Amended proposal for a Council Regulation on Community design (presented by the Commission pursuant to Article 250(2) of the EC Treaty)
Date: 2000-10-20
Institutions: European Commission
Subjects: approximation of laws, designs and models, industrial property

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

(2001/C 62 E/15)

COM(2000) 660 final (cid:14) 1993/0463(CNS)

(Submitted by the Commission pursuant to Article 250 (2) of the EC Treaty on 20 October 2000)

(1) OJ C 248 E, 29.8.2000, p. 3.

INITIAL PROPOSAL

AMENDED PROPOSAL

THE COUNCIL OF THE EUROPEAN UNION,

Unchanged

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

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

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

Having regard to the opinion of the European Parliament (2),

Having regard to the opinion of
Committee (3),

the Economic and Social

Unchanged

Whereas:

Unchanged

(1) 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
economic and social progress of the Community countries
by common action to eliminate the barriers which divide
Europe. To that end, the Treaty provides for the estab-
lishment of an internal market and includes the abolition
of obstacles to the free movement of goods and the insti-
tution of a system ensuring that competition in the
common market
is not distorted. Therefore a unified
system for obtaining a Community design to which
uniform protection
uniform effect
throughout the entire territory of the Community would
further those objectives.

given with

is

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

___________
(1) OJ C 29, 31.1.1994, p. 20.
(3) OJ C 110, 2.5.1995 and OJ C 75, 15.3.2000.

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

___________
(1) OJ C 29, 31.1.1994, p. 20 and COM(1999) 310 final of 22.6.1999.
(2) European Parliament Opinion of 16.6.2000.

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INITIAL PROPOSAL

AMENDED PROPOSAL

(3) The substantial differences between Member States’ design
laws prevent and distort Community-wide competition
between the producers of protected goods, because in
comparison with domestic trade in, and competition
between, products
trade and
competition within the Community are prevented and
distorted by the large number of applications, offices,
exclusive
procedures,
rights and the combined administrative expense with
correspondingly high costs and fees for the applicant.

incorporating a design,

laws, nationally

circumscribed

incorporating a design,

(3) The substantial differences between Member States’ design
laws prevent and distort Community-wide competition
between the producers of protected goods, because in
comparison with domestic trade in, and competition
between, products
trade and
competition within the Community are prevented and
distorted by the large number of applications, offices,
exclusive
procedures,
rights and the combined administrative expense with
correspondingly high costs and fees for the applicant.
Directive 98/71/EC of 13 October 1998 (1) on the legal
protection of designs approximates the design laws of the
Member States and contributes to remedy this situation.

laws, nationally

circumscribed

(4) The effect of design protection being limited to the
territory of the individual Member States whether or not
their laws are approximated, leads to a possible division of
the internal market with respect
incor-
porating, and hence constitutes an obstacle to the free
movement of goods.

to products

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

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

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

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

the scale and the effects of

Unchanged

(7) Since

the

success of

commercial

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,
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
new
and
products
production.
investment
Consequently a more accessible design-protection system
adapted to the needs of the internal market is essential for
Community industries.

development
their
in

innovation

and

of

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

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INITIAL PROPOSAL

AMENDED PROPOSAL

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

(9) The substantive provisions of this regulation on design
in Directive

should be aligned with provisions

law,
98/71/EC on the legal protection of designs.

(10) Technological

It

function.

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

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

(10) Technological

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

(11) The mechanical fittings of modular products may never-
theless constitute an important element of the innovative
characteristics of modular products and present a major
marketing asset and therefore be eligible for protection.

(11) The mechanical fittings of modular products may never-
theless constitute an important element of the innovative
characteristics of modular products and present a major
marketing asset and therefore must be eligible
for
protection.

Unchanged

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

features

design

fulfil

the

for

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

affected by
a

issue of

clause

repair

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INITIAL PROPOSAL

AMENDED PROPOSAL

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

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

the competition rules pursuant

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

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

(18) This calls for two forms of protection, one being a
short-term unregistered design and the other being a
longer term registered design.

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

examination

to

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

examination

to

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

also possesses

an individual

character

it

Unchanged

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INITIAL PROPOSAL

AMENDED PROPOSAL

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

(22) The exclusive nature of

the right conferred by the
consistent with its
registered Community design is
greater legal certainty. Therefore it
is appropriate that
the unregistered Community design should constitute a
right only to prevent copying. This right, which should
also extend to trade in products embodying infringing
designs,

(22) The exclusive nature of

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

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

Unchanged

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

the application for

(25) It

is a fundamental objective that

the procedure for
obtaining a registered Community design should present
the minimum cost and difficulty to applicants, so as to
make it readily available to small and medium-sized enter-
prises as well as to individual designers.

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INITIAL PROPOSAL

AMENDED PROPOSAL

(26) Those sectors of

industry producing large numbers of
possibly short-lived designs over short periods of time
of which only some may be eventually commercialised
find advantage in the unregistered Community
will
these
design. Furthermore there is also a need for
sectors
registered
Community design, therefore the option of combining a
number of designs in one multiple application would
satisfy that need.

to have

recourse

to the

easier

(26) Those sectors of

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

to have

recourse

to the

easier

(27) 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;
therefore the facility of of publication for a
reasonable affords a solution in such cases.

(27) 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; therefore the facility of a deferment of publication
for a reasonable period affords a solution in such cases.

(28) A procedure for hearing actions concerning validity of a
registered Community design in a single place would
bring savings in costs and time compared with procedures
involving different national courts.

Unchanged

(29) It is therefore necessary to provide safeguards including a
right of appeal to a Board of Appeal, and ultimately to the
Court of Justice of the European Communities. Such a
procedure would assist the development of uniform inter-
pretation of the requirements governing the validity of
Community designs.

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

(31) The litigation system should avoid as far as possible
is therefore necessary to establish

Aforum shoppingB.
It
clear rules of international jurisdiction.

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INITIAL PROPOSAL

AMENDED PROPOSAL

(32) According

to Council Decision 88/591/ECSC, EEC,
Euratom of 24 October 1988 establishing a Court of
First Instance of the European Communities, as amended
by Decision 93/350/Euratom, ECSC, EEC of 8 June 1993,
that Court will exercise at the first instance the juris-
diction conferred on the Court of Justice by the Treaties
establishing the Communities with particular regard to
second subparagraph of
appeals
Article 230 of the EC Treaty and by the acts adopted in
implementation thereof, save as otherwise provided in an
act setting up a body governed by Community law.
Therefore, the jurisdiction which this Regulation confers
on the Court of Justice to cancel and reform decisions of
the appeal courts shall accordingly be exercised at the first
instance by the Court
in accordance with the above
Decision.

lodged under

the

(32) According

Instance of

the European Communities (1),

to Council Decision 88/591/ECSC, EEC,
Euratom of 24 October 1988 establishing a Court of
as
First
amended by Decision 93/350/Euratom, ECSC, EEC of 8
June 1993 (2), that Court will exercise at the first instance
the jurisdiction conferred on the Court of Justice by the
Treaties establishing the Communities with particular
regard to appeals lodged under the second subparagraph
of Article 230 of the EC Treaty and by the acts adopted in
implementation thereof, save as otherwise provided in an
act setting up a body governed by Community law.
Therefore, the jurisdiction which this Regulation confers
on the Court of Justice to cancel and reform decisions of
the appeal courts shall accordingly be exercised at the first
instance by the Court
in accordance with the above
Decision.

(33) 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 designs, trade marks, patents
and utility models, unfair competition or civil liability.

such as

laws of

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

such as

laws of

those

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

Unchanged

(35) Since the measures necessary for implementing this Regu-
lation are measures of general scope within the meaning
of Article 2 of Council Decision 1999/468/EC of 28 June
1999 laying down the procedures for the exercise of
implementing powers conferred on the Commission,
they should be adopted in accordance with the regulatory
procedure laid down in Article 5 of that Decision,

(35) Since the measures necessary for implementing this Regu-
lation are measures of general scope within the meaning
of Article 2 of Council Decision 1999/468/EC of 28 June
1999 laying down the procedures for the exercise of
implementing powers conferred on the Commission (3),
they should be adopted in accordance with the regulatory
procedure laid down in Article 5 of that Decision,

ADOPTED THIS REGULATION:

HAS ADOPTED THIS REGULATION:

___________
(1) OJ L 319, 25.11.1988, p. 1, and corrigendum at OJ L 241,

17.8.1988, p. 4.

(2) OJ L 144, 16.6.1993, p. 21.
(3) OJ L 184, 17.7.1999, p. 23.

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INITIAL PROPOSAL

TITLE I

GENERAL PROVISIONS

Article 1

Community design

AMENDED PROPOSAL

Unchanged

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

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

2.
lation:

Unchanged

(a) by an Aunregistered Community designB, if made available to
the public in the manner provided for in this Regulation;

(b) by a Aregistered Community designB,

if registered in the

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

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, nor shall its use be
prohibited, save in respect of
the whole Community. This
principle and its implications shall apply unless otherwise
provided in this Regulation.

transferred or

Article 2

Office

Unchanged

for Harmonisation in the

Internal Market
The Office
(Trademarks and Designs), hereinafter
Athe
OfficeB, instituted by Council Regulation (EC) No 40/94 of 20
December 1993 on the Community Trade Mark, hereinafter
referred to as
the ARegulation on the Community Trade
MarkB, shall carry out the tasks entrusted to it by this Regu-
lation.

referred to as

TITLE II

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) AdesignB 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;

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

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INITIAL PROPOSAL

AMENDED PROPOSAL

(b) AproductB 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;

Unchanged

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

Article 4

Protection requirements

A design shall be protected by a Community design to

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

2.
A design applied to or incorporated in a product which
constitutes a component part of a complex product shall only
be considered to be new and to have individual character:

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

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

ANormal useB within the meaning of paragraph (2)(a) shall

3.
mean use maintenance, servicing or repair.

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

Article 5

Novelty

Unchanged

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

A design shall be considered to be new if no identical

1.
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,

Unchanged

(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 if their features differ
only in immaterial details.

Designs shall be deemed to be identical if their features

2.
differ only in immaterial details.

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INITIAL PROPOSAL

Article 6

Individual character

AMENDED PROPOSAL

Unchanged

A design shall be considered to have individual character
1.
if the overall
impression it produces on the informed user
differs from the overall impression produced on such a user
by any design which has been made available to the public:

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

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

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

Article 7

Date of reference

Article 8

Disclosure

(deleted)

Unchanged

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.

2.
A disclosure shall not be taken into consideration for the
purpose of applying Articles 5 and 6 if a design for which
protection is claimed under a egistered Community design has
been made available to the public:

2.
A disclosure shall not be taken into consideration for the
purpose of applying Articles 5 and 6 if a design for which
protection is claimed under a registered Community design has
been made available to the public:

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

result of
designer or his successor in title; and

Unchanged

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

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AMENDED PROPOSAL

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

Article 9

Designs dictated by their technical function and designs of
interconnections

A Community design shall not subsist

1.
in features of
appearance of a product which are solely dictated by its
technical function.

A Community design shall not subsist

in features of
2.
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.

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

Article 10

Designs contrary to public policy or morality

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

Article 10(a)

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,

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

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

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AMENDED PROPOSAL

INITIAL PROPOSAL

S e c t i o n 2

Scope and term of protection

Article 11

Scope of protection

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

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

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

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

2.
For the purpose of applying paragraph 1, a design shall
be deemed to have been made available to the public within
the Community if it has been published, 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.

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

Article 13

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
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.

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Article 13(a)

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

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

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

(a) in the

case of a

registered Community design, by
application of the law of the Member State where the regis-
tration has been applied for according to Article 37 or

(b) in the case of an unregistered Community design, by

reference to the law of the Member State:

(i)

in which all designers have their seat or their domicile
on the relevant date,

(ii) where subparagraph (i) does not apply, where all
designers have an establishment on the relevant date,

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(iii) where subparagraphs (i) and (ii) do not apply,

the
Member State referred to shall be the Member State
in which the unregistered design was
first made
available to the public pursuant to Article 12.

However, where a design is developed by an employee in
3.
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.

Unchanged

Article 15

Plurality of designers

(deleted)

Claims relating to the entitlement to a Community design

Article 16

Unchanged

If an unregistered Community design is by, or a registered
1.
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.

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

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

Unchanged

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

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

In case of a registered Community design, the following

4.
shall be entered in the egister:

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

Unchanged

been instituted;

(b) the

final decision or any other

termination of

the

proceedings;

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(c) any change in the ownership of the registered Community

design resulting from the final decision.

Article 17

Effects of a judgement 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 egister of the person entitled.

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 egister. The licence shall
be granted for a reasonable period and upon reasonable terms.

to do so, he may continue

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

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

Unchanged

Article 18

Article 18

Presumption in favour of the registered

Presumption in favour of the registered holder of the
design

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

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

Article 19

Article 19

Right of the designer to be cited

Right of the designer to be cited

The designer shall have the right, as against the applicant for or
the holder of a registered Community design, to be cited as
such before the Office and in the egister. If the design is the
result of teamwork, the citation 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 teamwork, the citation of the team may replace the
citation of the individual designers.

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S e c t i o n 4

Effects of the Community design

AMENDED PROPOSAL

Unchanged

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
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

The rights conferred by a Community design shall not be

1.
exercised in respect of:

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

(b) acts done for experimental purposes;

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

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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 a third
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 of rights

Unchanged

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.

Article 25

Rights of prior use in respect of a registered Community
design

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

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

the third person with respect

The right of prior use shall not extend to granting a

3.
licence to another person to exploit the design.

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

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 VI and VII or by a Community design ourt on the
basis of a counterclaim in infringement proceedings.

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

2.
An unregistered Community design shall be declared
invalid by a Community design ourt on application to such a
ourt or 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.

A Community design may be declared invalid even after

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

Unchanged

Article 27

Grounds for invalidity

A Community design may be declared invalid only in the

1.
following cases:

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

3(a),

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

(c) if the right holder the Community design under Article 14,

(c) if, by virtue of a court decision, the right holder is not

entitled to the Community design under Article 14,

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

Unchanged

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(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

(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 in paragraph (1)(c) may be
entitled to the

2.
invoked solely by the person who is
Community design under Article 14.

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

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

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

Unchanged

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

to provide that

(e),

A registered Community design which has been declared
6.
(f) or (g) may be
invalid pursuant to paragraph (1)(b),
maintained 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 registration 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.

(e),

A registered Community design which has been declared
6.
(f) or (g) may be
invalid pursuant to paragraph (1)(b),
maintained 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 registration accompanied by a partial disclaimer by
the holder of the registered Community design or entry in
the Register or of a court decision or a decision by the
Office declaring the partial
registered
Community design.

invalidity of

the

Article 28

of invalidity

Article 28

Consequences of invalidity

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

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2.
Subject to the national provisions relating either to claims
for compensation for damage caused by negligence or lack of
good faith on the part of the holder of the Community design,
or to unjust enrichment, the retroactive effect of invalidity of
the Community design shall not affect:

Unchanged

(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

Dealing with Community designs as national design rights

Article 29

1.
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:

1.
Unless Articles 30 to 34 provide otherwise, a Community
design as an object of property shall be dealt with in its
entirety, and for the whole area of
the Community, as a
national design right of the Member State in which:

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

Unchanged

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 egister.

In the case of a registered Community design, paragraph

2.
1 shall apply according to the entries in the Register.

In the case of joint holders, if two or more of them fulfil
3.
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),

Unchanged

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

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(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 egister.

(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.

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

Article 30

Unchanged

Transfer of the registered Community design

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

(a) at the request of one of the parties, a transfer shall be

(a) at the request of one of the parties, a transfer shall be

entered in the egister and published;

entered in the Register and published;

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

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

(c) where there are time limits to be observed in dealings with
the 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;

Unchanged

(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

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.

request of one of

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

rights mentioned in

the parties,

On request of one of the parties, rights mentioned in

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

Article 32

Levy of execution

Unchanged

A registered Community design may be

1.
execution.

levied in

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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 egister and published.

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

3.
be entered in the Register and published.

Article 33

Unchanged

Bankruptcy or like proceedings

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

In the case of

2.
design, paragraph 1 shall apply to the share of
proprietor.

joint proprietorship of a Community
the joint

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

the

Article 34

Licensing

Unchanged

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

1.
part of
non-exclusive.

2.
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 the products manufactured by the licensee.

the form in which the design may be used,

2.
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 was granted and
the quality of the products manufactured by the licensee.

the form in which the design may be used,

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

Unchanged

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

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

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

Article 35

Unchanged

Effects vis-1-vis third parties

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

2.
However, as regards registered Community designs, legal
acts referred to in Article 30, 31 and 34 shall only have effect
vis-F-vis third parties in all the Member States after entry in the
egister. Nevertheless, such an act, before it is so entered, shall
have effect vis-F-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.

2.
However, as regards registered Community designs, legal
acts referred to in Articles 30, 31 and 34 shall only have effect
vis-F-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-F-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 by way of transfer of
the whole of
the undertaking or by any other universal
succession.

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

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

Unchanged

Article 36

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

1.
An application for a registered Community design as an
object of property shall be dealt with in its entirety, and for the
whole 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 egister, that formality shall have to be performed upon
registration of the resulting registered Community design.

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

AMENDED PROPOSAL

Unchanged

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 and forwarding of applications

An application for a registered Community design shall

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

(a) at the Office; or

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

or

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

industrial
2. Where the application is filed at the central
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.

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

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

Unchanged

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

accompanied by any proposals

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,

(b) information identifying the applicant,

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AMENDED PROPOSAL

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

2.

The application shall further contain:

(a) an indication of

the products in which the design is
intended to be incorporated or to which it is intended to
be applied;

(b) the classification of the products in which the design is
intended to be incorporated or to which it is intended to
be applied according to class;

(b) the classification of the products in which the design is
intended to be incorporated or to which it is intended to
be applied according to class;

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

responsibility that

the applicant’s

Unchanged

3.

In addition, the application may contain:

(a) a description explaining the representation;

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

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

with Article 52.

accordance with Article 52;

(c) information identifying the representative if the applicant

has appointed one.

4.
The application shall be subject to the payment of the 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.

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

The application shall comply with the conditions laid

5.
down in the implementing Regulation.

Unchanged

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

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

Article 40

Multiple applications

Unchanged

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

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

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AMENDED PROPOSAL

2.
Besides the fees referred to in Article 39(4), 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.

Unchanged

The multiple application shall comply with the conditions

3.
of presentation laid down in the implementing Regulation.

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

Article 41

Date of filing

Unchanged

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 41a

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 regular national filing, including where appro-
priate the priority claimed for the said application.

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Article 42

Classification

AMENDED PROPOSAL

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.

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

Industrial Designs,

Unchanged

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
right in or for any State party to the Paris Convention for the
Protection of Industrial Property, hereinafter referred to as Athe
Paris ConventionB, or to the Agreement establishing the World
Trade Organisation or his successors in title, shall enjoy, for the
purpose of filing an application for a registered Community
design in respect of the same design, a right of priority of six
months from the date of filing of the first application.

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

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

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

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

Unchanged

national

filing means any filing that

3.
establish the date on which the application was
whatever may be the outcome of the application.

is sufficient

to
filed,

A subsequent application for a design which was the
4.
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
the subsequent
provided that, at
application,
the previous application has been withdrawn,
abandoned or refused without being open to public inspection
and without leaving any rights outstanding, and has not served
as a basis for claiming priority. The previous application may
not thereafter serve as a basis for claiming a right of priority.

the filing of

the date of

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INITIAL PROPOSAL

AMENDED PROPOSAL

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

Article 44

Claiming priority

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

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

Article 45

Unchanged

Effect of priority right

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

Article 46

(This Article has become Article 41a)

Equivalence of Community filing with national filing

Article 47

Exhibition priority

Unchanged

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.

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INITIAL PROPOSAL

AMENDED PROPOSAL

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

TITLE V

REGISTRATION PROCEDURE

Article 48

Examination as to formal requirements for filing

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:

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

down in Article 39 and,
application, Article 40

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

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

Unchanged

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

(d) the requirements concerning the claim to priority are

satisfied, if a priority is claimed.

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

Article 49

Unchanged

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.

2.
If the deficiencies concern the requirements referred to in
Article 39(1) and the applicant complies with the Office’s
request in due time, the Office shall 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.

2.
If the deficiencies concern the requirements referred to in
Article 39(1) and the applicant complies with the Office’s
request in due time, the Office shall accord 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.

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INITIAL PROPOSAL

AMENDED PROPOSAL

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

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

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

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

Article 49a

for non-registrability

Article 49a

Grounds for non-registrability

the Office, in carrying out the examination pursuant to

1.
Article 48, that the design for which protection is sought

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

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

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

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

Unchanged

morality,

the application.

it shall refuse the application.

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

Unchanged

Article 50

Registration

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 Article 49a,
the Office shall register the application in the Community
design egister as a registered Community design. The regis-
tration shall bear the date.

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 by virtue of
Article 49a, the Office shall register the application in the
registered Community
Community design Register
design. The registration shall bear the date of filing of the
application referred to in Article 41.

as

a

Article 51

Publication

Unchanged

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

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

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Article 52

Deferment of publication

AMENDED PROPOSAL

Unchanged

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 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.

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 egister and the file
relating to the application and shall publish the registered
Community design in the Community Design Bulletin,
provided that, within the time limit
laid down in the
in the
implementing Regulation the publication fee and,
event of a multiple application, the additional publication fee
are paid.

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

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

Unchanged

5.

(deleted)

The institution of

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

to the condition that

The institution of

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

to the condition that

Article 53

Term of protection

(deleted)

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AMENDED PROPOSAL

Article 54

Renewal

(This Article has become Article 13a)

The whole former Title VI has been deleted

TITLE VI

Unchanged

SURRENDER AND INVALIDITY OF THE REGISTERED
COMMUNITY DESIGN

Article 55

Surrender

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

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

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

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

Surrender shall be registered only with the agreement of
4.
the of a right entered in the egister.
If a licence has been
registered, surrender shall be entered in the egister 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.

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

If an action pursuant

5.
entitlement
brought before a Community design court,
not
surrender
the
agreement of the claimant.

to Article 14 relating to the
to a registered Community design has been
the Office will
the

in the Registry without

enter

Article 56

Unchanged

Application for a declaration of invalidity

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

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

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

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AMENDED PROPOSAL

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

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

Article 57

Unchanged

Examination of the application

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

In the examination of the application, which shall be
2.
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 the other parties or issued by itself.

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

The decision declaring the registered Community design

3.
invalid shall be entered in the egister upon becoming final.

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

Article 58

Unchanged

Participation in the proceedings of the
alleged infringer

1.
In the event of an application for a declaration of
invalidity of a registered Community design being filed, and
as long as no final decision has been taken by, 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
instituted
proceedings for a court ruling that he is not infringing the
Community design.

the design and that he has

1.
In the event of an application for a declaration of
invalidity of a registered Community design being filed, and
as long as no final decision has been taken by the Office,
any third party who proves that proceedings for infringement
of the same design have been instituted against him may be
joined as a party in the invalidity proceedings on request
submitted within three months of
the date on which the
infringement proceedings were instituted. The same shall
apply in respect of any third party who proves both that the
right holder of the Community design has requested that he
cease an alleged infringement of the design and that he has
instituted proceedings
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 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.

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, as the one referred to in
Article 56(2) has been paid. Thereafter
the request shall,
subject to any exceptions laid down in the implementing Regu-
lation, be treated as an application for a declaration of
invalidity.

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INITIAL PROPOSAL

TITLE

APPEALS

Article 59

Decisions subject to appeal

AMENDED PROPOSAL

TITLE VII

Unchanged

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

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

A decision which does not

2.
regards one of
final decision, unless the decision allows separate appeal.

terminate proceedings as
the parties can only be appealed with the

A decision which does not

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

Article 60

Unchanged

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 . Within four months after the date of notification
of the decision, a written statement setting out the grounds of
appeal must be filed.

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

Article 62

Interlocutory revision

Unchanged

If the department whose decision is contested considers
1.
the appeal
its
decision. This shall not apply where the appellant is opposed
by another party to the proceedings.

to be admissible and well

founded,

it shall

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

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

If the decision is not rectified 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

Unchanged

Examination of appeals

If the appeal

1.
examine whether the appeal is to be allowed.

is admissible, the Board of Appeal shall

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INITIAL PROPOSAL

AMENDED PROPOSAL

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 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.

the case to that department

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 prosecution.

the case to that department

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

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

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

3.
The decisions of the Board 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
rejection of such action.

Article 65

Unchanged

Actions before the Court of Justice

Actions may be brought before the Court of

1.
against decisions of the Board of Appeal on appeals.

Justice

infringement

The action may be brought on grounds of

lack of
2.
competence,
procedural
of
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 to alter

3.
the contested decision.

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

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

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

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INITIAL PROPOSAL

TITLE

AMENDED PROPOSAL

TITLE VIII

PROCEDURE BEFORE THE OFFICE

Unchanged

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

The Office may disregard facts or evidence which are not

2.
submitted in due time by the parties concerned.

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.

Oral proceedings, including delivery of the decision, shall
the decides otherwise in cases where
the public could have serious and unjustified

2.
be public, unless
admission of
disadvantages, in particular for a party to the proceedings.

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

Article 69

Taking of evidence

Unchanged

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;

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

(d) hearing witnesses;

Unchanged

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(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.

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

Article 71

Restitutio in integrum

Unchanged

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

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

the non-observance in question has

The application must be filed in writing within two
2.
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 time limit. In the case
of non-submission of the request for renewal of registration or
of non-payment of a renewal fee, the further period of six
months provided for in the second sentence of Article (3)
shall be deducted from the period of one year.

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

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

Unchanged

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The department to decide on the omitted act shall decide

4.
upon the application.

The department competent to decide on the omitted act

4.
shall decide upon the application.

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

Unchanged

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

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

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

from the date of publication of

two months as

the applicant

Unchanged

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-F-vis the authorities of such State.

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

Article 72

Unchanged

Reference to general principles

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

Article 73

Termination of financial obligations

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

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

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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
to enforce the right have
meantime judicial proceedings
the
in case the period shall end one year after
begun;
judgement has acquired the authority of a final decision.

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
in this case the period shall end at the earliest one
begun;
year after the judgement has acquired the authority of a final
decision.

Unchanged

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.

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

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

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

On request,

the registry of

the Invalidity Division or
6.
Board of Appeal shall fix the amount of the costs to be paid
pursuant
so
determined may be reviewed by a decision of the Invalidity
Division or Board of Appeal on a request filed within the
period prescribed by the implementing Regulation.

to the preceding paragraphs. The

amount

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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 verification of
the decision, by the national authority
the authenticity of
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.

Enforcement may be suspended only by a decision of the
Justice. However, the courts of the Member State
that

4.
Court of
concerned shall have
enforcement is being carried out.

jurisdiction over

complaints

Enforcement may be suspended only by a decision of the
Justice. However, the courts of the Member State
that

4.
Court of
concerned shall have
complaints
enforcement is being carried out in an irregular manner.

jurisdiction over

S e c t i o n 3

Unchanged

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

Article 76

Register

The Office shall keep a egister to be known as the Community
designs, which shall contain those particulars of which the
registration is provided for by this Regulation or by the
implementing Regulation. The egister 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

Register of Community designs

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

to the extent

Article 77

Unchanged

Periodical publications

1.
This Office shall periodically publish a Community esign
Bulletin containing entries open to public inspection in the
egister as well as other particulars the publication of which
is prescribed by this Regulation or by the implementing Regu-
lation.

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

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

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

Article 78

Inspection of files

Unchanged

to

for

The

files

relating

applications

registered
1.
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
to such deferment, have been
52 or which, being subject
surrendered before or on the expiry of that period, shall not
be made available for inspection without the consent of the
applicant for or the right holder in the registered Community
design.

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

Subsequent

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

publication

the

the

to

of

registered

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

Article 79

Administrative co-operation

Unless otherwise provided in this Regulation or in national
laws, the Office and the courts or authorities of the Member
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

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 relating to the

2.
exchange or 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
industrial or commercial establishment
in the Community
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

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

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
industrial or commercial establishment
in the Community
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;
the implementing Regulation
may permit other exceptions.

Unchanged

Professional representation

Unchanged

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(b) any professional

representatives whose name has been
entered on the list of professional representatives referred
to in Article 89(1)(b) of Regulation on the Community rade
ark, or

(b) any professional

representative whose name has been
entered on the list of professional representatives referred
to in Article 89(1)(b) of the Regulation 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.

Unchanged

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.

Any natural person may be entered on the special list of
4.
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

Community;

(c) he must be entitled to represent natural or legal persons in
design matters before the central industrial property office
in that State, the entitlement to
of a Member . Where,
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
the said State for at least five years.
property office of
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.

upon

conditional

requirement

(c) he must be entitled to represent natural or legal persons in
design matters before the central industrial property office
of a Member State or before the Benelux Office. Where, in
that State, the entitlement to represent in design matters is
not
special
the
professional qualifications, persons applying to be entered
on the list must have habitually acted in design matters
the said
before the central
industrial property office of
five years. However, persons whose
State for at
least
legal
professional qualification to represent natural or
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.

of

5.
Entry on the list referred to in paragraph 4 shall be
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.

Unchanged

6.

The President of the Office may grant exemption from:

(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.

TITLE

TITLE IX

JURISDICTION AND PROCEDURE IN LEGAL ACTIONS
RELATING TO COMMUNITY DESIGNS

Unchanged

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,

the
1.
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 AConvention on Jurisdiction and EnforcementB, 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
simultaneous
protection.

and national

enjoying

designs

s

2.
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

3.
claims referred to in Article 85:

(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

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.

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such entry into force, proceedings

4.
The provisions of the Convention on Jurisdiction and
Enforcement shall not have effect in respect of any Member
State for which that Convention has not yet entered into force.
referred to in
Until
paragraph 1 shall be governed in such a Member State by
any
its
relationship with another Member State concerned, or, if no
such convention exists, by its domestic law on jurisdiction,
recognition and enforcement of decisions.

convention governing

or multilateral

bilateral

Article 83a

Transitional Provision

This Article has become Article 83(4)

S e c t i o n 2

Unchanged

Disputes concerning the infringement and validity of
Community designs

Article 84

Community design ourts

Article 84

Community design Courts

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

1.
The Member States shall designate in their territories as
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 esign ourts,
indicating their
names and their territorial jurisdiction.

communicate

shall

to

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
the Community esign ourts shall be
notified without delay by the Member State concerned to the
Commission.

jurisdiction of

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.

Unchanged

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.

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Article 85

Jurisdiction over infringement and validity

The Community design ourts shall have exclusive jurisdiction:

The Community design courts shall have exclusive jurisdiction:

(a) for infringement actions and H if they are permitted under
threatened

in respect of

national
law H actions
infringement of Community designs;

Unchanged

(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 counterclaims

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

for a declaration of

Article 86

International jurisdiction

1.
Subject to the provisions of this Regulation and to any
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
domiciled or,
if he is not domiciled in any of the Member
States, in which he has an establishment.

1.
Subject to the provisions of this Regulation and to any
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
domiciled or,
if he is not domiciled in any of the Member
States, in any Member State in which he has an establishment.

If the defendant is neither domiciled nor has an estab-
2.
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.

If the defendant is neither domiciled nor has an estab-
2.
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
in any Member State in which he has an
Member States,
establishment.

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

such proceedings

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

4.

Notwithstanding the provisions of paragraphs 1, 2 and 3:

Unchanged

(a) Article 17 of
Enforcement
different Community design ourt shall have jurisdiction;

the Convention on Jurisdiction and
the parties agree that a

shall apply if

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
ourt.

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

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5.
Proceedings in respect of the actions and claims referred
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.

Unchanged

Article 87

Extent of jurisdiction on infringement

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

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 counterclaim for a declaration of invalidity of a
Community design

An action or a counterclaim for a declaration of invalidity
1.
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

The action or the counterclaim may be brought by the

2.
person entitled to it according to Article 27(2) to (5).

3.
If the counterclaim 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.

Unchanged

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 2 Defence as to the merits

1.
In proceedings in respect of an infringement action or an
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.

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threatened

In proceedings in respect of an infringement action or an
2.
action for
an unregistered
infringement of
Community design, the Community design court shall, if the
right holder 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.

threatened

In proceedings in respect of an infringement action or an
2.
action for
an unregistered
infringement of
Community design, the Community design court shall, if the
right holder indicates in what way 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.

3.
In proceedings referred to in paragraph 1 and 2, a plea
relating to the invalidity of a Community design submitted
otherwise than by way of counterclaim 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.

Unchanged

Article 90

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
counterclaim 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 counterclaim.

2.
The Community design court with which a counterclaim
for a declaration of invalidity of a registered Community design
has been filed shall inform the Office of the date on which the
counterclaim was filed. The latter shall record this fact in the
egister.

2.
The Community design court with which a counterclaim
for a declaration of invalidity of a registered Community design
has been filed shall inform the Office of the date on which the
counterclaim was filed. The latter shall record this fact in the
Register.

Unchanged

The Community design court hearing a counterclaim for
3.
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
to submit an
the proceedings and request
application for a declaration of invalidity to the Office within
a time limit which the court shall determine. If the application
is not made within the time limit,
the proceedings shall
continue;
counterclaim shall be deemed withdrawn.
the
Article 95(3) shall apply.

the defendant

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4. Where a Community design court has given a judgement
which has become final on a counterclaim 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 egister in accordance with the provisions
of the implementing Regulation.

4. Where a Community design court has given a judgement
which has become final on a counterclaim 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
in accordance with the
provisions of the implementing Regulation.

in the Register

judgement

No counterclaim 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.

Unchanged

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 in all
the Member States the effects specified in Article 28.

Article 92

Applicable law

1.

The Community design courts shall apply

Unless

otherwise provided

2.
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.
The Community design courts shall apply on all matters
their national law, including this Regulation in respect of the
matters which it covers, and where appropriate its rules of
private international law.

Unchanged

1. Where in an action for infringement or for threatened
the
threatened to infringe a
there are special

infringement a Community design court
defendant has
Community design,
reasons for not doing so, the following:

infringed or
it

shall, unless

finds that

1. Where in an action for infringement or for threatened
the
threatened to infringe a
there are special

infringement a Community design court
defendant has
Community design,
reasons for not doing so, order the following measures:

infringed or
it

shall, unless

finds that

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

Unchanged

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(b) an order to seize the infringing products;

(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
including its
threatened infringement
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 paragraph 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.

Article 94

Unchanged

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 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.

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 in respect of national design rights even if, under this
Regulation, a Community design court of another Member
State has jurisdiction as to the substance of the matter.

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

Unchanged

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

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Article 95

Specific rules on related actions

AMENDED PROPOSAL

A Community design court hearing an action referred to
1.
in Article 85, other
than an action for a declaration of
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 counterclaim or, in
case of a registered Community design, where an
the
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
counterclaim 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

3. Where the Community design court stays the proceedings
it may order provisional measures,
including protective
measures, for the duration of the stay.

Article 96

Jurisdiction of Community design courts of second
instance urther appeal

Jurisdiction of Community design courts of second
instance 2 Further appeal

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

Unchanged

2.
The conditions under which an appeal may be lodged
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.

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S e c t i o n 3

Other disputes concerning Community designs

AMENDED PROPOSAL

Article 97

Supplementary provisions on the jurisdiction of national
courts other than Community design courts

(4),

1. Within the Member State whose courts have jurisdiction
Articles 83(1) or
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.

jurisdiction for actions

1. Within the Member State whose courts have jurisdiction
under Articles 83(1) or (4), those courts shall have 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 the case of
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 Article 83(1) and paragraph 1 of this Article may
be heard before the courts of the Member State in which the
Office.

2.
Actions relating to a Community designs other than
those referred to in Article 85, for which no court has juris-
diction pursuant to Article 83(1) and (4) and paragraph 1 of
this Article may be heard before the courts of the Member
State in which the Office has his seat.

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.

TITLE

TITLE X

EFFECTS ON THE LAWS OF THE MEMBER STATES

Unchanged

Article 99

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

for

for

actions

infringement or

threatened
1. Where
infringement involving the same cause of action and between
the same parties are brought before the courts of different
Member States, one 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 than
the court first seized shall of its own motion decline juris-
diction 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.

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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.

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
designs, 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.

TITLE

TITLE XI

SUPPLEMENTARY PROVISIONS CONCERNING THE OFFICE

Unchanged

S e c t i o n 1

General provisions

Article 101

General provision

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

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.

Articles 102 to 106

(deleted)

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S e c t i o n 2

Management of the Office

AMENDED PROPOSAL

Unchanged

Article 107

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.

Article 108

(deleted)

Appointment of senior officials

S e c t i o n 3

Administrative Board

Unchanged

Article 109

Supplementary powers of the Administrative Board

In addition to powers conferred on the Administrative Board
by the Regulation on the Community rade ark or by other
provisions of this Regulation,

In addition to the powers conferred on the Administrative
Board by the Regulation on the Community Trade Mark or
by other provisions of this Regulation,

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

(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

Unchanged

Articles 110 to 112

(deleted)

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Unchanged

INITIAL PROPOSAL

S e c t i o n 4

Implementation of procedures

Article 113

Competence

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

(a) Examiners;

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

(b) The Administration of Trade Marks and Designs and Legal

Division;

(c) Invalidity Divisions;

(d) Boards of Appeal.

Division;

Unchanged

Article 114

Examiners

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

The Administration of Trade arks and Designs and Legal
Division

The Administration of Trade Marks and Designs and Legal
Division

The Administration of Trade Marks and Legal Division
1.
provided for by the Regulation on the Community Trade
Mark shall become the Administration of Trade Marks and
Designs and Legal Division.

Unchanged

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 egister.

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

An Invalidity Division shall be responsible for taking
for declarations of

1.
decisions
invalidity of registered Community designs.

in relation to applications

An Invalidity Division shall consist of three members. At

2.
least of the members must be legally qualified.

An Invalidity Division shall consist of three members. At

2.
least one of the members must be legally qualified.

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Article 117

Boards of Appeal

AMENDED PROPOSAL

Unchanged

In addition to the powers conferred upon it by the Regulation
on the Community Trade Mark, the Boards 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
Designs and Legal Division .

In addition to the powers conferred upon it by the Regulation
on the Community Trade Mark, the Boards 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
Designs
their decisions
concerning Community designs.

and Legal Division as

regards

Articles 118 to 123

(deleted)

TITLE

TITLE XII

FINAL PROVISIONS

Unchanged

Article 124

Implementing Regulation

The rules implementing this Regulation shall be adopted

1.
in an implementing Regulation.

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;

(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)

registration of
design;

the transfer of a registered Community

(g)

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 egister;

(i)

issue of an extract from the Register;

(j)

inspection of the files;

Unchanged

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(k)

issue of copies of file documents;

(l)

communication of information in a file;

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

refunded;

(n)

issue of certified of the application.

(n)

issue of certified copies 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.

3.
The implementing Regulation and the Fees Regulation
shall be adopted and amended in accordance with the
procedure laid down in Article 125.

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.

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
125.

Article 125 (new)

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

for

The Commission shall be assisted by a committee
1.
designated ACommittee for issues relating to fees and to the
rules
the Regulation on the
Community designB, which shall be composed of represen-
tatives of the Member States and chaired by a representative
of the Commission.

the implementation of

2. Where reference is made to this paragraph, the regulatory
procedure laid down in Article 5 of Decision 1999/468/EC
shall apply in accordance with the provisions of Article 7(3)
of that Decision.

The period provided for in Article 5(6) of Decision

3.
1999/468/EC shall be three months.

Articles 125 (former) to 127

(deleted)

Article 128

Entry into force

Unchanged

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

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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

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