shall issue a summons to the person concerned to appear before it.

4. The parties shall be informed of the hearing of a witness or expert before the Office. They shall have the right to be present and to put questions to the witness or expert.

Article 70

Notification

The Office shall, as a matter of course, notify those concerned of decisions and summonses and of any notice or other communication from which a time-limit is reckoned, or of which those concerned must be notified under other provisions of this Regulation or of the Implementing Regulation, or of which notification has been ordered by the President of the Office.

Article 71

Restitutio in integrum

1. The applicant for or holder of a registered Community design or any other party to proceedings before the Office who, in spite of all due care required by the circumstances having been taken, was unable to observe a time-limit vis-à-vis the Office shall, upon application, have his rights re-established if the non-observance in question has the direct consequence, by virtue of the provisions of this Regulation, of causing the loss of any rights or means of redress.

2. The application must be filed in writing within two months of the removal of the cause of non-compliance with the time-limit. The omitted act must be completed within this period. The application shall only be admissible within the year immediately following the expiry of the unobserved time-limit. In the case of non-submission of the request for renewal of registration or of non-payment of a renewal fee, the further period of six months provided for in the second sentence of Article 13a(3) shall be deducted from the period of one year.

3. The application must state the grounds on which it is based and must set out the facts on which it relies. It shall not be deemed to be filed until the fee for the re-establishment of rights has been paid.

4. The department competent to decide on the omitted act shall decide upon the application.

5. The provisions of this Article shall not be applicable to the time-limits referred to in paragraph 2 and Article 43(1).

6. Where the applicant for or holder of a registered Community design has his rights re-established, he may not invoke his rights vis-à-vis a third party who, in good faith, in the course of the period between the loss of rights in the application for or registration of the registered Community design and publication of the mention of re-establishment of those rights, has put products on the market in which a design is incorporated or to which it is applied, which is comprised within the scope of protection of the registered Community design.

7. A third party who may avail himself of the provisions of paragraph 6 may bring third party proceedings against the decision re-establishing the rights of the applicant for or holder of the registered Community design within a period of two months as from the date of publication of the mention of re-establishment of those rights.

8. Nothing in this Article shall limit the right of a Member State to grant restitutio in integrum in respect of time-limits provided for in this Regulation and to be complied with vis-à-vis the authorities of such State.

Article 72

Reference to general principles

In the absence of procedural provisions in this Regulation, the Implementing Regulation, the Fees Regulation or the rules of procedure of the Boards of Appeal, the Office shall take into account the principles of procedural law generally recognised in the Member States.

Article 73

Termination of financial obligations

1. Rights of the Office to the payment of a fee shall be extinguished after four years from the end of the calendar year in which the fee fell due.

2. Rights against the Office for the refunding of fees or sums of money paid in excess of a fee shall be extinguished after four years from the end of the calendar year in which the right arose.

3. The periods laid down in paragraphs 1 and 2 shall be interrupted, in the case covered by paragraph 1, by a request for payment of the fee and, in the case covered by paragraph 2, by a reasoned claim in writing. On interruption it shall begin again immediately and shall end at the latest six years after the end of the year in which it originally began, unless in the meantime judicial proceedings to enforce the right have begun; in this case the period shall end at the earliest one year after the judgment has acquired the authority of a final decision.

Section 2

Costs

Article 74

Allocation of costs

1. The losing party in proceedings for a declaration of invalidity of a registered Community design or appeal proceedings shall bear the fees incurred by the other party as well as all costs incurred by him essential to the proceedings, including travel and subsistence and the remuneration of an agent, adviser or advocate, within the limits of scales set for each category of costs under the conditions laid down in the Implementing Regulation.

2. Where each party succeeds on some and fails on other heads, or if reasons of equity so dictate, the Invalidity Division or Board of Appeal shall decide a different apportionment of costs.

3. The party who terminates the proceedings by surrendering the registered Community design or by not renewing its registration or by withdrawing the application for a declaration of invalidity or the appeal, shall bear the fees and the costs incurred by the other party as stipulated in paragraph 1 and 2.

4. Where a case does not proceed to judgment, the costs shall be at the discretion of the Invalidity Division or Board of Appeal.

5. Where the parties conclude before the Invalidity Division or Board of Appeal a settlement of costs differing from that provided for in paragraphs 1 to 4, the body concerned shall take note of that agreement.

6. On request, the registry of the Invalidity Division or Board of Appeal shall fix the amount of the costs to be paid pursuant to paragraphs 1 to 5. The amount so determined may be reviewed by a decision of the Invalidity Division or Board of Appeal on a request filed within the period prescribed by the Implementing Regulation.

Article 75

Enforcement of decisions fixing the amount of costs

1. Any final decision of the Office fixing the amount of costs shall be enforceable.

2. Enforcement shall be governed by the rules of civil procedure in force in the State in the territory of which it is carried out. The order for its enforcement shall be appended to the decision, without any other formality than verification of the authenticity of the decision, by the national authority which the government of each Member State shall designate for this purpose and shall make known to the Office and to the Court of Justice.

3. When these formalities have been completed on application by the party concerned, the latter may proceed to enforcement in accordance with the national law, by bringing the matter directly before the competent authority.

4. Enforcement may be suspended only by a decision of the Court of Justice. However, the courts of the Member State concerned shall have jurisdiction over complaints that enforcement is being carried out in an irregular manner.

Section 3

Information of the public and of the official authorities of the Member States

Article 76

Register of Community designs

The Office shall keep a Register, to be known as the Register of Community designs , which shall contain those particulars of which the registration is provided for by this Regulation or by the Implementing Regulation. The Register shall be open to public inspection, except to the extent that Article 52(2) provides otherwise in relation to entries relating to registered Community designs subject to deferment of publication.

Article 77

Periodical publications

1. This Office shall periodically publish a Community Designs Bulletin containing entries open to public inspection in the Register as well as other particulars the publication of which is prescribed by this Regulation or by the Implementing Regulation.

2. Notices and information of a general character issued by the President of the Office, as well as any other information relevant to this Regulation or its implementation, shall be published in the Official Journal of the Office, referred to in Article 85 of the Regulation on the Community Trade Mark.

Article 78

Inspection of files

1. The files relating to applications for registered Community designs which have not yet been published or the files relating to registered Community designs which are subject to deferment of publication in accordance with Article 52 or which, being subject to such deferment, have been surrendered before or on the expiry of that period, shall not be made available for inspection without the consent of the applicant for or the right holder in the registered Community design.

2. Any person who can establish a legitimate interest may inspect a file without the consent of the applicant for or holder of the registered Community design prior to the publication or after the surrender of the latter in the case provided for pursuant to paragraph 1. This shall in particular apply if the interested person proves that the applicant for, or the holder of the registered Community design has taken steps with a view to invoking against him the right under the registered Community design.

3. Subsequent to the publication of the registered Community design, the file may be inspected on request.

4. However, where a file is inspected pursuant to paragraph 2 or 3, certain documents in the file may be withheld from inspection in accordance with the provisions of the Implementing Regulation.

Article 79

Administrative co-operation

Unless otherwise provided in this Regulation or in national laws, the Office and the courts or authorities of the Member States shall on request give assistance to each other by communicating information or opening files for inspection. Where the Office opens files to inspection by courts, Public Prosecutors' Offices or central industrial property offices, the inspection shall not be subject to the restrictions laid down in Article 78.

Article 80

Exchange of publications

1. The Office and the central industrial