Amended proposal for a Council Regulation (EC) on Community Design
Date: 1999-06-21
Institutions: European Commission
Subjects: approximation of laws, designs and models, industrial property

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Official Journal of the European Communities

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Amended proposal for a Council Regulation (EC) on Community Design (1)

(2000/C 248 E/02)

(Text with EEA relevance)

COM(1999) 310 final (cid:151) 93/0463(CNS)

(Submitted by the Commission pursuant to Article 250(2) of the EC Treaty on 21 June 1999)

(1) OJ C 29, 31.1.1994, p. 20.

INITIAL PROPOSAL

AMENDED PROPOSAL

THE COUNCIL OF THE EUROPEAN COMMUNITIES,

Unchanged

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

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

Having regard to the proposal (1) from the Commission,

Unchanged

Having regard to the opinion of the European Parliament,

Having regard to the opinion of
Committee (2),

the Economic and Social

economic and social progress of

(1) Whereas the objectives of the Community as laid down in
the Treaty include establishing an ever closer union
among the peoples of Europe, fostering closer relations
between the States belonging to the Community, and
ensuring the
the
Community countries by common action to eliminate
the barriers which divide Europe; whereas to that end
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; whereas 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) Whereas only the Benelux countries have introduced a
uniform design protection law; whereas the only other
design protection that exists in the Community is a
matter for the relevant national
law and is confined to
the Member State concerned; whereas
the territory of
there is no such relevant law in any one Member State
at the present time; whereas identical designs may be
protected differently in different Member States and for
the benefit of different owners; whereas this inevitably
trade between
leads
Member States;

in the course of

to conflicts

___________
(1) OJ C 29, 31.1.1994, p. 20.
(2) OJ C 110, 2.5.1995, p. 12.

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INITIAL PROPOSAL

AMENDED PROPOSAL

(3) Whereas

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,
and competition within the Community are
trade
prevented and distorted by
large number of
applications, offices, procedures, laws, nationally circum-
scribed exclusive rights and the combined administrative
expense with correspondingly high costs and fees for the
applicant;

the

their laws are approximated,

(4) Whereas the effect of design protection being limited to
the territory of the individual Member States whether or
not
leads to a possible
division of the internal market with respect to products
incorporating a particular design in areas with different
right owners, and hence constitutes an obstacle to the free
movement of goods;

a

of

(5) Whereas this calls for the creation of a Community design
right which is directly applicable in each Member State,
and
authority with
Community-wide powers, because only in this way will
it be possible to obtain, through one application made to
in accordance with a single procedure under one law, one
design right for one area encompassing all Member States;

Community

design

a

of

Community

(5) Whereas this calls for the creation of a Community design
right which is directly applicable in each Member State,
and
authority with
Community-wide powers, 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
area
encompassing all Member States;

design right

law, one

for one

design

(6) Whereas 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 right and a Community design
authority can only be achieved by the Community;

Unchanged

the

success of

commercial

(7) Whereas superior design is an important attribute of
Community industries
in competition with industries
from other countries, and is in many cases decisive in
the
associated product;
whereas 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; whereas a
more accessible design-protection system adapted to the
for
needs of
Community industries;

is therefore essential

the internal market

(8) Whereas such a design-protection system would constitute
design
seeking
the
protection in the most important export markets of the
Community;

corresponding

prerequisite

for

(9) Whereas the substantive provisions of this regulation on
design law, should be aligned with similar provisions in
Directive 98/71/EC on the legal protection of designs (1).

___________
(1) OJ L 289, 28.10.1998, p. 28.

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INITIAL PROPOSAL

AMENDED PROPOSAL

(10) Whereas

not

should

innovation

technological

function; whereas it

be
hampered by granting design protection to features
is
dictated solely by a technical
understood that this does not entail that a design must
have an aesthetic quality; whereas, likewise, the interoper-
ability of products of different makes should not be
hindered by extending protection to the design of
mechanical fittings; whereas features of a design which
are excluded from protection for those reasons should
not be taken into consideration for
the purpose of
assessing whether other features of the design fulfil the
requirements for protection;

(11) Whereas the mechanical fittings of modular products may
nevertheless constitute an important element of the inno-
vative characteristics of modular products and present a
major marketing asset and therefore should be eligible for
protection;

(12) Whereas full-scale approximation of

for

the laws of

could not be

complex products

the
Member States on the use of protected design of
component parts of
repair
purposes
achieved through Directive
98/71/EC on the legal protection of designs; whereas,
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; whereas, under
these circumstances,
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.

it

(13) Whereas the provisions of this Regulation are without
the competition rules

prejudice to the application of
pursuant to Articles 81 and 82 of the Treaty.

Unchanged

(14) Whereas a Community design right should, as far as
possible, serve the needs of all sectors of industry in the
Community; whereas those sectors are many and varied.

Unchanged

(14) Whereas a Community design right should, serve the
industry in the Community;

needs of all
whereas those sectors are many and varied.

sectors of

the burden of

(15) Whereas some of the sectors produce large numbers of
designs for products frequently having a short market life
where protection without
registration
formalities is an advantage and the duration of protection
is of lesser significance; whereas on the other hand, there
industry which value the advantages of
are sectors 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.

(16) Whereas this calls for two forms of protection, one being
a short-term unregistered design right and the other being
a longer term registered design right.

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INITIAL PROPOSAL

AMENDED PROPOSAL

(17) Whereas a registered Community design right 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; whereas the registration system should 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.

(17) Whereas a registered Community design right 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
the 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 regis-
tration and other procedural burdens on applicants.

filing; whereas

(18) Whereas a Community design right shall not be upheld
unless the design is new in the sense that
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.

it

Unchanged

(19) Whereas 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; whereas it is therefore necessary to provide
that disclosures of
the design by the designer or his
successor in title, or abusive disclosures during a period
of 12 months prior to the date of
the
application for a registered Community design should
not be prejudicial
in assessing the novelty or the indi-
vidual character of the design in question;

the filing of

(20) Whereas the exclusive nature of the right conferred by the
registered Community design is consistent with its greater
legal certainty; whereas it is appropriate that the unreg-
istered Community design should, however, constitute a
right only to prevent copying; whereas this right should
also extend to trade in products embodying infringing
designs.

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

(22) Whereas a procedure for hearing actions concerning
validity of a registered Community design in a single
place would bring savings in costs and time compared
involving different national
with procedures
courts;
if the single place were to be a court in the
whereas,
country where the design right holder
is domiciled,
undue costs and difficulties could still be encountered
by a challenger to validity from another country.

(deleted)

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INITIAL PROPOSAL

AMENDED PROPOSAL

(23) Whereas it is 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; whereas
the development of
such a procedure would assist
uniform interpretation of
the requirements governing
the validity of Community designs.

Unchanged

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

readily available
as
as well

it

(25) Whereas 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;
whereas there is also a need for these sectors to have
easier
recourse to the registered Community design;
whereas the option of combining a number of designs
in one multiple application would satisfy that need.

(26) Whereas the normal publication following registration of
a Community design could in some cases destroy or jeop-
ardise the success of a commercial operation involving the
design; whereas the facility of an adjournment of publi-
cation for a reasonable time affords a solution in such
cases.

the territory of

(27) Whereas it is essential that the rights conferred by the
Community designs be enforced in an efficient manner
the Community; whereas
throughout
specific rules concerning litigation based on Community
designs must be provided in order to guarantee such a
result; whereas 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; whereas to that end Member
States should designate Community Design Courts.

(28) Whereas the litigation system should avoid as far as
therefore
juris-

possible
(cid:145)forum shopping(cid:146); whereas
necessary to establish clear rules of international
diction.

is

it

laws of

(29) Whereas this Regulation does not preclude the application
to designs protected by Community designs or other
relevant
those
the Member States,
relating to design protection acquired by registration or
those relating to unregistered design rights, trade marks,
patents and utility models, unfair competition or civil
liability;

such as

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INITIAL PROPOSAL

AMENDED PROPOSAL

(30) Whereas, pending harmonisation of copyright law, it is
to establish the principle of cumulation of
important
the Community design and under
protection under
copyright
free to
establish the extent of copyright protection and the
conditions under which such protection is conferred,

leaving Member States

law, whilst

HAS ADOPTED THIS REGULATION:

TITLE I

GENERAL PROVISIONS

Article 1

Community design

1.
Designs which comply with the conditions contained in
this Regulation, hereinafter referred to as (cid:145)Community designs(cid:146),
shall be protected by a Community system of rights.

A desin shall be protected under the terms of this Regu-

2.
lation:

A design shall be protected under the terms of this Regu-

2.
lation:

(a) by an (cid:145)unregistered Community design(cid:146)

(a) by an (cid:145)unregistered Community design(cid:146), if made available to
the public in the manner provided for in this Regulation;

(b) by a (cid:145)registered Community design(cid:146),

if registered in the

Unchanged

manner provided for in this Regulation.

A Community design shall have a unitary character. It
3.
it shall
shall have equal effect throughout the Community;
not be registered,
surrendered or be the
subject of a decision declaring it invalid, save in respect of
the whole Community. This principle and its implications
shall apply unless otherwise provided in this Regulation.

transferred or

Article 2

Office

for Harmonisation in the

Internal Market
The Office
(trademarks and designs), hereinafter
(cid:145)the
Office(cid:146), instituted by Council Regulation (EC) No 40/94 of 20
December 1993 on the Community trade mark, hereinafter
referred to as the (cid:145)Regulation on the Community Trademark(cid:146),
shall carry out the tasks entrusted to it by this Regulation.

referred to as

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INITIAL PROPOSAL

AMENDED PROPOSAL

TITLE II

Unchanged

THE LAW RELATING TO DESIGNS

S e c t i o n 1

Requirements for protection

Article 3

Definitions

For the purposes of this Regulation:

(a) (cid:145)design(cid:146) means the appearance of the whole or a part of a
product resulting from the features of, the lines, contours,
colours, shape and/or materials of the product itself and/or
its ornamentation;

(a) design means the appearance of the whole or a part of a
in particular, the
the

product resulting from the features of,
lines, contours, colours, shape and/or materials of
product itself and/or its ornamentation;

(b) (cid:145)product(cid:146) means any industrial or handicraft item, including
inter alia parts intended to be assembled into a complex
packaging, get-up, graphic
and typographic
typefaces, but excluding computer programs.

symbols

(b) (cid:145)product(cid:146) means any industrial or handicraft item, including
inter alia parts intended to be assembled into a complex
product, packaging, get-up, graphic symbols and typo-
graphic typefaces, but excluding computer programs.

(c) (cid:145)complex product(cid:146) means a product which is composed of
multiple components, which can be replaced permitting
disassembly and re-assembly of the product.

Article 4

requirements

Article 4

Protection requirements

A design shall be protected by a Community design to

1.
the extent that it is new and has individual character.

2.
A design a product which constitutes a part of a complex
shall only be considered to be new and to have 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.

(cid:145)Normal use(cid:146) within the meaning of paragraph (2)(a) shall

3.
mean any use other than maintenance, servicing or repair.

Article 5

Novelty

Unchanged

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,

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INITIAL PROPOSAL

AMENDED PROPOSAL

(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.

Designs shall be deemed to be identical
differ only in immaterial details.

if their features

Article 6

Individual character

Unchanged

1.
A design shall be considered to have individual character
impression it produces on the informed user
if the overall
differs from the overall impression produced on such a user
by any design

1.
A design shall be considered to have individual character
impression it produces on the informed user
if the overall
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 of the design for
which protection is claimed, or,
if a priority is claimed,
before the date of priority.

2.

(deleted)

In assessing individual character, the degree of freedom of
3.
the designer in developing the design shall be taken into
consideration.

(deleted)

Article 7

Date of reference

Article 8

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(a) and 6(1)(a) or in Articles 5(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.

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INITIAL PROPOSAL

AMENDED PROPOSAL

A disclosure shall not be taken into consideration for the
2.
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
information provided or action taken by the

result of
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.

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

Article 9

and designs of interconnections

Article 9

Designs dictated by their technical function and designs of
interconnections

A Community design right shall not subsist in features of

1.
appearance

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

A Community design right shall not subsist

2.
in must
necessarily be reproduced in exact form and dimensions in
order to permit the product in which the design is incor-
porated or
is applied to be mechanically
to which it
connected another product

2.
A Community design right 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 right
shall under the conditions set out in Articles 5 and 6 subsist in
a design serving the purpose of allowingmultiple assembly or
connection of mutually interchangeable products within a
modular system.

Unchanged

Article 10

Article 10

Designs contrary to public policy

Designs contrary to public policy or morality

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

Unchanged

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INITIAL PROPOSAL

AMENDED PROPOSAL

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.

The proposal

from the Commission,

referred to in
2.
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 on the legal protection of designs (1).

S e c t i o n 2

Unchanged

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 produce on the informed
user a overall impression.

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

In assessing the scope of protection,

the degree of
the designer in developing his design shall be

2.
freedom of
taken into consideration.

Article 12

(Unchanged)

Commencement and term of protection of the unreg-
istered Community design

A design which meets the requirements under Section 1
1.
shall be protected by an unregistered Community design for a
period of three years as from the date

A design which meets the requirements under Section 1
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 following registration
or otherwise, 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.

___________
(1) OJ L 289, 28.10.1998, p. 28.

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AMENDED PROPOSAL

Article 13

Unchanged

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 by a registered
design for a period of five years as from the date of the filing
of the application.

Upon registration by the Office, a design which meets the
requirements under Section 1 shall be protected by 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.

S e c t i o n 3

Unchanged

Entitlement to the Community design

Article 14

Right to the Community design

The right to the Community design shall vest in the

1.
designer or his successor in title.

2.
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.

2.
However, 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

If two or more persons have jointly developed a design, the
right to the Community design shall vest in them jointly.

Claims relating to the entitlement to a Community design

Article 16

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, by
application of the law of the Member State where the exercise
of the right is carried out.

If

the right

1.
to an unregistered Community design is
claimed by, or a registered Community design has been
registered 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 the Community design.

If

the right

1.
to an unregistered Community design is
claimed by, or a registered Community design has been
registered 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.

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AMENDED PROPOSAL

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

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

3. may be instituted only within a period of not more than
two years after the date the Community design. This provision
shall not apply if the Community design at the time when such
design to him.

3.
Legal proceedings under paragraph 1 may be instituted
only within a period of not more than two years after the date
on which the Community design came into existence. This
provision shall not apply if the person who is not entitled to
the Community design was in bad faith at the time when such
design came into existence or was assigned to him.

In case of a registered Community design, the shall be

4.
entered in the register:

In case of a registered Community design, the following

4.
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

Unchanged

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(1), 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(1) 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 prep-
arations
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.

to do so, he may continue

Paragraph 2 shall not apply if the right holder or the
3.
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 person

The person in whose name the registered Community design,
shall be deemed to be the person entitled in any proceedings
before the Office.

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.

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Article 19

Right of the designer

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 in the register. If the design is the result
of team-work, the of the team may replace the citation of the
individual designers.

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 team-work, the citation of the team may replace the
citation of the individual designers.

S e c t i o n 4

Unchanged

Effects of the Community design

Article 20

Rights conferred by the Community design

1.
A registered 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,
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 stocking
such a product for those purposes.

in particular,

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

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

Article 21

(deleted)

Rights conferred by the registered Community design

Limitation of the rights conferred by a Community design

Article 22

Unchanged

1.

The rights conferred by a Community design shall not:

The rights conferred by a Community design shall not be

1.
exercised in respect of:

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

Unchanged

(b) acts done for experimental purposes;

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(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.

In addition, the rights conferred by a Community design

2.
shall not

In addition, the rights conferred by a Community design

2.
shall not be exercised in respect of:

(a) the equipment on ships and aircraft registered in country
the

territory of

temporarily

enter

the

when these
Community;

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

(b) the importation in the Community of spare parts and

Unchanged

accessories for the purpose of repairing such craft;

(c) the execution of repairs on such craft.

Use of a registered Community design for repair purposes

Article 23

(deleted)

Article 24

Exhaustion

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 incor-
porated 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.

Unchanged

Article 25

Rights of prior use in respect of a registered Community
design

The rights conferred by a registered Community design shall
not become effective against any third person who can
establish that:

(a) before the date of filing the application; or

(b) if a priority is claimed, before the date of priority,

he has, in good faith, commenced use within the Community
(cid:151) or has made serious preparations to that end (cid:151) of a design
included within the scope of protection of
the registered
Community design, which has been developed independently
of the latter and which at Such a person shall be entitled to
exploit the design for the needs of the undertaking in which
the use was effected or anticipated. That right cannot be trans-
ferred separately from the undertaking.

he has, in good faith, commenced use within the Community
(cid:151) or has made serious preparations to that end (cid:151) of a design
included within the scope of protection of
the registered
Community design, which has been developed independently
of the latter and which at the date of filing or at the date of
priority of the Community design, had not yet been made
available to the public within the meaning of Article 12
paragraph 2. Such a person shall be entitled to exploit the
design for the needs of
the undertaking in which the use
was effected or anticipated. That right cannot be transferred
separately from the undertaking.

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S e c t i o n 5

Invalidity

Unchanged

Article 26

Declaration of invalidity

A registered Community design shall be declared invalid
1.
on application to the Office in accordance with the procedure
in Titles VII and VIII 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.

even after the Community design has lapsed or has been

3.
surrendered.

A Community design may be declared invalid even after

3.
the Community design has lapsed or has been surrendered.

Article 27

Unchanged

Grounds for invalidity

A Community design may be declared invalid only in the

1.
following cases:

(a) if the design

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

3(a),

(c) if the right holder in the Community design is, by virtue of

a court decision,

(c) if the right holder in the Community design is, by virtue of
a court decision, not entitled to it under Articles 14 and 15,

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

(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 right of a Member State, or by an
application for such a right,

(e) if a distinctive sign is used in a subsequent design, and
the Member State
the

Community law or
governing that sign confers on the right holder of
sign the right to prohibit such use,

law of

the

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(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
the Paris Convention for
items listed in Article 6ter of
the Protection of
Industrial Property, or of badges,
emblems and escutcheons other than those covered by
Article 6ter of
the said Convention and which are of
particular public interest in a Member State,

The ground provided for

2.
invoked solely by the person who is
Community design under Articles 14 and 15.

in paragraph 1(c) may be
entitled to the

The grounds provided for in paragraph 1(d), (e) and (f)
3.
may be invoked solely by the applicant for or holder of the
conflicting right. If the conflicting right is a right of a Member
State and that Member State has availed itself of this option,
the ground provided for in paragraph 1(d) may be also invoked
by an appropriate authority designated by that Member State.

4.
The ground provided for in paragraph 1(g) may be
invoked solely by the person or entity concerned by the use.
If
is at stake has
availed itself of this option, this ground may be also invoked
by an appropriate authority designated by that Member State.

the Member State whose public interest

5.
By derogation from Article 1 paragraph 3, where the
design is in breach of Article 10 and in the in the cases
specified in paragraph 1(d), (e), (f) and (g), if the ground for
invalidation obtains only in respect of one or some Member
invalidity shall be declared only in respect of such a
States,
Member State or States.

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

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Article 28

Effects of invalidity

Unchanged

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

Subject to the national provisions relating either to claims
2.
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 circum-
stances, 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.
Save where 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.

In the case of a registered Community design, paragraph

2.
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
Member State referred to in paragraph 1 shall be determined:

the condition under paragraph 1(b),

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(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 Office is situated.

Article 30

Transfer

Article 30

Transfer of the registered Community design

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

Unchanged

(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 registered Community design;

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

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

(d) all documents which by virtue of Article 70 require notifi-
cation 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

Unchanged

Rights in rem on a registered Community design

A registered Community design may be given as security

1.
or be the subject of rights in rem.

At the request of one of the parties, rights mentioned in

2.
paragraph 1 shall be entered in the register and published.

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Article 32

Levy of execution on a registered Community design

A registered Community design may be

1.
execution.

levied in

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.

On request of one of the parties, levy of execution shall

3.
be entered in the register and published.

Article 33

Bankruptcy or like proceedings

1.
Until such time as common rules for the Member States
in this field enter into force, the only Member State in which a
Community design may be involved in bankruptcy or like
proceedings shall be that in which such proceedings are first
brought under national law or conventions applicable in this
field.

2. Where a registered Community design is involved in
bankruptcy or like proceedings, an entry to that effect shall
be made in the register at
the competent
national authority and shall be published.

the request of

Article 34

Licensing

A Community design may be licensed for the whole or
the Community. A licence may be exclusive or

1.
part of
non-exclusive.

1(a).
The holder may invoke the rights conferred by the
Community design against a licensee who contravenes any
licensing contract with regard to its
provision in his
duration,
the
range of the products for which the license granted and the
quality of the products manufactured by the licensee.

the form in which the design may be used,

2. 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.

Unchanged

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A licensee shall, for the purpose of obtaining compen-
3.
sation for damage suffered by him, be entitled to intervene in
an infringement action brought by the right holder in a
Community design.

4.
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
published.

Article 35

Effects vis-(cid:224)-vis third parties

1.
The effects vis-(cid:224)-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.

However, as regards registered Community designs, legal
2.
acts referred to in Article 30, 31 and 34 shall have effect only
vis-(cid:224)-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-(cid:224)-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 relating to it by way of
transfer of
the undertaking or by any other
universal succession.

the whole of

Until such time as common rules for the Member States
4.
in the field of bankruptcy enter into force, the effects vis-(cid:224)-vis
like proceedings
third parties of bankruptcy or
shall be
the Member State in which such
governed by the law of
proceedings are first brought under national
the
conventions applicable in this field.

law or

Article 36

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

An application for a registered Community design as an
1.
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 determined in accordance with Article 29.

Articles 30 to 35 shall apply mutatis mutandis

to
2.
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.

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TITLE IV

APPLICATION FOR A REGISTERED COMMUNITY DESIGN

S e c t i o n 1

Filing of applications and the conditions which govern
them

Article 37

Filing of applications

Article 37

Filing and forwarding of applications

An application for a registered Community design shall

1.
be filed, at the option of the applicant:

Unchanged

(a) at the Office; or

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

or

(c) at the Benelux Design Office.

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

3.
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,
for
revision that it may deem appropriate.

accompanied by any proposals

Unchanged

Article 38

(deleted)

Forwarding of the application

Article 39

Unchanged

Conditions with which applications must comply

An application for a registered Community design shall

1.
contain:

(a) a request for registration,

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(b) information identifying the applicant,

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

1(a)

contain:

1(a)

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;

Unchanged

(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.

(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
the
statement under
designer or the team of designers has waived the right to
be cited.

responsibility that

the applicant’s

2.

3.

(deleted)

In addition, the application may contain

(a) description explaining the representation;

Unchanged

(b) a request for deferment of publication of the application in

accordance with Article 52.

4.

(deleted)

Unchanged

5.
The application shall be subject to the payment of the
registration 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.

The application shall comply with the conditions laid

6.
down in the implementing Regulation.

7.
The information contained in the elements mentioned in
paragraph 1(a) (a) and (b) and in paragraph 3(a) does not affect
the scope of protection of the design as such.

Article 40

Multiple applications

Unchanged

Several designs may be combined in one multiple
1.
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.

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2.
Besides the fees referred to in Article 39 the multiple
application shall be subject to payment of an additional regis-
tration fee and an additional publication fee. Where the
multiple application contains a request for deferment of publi-
cation, 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.

2.
Besides the fees referred to in Article 39(5), the multiple
application shall be subject to payment of an additional regis-
tration fee and an additional publication fee. Where the
multiple application contains a request for deferment of publi-
cation, 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.

The multiple application shall comply with the conditions

3.
of presentation laid down in the implementing Regulation.

Unchanged

Article 41

Date of filing

The date of

1.
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 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 42

Classification

Unchanged

For the purpose of this Regulation, use shall be made 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.

S e c t i o n 2

Priority

Article 43

Right of priority

1.
A person who has duly filed an application for a design
in or for any State party to the Paris Convention for the
Industrial Property, hereinafter referred to as
Protection of
(cid:145)the Paris Convention(cid:146), or his successors in title, shall enjoy,
for
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
the first
application.

the purpose of

filing of

1.
A person who has duly filed an application for a design
right in or for any State party to the Paris Convention for the
Protection of Industrial Property, hereinafter referred to as (cid:145)the
Paris Convention(cid:146), or to the Agreement establishing the World
Trade Organization 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.

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

Unchanged

3.
Lawful 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
the purpose of determining priority,
first application for
provided that, at
the subsequent
application,
the previous application has been withdrawn,
abandoned or refused without being open to public inspection
and without leaving any right 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.

the filing of

the date of

4.
A subsequent application for a design right 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 right 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, 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.

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 Organization, 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

Unchanged

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 latter may require a translation
of the previous application in 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

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).

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Article 46

Unchanged

Equivalence of Community filing with national filing

An application for a registered Community design which has
been accorded a date of filing shall, in the Member States, be
equivalent to a lawful national filing, including where appro-
priate the priority claimed for the said application.

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 inter-
national exhibition falling within the terms of the Convention
on International Exhibitions signed in Paris on 22 November
1928 and 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 Regu-
lation.

An exhibition priority granted in a Member State or in a
3.
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

Examination as to formal requirements for filing

The office

1.
complies with the laid down in Article 39(1)
accordance of a date of filing.

examine whether

shall

the

application
the
for

The office

1.
application
complies with the requirements laid down in Article 39(1)
for the accordance of a date of filing.

examine whether

shall

the

2.

The Office shall examine whether:

2.

The Office shall examine whether:

(a) the application complies with the other laid down in
in the case of a multiple application,

Article 39 and,
Article 40;

(a) the application complies with the other requirements laid
in the case of a multiple

down in Article 39 and,
application, Article 40;

(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;

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(d) the fees referred to in Article 39(5) and, in the case of a

multiple application, Article 40(2), have been paid;

(e) the requirements concerning the claim to priority are

Unchanged

satisfied, if a priority is claimed.

Article 49

Remediable deficiencies

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

in due time,

2.
If the deficiencies concern the requirements referred to in
Article 39(1) and the applicant complies with the Office’s
request
the Office shall allow 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 referred to in
Article 48(2)(a) to (c) or the payment of the fees referred to in
Article 48(2)(d) and the applicant complies with the Office’s
request in due time, the Office shall allow as the date of filing
the date on which the deficient application was originally filed.
If the deficiencies or the default in payment are not remedied
within the prescribed period,
refuse the
application.

the Office shall

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

If

the deficiencies or the default

3.
in payment are not
remedied within the prescribed period, the Office shall refuse
the application.

shall result in the loss of the right of priority for the

4.
application.

Article 49a

Examination of grounds for non-registrability

the application shall be refused.

1. Where the Office,
to Article 48,
pursuant
protection is sought

in carrying out
that
finds

the examination
the design for which

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

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

morality,

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.

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Article 50

Registration

The registration shall bear the date on which the date of filing
was accorded.

the requirements

If
that an application for a registered
Community design must satisfy have been fulfilled and to the
extent that the application has not been refused as a result of a
procedure under Article 49a,
the Office shall register the
application in the Community design register as a registered
Community design. The registration shall bear the date on
which the date of filing was accorded.

Article 51

Publication

the Office shall publish the registered
Upon registration,
Community design in the Community design Bulletin as
mentioned in Article 77

the Office shall publish the registered
Upon registration,
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

Unchanged

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 30
months from the date of filing the application or, if a priority
is claimed, from the date of priority.

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
if a
30 months from the date of filing the application or,
priority is claimed, from the date of priority.

Upon such request, where the registered Community
2.
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.

Upon such request, where the conditions set out

in
2.
the registered Community design
Article 50 are satisfied,
shall be registered, but neither
the
design nor any file relating to the application shall, subject
to Article 78(2), be open to public inspection.

the representation of

3.
The Office shall publish in the Community Design
Bulletin a mention of the deferment of the publication of the
registered Community design. The mention shall be accom-
panied by information identifying the right holder in the
registered Community design, the date of filing the application
and any other particulars prescribed by the implementing
Regulation.

Unchanged

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,
laid down in the
provided that, within the time limit
implementing Regulation the publication fee and,
in the
event of a multiple application, the additional publication fee
are paid.

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If the right holder fails to comply with these requirements, the
registered Community design shall, unless
surrendered in
accordance with the provisions of Article 55, be deemed
from the outset not to have had the effects specified in this
Regulation.

5.
In the case of a multiple application, the provisions of
may be applied to only some of the designs included therein.

In the case of a multiple application, the provisions of
the designs

5.
paragraph 4 may be applied to only some of
included therein.

Unchanged

(deleted)

Unchanged

The institution of

6.
legal proceedings on the basis of a
registered Community design during the period of deferment
the
of publication shall be subject
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.

to the condition that

TITLE VI

TERM OF PROTECTION OF THE REGISTERED COMMUNITY
DESIGN

Article 53

Term of protection

Article 54

Renewal

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 involve the responsibility of the
Office.

for

The request

3.
renewal shall be submitted and the
renewal fee paid within a period of six months before 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.

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TITLE VII

SURRENDER AND INVALIDITY OF THE REGISTERED
COMMUNITY DESIGN

Article 55

Surrender

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

2.
Surrender shall be registered only with the agreement of
the holder 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.

Article 56

Application for a declaration of invalidity

Any natural or legal person may submit to the Office an
invalidity of a registered

1.
application for a declaration of
Community design.

Any natural or legal person may submit to the Office an
invalidity of a registered

1.
application for a declaration of
Community design. However,

(a) in the case envisaged in Article 27(1)

(e) or (f), the
application may be filed only by the person or persons
entitled, and

(c)

(b) in the case of Article 27(1) (d) by the right holder of the

earlier right, and

(c) in the case envisaged in Article 27(1) (g), by the person or

persons or entities concerned by the use.

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

Unchanged

3.
The 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

If

the application for a declaration of

1.
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.

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.

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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 by the other parties or those issued by
itself.

Unchanged

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

An application for a declaration of

1.
invalidity of a
registered Community design filed, and as long as no final
decision has been taken by an Invalidity Division, any third
party who proves that proceedings for infringement of the
same design have been instituted against him may in the
invalidity proceedings 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 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 design.

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 an Invalidity
Division, 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
ruling that he is not
for a court
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 fee 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.

The request to be joined as a party shall be filed in a
2.
It shall not be deemed to have
written reasoned statement.
been filed until the invalidity fee 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 VIII

Unchanged

APPEALS FROM DECISIONS OF THE OFFICE

Article 59

Decisions subject to appeal

An appeal shall lie from decisions of the Administration
It shall have

1.
and Legal Division and Invalidity Divisions.
suspending effect.

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

A decision which does not

2.
terminate proceedings as
regards one of the parties can only be appealed against if
joined with the final decision, unless the decision allows
separate appeal.

Unchanged

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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 against. The notice shall not be deemed to have
been filed until after the appeal fee 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

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

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

the statement of grounds,

Article 63

Examination of appeals

If the appeal

1.
examine whether the appeal is to be allowed.

is admissible, the Board of Appeal shall

In the examination of the appeal, the Board of Appeal
2.
shall
invite the parties, as often as necessary, to file obser-
vations, within a period to be fixed by the Board of Appeal,
on communications from the other parties or those 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
the department which was responsible for the decision
of
appealed against or remit
for
further action.

the case to that department

2.
If the Board of Appeal remits the case for further action
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.

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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.
Justice
Actions may be brought before the Court of
against decisions of the Office taken by the Boards of Appeal
on appeals.

infringement

The action may be brought on grounds of

lack of
2.
procedural
of
competence,
requirement, infringement of the Treaty, of this Regulation or
of any rule of law relating to their application or misuse of
power.

essential

an

The Court of Justice has jurisdiction to annul or alter the

3.
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.

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

TITLE IX

PROCEDURE BEFORE THE OFFICE

S e c t i o n 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

its own motion; however,

In proceedings before it the Office shall examine the facts
1.
in proceedings relating to a
of
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,

its own motion; however,

In proceedings before it the Office shall examine the facts
1.
in proceedings relating to a
of
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.

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The Office may disregard facts or evidence which are not

2.
submitted in due time by the parties concerned.

Unchanged

Article 68

Oral proceedings

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

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

Article 69

Taking of evidence

In any proceedings before the Office the means of giving

1.
or obtaining evidence shall include the following:

(a) hearing the parties;

(b) requests for information;

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

(d) hearing the 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.

The relevant department of the Office may commission

2.
one of its members to examine the evidence adduced.

If the Office considers it necessary for a party, witness or
3.
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.

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Article 71

Restitutio in integrum

for or

The applicant

1.
right 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 circum-
stances having been taken, was unable to observe a time limit
in dealings with 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 Regu-
lation, 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 infringed time limit. In
the case of non-submission of the request for renewal of regis-
tration or of non-payment of a renewal fee, the further period
of six months provided for in the second sentence of Article
54(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.

The department of the Office empowered to decide on

4.
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 in Article 43(1).

6. Where the applicant for or right holder in a registered
Community design has his rights re-established, he may not
invoke his rights vis-(cid:224)-vis a third party who,
in good faith,
during the period between the loss of rights in the application
or in 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
for or
right holder in 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.

the applicant

Nothing in this Article shall limit the right of a Member
8.
State to grant restitutio integrum in respect of
time limits
provided for in this Regulation and to be complied with
vis-(cid:224)-vis the authorities of such State.

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Article 72

Reference to general principles

In the absence of procedural provisions in this Regulation, the
implementing Regulation, the fees Regulations 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 payment of a fee shall be extin-
guished 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 such case the period shall end no earlier than one
year after the judgement has acquired the authority of a final
decision.

S e c t i o n 2

Costs

Article 74

Allocation of costs

a

registered Community design or

The losing party in proceedings for a declaration of
1.
invalidity of
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.
However, 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 appor-
tionment of costs.

The party who terminates the proceedings by surren-
3.
dering 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.

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4. Where a case does not proceed to judgement, the costs
shall be in 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.

On request,

the registry of

6.
the Invalidity Division or
Board of Appeal shall fix the amount of the costs to be paid
so
pursuant
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.

to the preceding paragraphs. The

amount

Article 75

Enforcement of decisions fixing the amount of costs

Any final decision of the Office fixing the amount of

1.
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 verfication 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
that
enforcement is being carried out improperly.

jurisdiction over

complaints

S e c t i o n 3

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

Article 76

Register

The Office shall keep a register to be known as the Community
design register, 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
to registered
Community designs subject to deferment of publication.

in relation to entries

relating

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Article 77

Periodical publications

1.
This Office shall periodically publish a Community design
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 Regu-
lation.

Notices and information of a general character issued by
2.
the President of the Office, as well as any other information
relevant to this Regulation or its implementation.

Notices and information of a general character issued by
2.
the President of the Office, as well as any other information
relevant
to this Regulation or its implementation, shall be
published in the (cid:145)Official Journal of the Office for Harmon-
(trademarks and designs)(cid:146),
ization in the Internal Market
referred to in Article 85 of
the Regulation on the
Community Trademark.

Article 78

Inspection of files

Unchanged

to

for

The

files

relating

applications

1.
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 right
holder in the registered Community design prior to the publi-
cation 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 right
holder in, a registered Community design has taken steps with
a view to invoking against him the right under the registered
Community design.

Subsequent

3.
Community design, the file may be inspected on request.

publication

the

the

to

of

registered

4.
However, where a file is inspected pursuant to paragraph
2 or 3, certain documents in the file may be withheld from
the
inspection in accordance with the provisions of
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
shall on request give assistance to each other by
States
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.

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Article 80

Exchange of publications

The Office and the central

1.
the
Member States shall despatch to each other on request and
for their own use one or more copies of their respective publi-
cations free of charge.

industrial offices of

1.
The Office and the central industrial property offices of
the Member States shall despatch to each other on request and
for their own use one or more copies of their respective publi-
cations free of charge.

The Office may conclude agreements to the exchange or

2.
supply of publications.

S e c t i o n 4

Representation

Article 81

General principles of representation

Subject to the provisions of paragraph 2, no person shall

1.
be compelled to be represented before the Office.

2.
Without prejudice to the second sentence of paragraph
3, natural or legal persons not having either their domicile or
their principal place of business or a real and effective
in the Community
industrial or commercial establishment
must be represented before the Office in accordance with
Article 82(1) in all proceedings before the Office established
by this Regulation, other than in filing an application for a
registered Community design.

Natural or

3.
legal persons having their domicile or
principal place of business or a real and effective industrial
or commercial establishment in the Community may be repre-
sented before the Office by one of their employees, who must
file with it a signed authorisation for inclusion in the files, the
details of which are set out in the implementing Regulation. An
employee of a legal person to which this paragraph applies
may also represent other legal persons which have economic
connections with the first legal person, even if those other legal
persons have neither their domicile nor their principal place of
business nor a real and effective industrial or commercial estab-
lishment within the Community.

Article 82

Professional representatives

Representation of natural or legal persons before the may

1.
only be undertaken by:

Representation of natural or legal persons in proceedings
this Regulation may only be

the Office under

1.
before
undertaken by:

(a) any legal practitioner qualified in one of the Member States
and having his place of business within the Community, to
the extent that he is entitled, within the said State, to act as
a representative in industrial property matters; or

Unchanged

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(b) any professional representatives whose

(b) any professional

representatives whose name has been
entered on the list of professional representatives referred
(b) of Regulation (EC) No 40/94 of
to in Article 89(1)
20.12.1993 on the Community trade mark, or

(c) persons whose names are entered on the special

list of
professional representatives for design matters referred to
in paragraph 4.

2.
The persons referred to in paragraph 1(c) shall only be
entitled to represent third persons in proceedings on design
matters before the Office.

3.
The implementing Regulation shall provide whether and
under what conditions representatives must file with the Office
a signed authorisation for insertion on the files.

4.
Any natural person may be entered on the special list of
professional representatives in design matters, if he fulfils the
following conditions:

(a) He must be a national of one of the Member States;

(b) he must have his place of business or employment in the

Unchanged

Community;

(c) in design matters before the central

requirement of

conditional upon the

industrial property
office of a Member. Where, in that State, the entitlement
is not
special
professional qualifications, persons applying to be entered
on the list before the central industrial property office of
the said State for at
five years. However, persons
whose professional qualification to represent natural or
legal persons in design matters, before the central industrial
property office of one of the Member States is officially
recognised in accordance with the regulations laid by
such State, shall not be subject to the condition of having
exercised the profession.

least

(c) he must be entitled to represent natural or legal persons

in design matters before the central
industrial property
office of a Member. Where, in that State, the entitlement
to represent in design matters is not conditional upon the
requirement of special professional qualifications, persons
applying to be entered on the list must have habitually
acted in design matters before the central
industrial
property office of the said State for at least five years.
However, persons whose professional qualification to
represent natural or
in design matters,
legal persons
before the central industrial property office of one of the
Member States is officially recognised in accordance with
the regulations laid by such State, shall not be subject to
the condition of having exercised the profession.

Entry shall be effected upon request, accompanied by a
5.
certificate furnished by the central industrial property office of
the Member State concerned, which must indicate that the
conditions laid down are fulfilled.

Entry on the list referred to in paragraph 4 shall be
5.
effected upon request, accompanied by a certificate furnished
by the central industrial property office of the Member State
concerned, which must indicate that the conditions laid down
in the said paragraph are fulfilled.

6.

The President of the Office may grant exemption from:

Unchanged

(a) the requirement of paragraph 4(a) in special circumstances.

(b) the requirement of paragraph 4(c), second sentence, if the
applicant furnishes proof that he has acquired the requisite
qualification in another way.

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7.
The conditions under which a person may be removed
from the list shall be laid down in the implementing Regu-
lation.

Unchanged

TITLE X

JURISDICTION AND PROCEDURE IN LEGAL ACTIONS
RELATING TO COMMUNITY DESIGNS

S e c t i o n 1

Jurisdiction and Enforcement

Article 83

Application of the Convention on Jurisdiction and
Enforcement

Unless otherwise

specified in this Regulation,

1.
the
Convention on Jurisdiction and the Enforcement of Judgements
in Civil and Commercial Matters, signed in Brussels on 27
September 1968, as amended by the Conventions on the
Accession to that Convention of the States acceding to the
European Communities, the whole of which Convention and
of which Conventions of Accession are hereinafter referred to
as the (cid:145)Convention on Jurisdiction and Enforcement(cid:146), shall
apply to proceedings
relating to Community designs and
applications for registered Community designs, as well as to
proceedings relating to actions on the basis of Community
designs and national design rights enjoying simultaneous
protection.

1(a)
The provisions of the Convention on Jurisdiction and
Enforcement which are rendered applicable by the preceding
paragraph shall have effect in respect of any Member State
solely in the text which is in force in respect of that State at
any given time.

In the event of proceedings in respect of the actions and

2.
claims referred to in Article 85:

Unchanged

(a) Articles 2, 4, 5(1),

(3),
Convention on Jurisdiction and Enforcement
apply;

(4) and (5), and 24 of

the
shall not

(a) Articles 2, 4, 5(1), (3), (4) and (5), Articles 16(4) and 24 of
the Convention on Jurisdiction and Enforcement shall not
apply;

(b) Articles 17 and 18 of that Convention shall apply subject to

Unchanged

the limitations in Article 86 (4) of this Regulation;

(c) the provisions of Title II of that Convention which are
applicable to persons domiciled in a Member State shall
also be applicable to persons who do not have a domicile
in any Member State but have an establishment therein.

3.

(deleted)

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Article 83a

Transitional provision

The provisions of
the Convention on Jurisdiction and
Enforcement rendered applicable by virtue of Article 83 shall
not have effect in respect of any Member State for which that
Convention has not yet entered into force. Until such entry
into force proceedings referred to in Article 83 (1) shall be
governed in such a Member State by any bilateral or multi-
lateral convention governing its relationship with another
Member State concerned, or, if no such convention exists, by
its domestic law on jurisdiction, recognition and enforcement
of decisions.

S e c t i o n 2

Disputes concerning the infringement and validity of
Community designs

Article 84

Community design Courts

The Member States shall designate in their territories as
1.
limited a number as possible of national courts and tribunals of
first and second instance (Community Design Courts), which
shall perform the functions assigned to them by this Regu-
lation.

State

Each Member

2.
the
Commission within three years of the entry into force of this
Regulation a list of Community Design Courts, indicating their
names and their territorial jurisdiction.

communicate

shall

to

Any change made after communication of

3.
the list
referred to in paragraph 2 in the number, the names or terri-
torial
jurisdiction of the Community Design Courts shall be
notified without delay by the Member State concerned to the
Commission.

4.
The information referred to in paragraphs 2 and 3 shall
be notified by the Commission to the Member States and
published in the Official Journal of the European Communities.

5.
As long as a Member State has not communicated the list
as stipulated in paragraph 2, jurisdiction for any proceedings
resulting from an action covered by Article 85 for which the
courts of that State have jurisdiction pursuant to Article 86,
shall lie with that court of the State in question which would
have jurisdiction ratione loci and ratione materiae in the case
of proceedings relating to a national design right of that State.

Article 85

Jurisdiction over infringement and validity

The Community design Courts shall have exclusive jurisdiction:

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(a) for infringement actions and if they are permitted under
national law actions in respect of threatened infringement
of Community designs;

(b) for

for

actions

declaration of non-infringement of
Community designs, if they are permitted under national
law;

(c) for actions for a declaration of invalidity of an unregistered

Community design;

(d) for counter-claims for a declaration of

invalidity of a
Community design raised in connection with actions
under (a).

Article 86

International jurisdiction

Subject to the provisions of this Regulation and to any
1.
provisions of the Convention on Jurisdiction and Enforcement
applicable by virtue of Article 83, proceedings in respect of the
actions and claims referred to in Article 85 shall be brought in
the courts of the Member State in which the defendant is
if he is not domiciled in any of the Member
domiciled or,
States, in which he has an establishment.

2.
If the defendant is neither domiciled nor has an estab-
lishment in any of the Member States, such proceedings shall
be brought in the courts of the Member State in which the
plaintiff is domiciled or, if he is not domiciled in any of the
Member States, in which he has an establishment.

3.
If neither the defendant nor the plaintiff is so domiciled
shall be
or has such an establishment,
brought in the courts of the Member States where the Office
is situated.

such proceedings

4.

Notwithstanding the provisions of paragraphs 1, 2 and 3:

the Convention on Jurisdiction and
(a) Article 17 of
Enforcement
the parties agree that a
different Community design Court shall have jurisdiction;

shall apply if

(b) Article 18 of that Convention shall apply if the defendant
enters an appearance before a different Community design
Court.

Proceedings in respect of the actions and claims referred
5.
to in Article 85(a) and (d) may also be brought in the courts of
the Member State in which the act of infringement has been
committed or threatened.

Article 87

Extent of jurisdiction on infringement

1.
A Community design Court whose jurisdiction is based
on Article 86(1), (2), (3) or (4) shall have jurisdiction in respect
of acts of infringement committed or threatened within the
territory of any of the Member States.

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2.
A Community design Court whose jurisdiction is based
on Article 86(5) shall have jurisdiction only in respect of acts
of infringement committed or threatened within the territory
of the Member State in which that court is situated.

Article 88

Action or counter-claim for a declaration of invalidity of a
Community design

1.
An action or a counter-claim for a declaration of
invalidity of a Community design may only be based on the
grounds for invalidity mentioned in Article 27.

2.

The action or the counterclaim may be brought:

(a) in the cases specified in Article 27(1)(c), (e) and (f) only by

the person entitled to the right in question,

(b) in the case specified in Article 27(1)(g), only by the person

or entity concerned by the use,

(c) in the case specified in Article 27(1)(d), only by the right

holder of the earlier right.

3.
If the counter-claim is brought in a legal action to which
the right holder the Community design is not already a party,
he shall be informed thereof and may be joined as a party to
the action in accordance with the conditions set out in the law
of the Member State where the court is situated.

3.
If the counter-claim is brought in a legal action to which
the right holder of the Community design is not already a
party, he shall be informed thereof and may be joined as a
party to the action in accordance with the conditions set out in
the law of the Member State where the court is situated.

The validity of a Community design may not be put in

4.
issue in an action for a declaration of non-infringement.

Article 89

Presumption of validity defence as to the merits

threatened infringement

In proceedings in respect of an infringement action or an
1.
action for
the Community design
Court shall treat the Community design as valid unless its
validity is put in issue by the defendant with a counterclaim
for a declaration of invalidity.

In proceedings in respect of an infringement action or an
1.
action for threatened infringement of a registered Community
design, the Community design Court shall treat the Community
design as valid unless its validity is put
in issue by the
defendant with a counterclaim for a declaration of invalidity.

In proceedings in respect of an infringement action or an
2.
the Community design
action for threatened infringement,
Court shall, the right holder presents evidence to sustain his
claim that the design has an individual character, treat the
design as

threatened

In proceedings in respect of an infringement action or an
2.
an unregistered
infringement of
action for
Community design, the Community design Court shall, if the
right holder presents evidence to sustain his claim that the
design has an individual character, treat the design as valid,
unless its validity is put
in issue by the defendant with a
counterclaim for a declaration of invalidity.

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3.
In proceedings referred to in paragraph 1, a plea relating
to the invalidity of a Community design submitted otherwise
than by way of counter-claim shall be admissible in so far as
the defendant claims that the Community design should be
declared invalid on account of national design right within
the meaning of Article 27 belonging to him.

3.
In proceedings referred to in paragraphs 1 and 2, a plea
relating to the invalidity of a Community design submitted
otherwise than by way of counter-claim shall be admissible
in so far as the defendant claims that the Community design
should be declared invalid on account of an earlier national
design right within the meaning of Article 27(1)(d) belonging
to him.

Article 90

Unchanged

Judgements of validity

1. Where in a proceeding before a Community design Court
the Community design has been put in issue by way of a
counter-claim for a declaration of invalidity:

(a) if any of the grounds mentioned in Article 27 are found to
prejudice the maintenance of the Community design, the
Court shall declare the Community design invalid;

(b) if none of the grounds mentioned in Article 27 is found to
prejudice the maintenance of the Community design, the
Court shall reject the counter-claim.

2.
The Community design Court with which a counter-claim
for a declaration of invalidity of a registered Community design
has been filed shall inform the Office of the date on which the
counter-claim was filed. The latter shall record this fact in the
register.

3.
The Community design Court hearing a counter-claim for
a declaration of invalidity of a registered Community design
may, on application by the right holder of
the registered
Community design and after hearing the other parties, stay
the proceedings and request
to submit an
application for a declaration of invalidity to the Office within
a time limit which shall determine. If the application is not
made within the time limit, the proceedings shall continue; the
counter-claim shall be deemed withdrawn. Article 95(3) shall
apply.

the defendant

3.
The Community design Court hearing a counter-claim for
a declaration of invalidity of a registered Community design
may, on application by the right holder of
the registered
Community design and after hearing the other parties, stay
the proceedings and request
to submit an
application for a declaration of invalidity to the Office within
a time limit which the Court shall determine. If the application
the proceedings shall
is not made within the time limit,
continue;
the counter-claim shall be deemed withdrawn.
Article 95(3) shall apply.

the defendant

4. Where a Community design Court has given a judgement
which has become final on a counter-claim for a declaration of
invalidity of a registered Community design, a copy of the
judgement shall be sent to the Office. Any party may request
information about such transmission. The Office shall mention
the judgement in the register in accordance with the provisions
of the implementing Regulation.

Unchanged

No counter-claim for a declaration of

5.
invalidity of a
registered Community design may be made if an application
relating to the same subject-matter and cause of action, and
involving the same parties, has already been determined by the
Office in a decision which has become final.

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Article 91

Effects of the judgement on validity

When it has become final, a judgement of a Community design
Court declaring a Community design invalid shall have, subject
to Article in all the Member States the effects specified in
Article 28.

When it has become final, a judgement of a Community design
Court declaring a Community design invalid shall have, subject
to Article 27(5), in all the Member States the effects specified in
Article 28.

Article 92

Applicable law

Unchanged

The Community design Courts shall apply the provisions

1.
of this Regulation.

On all matters not covered by this Regulation, a
law,

2.
Community design Court
including its private international law.

apply its national

shall

Unless

otherwise provided

3.
a
Community design Court shall apply the rules of procedure
governing the same type of action relating to a national
design right in the Member State where it is situated.

in this Regulation,

Article 93

Sanctions in actions for infringement

1. Where in an action for infringement or for threatened
the
infringement a Community design Court
a
threatened
infringed
defendant
Community design,
it shall, unless there are special reasons
for not doing so, issue

that
infringe

finds
to

has

or

1. Where in an action for infringement or for threatened
the
infringement a Community design Court
a
threatened
infringed
defendant
Community design,
it shall, unless there are special reasons
for not doing so, issue the following orders:

that
infringe

finds
to

has

or

(b) issue an order to seize the infringing products;

(b) an order to seize the infringing products;

(a) an order prohibiting the defendant from proceeding with
the acts which have infringed or would infringe the
Community design;

(c) an order to seize materials and implements predominantly
used in order to manufacture the infringing goods, if their
owner knew the effect for which such use was intended or
if such effect would have been obvious in the circum-
stances;

(d) any order imposing other sanctions appropriate under the
circumstances which are provided by the law of
the
infringement or
Member State in which the acts of
threatened infringement
including its
private international law.

committed,

are

2.
The Community design Court shall take such measures in
accordance with its national law as are aimed at ensuring the
orders referred to in paragraphs 1 and 2 are complied with.

2.
The Community design Court shall take such measures in
accordance with its national law as are aimed at ensuring the
orders referred to in paragraph 1 are complied with.

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Article 94

Provisional measures, including protective measures

including protective measures,

1.
Application may be made to the courts of a Member
State, including Community design Courts, for such provisional
measures,
in respect of a
Community design as may be available under the law of that
State on national design rights even if, under this Regulation, a
Community design Court of another Member State has juris-
diction as to the substance of the matter.

In proceedings relating to provisional measures, including
2.
protective measures, a plea otherwise
than by way of
counter-claim relating to the invalidity of a Community
design submitted by the defendant shall be admissible. Article
(2) shall, however, apply mutatis mutandis.

In proceedings relating to provisional measures, including
2.
protective measures, a plea otherwise
than by way of
counter-claim relating to the invalidity of a Community
design submitted by the defendant shall be admissible. Article
89(2) shall, however, apply mutatis mutandis.

3.
A Community design Court whose jurisdiction is based
on Article 86(1), (2), (3) or (4) shall have jurisdiction to grant
including protective measures, which,
provisional measures,
subject
recognition and
enforcement pursuant to Title III of the Convention on Juris-
diction and Enforcement, are applicable in the territory of any
Member State. No other court shall have such jurisdiction.

to any necessary procedure for

Unchanged

Article 95

Specific rules on related actions

1.
A Community Design Court hearing an action referred to
than an action for a declaration of
in Article 85, other
non-infringement, shall, unless there are special grounds for
continuing the hearing, of its own motion after hearing the
parties, or at the request of one of the parties and after hearing
the other parties, stay the proceedings where the validity of the
Community design is
another
Community Design Court on account of a counter-claim or,
in the case of a registered Community design, where an
application for a declaration of
invalidity has already been
filed at the Office.

in issue before

already

2.
The Office, when hearing an application for a declaration
of invalidity of a registered Community design, shall, unless
there are special grounds for continuing the hearing, of its
own motion after hearing the parties, or at the request of
one of the parties and after hearing the other parties, stay
the proceedings where
registered
Community design is already in issue on account of a
counter-claim before a Community Design Court. However, if
one of the parties to the proceedings before the Community
Design Court so requests, the court may, after hearing the
other parties to these proceedings, stay the proceedings. The
Office shall in this instance continue the proceedings pending
before it.

validity of

the

the

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3. Where
proceedings
protective measures, for the duration of the stay.

the Community Design Court
it may order provisional measures,

stays

the
including

Article 96

Jurisdiction of Community Design Courts of second
instance-further appeal

An appeal to the Community Design Courts of second
1.
instance shall lie from judgements of the Community Design
Courts of first instance in respect of proceedings arising from
the actions and claims referred to in Article 85.

The conditions under which an appeal may be lodged
2.
with a Community Design Court of second instance shall be
determined by the national law of the Member State in which
that court is located.

The national rules concerning further appeal shall be
judgements of Community Design

3.
applicable in respect of
Courts of second instance.

S e c t i o n 3

Other disputes concerning Community designs

Article 97

Supplementary provisions on the jurisdiction of national
courts other than Community Design Courts

1. Within the Member State whose courts have jurisdiction
pursuant to the courts having jurisdiction for actions relating
to Community designs other than those referred to in Article
85 shall be those which would have jurisdiction ratione loci
and ratione materiae in actions relating to a national design
right in that State.

1. Within the Member State whose courts have jurisdiction
pursuant to Articles 83(1) or 83a, the courts having juris-
diction for actions relating to Community designs other than
those referred to in Article 85 shall be those which would have
jurisdiction ratione loci and ratione materiae in actions relating
to a national design right in that State.

2.
Actions relating to Community designs other than those
referred to in Article 85, for which no court has jurisdiction
pursuant to and paragraph 1 of this Article may be heard
before the courts of the Member State in which the Office is
situated.

2.
Actions relating to Community designs other than those
referred to in Article 85, for which no court has jurisdiction
pursuant to Articles 83(1), 83a and paragraph 1 of this Article
may be heard before the courts of the Member State in which
the Office is situated.

Article 98

Unchanged

Obligation of the national court

A national court which is dealing with an action relating to a
Community design other than the actions referred to in Article
85 shall treat the design as valid. Articles 89(2) and 94(2) shall,
however, apply mutatis mutandis.

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TITLE XI

EFFECTS ON THE LAWS OF THE MEMBER STATES

Article 99

Parallel actions on the basis of Community designs and
national design rights

for

for

actions

infringement or

1. Where
threatened
infringement involving the same cause of action and between
the same parties are brought before the courts of different
Member States, one being seized on the basis of
a
Community design and the other seized on the basis of a
the court
design right providing simultaneous protection,
other than the court
its own motion
decline jurisdiction in favour of that court. The court which
jurisdiction may stay its
would be
proceedings if the jurisdiction of the other court is contested.

required to decline

first seized shall of

for

for

actions

infringement or

1. Where
threatened
infringement involving the same cause of action and between
the same parties are brought before the courts of different
Member States, one being seized on the basis of
a
Community design and the other seized on the basis of a
national design right providing simultaneous protection, the
court other
its own
motion decline jurisdiction in favour of that court. The court
which would be required to decline jurisdiction may stay its
proceedings if the jurisdiction of the other court is contested.

first seized shall of

than the court

2.
The Community Design Court hearing an action for
infringement or threatened infringement on the basis of a
Community design shall reject the action if a final judgement
on the merits has been given on the same cause of action and
between the same parties on the basis of a design right
providing simultaneous protection.

Unchanged

3.
The court hearing an action for infringement or for
threatened infringement on the basis of a national design
right shall reject
judgement on the
the action if a final
merits has been given on the same cause of action and
between the same parties on the basis of a Community
design providing simultaneous protection.

The preceding paragraphs shall not apply in respect of

4.
provisional measures, including protective measures.

Article 100

Relationship to other forms of protection under national
law

The provisions of

1.
this Regulation shall be without
prejudice to any provisions of Community law or of the law
of the Member States concerned relating to unregistered design
rights, trade marks or other distinctive signs, patents and utility
models, typefaces, civil liability and unfair competition.

2.
A design protected by a Community design shall also be
eligible for protection under the law of copyright of Member
States as from the date on which the design was created or
fixed in any form. The extent to which, and the conditions
under which, such a protection is conferred,
including the
level of originality required, shall be determined by each
Member State.

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TITLE XII

THE OFFICE

S e c t i o n 1

General provisions

Article 101

SUPPLEMENTARY PROVISIONS CONCERNING THE OFFICE

Unchanged

General provision

Unless otherwise provided in this Title, Title XII of the Regu-
lation on the Community trade mark shall apply to the Office
with regard to its tasks under this Regulation.

Article 102

(deleted)

Administrative services

Article 103

Staff

Article 104

Privileges and immunities

Article 105

Liability

Article 106

Jurisdiction of the Court of Justice

(deleted)

(deleted)

(deleted)

(deleted)

S e c t i o n 2

Unchanged

Management of the Office

Article 107

of the President

In addition to the powers conferred on the President place
before the Commission any proposal to amend this Regulation,
the Fees Regulation and any
the implementing Regulation,
other rule to registered Community designs, after consulting
the Administrative

Supplementary powers of the President

In addition to the functions and powers conferred on the
President of the Office by Article 119 of the Regulation on
the Community trade mark, the President may place before
the Commission any proposal to amend this Regulation, the
implementing Regulation, the Fees Regulation and any other
rule to the extent that they apply to registered Community
designs, after consulting the Administrative Board and, in the
case of the Fees Regulation, the Budget Committee.

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Article 108

(deleted)

Appointment of senior officials

S e c t i o n 3

Unchanged

Administrative Board

Article 109

In addition to any powers conferred on by the

(a) shall set the date for the first filing of applications for
registered Community designs pursuant to Article 128(2);

(b) it shall be consulted before adoption of the guidelines for
examination as
requirements, and invalidity
proceedings in the Office and in the other cases provided
for in this Regulation;

to formal

Supplementary powers of the Administrative Board

In addition to any powers conferred on the Administrative
Board by the Regulation on the Community trade mark or
by other provisions of this Regulation,

(a) The Administrative Board shall set the date for the first
filing of applications for registered Community designs
pursuant to Article 128(2);

(b) it shall be consulted before adoption of the guidelines for
examination as to formal requirements, examination as to
grounds
invalidity
proceedings in the Office and in the other cases provided
for in this Regulation;

registration

refusal

and

for

of

Article 110

Composition

Article 111

Chairmanship

Article 112

Meetings

(deleted)

(deleted)

(deleted)

S e c t i o n 4

Unchanged

Implementation of procedures

Article 113

Competence

For taking decisions in connection with the procedures laid
down in this

For taking decisions in connection with the procedures laid
down in this Regulation the following shall be competent:

(b) and Legal Division;

(b) The Administration of Trade marks and Design and Legal

(a) Examiners;

(c) Invalidity Divisions;

(d) Boards of Appeal.

Division;

Unchanged

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Article 114

Examiners

shall be responsible for taking decisions in relation to an
application for a registered Community design.

An examiner shall be responsible for taking decisions on behalf
of the Office in relation to an application for a registered
Community design.

Article 115

Unchanged

1.

The Administration

The Administration of Trade marks and Design and Legal
Division

1.
The Administration of Trademarks and Legal Division
instituted by the Regulation on the Community trade mark
shall become the Administration of Trade marks and Design
and Legal Division.

2.
In addition to the powers conferred upon it by the Regu-
lation on the Community trade mark, it shall be responsible for
taking those decisions required by this Regulation which do
not fall within the competence of an examiner or an Invalidity
Division. It shall in particular be responsible for decisions in
respect of entries in the Register.

Article 116

Invalidity Divisions

Unchanged

1.
An Invalidity Division shall be responsible for taking
decisions in relation to an application for a declaration of
invalidity of a registered Community design.

An Invalidity Division shall consist of three members. At

2.
least two of these members must be legally qualified.

Article 117

Boards of Appeal

Board of Appeal shall be responsible for deciding on appeals
from decisions of the Invalidity Divisions

In addition to the powers conferred upon it by the Regulation
on the Community trade mark, a Board of Appeal instituted by
that Regulation shall be responsible for deciding on appeals
from decisions of the examiners, the Invalidity Divisions and
from the decisions of the Administration of Trade marks and
Design and Legal Division

Article 118

(deleted)

Independence of the members of the Boards of Appeal

Article 119

(deleted)

Exclusion and objection

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EN

Official Journal of the European Communities

29.8.2000

INITIAL PROPOSAL

AMENDED PROPOSAL

Article 120

(deleted)

Appointment of members of Invalidity Divisions and
Boards of Appeal during a transitional period

S e c t i o n 5

(deleted)

Financial Provisions

Article 121

Budget

Article 122

Fees

TITLE XIII

FINAL PROVISIONS

Article 123

Official languages

(deleted)

(deleted)

Unchanged

(deleted)

Article 124

Unchanged

Implementing Regulation

The rules implementing this Regulation shall be adopted

1.
in an implementing Regulation.

Unchanged

In addition to the fees already provided for in fees shall
2.
be charged, in accordance with the detailed rules of application
laid down in the Implementing Regulation in the cases listed
below:

In addition to the fees already provided for

in the
2.
preceding Articles, fees shall be charged, in accordance with
the detailed rules of application laid down in the Implementing
in the cases listed below:
Regulation and a Fees Regulation,

(a)

late payment of the registration fee;

Unchanged

(b)

late payment of the publication fee;

(c)

late payment of the fee for deferment of publication;

(d)

late payment of additional fees for multiple applications;

(e)

issue of a copy of the certificate of registration;

(f)

(g)

registration of
design;

the transfer of a registered Community

registration of a licence or another right in respect of a
registered Community design;

(h) cancellation of

the registration of a licence or another

right;

(i)

issue of an extract from the register;

29.8.2000

EN

Official Journal of the European Communities

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INITIAL PROPOSAL

AMENDED PROPOSAL

(j)

inspection of the files;

(k)

issue of copies of file documents;

(l)

communication of information of a file;

(m) review of the determination of the procedural costs to be

refunded;

(n)

issue of certified of the application.

3.
The implementing Regulation and the Fees Regulation
shall be adopted and amended in accordance with the
procedure laid down in Article 141 of the Regulation on the
Community Trademark.

Article 124a

Unchanged

Rules of procedure of the Boards of Appeal

The rules of procedure of the Boards of Appeal shall apply to
appeals heard by those Boards under this Regulation, without
prejudice to any necessary adjustment or additional provision,
adopted in accordance with the procedure laid down in Article
141 of the Regulation on the Community trade mark.

Article 125

System of exchange of information

Article 126

Establishment of a committee and procedure for the
adoption of implementing regulations

Article 127

Fees Regulation

Article 128

Entry into force

(deleted)

(deleted)

(deleted)

Unchanged

1.
This Regulation shall enter into force on the 60th day
following its publication in the Official Journal of the European
Communities.

2.
Applications for registered Community designs may be
filed at the Office from the date fixed by the Administrative
Board on the recommendation by the

2.
Applications for registered Community designs may be
filed at the Office from the date fixed by the Administrative
Board on the recommendation by the President of the Office.

Applications

3.
filed
within three months before the date referred to in paragraph
2, shall be deemed to have filed on that date.

registered Community designs

for

Unchanged

This Regulation shall be binding in its entirety and directly
applicable in all Member States.