Source: EURLEX
Language: en
Format: md

#### **COMMISSION OF THE EUROPEAN COMVTUNITIES**

```
                          C0M(93) 342 final-COD 463

                          Brussels, 3 December 1993

```

**Proposal for a**
**EUROPEAN PARLIAMENT AND COUNCIL REGULATION**

**on the Community Design**

**(presented by the Commission)**

**TABLE OF CONTENTS**

**EXPLANATORY MEMORANDUM**

**PROPOSAL FOR A EUROPEAN PARLIAMENT AND COUNCIL REGULATION**

**TITLE L** **GENERAL PROVISIONS**

**Article 1** **Community Design**

**Article 2** **Community Design Office**

**TTTLE a** **THE LAW RELATING TO DESIGNS**

**Section** **1 :** **Requirements for protection**

**Article 3** **Definitions**

**Article 4** **General requirements**
**Article 5** **Novelty**
**Article 6** **Individual character**
**Article 7** **Date of reference**
**Article 8** **Non-prejudicial disclosures**
**Article 9** **Non-arbitrary technical designs, and designs of interconnections**
**Article 10** **Designs contrary to public policy**
**Section 2:** **Scope and term of protection**

**Article** **11** **Scope of protection**
**Article 12** **Commencement and term of protection of the**
**Unregistered Community Design**
**Article** **13** **Commencement and term of protection of the Registered**
**Community** **Design**

**Section 3:** **Entitlement to the Community Design**

**Article 14** **Right to the Community Design**
**Article 15** **Plurality of designers**
**Article 16** **Claims relating to the entitlement of a**
**Community Design**
**Article 17** **Effects of** **a** **judgment on entitlement to a Registered**
**Community Design**
**Article** **18** **Presumption in favour of the registered person**
**Article 19** **Specific rights of** **the** **designer**

**Section 4:** **Effects of the Community Design**

**Article 20** **Rights conferred by the Unregistered Community Design**
**Article 21** **Rights conferred** **by** **the Registered Community Design**
**Article 22** **Limitation of the rights conferred by a Community Design**
**Article 23** **Use of a Registered Community Design for repair purposes**
**Article 24** **Exhaustion**
**Article 25** **Rights of prior use in respect of a Registered Community Design**

**Page**

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Section 5: Invalidity

Article 26 Declaration of invalidity
Article 27 Grounds for invalidity
Article 28 Effects of invalidity

**TITLE** **m.** **COMMUNITY DESIGNS AS OBJECTS OF PROPERTY**

Article 29 Dealing with Community Designs as national design rights
Article 30 Transfer
Article 31 Rights in rem on a Registered Community Design
Article 32 Levy of execution on a Registered Community Design
Article 33 Bankruptcy or like proceedings
Article 34 Licensing
Article 35 Effects vis-a-vis third parties
Article 36 The application for a Registered Community Design
as an object of property

**TTTLE IV.** **THE APPUCATION FOR A REGISTERED** **COMMUNriY** **DESIGN**

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

Article 37 Filing of applications
Article 38 Forwarding of the application
Article 39 Conditions with which applications must comply
Article 40 Multiple applications
Article 41 Date of filing
Article 42 Classification

Section 2: Priority

Article 43 Right of priority
Article 44 Claiming priority
Article 45 Effect of priority right
Article 46 Equivalence of Community filing with national filing
Article 47 Exhibition priority

**TTTLE** **V.** **REGISTRATION PROCEDURE**

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Article 48
Article 49
Article 50
Article 51
Article 52

**TTTLE** **VL**

Article 53
Article 54

Examination as to formal requirements
Remediable deficiencies
Registration
Publication
Deferment of the publication

**TERM OF PROTECTION OF THE REGISTERED**
**COMMUNITY DESIGN**

Term of protection
Renewal

**ii**

**TTTLE** V a

Article 55
Article 56
Article 57
Article 58

**SURRENDER AND INVALIDITY OF THE REGISTERED**
**COMMUNITY DESIGN**

Surrender
Application for a declaration of invalidity
Examination of the application
Participation in the proceedings of the alleged infringer,
the Commission and the Member States

**TITLE** **VHI.** **APPEALS FROM DECISIONS OF THE OFFICE**

Article 59 Decisions subject to appeal
Article 60 Persons entitled to appeal and to be parties to appeal proceedings
Article 61 Time limit and form of appeal
Article 62 Interlocutory revision
Article 63 Examination of appeals
Article 64 Decisions in respect of appeals
Article 65 Actions before die Court of Justice

**TTTLE** **K.** **PROCEDURE BEFORE THE OFFICE**

Section 1: General provisions

Article 66 Statement of reasons on which decisions are based

Article 67 Examination of the facts by the Office of its own motion
Article 68 Oral proceedings
Article 69 Taking of evidence
Article 70 Notification
Article 71 Restitutio in integrum
Article 72 Reference to general principles
Article 73 Termination of financial obligations

Section 2: Costs

Article 74 Allocation of costs
Article 75 Enforcement of decisions fixing the amount of costs

Section 3: Information of the public and of the official authorities
of the Member States

Article 76 Register
Article 77 Periodical publications
Article 78 Inspection of files
Article 79 Administrative and legal cooperation
Article 80 Exchange of publications

Section 4: Representation

Article 81 General principles of representation
Article 82 Professional representatives

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**TTTLE** **X.** **JURISDICTION AND PROCEDURE IN LEGAL ACTIONS**
**RELATING TO COMMUNITY DESIGNS**

**Section** **1 :** **Jurisdiction and Enforcement**

**Article 83** **Application of the Convention on Jurisdiction and Enforcement**

**Section 2:** **Disputes concerning the infringement and validity of Community Designs**

**Article 84** **Community Design Courts**
**Article 85** **Jurisdiction over infringement and validity**
**Article 86** **International jurisdiction**
**Article 87** **Extent of jurisdiction on infringement**
**Article 88** **Action or counterclaim for a declaration of invalidity of**
**a Community Design**
**Article 89** **Presumption of validity - defence as to the merits**
**Article 90** **Judgments on validity**
**Article 91** **Effects of** **the** **judgment on validity**
**Article 92** **Applicable law**
**Article 93** **Sanctions in actions for infringement**
**Article 94** **Provisional measures, including protective measures**
**Article 95** **Specific rules on related actions**
**Article 96** **Jurisdiction of Community Design Courts of second instance -**
**further appeal**

**Section 3;** **Other disputes concerning Community Designs**

**Article 97** **Supplementary provisions on the jurisdiction of national courts other than**
**Community Design Courts**
**Article 98** **Obligation of** **the** **national court**

**TTTLE Xt** **EFFECTS ON THE LAWS OF THE MEMBER STATES**

**Article 99** **Parallel actions on the basis of Community Designs and**
**national design rights**
**Article 100** **Relationship to other forms of protection under national law**

**TTTLE Xtt** **THE COMMUNITY DESIGN OFFICE**

**Section 1:** **General provisions** **,**

**Article 101** **Legal status**
**Article 102** **Administrative services**
**Article** **103** **Staff**
**Article 104** **Privileges and immunities**
**Article 105** **Liability**
**Article 106** **Jurisdiction of the Court of Justice**

**Section 2:** **Management of the Office**

**Article 107** **Powers of the President**
**Article 108** **Appointment of senior officials**

**IV**

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Section 3: Administrative Board

Article 109
Article 110
Article 111
Article 112

Creation and powers
Composition
Chairmanship
Meetings

Section 4: Implementation of procedures

Article 113 Competence
Article 114 Formalities Examining Division
Article 115 Design Administration and Legal Division
Article 116 Invalidity Divisions
Article 117 Boards of Appeal
Article 118 Independence of the members of the Boards of Appeal
Article 119 Exclusion and objection
Article 120 Appointment of members of Invalidity Divisions
and Boards of Appeal during a transitional period

Section 5 Financial provisions

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Article 121
Article 122

Budget
Fees

**TTTLE XIR** **FINAL PROVISIONS**

Article 123 Official languages
Article 124 Community implementing provisions
Article 125 System of exchange of information
Article 126 Establishment of a committee and procedure for
the adoption of implementing regulations
Article 127 Fees Regulation
Article 128 Entry into force

**EXPLANATORY MEMORANDUM**

**PART** **ONE:** **GENERAL**

**1.** **Introduction**

**1.1 The present Regulation aims to provide for a Community system for the legal protection of**
**industrial design.**

**1.2 Legal protection of designs at the present time comes into existence by way of registration.**
##### **Apart from the Benelux where a regional design protection system has been in force since**

**1975** **design protection is national. The protection is granted upon application on a State-by-**
**State basis. The legal effect of** **the** **protection is limited to the territory of the State in which**
**the protection has been granted**

**1.3** **Conflicts leading to barriers to the free flow of goods are inevitable. A design, which in one**
**Member State may** **qualify** **for protection, may in another Member State not fulfil the**
**requirements for** **protection.** **If goods lawfully produced** **by** **a competitor** **in** **the country where**
**no design protection exists are sought to be commercialized in the country where design**
**protection is in force the entry into that State can be prohibited by virtue of the provision**
**of Article 36** **EEC.** **Likewise, due to the strictly national character of** **a** **design protection the**
##### **same design can in different Member States be registered by different right holders. A right**

**holder in one country can by virtue of the provisions of Article 36 EEC prevent the**
**importation into that State of goods that would infringe his rights even if the design**
##### **embodied in the goods in another Member State is registered by another right holder.**

**1.4** **Design** **rights** **have** **in** **the past decade become increasingly important since design has gained**
**in importance as a marketing tool. Many goods are sought after by consumers not only on**
**the grounds of** **their** **function but also or even more so because of** **their** **design. The kind of**
**goods** **in** **which designs** **are** **embodied cannot easily be enumerated. An extremely wide range**
##### **of goods are design "goods", from artefacts and jewellery to sophisticated machinery, tools,**

**electronics** **and** **consumer electronics, motor vehicles, yachts, furniture** **and** **office equipment,**
**sport articles, fashion and clothing and domestic appliances, to** **mention** **just a few examples**
**of the** **areas** **of typical contemporary industrial design activity. Artificial barriers to** **trade** **will**
**therefore have repercussions on the trade in most** **manufactured** **goods and are therefore**
**incompatible with the functioning of** **an** **internal market.**

**1.5 To allow goods embodying designs to flow freely within an internal market a protection**
**system at the level of** **die** **Community is necessary. A Community-wide protection system**
**cannot be replaced by the approximation of the laws of the Member States. Even national**
**protection systems of a uniform character would not satisfy the needs of the internal market**
**since the protection would end at the** **frontiers** **of the State in which protection had been**
##### **acquired. Thus, in spite of approximation of laws the risk that conflicting rights could exist**

**in other Member States would still be real.**

**1.6 Action to provide for a Community system for design protection can only take place at the**
**level of the Community and cannot in any respect be replaced by action taken by Member**
**States within their territories. A supranational protection system can be provided for only**
**by way of supranational action. The legal instrument foreseen for achieving this is a**
**Regulation.**

**1.7** **Therefore the Regulation is in conformity with** **the** **principle of subsidiarity. The Community**
**must legislate because the legislation in question is necessary to achieve the aims of the**
**internal market and the legislation necessary for this aim cannot be adopted at the level of**
**the Member States but only at the level of the Community.**

**2.** **The legal basis**

**2.1 The proposed Regulation pursues in respect of industrial designs and the goods embodying**
**industrial designs objectives similar to those which other Community initiatives in the area**
**of intellectual and industrial property law** **pursue,** **namely the establishment and functioning**
**of a common market in design products and hence their free movement, undistorted**
**competition in design products and the due protection of this form of industrial and**
**commercial property. (Article 2, Article 3(a), and (f), and Article 36 of the EEC Treaty).**

**2.2 Article 8a of the EEC Treaty provides mat** **die** **Community shall adopt measures, in**
**accordance with the provisions of the Treaty, i.e. Article** **100a,** **with the aim of establishing**
**the internal market which comprises an area without internal frontiers in which is ensured**
**free movement of goods such as design products.**

**Article 100a EEC empowers the Community, in order to achieve the objectives of the**
**internal** **market,** **to adopt the necessary approximation "measures". Measures is a term for**
**every type of legal instrument. Therefore to "adopt** **measures"** **means to enact all appropriate**
**legal provisions. For** **die** **purposes of Article** **100a,** **appropriate provisions are provisions**
**which pursue the objectives set out in Article 8a and which therefore have as their object**
**the establishment and functioning of** **the** **internal market. The choice of instrument depends**
**on how suitable and necessary it is for the attainment of** **the** **objective.**

**2.3 The objective pursued by the measure is the** **creation** **of a Community-wide right coming**
**into existence and expiring at the same time for the whole area of the Community and**
##### **conferring upon its right holder a unitary right. This objective cannot be achieved by way**

**of** **a** **Directive. By means of a Directive approximation of the laws of the Member States can**
**be achieved thereby providing for legislation protecting designs on the same conditions, for**
**a uniform period of time and with the same scope of protection and contents of protection**
**in all Community Member States. But a Directive cannot replace the different national**
**protection systems** **with their** **exclusively territorial application, imposing** **on** **users** **the** **burden**
**of multiple registrations, of** **the** **payment of different fees in different Member States and**
**monitoring of rights in different Member States by a single right valid throughout** **die**
**Community.** **For this** **purpose** **a** **Regulation is necessary. It follows from** **what has** **been stated**
**in the introduction that** **die** **present situation where design protection is national** **and** **limited**

**to the jurisdiction within which it has been granted creates barriers to interstate trade. Unless**
**a Community-wide right is introduced, the reliance upon Article 36 as a legitimate defence**
**for maintaining restrictions on the importation of goods will be perpetuated and the action**
**suggested is therefore necessary to achieve the objectives as regards the internal market.**

**2.4 Harmonization within the meaning of Article** **100a** **is not restricted to amending national**
**law, but covers also supplementing national provisions or the replacement of national**
**provisions. The creation of a Community design supplements national provisions on the**
**protection of design, and can therefore be considered as an** **"approximation"** **of the law of**
**the Member States in this area within the meaning of Article 100a EEC.**

**2.5 The Office to be set up according to Article 2 of** **die** **Regulation should, for reasons of**
**economy, have administrative structures** **in** **common with the Community** **Trade** **Mark** **Office**
**created within the** **framework** **of the Community Trade Mark** **Regulation** **Jo be adopted prior**
**to final adoption of the present Regulation.**

**3.** **The importance of design protection for the Community**

**3.1 Adequate design protection adapted to the economy is of paramount importance to the**
**Community, its Member States and its enterprises, in particular small and medium-sized**
**enterprises.**

**3.2 With the increased standard of living, consumers are becoming increasingly demanding as**
**regards the quality of designs and have thereby set in motion a development having the**
**effect that design is becoming an extremely important marketing tool. In many sectors of**
**industry, enterprises compete primarily on designs. The economic activity within some**
**sectors of industry would come to a standstill if enterprises were not in a position to**
**stimulate the demand for their products by way of new designs. In many cases, it is the**
**design, which decides** **die** **commercial success or failure of operations and with the**
**realization of the internal market this development is likely to be reinforced. Enterprises**
**succeeding in attracting consumers by way of designs will, by exploiting the commercial**
**conditions of a single** **market,** **frequently be in a position to increase their market share in**
**respect of their products in comparison to their competitors. In the Community economic**
**landscape many monuments can be found which testify to the commercial success of design**
**enterprises. These enterprises are represented** **and** **their products more** **and** **more** **often** **found**
**in a large number of commercial centres of the Community.**

**3.3** **Superior design is one of** **the main** **assets of Community-based industries** **in their** **competition**
**with industries** **from** **third countries, which often have lower labour costs. Many design**
**products originating in the Community enjoy an enviable reputation in the market place. To**
**safeguard the basis of this reputation, to enhance even further the value of these design**
**activities, and to promote investment in designs by protecting them against parasitic**
**behaviour is one of the objectives of** **the** **Regulation.**

**3.4 Designs are often easily reproduced. In many cases no know-how is required for the**
**reproduction of design products. Therefore, design counterfeiting is widespread in the**
**Community as well as outside the Community and legislation offering at least a degree of**
**protection against the misappropriations of designs requested by economic operators.**

**3.5 The Community design protection system will set an example at the international level and**
**will make it easier for the Community to exercise its influence for the purpose of achieving**
**equitable design protection outside the jurisdiction of the Community.**

**4.** **Design protection in Member States**

**4.1 All Member States except Greece have introduced legislation on the legal protection of**
**designs by way of specific protection. The protection under specific design protection law**
**is often used in cumulation with protection under copyright law.** **The** **conditions for the**
**application of copyright law and the extent to which this legal instrument is used vary from**
**one Member State to another. In some Member States copyright is widely applied. This has**
**the effect of reducing the reliance upon specific design protection by a number of industrial**
**sectors. Even in those countries the more functional designs are, however, more often than**
**not sought** **to** **be protected under the umbrella of specific design protection law. Other legal**
**instruments such as trademark law and unfair competition law may also come into play**
**under** **die** **conditions applicable within the different areas of industrial and intellectual**
**property law.**

**4.2 Eleven Member States have in common a system according to which designs are protected**
**upon registration. Recently the UK has also introduced a protection for unregistered designs**
**with effect from 1 January 1989. Earlier designs benefit exclusively from the legislation in**
**force prior to the entry into force of the new legislation subject to some limitations on**
**copyright protection for existing designs for which transitional arrangements have been**
**made. The effect of the UK unregistered design right on the behaviour of operators in the**
**market place cannot yet be assessed.**

**4.3 The age of** **the** **present design protection laws of Member States differs significantly. Some**
**are of recent date as, for example, the UK legislation. Other laws are very old indeed. The**
**French law on models and designs dates, for example, from 1909 and has only been the**
**subject of technical amendments in 1991. The date of the enactment of** **die** **laws presently**
**in force is immaterial, however, from the point of view of the users of the system. The**
**origin of design protection laws is the period of industrialization. During this period the first**
**design protection laws were enacted, clearly inspired by principles of patent law. In spite**
**of later amendments or new legislative initiatives, the characteristics of early patent and**
**design protection law have been maintained. Thus, national legislation has been incapable**
**of fully adjusting to the industrial and economic development to the detriment of users of**
**the system. It is precisely this heritage from the early industrialized society which many**
**industrial sectors today regret.**

**4.4 The link** **to** **early patent law is expressed primarily by the requirements for protection, which**
**in many cases is a novelty concept which is not quite compatible with the characteristics of**
**designs, in some cases an examination prior to registration unduly stressing the importance**

**of prior registrations within a given geographical area and a design concept which favours**
**the ornamentation of products without** **sufficiently** **considering the characteristics of**
**contemporary industrial design: the merger of form and function.'**

**4.5 The Regulation aims at providing a fully** **modem** **design protection system adapted to the**
**reality of design activities and to the need of** **die** **users of** **the** **system.**

**5.** **The need for action**

**5.1 In parallel with the development of the Community and the completion of the internal**
**market, industrial property** **rights,** **which come** **into** **existence** **upon** **registration within** **a** **given**
##### **jurisdiction, need to be replaced or gradually superseded by Community-wide rights. Only**

**by introduction of Community-wide rights can the repercussions of national effect of**
**industrial property protection be overcome. For patents, the Community is endeavouring to**
**set the Agreement of** **15** **December** **1989** **relating to Community Patents** **[0]** **? into force as early**
**as possible. For trademarks, an adoption of** **die** **proposal for** **a** **Regulation on the Community**
**trademark appears to be within reach. The present proposal** **adds** **another piece to the jig-saw**
**puzzle which industrial property rights** **constitute.**

**5.2 If industry is to be allowed to benefit from the advantages of an internal market, national**
**rights must gradually be superseded by Community-wide rights. In particular, small and**
**medium-sized enterprises and individual designers are not equipped to secure and monitor**
**protection of their investment in design in twelve different Member States. Even for**
**enterprises being in a position to use the different national design protection systems, it is**
**a most cumbersome and costly affair. The result is that operators frequently limit**
##### **registrations to what at the moment are their most important markets with a real risk of later**

**repercussions as to their commercial prospects in other countries and with very considerable**
**negative effects on the free flow of goods.**

**5.3 Therefore, the need for action now has been emphasized by the overwhelming majority of**
**industrial sectors.**

**6.** **The effects of the Regulation at international level**

**6.1 At the international level, design protection suffers from the lack of international**
**conventions providing for a certain degree of harmonization by way of provisions on**
**minimum rights.**

**Article 5 of the Paris Convention for the Protection of Industrial Property sets out that**
**"Industrial designs shall be protected in all the countries of** **die** **Union" but contains no**
**provisions on substantive rights. The Berne Convention on the protection of Literary and**
**Artistic Works leaves the States adhering to the Berne Union** **die** **choice of protecting**
**industrial "works of applied art and industrial** **designs"** **either by way of copyright law or**
**by way of specific legislation (or both). Due to the lack of binding provisions in**

**(i)** **89/695/EEC,** **OJ No L 401, 30.12.1989, p. 1.**

**5**

**international conventions, design protection laws** **are** **far more different from each other than,**
**for example, copyright laws and patent laws. Securing rights and the monitoring of rights**
**in third countries is therefore not easy for EEC-based industries and is for small and**
**medium-sized enterprises a nearly impossible task.**

**6.2 The Hague Agreement concerning the International Deposit of Industrial Designs has as its**
**objective to make it easier for users to apply for design protection in a number of countries**
**by providing for a centralized international deposit system. By way of** **one** **application filed**
**with** **WIPO** **it is possible to obtain a protection in one or more or all the States adhering to**
**the Agreement. It needs to be emphasized, however, that the protection is strictly national**
**and subject to the conditions laid down in the laws of the countries designated in the**
**application. The individual countries designated in the application may refuse protection if**
**requirements for protection of national law are not fulfilled. This international registration**
**system could nevertheless be of great value to EEC-based industries** **even** **after entry into**
**force of** **the** **Community design protection system if it were not for the fact that apart from**
**seven Community Member States (the Benelux countries, France, Germany, Italy** **and** **Spain)**
**most industrialized countries do not adhere to the Agreement at the present time. Twenty**
**States participate in the Arrangement but apart from Switzerland, no major industrialized**
**State and in particular not the countries which constitute the most important export markets**
**of the Community. A revision of the Agreement is at** **die** **present time being discussed**
**within WIPO aiming at inter alia facilitating the participation in the Agreement of more**
**States and in particular the US and Japan.**

**6.3 When the Community design protection system enters into force it may become necessary**
**to provide for a link between the Community Design and** **die** **(revised) Hague Agreement.**
**Such a link permitting nationals and enterprises to acquire a Community Design through a**
**registration via the Hague system and permitting Community enterprises to acquire**
**international registration by way of registration with the Community. A model for such a**
**link can be found in** **the** **Protocol relating to the Madrid Agreement concerning the**
**international registration of** **marks** **establishing** **a** **link between the Community trademark and**
**the Madrid Agreement.**

**6.4 What has been said in paragraph 4.3 on the** **disadvantages** **which follow from the fact that**
**design protection laws have been inspired** **by** **principles of patent protection law** **is,** **however,**
**tenfold valid for some of the countries constituting the Community's most important trading**
**partners some of which directly apply provisions of patent law on designs called "design**
**patents". The contents of legislation in countries outside the Community becomes of concern**
**to the Community if Community enterprises could be disadvantaged by virtue of legislation**
**which, without in any way having a discriminatory character, fails to provide facilities for**
**easy protection of the characteristics of the output of Community enterprises.**

**6.5 By providing the appropriate legislation within the Community's own jurisdiction, the**
**Community greatly enhances its possibility to influence the development in the rest of the**
**world.**

**6.6 The provisions of the Regulation are fully consistent with the provisions on Industrial**
**Designs in the draft** **TRIPs** **Agreement at present under negotiation.**

**7.** **Preparation and consultation**

**7.1** **The Regulation is based on comprehensive preparatory work and thorough consultation with**
**interested circles. In June 1991 Commission services published a consultative document:**
**Green Paper on the legal protection of industrial** **design** **(III/F/5131/91).**

**7.2 Following the publication of the Green Paper, Commission services received written**
**submissions from an important number of industry organizations and from practitioners in**
**industrial property rights and from designers. In a number of** **cases** **industrial organizations**
**created cross industry working parties with a view to discussing the initial ideas set out in**
**the Green Paper and to submit comments and suggestions to the Commission. Such**
**comments made on behalf of extremely important organizations representing a cross section**
**of industries in all Community Member States deserve, of course, much attention.**

**7.3 The collection of submissions was supplemented by way of a hearing** **with** **a large body of**
**interested parties, consumers' organizations, international organizations and representatives**
**of** **Member** **States as observers on 25 and 26 February 1992. Detailed minutes of the hearing**
**have been submitted by Commission services** **(III/F/5252/92)** **in July 1992. Government**
**industrial property** **experts** **of Member States** **were** **consulted** **in** **their personal capacity during**
**a hearing of 25 March 1992. Finally, a hearing on the most controversial issue,** **die** **legal**
**protection of designs relating to** **car** **parts,** **was organized** **on** **16 October** **1992.** **In** **this hearing**
**only the most interested parties were invited to participate.**

**7.4 The contents of the present Regulation takes into consideration the many observations made.**

**8.** **The basic features of the Community design protection system**

**8.1** **The Community design protection system is a** **two-tier** **system introducing, on the one** **hand,**
**protection based on registration and, on the other** **hand,** **an automatic protection coming into**
**existence by making** **die** **design available to the public.**

**8.2 Designs are features of appearance which can be perceived by the human senses. No**
**aesthetic criteria are applied. Aesthetic and functional designs are equally protectable.**
**However, features necessary to achieve a technical function and which leave no freedom as**
**regards arbitrary elements are unprotectable in order not to monopolize technical functions**
**by way of design protection. Such features may be protectable under patent law or utility**
**model law provided the requirements for such protection are fulfilled.**

**To allow for the interoperability of** **products,** **designs of interconnections, even if arbitrary,**
**are not eligible for protection except as regards interconnections of modular products.**

**8.3 The basic requirements for protection are that the design is novel and has an individual**
**character, which means that the design in the eyes of an informed user is different from**
**other designs found in the market place.**

**8.4 The Unregistered Community Design confers upon the right holder protection against**
**reproduction whereas the Registered Community Design confers upon the right holder a**
**genuine exclusive right as regards the use of the design.**

**8.5 The duration of the protection is three years for the Unregistered Community Design and**
**five years for** **the** **Registered Community design renewable for a maximum period of twenty**
**five years.**

**8.6 It is important for designers and enterprises to be able to test a design in the market without**
**thereby - as foreseen in many design protection laws in force - jeopardizing the novel**
**character of the design. Therefore, the Regulation sets out that disclosures within a given**
**time period by the designer himself or his successor in title do not prejudice the novel**
**character of his design.**

**8.7 In accordance with the views of** **die** **interested circles, the registration system is not based**
**on substantive examination as to the fulfilment of requirements for protection prior to**
**registration. This aspect should contribute to rapid and uncostly registration.**

**8.8** **Upon registration designs are published. Some industries need, however, to be given the**
**possibility to keep designs secret for a period. Other industries, in particular textiles**
**producing a large number of designs with short intervals, need to be given the possibility**
**of reducing costs by way of deferment of publication.**

**8.9** **The Regulation introduces multiple registration for cost-saving purposes. By one and the**
**same application an indefinite number of interrelated designs can be registered.**

**8.10 By letting** **die** **Design Office share administrative structures with the Trade Mark Office**
**operational costs can be reduced. Further, it appears advisable to take over provisions**
**relating to the judicial system, administrative procedures and financial regulation from** **die**
**trademark Regulation unless specific features of designs as opposed to trademarks require**
**different solutions.**

**9.** **Design protection and competition**

**9.1** **Intellectual and industrial property rights confer upon the right holder exclusive rights.**
**Given the objectives of intellectual and industrial property rights as regards investment in**
**innovation and creativity, this aspect of intellectual and industrial property does not**
**normally give rise to misgivings from a competition policy point of view provided that the**
**rights are exercised in an equitable manner and provided mat competition in the market**
**place is not stultified by the creation of monopolies in generic products.**

**9.2** **The Regulation is fully in conformity with these guidelines. Design protection does not**
**monopolize given products, but protects the individual appearance given to a product by**
**its designer. Protection of the design of** **a** **watch does not hamper competition in the watch**
**market.**

**9.3** **In very rare cases a design protection sweeping in scope as the Community Design may**
**have secondary unwanted side effects as regards exclusion or limitation of competition in**
**the market place. This is true in particular for costly, long lasting complex products such**
**as motor vehicles, where design protection of** **the** **design relating to the individual parte of**
**which the complex product is composed could create a truly captive market in spare parts.**

**9.4** **For these products a repair clause has been introduced permitting the reproduction of**
##### **designs for the purpose of producing spare parts three years after the first marketing of the**

**product to which the design has been applied. Thus, the manufacturer is allowed an**
**exclusive right during a three year period without indefinitely tying the consumer to a**
**single manufacturer.**

**9.5** **In any event, Articles 85 and 86 of the** **EEC** **Treaty remain applicable. Although, as follows**
**from the case law of the Court of** **Justice** **[(2)]** **,** **the mere exercise by the proprietor of a**
##### **protected design of its exclusive rights does not in itself constitute an abuse of a dominant**

**position, this exercise may constitute such an abuse - and therefore be prohibited by**
**Article 86 EEC - if it involves on the part of** **the** **undertaking holding a dominant position**
**certain abusive conduct, such as the arbitrary refusal to supply spare parts to independent**
**repairers, the fixing of prices at an unfair level or a decision no longer to produce spare**
**parts for a particular product even though it is still in** **circulation,** **provided that such**
**conduct is liable to affect trade between Member States.**

**(2)** **Case 53/87, Circa v Renault. [1988] ECR, 6039.**
**Case 238/87, Volvo v** **Veng.** **[1988] ECR,** **6211.**

**PART** **TWO:** **PARTICULAR PROVISIONS**

**TTTLEI**

**GENERAL PROVISIONS**

**Article 1**

**Paragraphs (1) and (2)**
**The provision introduces the term "Community Design" for registered designs and unregistered**
**designs.**

**Paragraph (3)**
**The provision sets out the basic principle: the unitary character of the Community Design.**

**Article 2**

**The introduction of** **die** **Community Design makes the creation of a Community Design Office**
**necessary for the purpose of the registration of designs.**

**TITLEII**

**THE LAW RELATING TO DESIGNS**

**Section 1**
**Requirements for protection**

**Article 3**

**The provision contains two important definitions: "design" and "product".**

**"Design"** **means any feature of appearance which can be perceived by the human senses as**
**regards sight and tactility are features of design. It is irrelevant whether the design is of an**
**aesthetic character or functional and whether it is decisive for the end user's choice of product.**

**Some specific elements of which a design may consist have been enumerated. The enumeration**
**is not exhaustive. Weight and flexibility, for example, may in some cases be design features. It**
**goes without saying mat a colour in itself or a material as such are not eligible for protection.**
**But the choice of a colour in combination with other design elements or** **die** **combination of**
**colours in a graphic design can add to the individual character of the design and may as such**
**constitute a protectable element when applied to a specific product. A material or a texture can**
**likewise be the expression of a highly original idea and be a decisive element in perceiving the**
**presence of a protectable design.**

**10**

**"Product"** **means any item to which a design can be applied. The list of items mentioned is by**
**way of example only. It appears to be useful, however, to mention explicitly a number of**
**products such as, for example, typographic typefaces, which in some jurisdictions are not**
**considered "products" for the purpose of design protection.**

**Designs of** **parts** **of products can also be protected. The protection could therefore be sought for**
**a specific element of a product, all the other elements of the appearance being admittedly**
**commonplace. Components or elements intended to be assembled in a larger complex product**
**can each be protected as a product provided they can be marketed separately and their designs**
**comply with the** **requirements** **for protection.**

**Computer programs and semi-conductor products are not considered "products" for the purpose**
**of the application of the design Regulation.**

**As far as computer programs are concerned, the exclusion may appear to be superfluous since**
**computer programs as defined in the Directive on the legal protection of computer** **programs** **[(3) ]**

**cannot be designed. It may be useful, however, to state explicitly that the copyright protection**
**provided under the umbrella of the aforementioned Directive cannot be supplemented or**
**reinforced by a protection of** **die** **"look and** **feel"** **of a computer program by way of design**
**protection. This does not exclude the protection of specific graphic designs as applied, for**
**example, to icons or menus provided the normal requirements for protection are met.**

**As regards semi-conductor products, the exclusion is not self evident. The design of the**
**topography of semi-conductor** **products** **would probably, if not explicitly excluded, be eligible for**
**protection under the terms of the Regulation. It has been considered necessary, however, to**
**exclude semi-conductor products from protection in order not to tilt the balance created by the**
**recently adopted Directive on the legal protection of topographies of** **semi-conductor** **products** **[(4)]** **.**

**Article 4**

**Paragraph (1)**
**This Article sets out the requirements for protection.**

**The requirements are twofold: that the design is new and that it has an individual character.**

**Paragraph (2)**
**As far as designs applied to products which are parts of a complex product are concerned, the**
**design of each individual part must fulfil the requirements as regards being new and having its**
**own individual character. It can otherwise not attract protection. When a new car model is**
**marketed design protection is often taken out for the car as such and for a number of** **parts,** **in**
**particular body parts. The requirement implies that the novelty and individual character of, for**
**example, a car wing must be assessed on the basis of its own merits. It cannot derive individual**

**(3)** **Council Directive** **91/250/EEC,** **OJ No L 122, 17.5.1991, p. 42.**
**(4)** **Council Directive** **87/54/EEC,** **OJ No L 24, 27.1.1987, p. 36.**

**11**

**character by virtue of the individual character of** **die** **whole car. The principle expressed by the**
**provision has gained general recognition and corresponds to Article 2(2) of** **the** **Directive on the**
**legal protection of topographies of semi-conductor products.**

**Article 5**

**This provision defines the notion of novelty.**

**Paragraph (1)**
**In accordance with the opinion expressed by a majority of industries, the basic requirement for**
**protection is that the design is new. This is an objective criterion. It is immaterial to establish**
**whether the design is** **die** **result of an independent creation by the designer or has been copied.**
**Novelty is to be assessed at the world-wide level. If it has been registered or otherwise been**
**made available to the public** **anywhere** **in the world, it is not new. It is, however, only identical**
**or near to identical anticipations, which destroy the novelty, whereas "overall impression of**
**similarity" is not enough to have this effect. Non-identical anticipations, however, may need to**
**be considered for the purpose of assessing the individual character of the design.**

**Paragraph (2)**
**The notion "made available to the** **public"** **is defined. Any disclosure that does not take place on**
**the condition of confidentiality has the effect that the design is to be considered made available**
**to the public.**

**Article 6**

**Paragraph (1)**
**This provision defines the second requirement for protection, namely the individual character. A**
**design has an individual character in so far as it produces an impression of overall dissimilarity**
**compared to previously existing designs. It is immaterial whether it can be established that the**
**second design differs from an earlier design in even an important number of details if the overall**
**impression is one of similarity** **("déjà** **vu"). The person on whom an overall impression of**
**dissimilarity must be made is an "informed user". This may be, but is not necessarily, the end**
**consumer who may be totally unaware of** **the** **appearance of the product, for example if it is an**
**internal** **part** **of a machine** **or a** **mechanical device replaced in the course of a** **repair.** **In such cases**
**the "informed user" is the person replacing the part. A certain level of knowledge or design**
**awareness is presupposed depending on the character of the design. But** **the** **term "informed** **user"**
**should indicate also that the similarity is not to be assessed at** **die** **level of "design experts".**

**The provision introduces a high threshold of dissimilarity in comparison to previously existing**
**designs, thereby at the same time providing for a broad scope of protection (Article** **11).** **If a**
**design was not subjected to this test, it would imply that alterations of a previously existing**
**design would qualify for protection as a new design since the novelty criterion of Article 5 only**
**precludes identical designs. In a number of jurisdictions the search for anticipations** **has,** **in** **fact,**
**been limited to the identical or nearly identical designs thereby reducing the scope of protection**
**to nil. European industries** **need,** **however, a protection which goes beyond** **die** **protection against**
**identical reproductions and which is far more sweeping in scope. The counterpart of such an**
**efficient protection is, however, a high threshold as regards individual character.**

**12**

**As regards the possibility of maintaining** **and** **enforcing the high threshold, see Articles 56 and 58.**

**As a result, fewer designs will be protectable under the Community Design than under the laws**
**of some Member States. Most industries have, however, during consultation, stressed that the**
**requirement appears to be reasonable and in conformity with the true interests of Community**
**industries.**

**Paragraph (2)**
**If the individual character were to be assessed in comparison** **with** **all prior designs, the threshold**
**might become unduly difficult to pass. Further, it would appear to be objectionable if** **an** **alleged**
**infringer during infringement procedures were to be allowed to challenge the validity of the**
**design he allegedly has copied** **by** **quoting a possible previous design, which has long ago**
##### **disappeared from the market and can be found only in a remote museum. Such a risk of abusive**

**search for anticipations has in fact been quoted by industry as an argument against** **die** **objective**
##### **novelty requirement. This risk of abuse needs to be countered. It is also claimed that die revival**

**of ancient designs in many cases can be meritorious and deserve protection. Therefore, the**
**provision defines and limits those prior designs in respect of which the individual character of**
**a Community Design must be assessed. Designs applied to products, which can no longer be**
**found on** **die** **market - whether inside or outside the Community - shall not be taken into**
**consideration. This implies that a design, the protection of which has expired prevents a third**
**party from acquiring an exclusive right as regards a similar design as long as the product in**
**respect of which it is applied is still on the market. It is, however, necessary to consider also**
**Registered Community Designs and national registered designs, which have been published and**
**which have not yet expired, irrespective of whether** **die** **product to which the design is applied**
**is marketed** **or** **not.** **A limitation to products effectively marketed would be incompatible with the**
**obligations of Member States** **under the Paris** **Convention for** **the** **Protection of Industrial Property.**

**Paragraph (3)**
**The provision intends to give guidance to the courts when deciding whether a design has the**
**necessary individual character. Common features shall be given more weight man differences,**
**because what counts is the overall impression. Further, the freedom of the designer must be**
**considered when assessing the individual character (see also Article** **11(2)).**

**Article 7**
**Paragraph (a)** **'**
**The point in time when** **die** **criteria must be fulfilled is "the date of reference". This date is**
**different for Registered Community Designs and for Unregistered Community Designs. For**
**Unregistered Community Designs the date is the day on which the Unregistered Design comes**
**into existence, which is the day it is made available to the public. Article 12 defines how this**
**date is established.**

**Paragraph (b)**
##### **For Registered Community Designs the day of reference is the day of the filing of the application**

**for registration or, if a priority is** **claimed,** **the day of priority.**

**13**

**Article 8**

**Paragraph (1)**
**The provision defines those disclosures which do not have the effect of destroying the novelty**
**and the individual character of a Registered Community Design.**

**The provision states that where protection is claimed under a Registered Community Design,**
**disclosures which** **have** **taken place within twelve months prior to the date of reference (date of**
**the filing of** **the** **application or a possibly earlier date of priority) is without consequence for the**
**novelty and the individual character of the Registered Community Design provided that the**
**disclosure has taken place by the designer himself or his successor in title or where the disclosure**
**is the result of** **an** **abuse in relation to the designer or his successor in tide.**

##### **This implies, firstly, that the designer can use the design and test it on the market during twelve**

**months without risk of destroying the novelty and individual character of his design. The**
**provision has the effect of** **a** **"grace** **period"** **while avoiding use of** **the** **term, as this could lead to**
**confusion with the different patent concept of a grace period.**

##### **Secondly, the provision expresses the principle that all other disclosures titan the ones described**

**have the effect of destroying** **die** **novelty of a later design even if the prior design is unknown**
**to and could not have been known to** **die** **designer of the later design. A design disclosed, for**
**example, in Sicily and marketed only locally** **has,** **in theory, the effect of preventing a designer**
**in** **Ireland** **from getting protection for an identical design even where** **die** **later design has been**
**developed without inspiration from the prior design. In practice, however, the effects are likely**
**to be less dramatic. An earlier Unregistered Community Design does not guarantee that a later**
**independentiy** **developed design is not Registered in good faith and remains valid because it is**
**unchallenged. Further, even in cases where the right holder in respect of the earlier design**
**becomes aware of the later Community Design he may well invalidate the exclusive right by**
**action before the Office (Article 56) or by Legal Action before a Community Design Court**
**(Article 85 (c) or (d)), but he cannot prevent the later designer or his successor in tide from**
**commercialising** **the** **product** **to** **which** **die** **design is applied, since the Unregistered Design confers**
##### **upon the right holder a protection against reproduction only (Article 20). For these reasons the**

**provision appears not to entail rough justice in practice.**

**Paragraph (2)**
**If an abusively disclosed design within the meaning of Article 8(1) has led to a Registered**
##### **Community Design or to a registered design right of a Member State, the abusive nature of the**

**disclosure can no longer be invoked, as the principle of legal certainty** **has to** **prevail. The person**
**legitimately entitied to the design may, however, apply the procedure foreseen under Article** **16**
##### **and ask for a transfer of the registered right taken out as a consequence of the abusive disclosure.**

**Article 9**
**Paragraph (1)**
**No distinction is made in the Regulation between aesthetic and functional designs; they are**
**equally able to attract protection. In extremely rare cases, the form follows the function without**
**any possibility of variation. In such cases, the designer cannot claim that the result is due to**
**personal creativity. The design has, in fact, no individual character and cannot attract protection.**

**14**

**It is unlikely, however, that the whole design will be unprotectable. In most cases, only specific**
**features will, without possibilities of** **variations,** **be dictated by function. Therefore, the provision**
**provides for unprotectability to the extent only that there is no freedom as regards arbitrary**
**elements of** **design.**

**Paragraph (2)**
**This provision sets out that the design of interconnections which must necessarily be reproduced**
**in their exact forms and dimensions are not eligible for protection even where the design of the**
**interconnecting element is arbitrary in the sense that shape and dimension is not exclusively**
**dictated by the technical function. The purpose of this provision is to enhance the interoperability**
**of products of different make and to prevent manufacturers of design products from creating**
**captive markets, for example for peripherals, by monopolizing the shape and dimensions of**
**interconnections.**

##### **Thus, for example, the dimensions of the fittings of an exhaust pipe, dictated by the necessity of**

**fitting the exhaust pipe to a specific car model cannot constitute a protectable design element**
**since the dimensions are dictated by those of** **die** **underside of the car.**

**Paragraph (3)**

**An exception from** **die** **provision in paragraph 2 needs to be made for the interconnections of**
**modular products** **provided,** **of course,** **that the** **interconnections comply with** **die** **requirements for**
**protection, in particular** **die** **requirement** **as** **to individual character (Article 6).** **Thus,** **for example,**
**fittings which permit a chair of a specific make to be fitted in rows to other chairs of** **the** **same**
**make or permit the** **chairs** **to be stacked or** **die** **interconnecting elements of toys designed with a**
**view to being assembled** **would,** **in principle, be eligible for protection. Otherwise, it would be**
**possible for competitors to make a short cut to a special market where the innovative character**
**of the design in question often consists in - albeit not exclusively - the design of interconnecting**
**elements permitting indefinite interconnection within a given system.**

**Article** **10**

**A similar provision concerning public policy and accepted principles of morality can be found**
**in many national design protection laws and in the Benelux uniform law.**

**Section 2**
**Scope and term of protection**

**Article** **11**

**Paragraph (1)**
**The Article defines the scope of protection. It lays down two main principles. First, when**
**assessing whether a second design infringes** **a previous** **design the overall impression of similarity**
**is decisive and not whether differences as regards details or specific aspects can be established.**
**Reference is made to an "informed user". The notion "informed user" is explained in the**
**comments to Article 6. The overall impression created on an "informed user" may differ from**

**15**

**the overall impression created on an ordinary consumer, in the sense that the "informed user"**
**may find striking differences, which would totally escape the attention of** **an** **ordinary consumer.**
**Much depends on the character of the design.**

**Paragraph (2)**
**Paragraph (2) is intended to give guidance to the courts in infringement cases. What counts is**
**not the unimportant variations, which a competitor** **has** **added to a reproduced design ("intelligent**
**copy") but** **die** **common features.**

**Highly functional designs where** **die desijmer** **must respect given parameters** **are** **likely to be more**
**similar** **than** **designs in respect of which** **die** **designer enjoys total freedom. Therefore, paragraph 2**
**also establishes the principle that the freedom of the designer must be taken into consideration**
**when the similarity between an earlier and a later design is being assessed.**

**Article 12**

**The Article sets out the term of protection for the Unregistered Community Design. The**
**protection comes into existence upon making the design available to the public. The onus of**
**proof** **as** **regards the date on which the design was made available to the public is on the design**
**owner. It may be advisable, in cases where the date could be challenged, to keep records on the**
**disclosure of the design. The commercial practices vary from one industry to another and no**
**general rule can be indicated as to what must be considered necessary to establish the date of**
**making** **the design available to the public.**

**Article 13**

**This Article sets out the term of protection for the Registered Community Design. The term of**
**protection is five years renewable for four further periods each of five years computed from** **die**
**day of application. If the design has enjoyed protection as an Unregistered Community Design**
**for which a registration application has been made at the end of the period of twelve months**
**described in Article 8(1), the maximum protection period for a Community Design can thus be**
**26 years.**

**Section 3**
**Entitlement to the Community Design**

**Article 14**

**Paragraph (1)**
**The provision establishes the important principle that the design right belongs originally to the**
**designer. Nothing prevents, however, the designer from assigning from the outset his right to**
##### **another person, the "successor in title", usually the manufacturer of the products embodying the**

**design. As the Community Design only confers economic** **rights,** **but no moral** **rights,** **the transfer**
##### **of the right from the designer to the successor in tide is total, except for the right established by**

**Article 19 to be mentioned as designer before the Office in case of a Registered**
**Community Design.**

**16**

**Paragraph (2)**
**Where the design is created by an employed designer in the execution of his duties under the**
**work contract, the right belongs to the employer unless otherwise provided by contract. In the**
**corresponding provision in the Directive on the legal protection of** **computer** **programs** **[(5)]** **the right**
##### **of the employer is limited to the exercise of the economic rights. The difference stems from the**

**fact that the protection provided for by** **die** **aforementioned Directive is copyright protection,**
**which according to the laws of** **some** **Member States grants the author a protection which cannot**
**be assigned in its entirety. No similar restrictions exists as regards the assignment of design**
**rights. Consequently, the same solution has been foreseen as in Article 3(2)(a) of the Directive**
**on the legal protection of topographies of semi-conductor** **products** **[(6)]** **.** **Within the** **framework** **of**
**die** **aforementioned Directive the solution indicated is optional only. Within the framework of the**
**present Regulation it has, however, been considered necessary to provide for a uniform solution.**

**Article** **15**

##### **When a design has been developed by two or more designers joindy, die right in the design shall** **belong to them jointly. If it has not been laid down in contract how the right is exercised, it will**

**need to be exercised joindy.**

**This last rule has not been expressed explicitly in the Regulation.**

**For the case where a design has been developed by two designers independently of each other,**
**see comments to Article 8(1).**

**Article 16**

**Paragraph (1)**
**It may occur that a registration is taken out by a person not entitled, for example, if** **an** **employed**
**designer takes out a registration for a design in respect of which the employer following** **die**
**provisions of Article 14(2) is the legitimate right holder. In such a case the right holder may**
**claim a transfer of** **die** **registration ("Vindication" action). A similar provision can be found in**
**Article 23 of the Agreement relating to Community Patents of 15 December** **1989** **[(7)]** **.**

**Paragraph (2)**
##### **Where a registration fails to mention that the right belongs to several designers joindy, each of** **the right holders can claim correction in accordance with paragraph (1).**

**Paragraph (3)**
**Except for cases where the registration has been taken out in bad faith, it appears necessary to**
##### **make the access to correction subject to a limitation in time. The limitation has been fixed at two**

**years from publication.**

**(5)** **Council Directive** **91/250/EEC,** **OJ No** **L** **122, 17.5.1991, p. 42.**
**(6)** **Council Directive** **87/54/EEC,** **OJ No** **L** **24, 27.1.1987, p. 36.**
_**°>**_ **89/695/EEC,** **OJ No L 401, 30.12.1989, p. 1.**

**17**

**Paragraph (4)**
**The fact that legal proceedings regarding correction have been initiated is subject to mentioning**
**in** **the** **register. The same applies to a decision on entitlement or any other termination of the legal**
**proceedings.**

**Article 17**

**Paragraph (1)**
**This provision sets out the effects of a judicial decision recognizing the transfer of** **a** **Community**
**Design to the legitimate right holder as a consequence of the action referred to in Article 16.**
**Also this provision is closely modelled on the provision of Article 24 of** **the** **Community Patent**
##### **Convention [(8)] . The effect is that licences and other rights granted by a non-entitled person lapse,**

**when it has been established that they have been granted by a non-entitled person.**

**Paragraph (2)**
**In cases where serious and effective preparations have been made to exploit the licence or**
**another right commercially, the** **effect** **of a lapse may be disastrous. To mitigate the** **effect,** **it is**
**foreseen that a licence inspired by the "right of prior use" (Article 25) can be granted if**
**requested.**

**Paragraph (3)**
##### **In case the licensee or the holder of another right has acted in bad faith when exploitation began,**

**all rights are forfeited.**

**Article 18**

**This provision gives the Office the right to presume that the person in whose name the**
**application is filed is the person entitled to** **die** **design right. This provision, which follows the**
**similar provision of Article 60(3) of** **the** **European Patent Convention, aims at avoiding that, in**
**a procedure before the Office, the question of the entitlement could be** **raised,** **bearing in mind**
**that the Office has no jurisdiction to adjudicate on such questions, which belong to the**
**jurisdiction of the national courts.**

**If the question of entitlement should** **be** **raised during the registration procedure, the Office would**
**have to pursue the procedure** **with** **the original applicant. The person who pretends to be the**
**legitimate right holder could then claim the transfer of the right under the action mentioned in**
**Article 16. If the question is raised during an invalidity action, the Office could, if it considers**
**appropriate, stay** **the** **proceedings** **and** **invite** **the person** **pretending to be** **the** **legitimate** **right** **holder**
**to have the matter ascertained before a national court.**

**Article 19**

**This provision grants the designer a right of paternity to the design as regards the procedures**
**before the Office and the Community Design Register (see also Article 14(1)).**

**(8)** **89/695/EEC,** **OJ No L 401, 30.12.1989, p. 1.**

**18**

**In a number of cases designs are created by design departments of an industry or by teams of**
**designers and it may be very cumbersome, if not sometimes impossible, to indicate the names**
**of all the participants in the development of a design. In such cases it is sufficient to indicate,**
**for example, that the design has been developed by** **die** **design department of the enterprise in**
**question. Detailed provisions aiming at ensuring that the right of paternity of** **die** **designer is**
**safeguarded** **under** **these circumstances** **are** **going** **to** **be developed** **in** **the Implementing Regulation.**

**It has not been considered feasible to require that the name of the designer (or of** **the** **team) be**
**mentioned in other contexts, for instance on the product itself or on the packaging or in the**
**literature accompanying the product.**

**Section 4**
**Effects of the Community Design**

**Article 20**

##### **The right conferred by the Unregistered Community Design is a protection against reproduction**

**only and is not a monopoly right Therefore, the wording is different from Article** **21(1)** **dealing**
**with the rights conferred by** **die** **Registered Community Design in the sense that no exclusive**
**rights as regards the use of their design is conferred. In case of unauthorized copying,** **die** **right**
**holder can proceed against secondary infringers, such as** **importers** **or dealers to prevent the**
**commercial dealing in counterfeit products.**

Article 21

**Paragraph (1)**
##### **The right conferred by the Registered Community Design is a monopoly right. The right holder**

**has an exclusive right as regards the use of** **the** **design and he can enforce his right against any**
**similar design even in cases where the infringing design has been developed in good faith.**

**Paragraph (2)**
**If, however,** **a** **Registered Community Design** **has** **not been published because the right holder has**
**made use of the possibility of adjourning the publication, the Community Design confers upon**
**die** **right holder protection against reproduction only. Upon publication, the full exclusive right**
**is conferred. It goes without saying that this effect is not retroactive.**

**A party who has independently developed a design falling within the scope of** **protection** **of the**
**Registered and now published Community Design is thus not affected by** **die** **exclusive right.**

**19**

**Article 22**

##### **The provision contains a number of limitations of the rights conferred by a Community Design.**

**Paragraph (1)**

**Subparagraphs (a) and (b) correspond to the provision in Article 27 of the Agreement of**
**15** **December** **1989** **relating to the Community** **Patent** **[(9)]** **.** **Subparagraph (c) contains** **a** **provision on**
**fair use as regards educational use or quotations, the essential element being that the use does**
**not prejudice the normal exploitation of the design. The source has to be recognized.**

**Paragraph (2)**

**Subparagraphs (a) to (c) introduce the same exceptions for design as can be found for patents in**

**Article 5(3) of the Paris Convention on the Protection of Industrial Property.**

**Article 23**

**The purpose of** **this** **provision is to avoid the creation of captive markets in certain spare parts.**

**By virtue of** **die** **provision in Article 9(2), the design of mechanical interconnections cannot**
**constitute subject matter which can attract design protection. This means, in practice, that all**
**dimensions of parts of a complex product may be** **reproduced.** **Moreover, any part of such a**
**product may be considered immaterial to the user if, for example, the replacement part cannot**
**be seen. This will often be the case for internal parts of machinery, a car engine and the like.**

**If, however, the part in question is external and is meant to be seen, and if, further, in the eyes**
**of the end consumer, it ideally should match** **die** **overall appearance of the complex product, then**
**access to reproduction of dimensions and other mechanical interconnection elements would be**
**insufficient** **in** **themselves to allow for competition in** **the parts** **in question. The consumer, having**
**bought a long lasting and perhaps expensive product (for example a car)** **would,** **for external**
**parts,** **indefinitely be tied to the manufacturer of the complex product. This could eventually**
**create unhealthy conditions in** **die** **market place as regards competition in parts, but also, in**
**practice, could provide the manufacturer of** **die** **complex product with a monopoly lasting longer**
**than** **die** **protection of his design. If, for example, competitors were only allowed to enter the**
**market after the design protection** **had** **expired,** **it is reasonable to believe** **that no** **enterprise would**
**find it worthwhile to enter the market at that time. If competition is to be provided for, access**
**to the market must be open at a time when the investment in production realistically can be**
**considered.**

**The provision makes an inroad into the rights of the right holder and it should therefore be**
**applicable only under strict conditions.**

##### **First, a period of three years from the first marketing of die product is foreseen during which the**

**right holder in the design has an exclusive right.**

**(9)** **89/695/EEC,** **OJ No** **L** **401, 30.12.1989, p. 1.**

**20**

**Secondly, the design in question must be applied to a product, which is a part of a complex**
**product upon whose appearance it is dependent. The condition is fulfilled, for example, by the**
**design of a car door, which is conceived to match the other doors of the car and** **die** **whole car**
**body, but not necessarily all other parts serving an ornamental purpose.**

**Further, the purpose of the reproduction must be to allow repair in the sense of restoring the**
**original appearance of the complex product. This condition may be difficult to enforce in**
**practice. However, the fact that reproduction only can take place as from three years from the**
**first marketing makes it unlikely that an independent producer of parts could enter** **die** **market of**
**subcontractors delivering parts to the first assembling and marketing of the complex product.**

**The purpose of the provision is to provide for fair competition in the market** **place.** **It is therefore**
**a condition that an independent producer of** **parts** **makes it clear to the public that his product is**
**of** **a** **different origin than the corresponding original part of** **the** **complex** **products.** **There must be**
**no passing-off whereby the consumer may be misled. Understood in this way it is** **also** **clear that**
**the original manufacturer of** **the** **complex product carries no responsibility for the quality of the**
**replaced part in question.**

**Article 24**

**This provision contains a codification of the case-law of the Court of Justice concerning** **die**
**exhaustion of the "industrial and commercial property rights" within the meaning of**
**Article 36 EEC. The provision, which is related to the putting on the market in** **die** **territory of**
**the Community, follows similar provisions contained in other Community acts, notably the**
**Community Patent Convention and the draft Regulation on the Community Trade Mark.**

**Article 25**

**With the filing of** **an** **application for a Community Design, the design in question becomes the**
**object of** **an** **exclusive right. In rare cases a design falling within the scope of protection of the**
**right holder in respect of the Community Design may have been developed independently by**
##### **another party who, compared to the right holder in respect of the Registered Community Design**

**is,** **however, late in making the design available to the public or applying for a registration. As**
**a general rule, it is necessary to foresee that the right following from the Community Design**
##### **precludes all other rights. In exceptional cases, however, the effect of dûs rule may appear to be**

**unnecessarily harsh, namely where the second designer has made serious preparations (financial**
##### **or otherwise) to exploit the design in question. For these presumably rare cases, a right of prior**

**use has, with inspiration from the field of patent law, been foreseen.**

**The right of prior use is not necessary with respect to Unregistered Community Design as the**
**independent developer of an identical design cannot be considered as an infringer (see**
**Article 20).**

**21**

**Section 5**
**Invalidity**

**Article 26**

**Paragraph (1)**
**This provision establishes the principle that the invalidity of a Community Design may be only**
**declared by the specialized national courts called Community Design Courts (see Article 84). In**
**the case of a Registered Community Design, however,** **the** **jurisdiction of these courts is subject**
**to the condition** **that the** **action for invalidity has been raised as a counterclaim in** **an** **infringement**
**action (see Article 85(d)), whilst the direct action for invalidity has to be brought before the**
**specific department of the Office (see Article 56 ff).**

**Paragraph (2)**
**In some cases there could be an interest in obtaining a declaration of invalidity even after the**
**design has expired or has been** **surrendered,** **for example if the design right, prior to its expiry**
**or surrender, has been enforced against a party by a decision which has not yet become final.**

**Article 27**

**This important provision contains the exhaustive list of the grounds on which a Community**
**Design can be declared invalid.**

**Paragraph (1)**
**The first and most obvious case is when the requirements for protection referred to in Article 4**
**are not fulfilled (paragraph** **(1** **)(&))•**

**The** **second** **ground** **for invalidity mentioned** **under paragraph** **(l)(b) corresponds to the case where**
**the specific features of the design** **are** **not eligible for protection because they** **are** **entirely dictated**
**by a technical function leaving no freedom for arbitrary design or constitute interconnections**
**(Article 9(1) and (2)). It should be stressed that often this ground of invalidity will only lead to**
**partial invalidity. The provision is most likely to be used in infringement proceedings, where an**
**alleged infringer claims that the design feature he is accused of infringing constitutes an element**
**which is not eligible for protection.**

**The rules on jurisdiction** **and** **procedure including the competence of the Commission to intervene**
**(Articles 56 and 58) concerning the declaration of invalidity are also applicable to the case of**
**partial invalidity.**

**The third ground for invalidity mentioned under paragraph (l)(c) deals with the cases where a**
**design is contrary to public policy or accepted principles of** **morality.** **Although these cases will**
**probably prove to be extremely rare, they raise a difficult** **question:** **should** **the** **contradiction with**
**public policy or accepted principles of morality be assessed by using a "Community notion" or**
**by reference to a specific national sensitiveness which may vary profoundly from one country**
**to another. Notwithstanding the fact that both in the case of the Community Patent and of the**
**Community Trade Mark the first approach has been followed, it has been felt that this could be**

**22**

**dangerous dealing with design, as it would either imply that the interpretation of these notions**
**would have to take place at the lowest existing level within** **the'Community,** **or that an**
**autonomous interpretation would have to be eventually developed by the Court of** **Justice** **which**
**could raise political difficulties. For these reasons, it has been suggested that the invalidity will**
**be declared only in respect of the Member State or States where this ground of invalidity obtains,**
**thereby maintaining the validity of the Community Design in all other Member States**
**(paragraph (3)(a)).**

##### **A fourth ground for invalidity (paragraph (l)(d)) concerns the case where the right holder is not**

**the person legitimately** **entided,** **but has, for example, misappropriated the design right. This**
**ground may be operated only by the person legitimately** **entitled,** **who has therefore first to act**
##### **under Article 16 in order to obtain a decision by a court establishing his right to the design. This** **provision aims at assisting the legitimate right holder in those cases where he prefers to destroy,**

**with** **ex-tune** **effect, the misappropriated right rather than to continue the exploitation of the**
##### **exclusive design right in his own name on the basis of the decision recognizing his entitlement.**

**Paragraph (2)**
**A special case of invalidity is dealt with under paragraph (2) and concerns the so-called "earlier**
**rights". This provision deals with the case of those applications for or registered design rights**
**which were already filed with an industrial property office, but not yet made available to the**
**public at the date on which, according to Article 7, the novelty and the individual character of**
**a later Registered Community Design has to be assessed. This is not a theoretical problem,**
**limited to the few months which might run between filing the application and publication of** **the**
**design right; it also concerns the cases where a registered design right is kept secret by** **die**
**relevant office under the applicable law. However, in the case of the Registered Community**
**Design in respect of which the publication has been adjourned according to Article 52, the**
**problem will occur only in case of reproduction (see Article 21(2)).**

**Such anticipations ("earlier** **rights")** **are not covered by the provisions of Articles 5 and 6 and**
**cannot be opposed to a later design right, as they are not "disclosures" in a technical sense. It**
##### **would be, on the other hand, impossible to leave such earlier rights without any defence against**

**later registrations; not only would this be utterly unfair but it would also make completely**
**poindess the mechanism of adjournment of publication known to several national systems and -**
**albeit with protection against reproduction only - also foreseen for the Registered Community**
**Design.**

**The solution which is suggested consists, therefore, in admitting that the right holders of such**
##### **earlier rights could invoke them as a ground of invalidity against the later Registered Community** **Design. The possibility of invoking such a ground would, however, be limited to the right holder**

**of the earlier right and the earlier right could not be invoked by a third alleged infringer.**

**The favour that the later Registered Community Design deserves with respect to such earlier**
**rights which were not available to the public when the application was first filed justifies a**
**further limitation of this ground for invalidity in the case where the earlier** **rights** **are design rights**

**23**

**of one or more Member States and have therefore a territorial validity more restricted than the**
**whole Community. In these cases,** **die** **invalidity will be declared only with respect to such State**
**or States, leaving intact the protection offered by the Registered Community Design over the rest**
**of the territory of** **die** **Community (paragraph (3)(b)).**

**Article 28**

**This provision sets out the principle of** **the ex-tunc** **effect of invalidity. Two cases are set out in**
**paragraph (2), where such effect is mitigated: the case of a final court decision on infringement**
**which has been already enforced and a contractual obligation which has already been performed.**

**TTTLE** **III**

**COMMUNTTY** **DESIGNS AS OBJECTS OF PROPERTY**

**Articles 29-36**

**These Articles deal** **with the** **Community Design (and the application for** **a** **Registered Community**
**Design) as an object of property. The provisions have been closely modelled on the similar**
**provisions already adopted for the Community Patent and** **die** **Community Trade Mark. It would**
**seem therefore superfluous to comment on each of them in detail.**

**TITLE** **IV**

**THE APPLICATION FOR A REGISTERED COMMUNITY DESIGN**

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

**Articles 37-38**

**These two Articles determine where the application for a Registered Community Design must be**
**filed.**

**The applicant may choose between filing directly at the Community Design Office or filing at**
**the central industrial property office of a Member State. This option is modelled on the one**
**offered by the Regulation relating to the Community Trade Mark.**

**Bearing in mind the geographical extension and the linguistic variety of the Community, the**
**possibility to file with a national office represents a facility for those applicants who prefer to**
**establish** **die** **first contact with a more familiar authority nearer to their domicile.**

**The proposal does not, however, oblige each Member State to put at the disposal of their**
**residents the possibility of filing at the national industrial property office but merely allows**
**residents to do this if** **die** **law of a Member State so permits. It seems likely that most of the**

**24**

**central offices, in particular their "design departments", will be willing to carry out this task.**
**Belgium, Luxembourg and the Netherlands could entrust this task to the Benelux Design Office**
**at The Hague.**

**After a** **running-in** **period the question of how well the suggested scheme is working will have**
**to be assessed; experience will show whether** **die** **applicants'** **preference goes for a centralized or**
**a decentralized filing. Article 38(3) requires from the Commission a report on the operation of**
**the system after ten years of experience accompanied, if necessary, by proposals for**
**improvement.**

**If the application is filed with a national office, that office is obliged to forward the application**
**to the Community Office within two weeks from the date of** **actual** **filing. The national office can**
**require the payment of a fee to cover the administrative cost of receiving and forwarding the**
**application.**

**The risk that the application might not reach the Community Office, however minimal, cannot**
**be disregarded (delay or loss of the file during the transfer or as a consequence of a mistake by**
**the national office). To minimize the consequences of** **such** **an event it has been foreseen that the**
**Community Office, as soon as an application forwarded by a national office is received, will**
**inform the applicant accordingly. The applicant will therefore be in a position to spot very soon**
**any possible delay or loss of** **the** **application if he does not receive from the Community Office**
**a notice of receipt of** **the** **application within a reasonable period from the date of filing with** **die**
**national office. A possible liability of the national office, if from the delay or the loss of the**
**application certain rights of the applicant are lost, would be governed by the national law**
**applicable in the specific case.**

**Article 39**

**This Article sets out the conditions with which an application must comply.**

**An application is made up of a number of** **elements.** **Some of them must be present for** **die**
**application to be valid, others are permissive and depend on the circumstances of the case.**

**Paragraphs (1), (4)**
**The necessary elements are the following:**

**-**
**the request for registration, which will in fact consist in a multilingual form put at the disposal**
**of the applicants by the Community Office and by each national office (paragraph (l)(a));**

**- information identifying the applicant (paragraph (l)(b));**

**- a graphic or photographic representation of the design suitable for reproduction (the**
**representation will be used for** **die** **publication of the design in the Community Design Bulletin,**
**as it is quite likely that representations of Registered Community Designs will be stored by**
**the Office on optical disks, the Implementing Regulation could establish technical standards**
**to define what is suitable for reproduction) (paragraph (l)(c));**

**- the mention of the name of the designer or the indication of the team of designers**
**(paragraph (4) - see also Article 16).**

**25**

**Paragraph (3)**
**The permissive elements are the following:**

**- a description explaining the graphic or photographic representation (such texts may be helpful**
**in order to identify the specific features of** **the** **appearance of** **the** **product which constitute the**
**essence of the design and which might not show up very well in a picture or drawing)**
**(paragraph (3)(a));**

**-**
**an indication of the products in which the design is intended to be embodied and the**
**classification** **of** **the products according to the Locarno Agreement (the indication and**
**classification would only be for classification and search purposes, and they would have no**
**impact on** **die** **scope of protection of** **die** **design right) (paragraph (3)(b) and (c));**

**- a specimen or sample of the product in which the design is embodied: the specimens or**
**samples could** **concern** **two-dimensional (mainly textiles)** **as** **well** **as** **three-dimensional products.**
**Specific rules will have to be issued in** **die** **Implementing Regulation concerning the standards**
**and** **die** **maximum sizes such specimens can reach, bearing in mind mat** **they** **will have to be**
**kept and classified by the Office (paragraph (3)(d));**

**- a request for adjournment of** **die** **publication of the design (paragraph (3)(e)** **-** **see Article 52).**

**Paragraph (2)**
**The representation of the design suitable for reproduction can be replaced by a specimen or a**
**sample of** **the** **design under the following circumstances:**

**- if the application is for a two-dimensional design; and**
***** **if a request for adjournment of publication of the design is filed.**

**This provision is intended to meet a specific need of the textile industry, which could use the**
**instrument of the adjournment of publication in order to file a number of applications much**
**higher than the number of designs for which eventually it will need protection. It would be**
**unnecessarily harsh to require this industry to deposit costly photographic or graphic**
**representations for all their applications at this very early stage, whilst filing a specimen or a**
**sample would be easier and cheaper. At the expiry of the period of adjournment, however, for**
**those designs for which protection is going to be maintained, publication in the Design Bulletin**
**will have to take place and, for this purpose, the graphic or photographic representation will have**
**to be filed (see Article 52(4)(b)).**

**Paragraph (5)**
**Concerning** **die** **fees, it is proposed that the application be subject to the payment of two fees:**

**- a registration fee;**

**- a publication fee.**

**If adjournment of publication is required, the publication fee should be replaced at this stage by**
**a lighter fee for adjournment of publication which should basically cover the cost of the**
**publication of the mention of adjournment (see Article 52(3)).**

**The amount of these and any other fees provided by the Regulation will be established in**
**accordance with the procedure under Article 127 in a Fees Regulation.**

**26**

**Article 40**

**Paragraph (1)**
**The instrument of the "multiple application" is known in several national systems and in the**
**Hague Agreement concerning the international deposit of designs. The aim is to facilitate the**
**filing of applications for those sectors of industry which produce a large number of designs and**
##### **where the cost and the administrative burden of taking out single design rights for each of them**

**would be too high. The Community Design system, which should be a very modern one and**
**which should be capable of** **inter-operating** **with the Hague international deposit system, could**
**not avoid providing for such a possibility.**

**The provision allows for the combination in one multiple application of** **a** **number of Registered**
**Community Designs. No ceiling is set for such a number, contrary to what had been suggested**
**in the Green Paper. The condition is, however, that the products in which the designs are**
**intended to be embodied belong all to the same sub-class according to the Locarno Agreement**
**or to the same set or composition of items. These limitations seem necessary in order to avoid**
**the instrument being used as a way of paying cheaper registration and publication fees by**
**presenting together designs intended for all sort of products. A multiple application must be**
**characterized by a unitary element, which is normally found in the fact that the products all**
**belong to the same sub-class. (The classes under** **die** **Locarno Agreement** **are** **too broad to comply**
**with this need of unity within a single application). The reference to a sub-class could, however,**
**in certain cases lead to unfair** **results:** **a same design could be applied to products which, because**
**of their physical nature, belong to different sub-classes or even classes. One could think of an**
**ornamentation which a manufacturer intends to apply on a set of different household**
**articles** **(china,** **glasses, forks, spoons and knifes, kitchen furniture, etc.). It would seem**
**appropriate to allow such a manufacturer to file a multiple application for all these different uses**
**of the design.** **The** **provision intends also to cover** **the** **various possibilities of** **"interior** **decoration"**
**resulting from a unitary design idea: this should be covered by the reference to** **"the** **same**
**composition of items".**

**Paragraph (2)**
**The treatment of a multiple application from the point of view of fees is inspired by the**
**suggestions WIPO has presented for the current revision of** **the** **Hague Agreement. Further to the**
**payment of the basic registration and publication fee, the applicant has to pay an additional**
**registration and publication fee which should correspond to a percentage of** **die** **basic fees for**
**each additional design. By using such a** **formula,** **it is possible to avoid the introduction of a**
**ceiling in the number of designs combined in a multiple application. The amount and a possible**
**variation of such a percentage according to the number of designs will have to be decided in**
**accordance with the fee policy followed by the authority which will adopt** **die** **Fees Regulation**
**(see Article 127).**

**27**

**Article** **41**

**This provision defines the date of filing an application (including a multiple application) for a**
**Registered Community Design as being the date on which documents containing the information**
**which must be necessarily present in an application (see Article 39(1) and (2)) are filed either**
**at the Office or at a national central industrial property office (including** **die** **Benelux Office).**
**How this date is accorded results from Articles 48 and 49.**

**Article 42**

**This provision sets out the general obligation for the purpose of the Regulation to follow the**
**classification provided by the Locarno Agreement of 1968. It should be emphasized again that**
**the use of such a classification, which is based on products, has no impact on the scope of**
**protection of a Community Design.**

**Section 2**
**Priority**

**Articles 43-47**

**These Articles deal with the question of** **die** **right of priority. Designs enjoy, according to the**
##### **Paris Convention on die protection of Industrial Property, a right of priority of six months. The** **Registered Community Design, which results from a regional agreement among the EEC Member**

**States which are all parties to the Paris Convention, must therefore benefit from the possibility**
##### **that a priority is invoked resulting from a prior application for the same design in or for any State**

**party to** **die** **Paris Convention.**

**The possibility of invoking** **die** **priority of** **a** **Community application for the** **purpose** **of obtaining**
**protection in or for a State party to** **die** **Paris Convention will have to be negotiated later on**
##### **within WIPO and will result from the recognition of the Registered Community Design as a valid**

**protection instrument under the Paris Convention. Article 46 already establishes this principle**
**with regard to the EEC Member States, as an application for a Registered Community Design**
**which has been accorded a date of filing is said to be equivalent to a regular national filing in**
**each Member State.**

**Articles 43 to 47 have been modelled on the almost identical provisions contained in the**
**Community Patent Convention** **and the** **Draft Regulation on the Community** **Trade** **Mark.** **It** **would**
**therefore seem hardly necessary to comment on** **diem** **in detail.**

**28**

**TTTLE** **V**

**REGISTRATION PROCEDURE**

**Article 48**

**As has been stressed in the introductory part above, the registration procedure before the Office**
**must be simple, cheap and rapid. No substantial examination of** **the** **compliance of** **a** **design with**
**the requirements of** **protection,** **nor opposition procedures, are foreseen prior to registration. The**
**Office** **has** **only** **to carry out an examination as to formal requirements, leaving the control of** **die**
**intrinsic validity of a design to inter partes proceedings before the national courts or the Office**
**after the registration.**

**Paragraph** **(1)**
**This general principle means that the Office will not consider whether an application complies**
**with the requirements for protection, nor whether it raises problems like the possible technical**
**non-arbitrary nature of the features for which protection is sought and which is excluded under**
**Article 9. Nor will it consider non-compliance of** **the** **design with requirements of public policy**
**or of accepted principles of morality under Article 10.**

**Although the Office will not look into the substantial requirements for protection, it should not**
**be required to register a formally correct application for something which is obviously not**
##### **covered by the definition of design. Should a design right be requested for a musical theme (not**

**the graphic representation of a couple of bars) or for a name or a slogan (not their graphic**
**representation),** **die** **Office must be empowered to refuse** **die** **application from the outset. Against**
**such a decision the applicant will be in a position to appeal in accordance with Article 59 ff.**

**Paragraph (2)**

**This provision indicates the elements that the examination as to formal requirements by the**
##### **Office will take into consideration. It must first of all be established that the application contains**

**the necessary elements which permit a date of filing to be accorded (elements mentioned in**
**Article 39(1) and (2)). Secondly, the Office has to check the compliance with all the other**
**conditions laid down in Article 39 (mention of the designer or of the team of** **designers,** **optional**
**elements, payment of** **die** **fees, compliance with the presentation requirements** **laid** **down in the**
**Implementing Regulation)** **and,** **in the case of a multiple application, with the conditions laid**
**down in Article 40 (optional elements, payment of the** **additional** **fees, compliance with the**
**presentation requirements laid down in the Implementing Regulation). Finally, the Office will**
**have to check** **die** **requirements concerning any claim to priority resulting from Article 44.**

**Article 49**

**This Article indicates the consequences of there being some formal deficiencies in the**
**application. In this case the Office requests the applicant to remedy the deficiencies within a**
**given time limit.**

##### **If the deficiencies are remedied in due time, the Office accords a date of filing, but such date will**

**be fixed differently according to the gravity of the deficiencies ascertained. If the deficiencies**
**concerned the existence of a request for registration, the information identifying the applicant,**

**29**

**the representation of** **the** **design or, where admissible, the alternative deposit of a specimen or a**
**sample, the date of filing will be the date on which such deficiencies have been remedied. If the**
**deficiencies concern other conditions which the application (or the multiple application) has to**
**meet, the date of filing will remain the date on which the application was presented to the Office**
**or the national office.**

**If the deficiencies are not remedied in due time, including payment of the fees which are due,**
**the application will be refused. The applicant** **will** **have a right of appeal against such a decision**
**by the Office (Article 59 ff).**

##### **As to the requirements concerning the right of priority, failure to correct the deficiencies will only** **result in the loss of the right of priority for the application, which will continue to be processed,**

**but which will be then subject to assessment of compliance with the substantive requirements at**
**the date of filing and not at the earlier date of priority.**

**Article 50**

**As soon as an application has been accorded a date of filing, it shall be registered** **as** **a Registered**
**Community Design. The date to be mentioned in the Register will be the date of filing. Bearing**
**in mind the simplicity of the examination as to formal requirements and the short time limits**
**which have been foreseen for forwarding the application from a** **national** **office to the Office or**
**for remedying existing deficiencies, the date of registration should in principle lie within the six**
**months following the date of actual filing.**

**Article** **51**

**The registration will be followed as soon as possible by the publication of** **die** **Registered**
**Community Design in the Community Design Bulletin. The interval between** **die** **registration and**
**the publication will depend, on the one hand, on the time needed for the technical preparation**
**of the publication and, on the other** **hand,** **on the frequency of issue by the Office of the Bulletin**
**(e.g. monthly or fortnighdy). The provision indicates what must be contained in the publication,**
**leaving to** **die** **Implementing Regulation the possibility of prescribing further details.**

**The provision is based on the idea** **that** **the Community Design Bulletin will be issued in the form**
**of a traditional printed magazine, as is now the case in the national system of several Member**
**States and in the Hague international deposit system; it might, however, appear more useful in**
**future, in the light of technological innovation, to allow the Office to choose a more efficient and**
**contemporary way of "making the design right known to the public".**

**From the point of view of the legal effect, it should be stressed that, technically speaking, the**
**design will be available to** **die** **public as from the date on which it has been actually registered**
**and not as from the date on which it is published in** **die** **Bulletin. Access to the Register by the**
**public is indeed guaranteed as from mis earlier date.**

**30**

**Article 52**

**This Article introduces the possibility of keeping a Registered Community Design secret for a**
**period not exceeding 30 months. This corresponds to a need of** **several** **sectors of industry which**
**feel they cannot afford to publish their designs before the corresponding products reach the**
**market. Particularly in the field of fashion (but the problem is not uncommon also in the domain**
**of** **cars),** **letting competitors know in advance the general line of the design of** **a** **future collection**
**could** **jeopardize the success of** **a** **commercial operation based on the exclusive character of such**
**a** **line,** **as the know-how protection would not be sufficient in such cases to prevent competitors**
**from putting similar (possibly "intelligently similar") designs on the market at the same time or**
##### **even before the right holder. Secrecy is, in these cases, the necessary answer, but if secrecy were**

**only left to measures inside the undertaking, the risk of losing the protection by a belated**
##### **application would be too great. Adjournment of publication is therefore the right answer to this**

**need.**

**Paragraph (1)**
**The request for adjournment must be filed at the moment of filing the application. The**
**registration procedure is too short to permit that the request be filed at a later date. The period**
**during which the Registered Community Design can be kept secret cannot exceed 30 months**
**from** **die** **date of filing or the date of priority. This period should constitute a balance between**
**the need for secrecy set out above and the need for legal certainty and transparency that the**
**existence of unpublished and yet valid designs will certainly hamper.**

**Paragraphs (2), (3)**
**If the application accompanied by a request for adjournment of publication is granted a date of**
**filing, the corresponding design is registered within the same time limit and with** **die** **same**
**procedure as a normal Registered Community Design. The entry of** **die** **representation of the**
**design and** **die** **file concerning the application will, however, not be made available to the public.**

**The public will be informed via the Register and the Bulletin of the identity of the applicant, the**
**duration of** **the** **adjournment of the publication of the representation of the design and the date**
**of filing the application.**

**Paragraphs (4), (5), (7)**
**At the expiry of the period, or earlier at the request of the right holder, the elements which have**
**been kept secret will be made available to the public by** **die** **Office via the Register and the**
**Bulletin, and the date when this occurs will constitute the date of** **publication.** **A condition has,**
**however, to be fulfilled: the right holder has to pay the publication fee, which he was spared**
**when filing the application by paying** **die** **cheaper fee for adjournment of publication. If,**
##### **moreover, the right holder has submitted a sample instead of a representation of the design in the**

**cases** **under** **Article 39(2), he must supply** **at this** **stage the representation suitable for reproduction**
**to permit the publication in the Bulletin. Failure to comply with either of these conditions will**
**lead to the design right losing its effects from the outset.**

**The right holder in the design may, however, choose to surrender the design right. In that case**
**no publication takes place and the right holder avoids that the design right loses its effects -**
**protection against reproduction (see Article 21(2)) - from the outset.**

**31**

Paragraph (6)
From what has been set out above it should be clear that the right holder of a Registered
Community Design subject to the measure of adjournment of publication enjoys a right, which
can be enforced against infringers. In view of the fact, however, mat infringers cannot be
considered to be aware of the design in view of its secret nature, the right conferred is, as long
as no publication has taken place, against reproduction only and the action for enforcement of
the rights is subject to a prior communication to the alleged infringer of the whole file, including
the representation of the design. This does not imply that the information should also be brought
to the knowledge of the public at large.

**TITLE VI**

**TERM.OF PROTECTION OF THE REGISTERED COMMUNITY DESIGN**

Article 53

This provision, introduced for systematic reasons, confirms what has been stated under Article 13,
i.e. that the term of protection of the Registered Community Design is five years as from the date
of filing, renewable for periods of five years each, up to a maximum of 25 years.

Article 54

This Article, modelled on die parallel Article in die Draft Regulation concerning the Community
Trade Mark, sets out the procedure to follow to renew die protection at the expiry of each period
of five years.

The renewal is subject to a request by the right holder or by a person expressly authorized by
him: it is felt that die renewal is a sufficiently important act to require such a personal
involvement of the right holder and could not be left, for instance, to die sole initiative of a
licensee. The renewal is further subject to the payment of a renewal fee which, in the long run,
is going to be the basic source of revenues for the Office.

The Office will organize the information of the right holder in good time before the expiry of the
design right. The request for renewal and the payment of the fee have to take place during the
six months preceding the expiry. A further period of six months after die expiry is, however,
accorded for submitting the request and paying die renewal fee provided an additional fee is paid.

**TITLE VII**

**SURRENDER AND INVALIDITY OF THE REGISTERED** **COMMUNITY** **DESIGN**

Article 55

This provision deals with the surrender of the Registered Community Design at the initiative or
with the consent of the right holder. The provision has been modelled on the similar provision
concerning the Community Trade Mark.

**32**

**Articles 56-58**

**Articles 56 and 57 follow the corresponding provisions introducing the actions for revocation or**
**for invalidity of the Community** **Trade** **Mark,** **and set** **up a** **centralized procedure before the Office**
**which should constitute the basic instrument for carrying out the control of the validity of a**
**Registered Community Design after its registration. This procedure can be initiated as soon as**
**the Community Design has been registered or at any point in time during its life or even after**
**it has expired. It answers two kinds of demands: the demand for an immediate reaction after**
**registration by competitors against the claim for protection (this demand is in some Member**
**States covered by the opposition procedure) and the demand for a single attack on the design**
**right for the whole Community at any later time.**

**In the first case, a quick reaction against a registration by an interested party would prevent**
**enforcement of** **the** **design right against him by a national court before the final decision on the**
**validity issue is taken, bearing in mind the provision of Article 95(1). Even if the right holder**
##### **acts more quickly than the third party and tries to enforce his rights before invalidity proceedings**

**are instituted with the Office, Article 95(2) still gives the possibility to the third party (who has**
**become technically an alleged infringer) to institute such proceedings** **and** **to request the national**
**court to stay the infringement proceedings until the Office has decided on** **die** **validity issue (this**
**provision leaves a discretion to the national court in order to avoid vexatious proceedings). It**
**should also be stressed that the length of proceedings before the Office may be monitored**
**generally by the way the President manages the Office's operations. This should avoid**
**proceedings being unnecessarily prolonged.**

**In the second case, the declaration of invalidity would have effect only for the past, but could**
##### **still be useful for obtaining, for instance, damages for an invalid enforcement of the right. The**

**international composition of the departments of the Office and the skill of their members will be**
**strong guarantees for** **die** **value and the impartiality of the decisions of the Office in this field.**

**The procedure can be initiated by any natural or legal person, including** **die** **Commission and**
**Member States, who considers there is good cause to see a Registered Community Design**
**declared invalid. In two cases, however, the entitlement to the action is subject to** **die** **proof of**
##### **a specific interest: if the ground of invalidity invoked is the non-entitlement of the right holder**

**(Article** **27(1** **)(d)) or if the ground invoked is the existence of an** **"earlier** **right" within the**
**meaning of Article 27(2).**

**The procedure is an inter partes procedure which takes place before an Invalidity Division of** **the**
**Office. It would seem superfluous to describe in detail the provisions concerning the way of**
**instituting such procedure** **and** **the examination of the application for invalidity by the department**
**of the Office, as these provisions follow strictly the similar provisions already adopted for such**
**inter partes administrative proceedings for the European Patent (opposition procedure), the**
**Community Patent (revocation procedure) and the Community Trade Mark (revocation and**
**invalidity procedures).**

**An appeal can be lodged by the losing party against the decision of the Office (Article 59 ff).**

**33**

Article 58 facilitates access to invalidity proceedings, as long as an invalidity procedure is
pending before the Office, by any alleged infringer against whom the right holder is trying to
enforce his rights. He has a right to intervene in the proceedings and to develop his own case
before the Office.

In addition, the Commission and the Member States are given the right to join the proceedings.
This would cover, for example, the situation where the parties might settle out of court without
a final decision on invalidity being taken. If the public interest would be best served by
continuing to a final decision, the Commission and the Member States are thus given a way of
achieving this.

The Commission intends to create a consultative committee to assist the Commission in
monitoring registrations at the Office. It is within the powers of the Commission to do so.

The committee, which is to be chaired by a representative of the Commission, will be composed
of representatives of Member States and on an ad hoc basis of representatives of industries.

In this way it is intended to ensure that registration practice corresponds to the intentions of the
Regulation.

**TITLE Vm**

**APPEALS FROM DECISIONS OF THE OFFICE**

Articles 59-65

These Articles deal with die appeal procedure which is open to any party to proceedings before
the Office adversely affected by a decision of the Office. The right of appeal will dierefore exist
against decisions taken during the registration procedure (ex-parte procedure) or during the
invalidity procedure (inter partes procedure), and also against other types of decisions that the
Office might be called to take under die Regulation (e.g. decisions concerning the professional
representatives, decisions on the restitutio in integrum, etc.).

This set of provisions is closely modelled on the similar provisions which have been worked out
for the Community Trade Mark. As the discussions within die Council on those provisions were
not yet concluded when die present proposal was prepared, it is important to note that the content
of the present proposal will need to be adapted to take account of any amendment introduced in
the Community Trade Mark Regulation which proves acceptable to the Commission in that
instance. It is almost superfluous to stress how important it is for the users of the Community
Trade Mark and Design systems to be presented with an absolutely unitary appeal mechanism.

Bearing in mind what has been said above it would seem superfluous to comment in detail on
each provision about appeals. It should be sufficient to recall that the appeal takes place before
one of the Boards of Appeal instituted within the Office and having quasi-jurisdictional character
(see also Articles 117 to 120). Against the decisions of the Board of Appeal, a further appeal can
be lodged before the Court of Justice. It is to be expected, however, that the Court of Justice will
require the Council, in accordance with Article 168a EEC, to assign these cases to the Court of

**34**

**First Instance, with a possibility of control of the decisions of the latter over questions of law**
**("contrôle** **de cassation"). If** **a** **decision by a Board of Appeal were considered not to comply with**
**Community law but had not been appealed against by the interested party and thus had become**
**final, the Commission or a Member State could introduce an "appeal in the interest of** **the** **law"**
**before** **die** **Court of Justice. The ruling of the Court on such an appeal would not affect the**
**decision at issue but should establish the imperative rule to be applied in future in similar cases.**

**TITLE** **DC**

**PROCEDURE BEFORE THE OFFICE**

**Section 1**
**General provisions**

**Section 2**

**Costs**

**Section 3**

**Information of** **die** **public and of the official authorities**

**of the Member States**

**Articles 66-80**

**These Articles contain a number of provisions establishing general rules to be followed during**
**any procedure before the Office. Subject to a few exceptions which** **will** **be set out below, these**
**rules have been literally taken over from the similar rules established by the Regulation on the**
**Community Trade Mark. For most of** **them,** **an easier way of introducing them in relation to the**
**Community Design Office would have been to refer to the corresponding provisions in the Trade**
**Mark Regulation and to declare them applicable mutatis mutandis in the framework of this**
**Regulation. On reflection, however, it has been considered that it would help the users of the**
**Community Design system to have the entire set of rules applicable set out in one instrument,**
**without being obliged to resort to a different Regulation. This explanatory memorandum will**
**confine itself** **to** **considering those provisions where specific rules have been** **provided,** **namely**
**Articles 76, 77, 78.**

**Article 76 establishes the Community Design Register. It makes clear that any entry in the**
**Register must be open to public inspection, except those entries which are subject to** **die** **measure**
**of adjournment of publication in accordance with Article 52(2).**

**Article 77 provides for two periodical publications of the Office: the Community Design Bulletin**
**where the publication of the Registered Community Designs will take place, and the Official**
**Journal of the Community Design Office containing notices and information of general character**
**for the users of** **the** **system. It should not be excluded that in future the Official Journal of the**
**Community Design Office be merged with the Official Journal of the Community Trade Mark**
**Office in view of** **the** **similarity of contents and of audience.**

**35**

**Article 78 deals with inspection of files and contains a few features dictated by the specificity**
**of the design procedures.**

**The general principle (Article 78(1)) is that the files relating to applications for Registered**
**Community Designs are not open for public inspection without the consent of the applicant as**
**long as the Registered Community Designs in question have not been published. This provision**
##### **is supplemented by the exclusion from inspection of the files without the right holder's consent**

**of the files relating to a Registered Community Design which is subject to a measure of**
**adjournment of publication. This exclusion remains valid until the expiry of the adjournment.**
**Should the Registered Community Design be surrendered before or at the expiry of the**
**adjournment, in any event before publication takes place, the file would continue to remain secret**
**indefinitely. There is indeed no reason to open to public inspection a file relating to a design in**
##### **respect of which the right holder has given up any claim to protection from the outset. No rights**

**can be enforced on the basis of such a Registered Community Design and it seems therefore fair**
##### **that the person having surrendered the right should recover die right of keeping out of the reach**

**of** **the** **public the designs and ideas which were contained in the Registered Community Design**
**which has been abandoned. Except for these cases** **die** **files should, as a matter of principle, be**
**open to public inspection.**

**Article 78(2) establishes an exception to the rule preventing access to a file relating to an**
**application or a design right which has not yet been published or to a design right which has**
**been surrendered before the publication took place. Inspection without** **die** **consent of the**
##### **applicant or the right holder may take place on die basis of a decision of the Office if the person**

**wishing to inspect the file can establish a legitimate interest. This will, in particular, apply if**
##### **steps have been undertaken by the applicant or the right holder with a view to invoking against**

**the person in question the right under the Registered Community Design. It would only be fair**
**under these circumstances that the person threatened with legal action should have access to**
**documentary evidence which is going to be crucial if the action is eventually initiated.**

**Section 4**
**Representation**

**Articles** **81-82**

**These Articles deal with the question of representation before the Office. The general principles**
**contained in Article** **81** **are modelled on** **die** **rule in the Community Trade Mark Regulation (and,**
**also,** **like the Regulation, on the rule in the European and Community Patent Conventions).**
**Similarly, Article 82 sets out the principle also contained in that Regulation and** **die** **Conventions**
**that the professional representation before the Office may only be undertaken by persons whose**
**names appear on a list of professional representatives maintained by the Office. Alternatively,**
**representation may be undertaken by legal practitioners qualified in a Member State to the extent**
**that they are entitled in that State to act as professional representatives in design matters.**

**36**

The conditions to be fulfilled in order to be entered on the list have been worked out bearing in
mind the specific requirements which can be set for a person wishing to operate before an Office
dealing with design law. Further to the requirement of having a place of business or employment
within the Community, the candidate for entry on the list must be entitled to represent in
industrial property matters before the central property office of the State where he has the place
of business or of employment. This very broad requisite covers ability to represent in patent
and/or in trademark matters. A logical extension of this broad approach has been to include also
persons appearing on the list of professional representatives entitled to represent before the
European Patent Office as well as persons whose names appear on the list of professional
representatives maintained by die Community Trade Mark Office.

In the Member States where the entitlement to the activity before the central property office is
not conditional upon the requirement of a specific professional qualification, which is often die
case for representation in trademark matters, such a requirement is replaced by a professional
experience of at least five years, unless the law of the Member State concerned recognizes
officially such entitlement to the person in question.

**TTTLEX**

**JURISDICTION AND PROCEDURE IN LEGAL** **AdTONS**

**RELATING** **TO** **COMMUNITY DESIGNS**

Section 1

Jurisdiction and Enforcement

Section 2

Disputes concerning the infringement and validity of Community Designs

Section 3
Other disputes concerning Community Designs

Articles 83-98

Articles 83 to 98 deal with the litigation system concerning Community Designs. They have been
largely modelled on the corresponding provisions of the draft Regulation on die Community
Trade Mark as, in this field as in the field of the procedures before the Office, it is extremely
important for the users to be presented with rules which are as unitary as possible. This set of
provisions also takes into account, as far as possible, the very similar litigation system established
by the Protocol on Litigation annexed to the Agreement relating to Community Patents, except,
for obvious reasons, the provisions concerning die role of COP AC.

This explanatory memorandum will therefore be restricted to comments relating to the specific
features of the litigation system concerning design rights, without going into details relating to
provisions which have already been accepted by the Community or by the Member States in a
different context. For this reason, no comment appears on Articles 90, 91, 92, 95, 96 and 97.

**37**

**In general terms, it should be sufficient to recall that the litigation system sets out the rules**
**relating to jurisdiction and procedure in legal actions concerning a design right which extends**
**its effects to the whole of the Community and the enforcement of which is entrusted basically**
**to the courts of the Member States. This system is articulated in three sections:**

**- Section** **1** **enshrining** **the** **principle of the application of the Brussels Convention on Jurisdiction**
**and Enforcement;**

**- Section 2 containing a set of rules replacing or completing the corresponding rules of the**
**Brussels Convention, applicable to disputes concerning the infringement and the validity of a**
**Community Design;**

**- Section 3 containing some specific rules supplementing the general rules of the Brussels**
**Convention and applicable to other disputes concerning a Community Design.**

**Article 83, setting out the principle of the application of the Brussels Convention of**
**27 September 1968 on Jurisdiction and the Enforcement of Judgments in Civil and Commercial**
**Matters, does entirely correspond** **to the** **parallel provisions relating** **to** **the Community Trade** **Mark**
**and Community Patent.**

**The derogations (often more formal that substantial) from the Brussels Convention set out in**
**paragraph (2) are needed to introduce a** **completely** **unitary set of rules concerning jurisdiction**
**and** **enforcement,** **covering also those cases which, under the Brussels Convention, would be left**
**to the various non-harmonized rules of international private law of** **die** **Member States (e.g. when**
**the defendant is not domiciled within the Community). In the absence of** **a** **complete and unitary**
**regime, the risk would be great that conflicts of jurisdiction (positive or negative) would arise**
**between courts of different Member States, that contradicting decisions could be pronounced on**
**the same case and finally mat** **"forum** **shopping" could be used to an extent incompatible with**
**the functioning of** **an** **integrated market.**

**The Regulation does not provide for a transitional provision covering the case where, for some**
**Member States,** **die** **Brussels Convention may not yet be in force when the Regulation is applied.**
**This prospect seems so improbable, bearing in mind the rapid progress in the ratification of the**
**San Sebastian Convention of 1989 concerning** **the** **accession of Spain** **and** **Portugal to** **the** **Brussels**
**Convention (which is in force already amongst the other ten Member States), that it would seem**
**politically awkward to envisage such a hypothesis in the Regulation. Any problems which could**
**arise with respect to future members of the Community or within** **die** **framework of** **an** **extension**
**of the Regulation to the European Economic Space, could be dealt with in the negotiations to be**
**carried out in those contexts.**

**Article 84 requires the Member States to designate a limited number of national courts of first**
**and second instance which will act as "Community Design Courts", i.e. which will have the**
**exclusive jurisdiction for infringement and validity cases relating to Community Designs. The**
**provision follows entirely the corresponding provisions for setting up the Community Patent**
**Courts and the Community Trade Mark Courts. The wish is expressed that the Member States,**
**in designating such courts, will restrict themselves to the courts mentioned in the Annex to the**
**Protocol** **on** **Litigation relating** **to** **Community** **Patents** **(subject** **to the** **necessary completion relating**
**to Spain, Portugal and the new** **Lander** **of the Federal Republic of Germany).**

**38**

**The Community Design Courts (Article 85) will have exclusive jurisdiction in infringement**
**actions relating to Community Designs, but also, to the extent that such actions are permitted**
**under the law of the State where the court is situated, in actions relating to threatened**
**infringement and in actions for declaration of non-infringement. As far as validity is concerned,**
**a difference must be drawn between Unregistered and Registered Community Designs.**

**For Registered Community Designs, a direct action for declaration of invalidity is open before**
**the Office under Article 56 ff of** **the** **Regulation. In order to favour this central action, no direct**
**action requiring a declaration of invalidity of** **a** **Registered Community Design should be allowed**
**before the Community Design Courts: the defendant in an infringement action should, however,**
**be allowed to raise such a question before the Community Design Courts, provided this is**
**achieved by way of a counterclaim. One might wonder why this limitation, which has been**
**accepted for the Community Patent and Trade Mark, should be maintained dealing with a title**
**of protection which, as in the case of the Registered Community Design, has been accorded**
**without any prior substantial examination or possibility of opposition by interested parties. The**
**Commission feels that, although undoubtedly the Registered Community Design is not as strong**
**a title as a Community Patent or a Community Trade Mark, it would not be excessive to require**
##### **a person who is attacked on the basis of such a right to react by a counterclaim, and not simply**

**by raising the question of the validity as a defence as to the merits, without simultaneously**
**requiring** **die** **judge to decide with effect erga omnes on the validity of the design right. The**
**advantage of keeping the Community Design Register** **"clean"** **of any rights which have been**
**found invalid by a competent jurisdiction should prevail over the limited procedural onus which**
**is put on the defendant by requiring from him that a counterclaim be formulated.**

**For the Unregistered Community Designs, no action before central instances has been foreseen;**
**it is therefore necessary to establish rules on jurisdiction for the cases where an action for a**
**declaration of invalidity will** **have to be** **brought.** **Article 85(c) recognizes** **an** **exclusive jurisdiction**
**for such a direct action to the Community Design Courts, which would obviously be also**
**exclusively competent if the question of invalidity were to be raised under a counterclaim by the**
**defendant during an infringement action. Although in this case the exclusion of a defence as to**
**the merits submitted otherwise than by counterclaim could not be justified by a reference to a**
**"clean" Register, it would seem, in the interest of the public at large, that an Unregistered**
**Community Design which has been found invalid by a competent judge should, if invoked**
**against third parties in different circumstances, no longer require a second consideration of its**
**validity.**

**Articles 86 and 87, setting out the rules of international jurisdiction, follow entirely the**
**corresponding provisions relating to the Community Patent and Trade Mark. It should only be**
**recalled that Article 86 will require, like the two corresponding provisions for the Community**
**Patent and Trade** **Mark,** **negotiations with the EFTA countries parties to the Lugano Convention**
**on Jurisdiction and Enforcement of 1988, as it contains rules which conflict with the obligations**
**of the Member States resulting from that Convention when the defendant is domiciled in such**
**an EFTA country. The hope is expressed that it will be possible to find a solution to these**
**difficulties within the framework of the European Economic Space.**

**39**

**It should also be stressed that application of Article 86 to direct actions for declaration of**
**invalidity of Unregistered Community Designs (a situation unknown with the Community Patent**
**or Trade Mark) will result in providing one single "forum" within the Community, as the**
**alternative forum of the place where the illegal act has been committed, typical of infringement,**
**would simply not be applicable. The action for a declaration of invalidity will, therefore, have**
**to be brought exclusively in the Member State where the defendant (the right holder) has his**
**domicile. If this criterion fails, the jurisdiction would lie in the Member State where the right**
**holder** **has an** **establishment** **or,** **successively, where** **the** **plaintiff (the person attacking the validity)**
##### **has his domicile or an establishment, or finally in the Member State where die Office is situated.**

**Article 89 basically excludes the possibility of invalidity being raised as a defence in an**
**infringement action other than by a way of a counterclaim. This has already been commented**
**upon under Article 85. Paragraph (3) provides, however, an exception to this exclusion, when the**
**defence is based on a claim of invalidity resulting from the existence of an "earlier national right"**
**within the meaning of Article 27(2). As such rights cannot be invoked against a Community**
##### **Design by persons other than their right holders, it goes without saying that such a defence could** **only be raised by the right holder of the earlier right. The reason for permitting invalidity to be**

**raised without counterclaim in such a case is that the result of a possible finding that the**
**Community Design is invalid would only be a partial invalidity, because it would be limited to**
**the territory of** **the** **Member State or States where the ground for invalidity obtains.**

**The provision of Article 89(1) is intended to limit abusive claims as to the invalidity of the**
**Community Design. It needs, however, to be supplmemented by a provision reversing the onus**
##### **of proof in cases where the right holder shows that his design has an individual character in the**

**sense that it differs significantly from other designs on** **die** **market. If this is the case, it is highly**
**likely mat the design in question has been created by the designer himself** **and** **not copied. It is,**
**therefore, also likely that it is novel. It appears in this case appropriate that the alleged infringer**
**who challenges the validity of the Community Design by contesting that it is not novel, should**
**be required to produce evidence to show that it is not novel.**

**A corresponding provision does not appear to be necessary in invalidity proceedings before the**
**Office. Where a third party before the Office makes an application regarding invalidity it goes**
**without saying that the Office will request that he provides further information to sustain his**
**claim.**

**Article 93 deals with the question of the sanctions in actions for infringement. This is a**
**particularly sensitive question. Interested circles have repeatedly indicated that an efficient**
##### **enforcement of the rights conferred by the Community Designs and a greater uniformity in the**

**way national courts react against infringement would be fundamental for the success of the**
**Community Design project.**

**It has to be recognized that, in the present stage of European integration, it is difficult to**
**intervene on matters where the traditions and the substantive and procedural rules of civil law**
**applied by the courts of the Member States differ profoundly. The basic rule should, therefore,**
**remain that each national court will apply the sanctions provided by the law of the Member State**
**where it is situated in order to enforce the rights violated by an infringement. This will in**
**particular apply to "damages", where the differences of approach in the various jurisdictions are**

**40**

**so great that it would be pointless to try to find some common denominator in the limited**
**specific field of design protection. The whole problem of more uniform sanctions in respect of**
**non-contractual liability should be solved at Community level in more general terms in the**
**perspective of the functioning of the internal market.**

**Pending future initiatives in this respect, the obligations of Member States under existing**
**international treaties** **and** **treaties presently under discussion as regards enforcement of intellectual**
**property rights are recalled.**

**Notwithstanding the difficulties, some progress can be achieved in this field by providing some**
**common instruments and by requiring the judge to have recourse to such instruments if the**
**conditions set out in the provision are met. The provision mentions three common sanctions:**

**- the court order prohibiting the infringer from proceeding with the infringing acts;**

**- the seizure of the infringing products;**

**- the order addressed to the infringer to provide information concerning the origin and the**
**commercial channels of the infringing products.**

**The prohibition against continuing with the infringing acts has already been accepted as a**
##### **common sanction for the Community Patent and Trade Mark. If the court finds that the defendant**

**has infringed or threatened to infringe a Community Design, it must pronounce such an order of**
**prohibition, unless there are special reasons for not doing so. The legal means to ensure that such**
**an order will be complied with shall be determined by** **die** **lex fori.**

**The seizure of the infringing goods and the order to supply information have also, unless there**
##### **are special reasons for not doing so, to be pronounced by the judge if he finds that a Community**

**Design has been infringed (threatened infringement does not play a role in such a case). Such**
**special reasons might arise, for example, if** **under** **the given circumstances a seizure of** **the** **goods**
**would be** **pointless,** **or unduly harsh. Similarly, in certain cases the order to provide information**
**could be void of** **any** **meaning, if for instance the infringer is the manufacturer of** **the** **infringing**
**goods.** **The judge** **has,** **however,** **to** **justify in each decision the reasons why he has felt that, under**
**the given circumstances, it would not have been appropriate to apply one or both of these**
**sanctions, thus permitting a legal control of the application of this provision by the further**
**instances.**

**Article 94 deals with provisional, including protective, measures. Paragraphs (1) and (3)**
**correspond literally to the simitar provisions adopted for the Community Patent and Trade Mark**
**except that the right to request information concerning the origin of an allegedly infringing**
**product (Article 93(2)(a)) has been made** **explicitiy** **applicable. Some commentary is needed for**
**paragraph (2) which is new.**

**The prohibition against invoking the invalidity of a Community Design as a defence otherwise**
**that by way of counterclaim (see Article 89) is intended to apply in the course of the main action**
**for infringement. Normally, however, actions for infringement are preceded or accompanied by**
**requests for provisional measures which play an extraordinarily important role in procedural**
**tactics. Obliging a defendant to raise the defence of invalidity by counterclaim in the framework**
**of** **a** **procedure for a provisional measure would be simply unfair. Moreover, many legal systems**

**41**

**do not allow a counterclaim during a procedure which by definition must be speedy and based**
**on** **prima** **facie considerations. It would, on the other** **hand,** **be unjustified to prohibit the defendant**
**from raising the invalidity of the Community Design as a defence, as the arguments he could**
**develop could be extremely useful for the judge in taking his decision. For these reasons, it has**
**been specifically indicated that the defence of invalidity may be raised by the defendant in those**
**proceedings otherwise than by way of counterclaim. The provision of Article 89(2) on the onus**
**of proof is, however, equally applicable in this case.**

**Article 98, which concerns actions relating to Community Designs other man infringement or**
**invalidity actions, extends to such actions the prohibition of invoking invalidity of the**
**Community Design as a defence otherwise than by way of counterclaim, as well as the two**
##### **exceptions provided for in the cases of "national earlier rights" and of "provisional, including**

**protective, measures".**

**TITLE XI**

**EFFECTS ON THE LAWS OF THE MEMBER STATES**

**Article 99**

**The creation of the Community Design raises the question of the relationship of this new title**
**of protection with the existing national registered design rights which are the object of the**
**parallel proposal for a Directive for harmonization of the basic provisions of substantive law**
**applicable to them. Although the Commission hopes that the Community Design system, thanks**
**to its modern conception and to its low-cost and user-friendly procedural** **mechanisms,** **will**
**rapidly occupy** **a** **prevalent position, it would** **be** **illusory to think** **that the** **existing** **and** **experienced**
##### **national legal instrumente could be immediately abandoned. National registered design rights and**

**Community Designs are therefore going to co-exist in the next years and the question of their**
**relationship has to be clarified.**

**Contrary to what had been suggested in the Green Paper, the Commission has been convinced**
**by the remarks of** **die** **interested circles that, if** **the** **two forms of protection are going to co-exist,**
**there is no valid reason to provide** **that,** **if the same design is protected by both a Community**
**Design and** **a** **national design** **right,** **the latter should become ineffective. It might well be pointless**
##### **for a right holder to keep for the same design parallel protections valid on the same territory and,**

**after the** **harmonization,** **subject to identical rules of substantial law and conferring an identical**
**scope of** **protection.** **The decision to abandon superfluous national protections, however, should**
##### **be left with the right holders and not be imposed by the law-maker. The conclusion is that it will**

**be perfectly feasible for a right holder to maintain for the same design parallel protections**
**consisting of a Community Design and one or several national registered design rights. This**
**"cumulation"** **of protection of the same design by different titles having the same nature has a**
**precedent in the draft Regulation on the Community Trade Mark which also permits the** **co-**
**existence of identical national and Community Trade Marks in the hands of the same right**
**holder.**

**42**

**Having established this line of policy, the Commission has, however, felt** **that,** **just as in the case**
**of the Community Trade Mark, it could be avoided that** **die** **right holder should bring abusive**
**legal actions involving the same cause of action between the same parties, by invoking one of**
**the co-existing rights after a competent court has already decided the issue on the basis of** **die**
##### **parallel right. Article 99, modelled on a similar Article in the draft Regulation on the Community**

**Trade Mark, empowers the courts to prevent the consequences of such vexatious actions.**

**Article** **100**

**This is a fundamental provision, setting out the rule governing** **die** **relationship between the**
**protection resulting from the Community Design system and the protection that a design can**
**obtain under other legal instruments offered by Community or national legislations.**

**The general principle on which this provision is based is "cumulation": if a design protected by**
**a Community Design can also be protected under Community or national law** **by** **a different legal**
**instrument, the existence of** **die** **protection under the Community Design system should constitute**
**no hindrance for the right holder to invoke such further protection. Whilst paragraph (1)**
**establishes this principle for** **a number** **of specific forms of protection, paragraphs (2)** **and** **(3) deal**
**with the most important and common form of concurrent protection, the protection under**
**copyright law.**

**Paragraph (1)**
**Paragraph (1) mentions** **as** **typical forms of protection which could, under specific circumstances,**
**co-exist with the protection under Community Design, trademarks or other protected distinctive**
**signs,** **patents and utility models, typefaces, civil liability and unfair competition.**

**Trademarks means, first of all, national trademarks of the Member States, including those**
**resulting from an international filing under the Madrid Agreement. Cumulation of protection of**
**a Community Design is also possible with a Community Trade Mark, the creation of which is**
**close-at-hand.** **The reference to other distinctive signs should cover a number of** **rights** **which are**
**acknowledged under the national legal systems, for instance to commercial names or** **"enseignes".**

**The reference to patents covers both national and European Patents designating Member States**
**and will also cover Community Patents. The reference to utility models concerns those Member**
**States which provide such an instrument (actually only Germany, Italy, Greece, Spain and**
**Portugal and, more recently, Denmark), but it should also cover the** **"unregistered** **design right"**
**introduced in the United Kingdom by the 1988 Act on Copyright, Designs** **and** **Patents and which**
**constitutes a different answer to** **die** **need for protection of technical innovation not reaching the**
**level required for patent protection.**

**Typefaces have been mentioned to make sure that the specific protection afforded to these**
**designs in some Member States, particularly those which have ratified the 1973 Vienna**
**Convention, is covered.**

**Finally, civil liability and unfair competition have been mentioned, which can be very useful**
**instruments supplementing the specific protection of design.**

**43**

**Cumulation with the protection of topographies of semi-conductor products has not been**
**mentioned for the reasons stated in the comments to Article 3.**

**Paragraph (2)**
**Paragraph (2) contains the basic rule of the cumulation of** **the** **protection under the Community**
**Design system and the protection under copyright law.**

**The attitude of the legislations of the Member States toward copyright protection of** **design** **varies**
**enormously, as it has been shown in the Green Paper and confirmed by all the comparative**
**studies which have been conducted on this subject.**

**The Commission wishes to stress that it remains attached to the policy set out in the Green Paper**
**in this respect. The smooth functioning of the internal market for products embodying design is**
**going to be fully achieved only if the Community Design system is supplemented** **by** **harmonized**
**national rules of copyright law relating to the protection of design. This is, however, a formidable**
**task which needs intense preparation, further comparative studies and contacts with national**
**authorities** **and** **interested** **or** **academic** **circles.** **If the introduction of the Community Design should**
**be subordinated to the achievement of such** **an** **harmonization, the urgent need of giving to design**
**industry an efficient tool for the internal market could not be satisfied within a reasonably short**
**period. It is, however, important that the Member States be aware of** **die** **Commission's intention**
**to proceed in the direction indicated: acceptance of the principle of** **"cumulation"** **of protection,**
**as defined in this paragraph would constitute their first contribution in this direction. It should**
**also be stressed that it would be difficult to require Member States which traditionally attach the**
**utmost importance to protection of design by** **copyright,** **like France or the Benelux States, to**
**accept** **die "market** **oriented** **approach"** **of this Regulation, if they were not sufficiently satisfied**
**that harmonized rules of copyright law will be laid down at Community level in order to protect**
**the creativity aspect of** **the** **activity of design.**

**Accepting** **die** **principle of "cumulation" should not, however, prevent the Member States who**
**already apply such a principle under restrictive conditions (Germany, Spain, Portugal, Denmark,**
##### **Ireland) from continuing to do so. For the time being, the extent and the conditions of protection,**

**including the level of originality required, would continue to be autonomously determined by**
**each Member State. The introduction in the Regulation of the principle of** **"cumulation"** **would,**
**on the contrary, have an immediate impact for Italy, where the principle of "cumulation" is**
**excluded by the existing legislation.**

**Further to acceptance of the principle of "cumulation", this paragraph requires the abolition by**
**the Member States concerned of a few provisions of copyright law which, because of their**
**outdated character, would jeopardize the application of cumulation.**

**The Common Law countries apply a rule (the legal instruments differ in Ireland and in the**
**United Kingdom, but the result is** **die** **same) under which the possibility of protecting a design**
**by copyright is linked** **to** **the number of** **products** **in which the design is intended to be embodied.**
**Should such a number exceed 50, the protection under copyright law could no longer be**

**44**

**afforded (Ireland) or the term of protection would be dramatically reduced (United Kingdom).**
**Such an arbitrary figure, which finds a historical explanation in the practice of the national**
**industrial property offices in the first years of this century, should no longer have a place in**
**contemporary protection of works of applied arts.**

**In Italy, the copyright law subordinates protection to the condition of** **"scindibilità"** **(possibility**
**of separating the work of applied art from the product in which the work is embodied). The**
**interpretation** **given** **by the case-law to mis notion has led to the impossibility for modern**
**industrial design to benefit in Italy from copyright protection, even for the most prestigious and**
**authoritative creations by contemporary artists, whilst protection can be recognized to two-**
**dimensional ornamental designs even with a very low originality level. The Commission**
**considers appropriate, and its feeling is indeed supported by** **die** **very strong request in this sense**
**expressed by all the interested circles, that such a provision should be abolished without awaiting**
**the future harmonization.**

**Paragraph (3)**
**Paragraph (3) deals with anodier urgent problem linked with the application of the principle of**
**cumulation of design protection with copyright protection. The Green Paper has set out the**
**problem raised by a provision of the Berne Convention which permits States party to this**
**Convention to accord protection under** **copyright** **law to designs having their origin in another**
**State party to the Convention only under** **die** **requirement of "reciprocity". If in the country of**
**origin of the design, protection can be accorded only in the specific form of a registered design**
**right, it is only in this form that protection can be invoked in the other States parties** **to** **the Berne**
**Convention,** **but not under copyright law.**

**This provision, legitimate in an international context where, in the absence of elaborated rules**
**as in the field of patents or trademarks, it is difficult to entirely rely on the principle of** **"national**
**treatment", raises a difficulty if applied in an** **intra-Community** **context. It is obvious that this**
**provision leads to a discrimination in the treatment of** **the** **persons seeking protection according**
**to** _**the**_ **country where the design has its origin. An Italian undertaking - but often a German**
**undertaking as well** **-** **will be denied in France or in the Benelux countries protection under**
**copyright law for its designs on the ground that such designs cannot be protected under present**
**Italian legislation (or can only in very rare case be protected under German legislation) by Italian**
**(or German) copyright law. The same designs, however, would benefit from full copyright**
**protection in France or in the Benelux if their origin had been in those countries.**

**The introduction of the principle of "cumulation" in paragraph (2)** **and the** **elimination of the most**
**blatant limitation of copyright protection in Italy by** **die** **abolition of the condition of "scindibilità"**
**should lead the countries which accord** **a** **very generous protection to design** **under their** **copyright**
**legislation to accept to give up this practice of discrimination in intra-Community relationship.**

**45**

**TITLE** **XII**

**THE COMMUNITY DESIGN OFFICE**

**Section 1**
**General provisions**

**Section 2**
**Management of the Office**

**Section 3**

**Administrative Board**

**Articles** **101-112**

**These Articles deal with** **die** **general nature and** **die** **management of the Community Design**
**Office, the Community body which will have the task of monitoring the procedures relating to**
**the Registered Community Design under this Regulation.**

**The provisions reflect the relevant provisions of** **the** **Regulation on the Community Trade Mark.**
**For example, the status of** **its** **staff,** **its privileges and immunities, its languages of** **procedure** **will**
**be the same as those adopted for the Trade Mark Office. The seat of the Community Design**
**Office will be located at** **die** **seat of the Community Trade Mark Office.**

**Section 4**
**Implementation of procedures**

**Articles 113-119**

**These provisions enumerate the** **departments** **of the Community Design Office which will be**
**competent for dealing with the procedures under this Regulation.**

**Four departments have been foreseen:**

**- the Formalities Examining Divisions, in charge of the examination as to formal requirements**
**of** **an** **application for a Registered Community Design, up to the decision of registration;**

**- the Design Administration and Legal Division, competent for any decision required by the**
**Regulation which does not fall within the competence of a Formalities Examining Division or**
**of an Invalidity Division. It will, in particular, deal with decisions concerning entries in the**
**Register and keeping the list of professional representatives;**

**- the Invalidity Divisions, in charge of** **the** **procedures for a declaration of invalidity;**

**- the Boards of Appeal, responsible for deciding on appeal against decisions of any other**
**department of the Office.**

**In view of the** **quasi-jurisdictional** **character of the Boards of Appeal, Article** **118** **sets out**
**guarantees of independence of their members which are modelled on those contained in the**
**Trade Mark Regulation for the members of the Boards of Appeal set up under that instrument.**

**46**

Article 120

During the running-in period of the Community Design Office, the number of cases to be dealt
with by the Invalidity Divisions and by the Boards of Appeal will be necessarily modest and will
then progressively increase, possibly at a different pace for the two departments, until it justifies
a complement of permanent staff of the Office to man these departments.

Before this stage is reached, it has been considered appropriate to give the President of the Office
the possibility to appoint for die tasks to be carried out by these two departments persons having
experience in matters of design law on a short-term basis. The requirements to be fulfilled by
such persons differ for the two departments and are obviously higher for the function of members
of a Board of Appeal. In the latter case also, in order to safeguard the principle of independence
of the members, the short-term contract may not be for less than one year.

The competence for deciding when the transitional period will expire for each of these two
departments so that they also will have to be staffed by full-time members will lie with the
Commission on a proposal by the President of the Office.

Section 5
Financial provisions

Articles 121-122

These Articles deal with the budgetary and financial rules applicable to the Community Design
Office.

**TTTLE** Xm

**FINAL PROVISIONS**

Article 123

The official languages and languages of procedure of the Office are to be the same as those of
the Community Trade Mark Office. The rules governing hôw a language may be chosen in any
of the procedures before the Office will be somewhat simpler for the Community Designs Office,
because there will be no opposition procedure. The rules will be determined in die implementing
regulations, once die Community Trade Mark Regulation is finalized.

Article 124

This provision deals with the Implementing Regulation. An Implementing Regulation is
indispensable to permit the Various procedures before the Office to be operated in an efficient and
clear manner. A number of procedural details (the length of certain time limits, the details of
presentation of the applications, etc.) will have to be established so that die users of die system
would know how to act in practice, within die framework of the fundamental rules established
by die main Regulation. The practice of adopting an Implementing Regulation under a less

**47**

**rigorous procedure than the main legal instrument, in order to facilitate the adoption of**
**amendments to adapt the rules to future needs, is a common practice in the field of industrial**
**property and has been already applied in the case of** **the** **European Patent, Community Patent and**
**Community Trade Mark.**

**It is proposed that the competence and the procedure for adoption of the Implementing**
**Regulation should be** **die** **same as for the Fees Regulation, for the reasons set out below under**
**Articles 126 and 127.**

**Article 125**

**A system of exchange of information on the decisions taken by various Community Design**
**Courts and the departments of the Office concerning interpretation of the requirements for**
**protection should contribute significantly to the unifying effect of future case law of the Court**
**of Justice in this area. It would cover both Community Design and design rights of Member**
**States. The information resulting from this system will be the subject of exchanges of views at**
**regular intervals within the Administrative Board (Article 109). In this manner, the Commission**
**could assess in full knowledge of the opinion of the Board whether and when a new initiative**
**would be useful in order to adapt the rules relating to the requirements of protection.**

**Articles 126-127**

**Article** **127** **concerns the Fees** **Regulation.** **It enshrines the fundamental principle that** **die** **amounts**
**of the fees will have to be set at such a level as to ensure that the revenue of the Community**
**Design Office will be, in principle, sufficient for the Office's revenue and expenditure to be**
**balanced. The self-supporting character of the Community Design Office must therefore be**
**guaranteed by an appropriate level of fees. As has been already stressed, particular importance**
**will attach in this context to the renewal fee, whose possibly progressive structure will have to**
**be determined by the authority adopting the Fees Regulation.**

**It is in conformity with the Community institutional system as it results from the so-called**
**"comitology"** **Decision that the adoption of the Fees Regulation, in view of its character of**
**secondary legislation with respect to the present main Regulation, should be the task of the**
**Commission (Article 126).**

**Article 128**

**This final provision introduces a distinction between the moment when the Regulation will enter**
**into force, i.e. will become law having legal force within the Community, and** **die** **moment when**
**the actual application of its rules will start, in particular when the Community Design Office will**
**open its doors to the** **public.**

**The formal entry into force can be fixed on the sixtieth day following the publication of** **die**
**Regulation in the Official Journal of the European Communities. A longer period is necessary**
**to prepare** **die** **opening of the Office. An important preparation effort has to be performed to this**
**effect: working out and adoption of** **die** **Implementing Regulation, choice of** **the** **main members**
**of the staff which will start the operation of the Office, first of all the President, choice and**

**48**

**arrangement of** **the** **building where the Community Design Office will be located. These are only**
**some of** **the** **many tasks which need to be achieved before** **die** **Office can be opened to the public.**
**The burden of preparing** **the** **opening will fall on the services of the Commission, which will need**
**support from the specialists from the various Member States.**

**The Commission hopes that it should be possible to open the Community Design Office to the**
**public three years after** **die** **date of final adoption of this Regulation.**

**49**

**Proposai for a**
**EUROPEAN PARLIAMENT AND COUNCIL REGULATION**

**on the Community Design**

**TOE EUROPEAN PARLIAMENT AND THE COUNCIL OF THE EUROPEAN UNION,**

**Having** **regard to** **the Treaty establishing** **die** **European Community, and in particular Article** **100a**
**thereof,**

**Having regard to the proposal from the** **Commission** **[(1)]** **,**

**Having regard to the opinion of the Economic and Social** **Committee** **[(2)]** **,**

**(1) Whereas the objectives of** **the** **Community as laid down in the Treaty include establishing an**
**ever closer union among the peoples of** **Europe,** **fostering closer relations between the States**
**belonging to the Community, and ensuring** **die** **economic and social progress of the**
**Community countries by common action to eliminate** **die** **barriers which divide Europe;**
**whereas to that end the Treaty provides for the establishment of an internal market and**
**includes the abolition of obstacles to** **die** **free movement of goods and** **the** **institution of a**
**system ensuring that competition in the common market is not distorted; whereas a unified**
**system for obtaining** **a** **Community Design to which uniform protection is given with uniform**
**effect throughout the** **entire** **territory of** **the** **Community would further those objectives;**

**(2) whereas only the Benelux countries** **have** **introduced a uniform design protection** **law;** **whereas**
**the only other design protection that exists in the Community is a matter for the relevant**
**national law and is confined to the territory of the Member State concerned; whereas there**
**is no such relevant law in any one Member State at the present time; whereas identical**
**designs may be protected differentiy in different Member States and for the benefit of**
**different** **owners;** **and whereas this inevitably leads to** **conflicts** **in** **the** **course of trade between**
**Member States;**

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

**0)**

**(2)** **[OJNo ]**
**OJNo**

**50**

**(4) whereas 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 particular design in** **areas** **with different right**
**owners, and hence constitutes an obstacle to the free movement of goods;**

##### **(5) whereas this calls for the creation of a Community design right which is directly applicable**

**in each Member State, and of a Community design authority with** **Community-wide** **powers,**
**because only in this way will it be possible tp obtain, through one application made to one**
**common design office in accordance with** **a** **single procedure under one law, one design right**
**for one area encompassing all Member States;**

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

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

**(8) whereas such a design-protection system would constitute the prerequisite for seeking**
**corresponding design protection in the most important export markets of the Community;**

**(9) whereas designs produced to meet a functional requirement and providing no opportunity**
**for inclusion of further** **and** **arbitrary design features should, however, be excluded from such**
**protection;**

**(10)** **whereas interoperability of products of different makes should not be hindered by extending**
**the protection to** **die** **design of mechanical fittings;**

**(11)** **whereas mechanical fittings may nevertheless constitute an important element of the**
**innovative characteristics of** **modular** **products especially designed to enable any number of**
**such products, which may be identical or different but interchangeable, to be connected**
**simultaneously in a modular system, and dierefore should be eligible for protection; but**
**whereas this derogation should not prevent the replacement of one part of a** **non-modular**
**system by a part of different make solely because the replacement part must possess a**
**particular shape and configuration in order for the parts to work together in performing the**
**intended function of the system;**

**51**

**(12)** **whereas the legal protection of design might in certain circumstances allow the creation of**
**monopolies in generic products and captive markets by improperly binding consumers to a**
**specific make of product and thus the introduction of a provision is necessary in order to**
**make the reproduction of designs applied to parts of complex products possible for repair**
**purposes under very specific conditions;**

**(13)** **whereas the provisions of this Regulation are without prejudice to the application of the**
**competition rules under Articles 85 and 86 of the Treaty;**

**(14) whereas a Community design right should serve the needs of all sectors of industry in the**
**Community; whereas those sectors are many and varied;**

**(15)** **whereas some of the 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** **die** **duration of protection is of lesser significance; whereas, on the other**
**hand, there are sectors of** **industry** **which value** **die** **advantages of registration for the greater**
**legal certainty it provides and which require** **die** **possibility of a longer term of protection**
**corresponding to the foreseeable market life of their products;**

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

**(17) whereas a registered Community design right requires the creation and maintenance of a**
**register in which will be registered all those applications which comply with formal**
**conditions and which have been accorded a date of filing; whereas the performance of those**
**functions requires a Community Design Office; whereas the registration system should not**
**be based upon substantive examination as to compliance with requirements for protection**
**prior to registration, thereby keeping to a minimum the registration and other procedural**
**burdens on applicants;**

##### **(18) whereas a Community Design right 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**
**it also possesses an individual character in comparison with other designs which are**
**currently exploited in the** **market,** **or which have previously been published following**
##### **registration as being still valid Community Designs or still valid design rights of a Member**

**State;**

##### **(19) whereas it is also necessary to allow the designer or his successor in title to test the products**

**embodying the design in the market place before deciding whether** **die** **protection resulting**
**from a Registered Community Design is desirable; whereas it is therefore necessary to**
**provide that disclosures of the design by the designer or his successor in title, or abusive**
**disclosures, during a period of 12 months prior to the date of** **the** **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;**

**52**

**(20) whereas the exclusive nature of the right conferred by the Registered Community Design**
**is consistent with its greater legal certainty; whereas it is appropriate that the Unregistered**
##### **Community Design should, however, constitute a right only to prevent copying and whereas**

**this right should also extend to trade in products embodying infringing designs;**

**(21) whereas the enforcement of these rights is to be left to national laws and it is necessary**
**therefore to provide for some basic uniform sanctions in all Member States; whereas these**
**should make it possible, irrespective of** **the** **jurisdiction under which enforcement is sought,**
**to stop the infringing acts, to obtain information about the infringer's source and distribution**
**channels, and to seize infringing products;**

**(22) whereas a procedure for hearing actions concerning validity of a Registered Community**
**Design in a single place would bring savings in costs and time compared with procedures**
**involving different national courts; whereas, if the single place were to be a court in** **die**
**country where the design right holder is domiciled, undue costs and difficulties could still**
**be encountered by a challenger to validity from another country; whereas it is appropriate**
**in these circumstances that the Community Design Office itself should hear direct actions**
**raised by the Commission, Member States and third parties against validity;**

**(23) whereas in particular the intervention of the Commission and Member States would**
**contribute significantly to maintaining consistency of practice as regards the requirements**
**for protection;**

**(24) whereas it is necessary to provide safeguards including a right of appeal to a Board of**
**Appeal, and ultimately to the Court of** **Justice** **of** **the** **European Communities; whereas such**
**a procedure would assist the development of uniform interpretation of the requirements**
**governing the validity of Community Designs;**

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

**(26) whereas sectors of industry producing large numbers of possibly short-lived designs over**
**short periods of time of which only some may be eventually commercialized will find**
**advantage in the Unregistered Community Design; whereas there is also a need for these**
**sectors to have easier recourse to the Registered Community Design; whereas the option of**
**combining a number of designs in one multiple application would satisfy that need;**

**(27) whereas the normal publication following registration of** **a** **Community Design could** **in** **some**
**cases destroy or jeopardize the success of a commercial operation involving the design;**
##### **whereas the facility of an adjournment of publication for a reasonable time affords a solution**

**in such cases;**

**53**

(28) whereas it is essential that the rights conferred by the Community Designs be enforced in
an efficient manner throughout the territory of the Community; whereas specific rules
concerning litigation based on Community Designs must be provided in order to guarantee
such a result; whereas for infringement actions and for actions for a declaration of invalidity
a limitation in the number of national courts having jurisdiction may promote the
specialization of the judges; whereas to that end Member States should designate
Community Design Courts;

(29) whereas the litigation system should avoid as far as possible "forum shopping"; whereas it
is therefore necessary to establish clear rules of international jurisdiction;

(30) whereas this Regulation does not preclude die application to designs protected by
Community Designs of other relevant laws of the Member States, such as those relating to
design protection acquired by registration or those relating to unregistered design rights,
trademarks, patents and utility models, unfair competition or civil liability;

(31) whereas, pending harmonization 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 die conditions
under which such protection is conferred; whereas in the relationship between Member
States, Community law already prohibits Member States from requiring mat protection under
copyright law be afforded only subject to reciprocity; whereas it appears necessary that
national legal provisions and practice incompatible herewith be abolished,

**HAVE ADOPTED THIS REGULATION:**

**TTIXEI**

**GENERAL PROVISIONS**

Article 1
Community Design

(1) Designs which comply with die conditions contained in this Regulation, hereinafter referred
to as "Community Designs", shall be protected by a Community system of rights.

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

(a) by an "Unregistered Community Design", without any formalities;
(b) by a "Registered Community Design", if registered in the manner provided for in this
Regulation.

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

54

**Article 2**
**Community Design Office**

**A Community Design Office, hereinafter referred to as "the Office", is hereby established.**

**TITLED**

**TOE LAW RELATING TO DESIGNS**

**Section 1**
**Requirements for protection**

**Article 3**

**Definitions**

**For the purposes of this Regulation:**

##### **(a) "design" means the appearance of die whole or a part of a product resulting from the specific**

**features of the lines, contours, colours, shape and/or materials of** **the** **product itself** **and/or** **its**
**ornamentation;**
**(b) "product" means any industrial or handicraft item, including parts intended to be assembled**
**into a complex item, sets or compositions of** **items,** **packaging, get-ups, graphic symbols and**
**typographic typefaces, but excluding a computer program or a semi-conductor product.**

**Article 4**
**General requirements**

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

**(2) A design of a product which constitutes a part of a complex item shall only be considered**
**to be new and to have an individual character in so far as** **the** **design applied to the part as**
**such fulfils the requirement as to novelty and individual character.**

**Article 5**

**Novelty**

**(1) A design shall be considered to be new if** **no** **identical design has been made available to the**
**public before the date of reference. Designs shall be deemed to be identical if their specific**
**features differ only in immaterial details.**

**(2) A design shall be deemed to have been made available to the public if it has been published**
**following registration or otherwise, exhibited, used in trade or otherwise disclosed. It 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.**

**55**

**Article 6**

**Individual character**

**(1) A design shall be considered to have an individual character if the overall impression it**
**produces on the informed user differs significantly from the overall impression produced on**
**such a user by any design referred to in paragraph (2).**

**(2) To be considered for the purpose of application of paragraph (1), a design must be:**

**(a) commercialized in the market place at the date of reference whether in** **die** **Community**
**or elsewhere; or**
**(b) published following registration as a Registered Community Design or as a design right**
**of a Member State, provided that protection has not expired at the date of reference.**

**(3) In order to assess individual character, common features shall as a matter of principle be**
**given more weight than differences and the degree of freedom of the designer in developing**
**design shall be taken into consideration.**

**Article 7**

**Date of reference**

**The date of reference within the meaning of the first sentence of Articles 5(1) and Article 6(2)**
**shall be:**

**(a) in the case of** **an** **Unregistered Community Design, the date on which the design for which**
**protection is claimed was first made available to the public by the designer or his successor**
**in tide or by** **a third** **person as a result of information provided or action taken by** **die** **designer**
**or his successor in title;**
**(b) in the case of a Registered Community Design, the date of filing the application for**
**registration or, if a priority is claimed, the date of priority.**

**Article 8**
**Non-prejudicial disclosures**

**(1) If a design for which protection is claimed under a Registered Community Design has been**
**made available to the public by the designer or his successor in tide or by a third person as**
**a result of information provided or action taken by the designer or his successor in tide or**
**as a consequence of an abuse in relation to the designer or his successor in title during the**
**twelve-month period preceding the date of the filing of the application or, if a priority is**
**claimed,** **the date of priority, such disclosure shall not be taken into consideration for the**
**purpose of applying Articles 5 and 6.**

**(2) The provisions of paragraph (1) shall not apply if the subject of the abusive disclosure is a**
**design which has resulted in a Registered Community Design or a design right of** **a** **Member**
**State.**

**56**

**Article 9**
**Non-arbitraiy** **technical designs, and designs of interconnections**

**(1) A Community Design right shall not subsist in a design to the extent that the realization of**
**a technical function leaves no freedom as regards arbitrary features of appearance.**

##### **(2) A Community Design right shall not subsist in a design to the extent that it must necessarily**

**be reproduced in its 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 assembled or connected**
**with another product.**

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

**Article 10**
**Designs contrary to public policy**

##### **A Community Design right shall not subsist in a design the exploitation or publication of which**

**is contrary to public policy or to accepted principles of morality.**

**Section 2**
**Scope and term of protection**

**Article** **11**
**Scope of protection**

**(1) The scope of** **the** **protection conferred by** **a** **Community Design shall include any design which**
**produces on the informed user a significantly similar overall impression.**

**(2) In order to assess the scope of** **protection,** **common features shall as a matter of principle be**
**given more weight than differences and the degree of freedom of the designer in developing**
**his design shall be taken into consideration.**

**Article 12**
**Commencement and term of protection of the Unregistered Community Design**

**A design which meets the requirements under Section** **1** **shall be protected without any formalities**
**by an Unregistered Community Design for a period of three years as from the date referred to**
**in Article 7(a).**

**57**

**Article 13**
**Commencement and term of protection of the Registered Community Design**

**Upon registration by the Office, a design which meets the requirements under Section 1 shall be**
**protected by a Registered Community Design for a period of five years as from the date of the**
**filing of the application. The term of protection may be extended in accordance with Article 53.**

**Section 3**
**Entitlement to the Community Design**

**Article 14**
**Right to the Community Design**

**(1) The right to the Community Design shall vest in the designer or his** **successor** **in title.**

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

**Article** **15**
**Plurality of designers**

##### **If two or more persons have jointly developed a design, the right to the Community Design shall**

**vest in them joindy.**

**Article 16**
**Claims relating to the entitlement to a Community Design**

##### **(1) If the right to an Unregistered Community Design is claimed by, or a Registered Community**

**Design has been registered in the name of, a person who is not entitled to it under Article 14,**
**the person entitled to it under that provision may, without prejudice to any other remedy**
**which may be open to him, claim to have the Community Design transferred to him.**

**(2) Where a person is jointly entitled to a Community Design, that person may, in accordance**
**with paragraph (1), claim to be made a joint holder.**

**(3) In the case of a Registered Community Design, legal proceedings to seek the transfer under**
**paragraph (1) may be instituted only within a period of not more** **than** **two years after the date**
**of publication of the Registered Community Design. This provision shall not apply if** **die**
**holder of the Registered Community Design knew that he was not entitled to it at the time**
**when such Design was registered or transferred to him.**

**(4) In case of a Registered Community Design,** **die** **fact that legal proceedings under**
**paragraph (1) have been instituted shall be entered in the Register. Entry shall also be made**
**of** **die** **final decision in, or of any other termination of, the proceedings.**

**58**

**Article 17**
**Effects of** **a** **judgment on entitlement to a Registered Community Design**

**(1) Where there is a complete change of ownership of a Registered Community Design as a**
##### **result of legal proceedings under Article 16(1), licences and other rights shall lapse upon die**

**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 preparations to do so, he may continue such**
**exploitation provided that he requests within the period prescribed by the Implementing**
**Regulation a non-exclusive licence from the new holder whose name is entered in the**
**Register. The licence shall be granted for a reasonable period and upon reasonable terms.**

##### **(3) Paragraph (2) shall not apply if the right holder or the licensee was acting in bad faith at the**

**time when he began to exploit the design or to make preparations to do so.**

**Article 18**
**Presumption in favour of the registered person**

**The person in whose name the application for a Registered Community Design was filed shall**
**be deemed to be the person entitled in any proceedings before the Office.**

**Article 19**
**Specific rights of** **die** **designer**

**The designer shall have** **die** **right, as against the applicant for or the holder of a Registered**
**Community Design, to be cited as such before** **die** **Office or in the Register. If** **the** **design is the**
**result of team-work, the indication of the team may replace the citation of** **die** **individual**
**designers.**

**Section 4**
**Effects of the Community Design**

**Article 20**
**Rights conferred by** **die** **Unregistered Community Design**

##### **An Unregistered Community Design shall confer on its holder the right to prevent any third party** **not having his consent from copying the design or from using a design included within the scope**

**of protection of the Unregistered Community Design and resulting from such copying. The**
**aforementioned use shall, in particular, cover the making, offering, putting on the market or**
**using of a product in which such a design is incorporated or to which it is** **applied,** **and the**
**importing, exporting or stocking of such a product for those purposes.**

**59**

**Article 21**

**Rights conferred by the Registered Community Design**

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

**(2) Notwithstanding paragraph (1)** **a** **Registered Community Design whose publication is deferred**
**in accordance with Article 52 shall confer on its holder the rights referred to in Article 20.**

**Article 22**
**Limitation of the rights conferred by a Community Design**

**(1) The rights conferred by a Community Design shall not extend to:**

**(a) acts done privately and for non-commercial purposes;**
**(b) acts done for experimental purposes;**
**(c) acts of reproduction for the purpose of making citations or of teaching, provided that such**
**acts are compatible with fair trade practice and do not unduly prejudice the normal**
**exploitation of the** **design,** **and that mention is made of the source.**

**(2) In addition, the rights conferred by a Community Design shall not extend to:**

**(a)** **die** **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 accessories for the purpose of**
**repairing such craft;**
**(c) the execution of repairs on such craft.**

**Article 23**
**Use of a Registered Community Design for repair purposes**

**The rights conferred by a Registered Community Design shall not be exercised against third**
##### **parties who, after three years from the first putting on the market of a product incorporating the**

**design or to which the design is applied, use the design under Article 21, provided that:**

**(a)** **die** **product incorporating the design or to which the design is applied is a part of** **a** **complex**
**product upon whose appearance the protected design is dependent;**
**(b) the purpose of such a use is to permit the repair of the complex product so as to restore its**
**original appearance; and**
**(c) the public is not misled as to the origin of the product used for the repair.**

**60**

**Article 24**

**Exhaustion**

**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** **die** **Community Design is incorporated**
**or to which it is applied, when the product has been put on the market in the Community by the**
**holder of the Community Design or with his consent.**

**Article 25**
**Rights of prior use in respect of a Registered Community Design**

##### **The rights conferred by a Registered Community Design shall not become effective against any**

**third person who can establish that:**

**(a) before the date of filing the application; or**
**(b) if a priority is claimed, before the date of priority,**

**he has, in good faith, commenced use within the Community - or has made serious preparations**
**to that end - of a design included within the scope of protection of the Registered Community**
**Design, which has been developed independendy of** **the** **latter and which at such a date had not**
**yet been made available to** **die** **public. Such a person shall be entided to exploit the design for**
**the needs of the undertaking in which the use was effected or anticipated. That right cannot be**
**transferred separately from the undertaking.**

**Section 5**
**Invalidity**

**Article 26**
**Declaration of invalidity**

**(1) A Community Design may only be declared invalid by a Community Design Court.**

**A Registered Community Design may also be declared invalid by the Office in accordance**
**with the procedure in Tide VII.**

**(2) An application for a declaration of invalidity may be submitted even after the Community**
**Design has lapsed or has been surrendered.**

**Article 27**
**Grounds for invalidity**

**(1) A Community Design may be declared invalid only in the following cases:**

**(a) if the design protected does not fulfil the requirements under Article 4; or**
**(b) to the extent that its specific technical** **and/or** **interconnecting features are not eligible for**
**protection under Article 9(1) or (2); or**

**61**

(c) to the extent that its exploitation or publication is contrary to public policy or to accepted
principles of morality; or
(d) if the right holder in the Community Design is, by virtue of a court decision, not entitled
under Articles 14 and 15.

(2) A Community Design may also be declared invalid if a conflicting design which has been
made available to the public after the date of reference within the meaning of Article 7(a) or
(b), as the case may be, is protected from a date prior to the said date of reference by a
Registered Community Desipi or a registered design right of one or more Member States, or
an application for such a right.

(3) By derogation from Article 1(3):

(a) in the case specified in paragraph (l)(c), invalidity shall be declared only in respect of the
Member State or States where die ground for invalidation obtains;
(b) in the case specified in paragraph (2), to the extent that the rights in question, or
applications for such rights, have effect only in respect of a Member State or States,
invalidity shall be declared only in respect of such a Member State or States.

Article 28
Effects of invalidity

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

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

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

**TTTLE** **III**

**COMMUNITY DESIGNS AS OBJECTS OF PROPERTY**

Article 29
Dealing with Community Designs as national design rights

(1) Save where Articles 30 to 34 provide otiierwise, 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:

62

**(a) the holder has his seat or his domicile on the relevant date; or**
**(b) where subparagraph (a) does not apply, the holder has an establishment on the relevant**
**date.**

**(2) In the case of a Registered Community Design, paragraph (1) shall apply according to the**
**entries in the Register.**

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

**(a) in the case of an Unregistered Community Design, by reference to the relevant joint**
**holder designated by them by common agreement;**
**(b) in the case of a Registered Community Design, by reference to the first of the relevant**
**joint holders in the order in which they are mentioned in the Register.**

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

**Article 30**

**Transfer**

**(1) A Community Design may be transferred.**

**(2) The transfer of** **a** **Registered Community Design shall be subject to the following provisions:**

**(a) At** **die** **request of one of** **die** **parties, a transfer shall be entered in the Register and**
**published.**
**(b) Until such time as the transfer has been entered in the Register, the successor in title may**
**not invoke** **die** **rights arising from** **die** **Registered Community Design.**
**(c) Where there are time limits to be observed in dealings with the Office, the successor in**
**tide may** **make the** **corresponding statements to the Office once the request for registration**
**of the transfer has been received by the Office.**
**(d) All documents which require notification to the holder of the Registered Community**
**Design shall be addressed to the person registered as holder or his** **representative,** **if one**
**has been appointed.**

**Article** **31**

**Rights in rem on a Registered Community Design**

**(1) A Registered Community Design may be given as security or be the subject of** **rights** **in rem.**

##### **(2) At the request of one of the parties, rights mentioned in paragraph (1) shall be entered in the**

**Register and published.**

**63**

**Article 32**
**Levy of execution on a Registered Community Design**

**(1) A Registered Community Design may be levied in execution.**

**(2) As regards the procedure for levy of execution in respect of** **a** **Registered Community Design,**
**die** **courts and** **authorities** **of the Member State determined in accordance with Article 29 shall**
**have exclusive jurisdiction.**

**(3) On request of one of the parties, levy of execution shall be entered in the Register and**
**published.**

**Article 33**
**Bankruptcy or like proceedings**

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

**(2) Where a Registered Community Design is involved in bankruptcy or like proceedings, an**
**entry to that effect shall be made in the Register at the request of** **die** **competent national**
**authority and shall be published.**

**Article 34**
**Licensing**

**(1) A Community Design may be licensed for the whole or part of the Community. A licence**
**may be exclusive or non-exclusive.**

**(2) Without prejudice to the provisions of the licensing** **contract,** **die** **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.**

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

**(4) In the case of a Registered Community Design, the grant or transfer of a licence in respect**
**of such right shall, at the request of one of the parties, be entered in** **die** **Register and**
**published.**

**64**

**Article 35**
**Effects vis-à-vis third parties**

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

**(2) However, as regards Registered Community Designs, legal acts referred to in Articles 30, 31**
**and 34 shall have effect only vis-à-vis** **third** **parties in** **all** **the Member States after entry in the**
**Register. Nevertheless, such an act, before it is so entered, shall have effect vis-à-vis third**
##### **parties who have acquired rights in the Registered Community Design after the date of that**

**act but who knew of** **die** **act at the date on which the rights were acquired.**

**(3) Paragraph (2) shall not apply to a person who acquires the Registered Community Design or**
**a right relating to it by way of transfer of the whole of the undertaking or by any other**
**universal succession.**

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

**Article 36**
**The application for a Registered Community Design**

**as an** **object** **of property**

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

**(2) Articles 30 to 35 shall apply mutatis mutandis to applications for Registered Community**
**Designs. Where the effect of one of these provisions is conditional upon an entry in the**
**Register, that formality shall have to be performed upon registration of the resulting**
**Registered Community Design.**

**65**

**TITLE IV**

**THE APPUCATION FOR A REGISTERED COMMUNITY DESIGN**

Section 1
Filing of applications and the conditions which govern them

Article 37
Filing of applications

(1) An application for a Registered Community Design shall be filed, at die option of the
applicant:

(a) at die Office; or
(b) if the law of the Member State so permits, at the central industrial property office of a
Member State or at die Benelux Design Office.

(2) An application filed at the central industrial property office of a Member State or at die
Benelux Design Office shall have the same effect as if it had been filed on the same date at
the Community Design Office.

Article 38
Forwarding of the application

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

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

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

Article 39
Conditions with which applications must comply

(1) An application for a Registered Community Design shall contain:

(a) a request for registration;

(b) information identifying the applicant;
(c) a representation of the design suitable for reproduction.

66

**(2) If the object of the application is a two-dimensional design and the application contains a**
**request for deferment of publication in accordance with Article 52, the representation of the**
**design may be replaced by a specimen or a sample of the product in which the design is**
**incorporated or to which it is applied.**

**(3) In addition, the application may contain:**

**(a) a description explaining the representation;**
**(b) an indication of the products in which the design is intended to be incorporated or to**
**which** **it** **is intended to be applied;**
**(c) the classification of the products in which the design is intended to be incorporated or to**
**which it is intended to be applied according to class and sub-class;**
**(d) a specimen or a sample of the product in which the design reproduced in the**
**representation is incorporated or to which it is applied;**
**(e) a request for deferment of publication of the application in accordance with Article 52.**

**(4) The application shall cite the designer or indicate the team of designers. If the applicant is**
**not the designer, or not the sole designer, the entry shall contain a statement indicating the**
##### **origin of the right to the Community Design.**

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

**(6) The application shall comply with the conditions laid down in the Implementing Regulation.**

**Article 40**
**Multiple applications**

**(1) Several designs may be combined in one multiple application for Registered Community**
**Designs. Except in cases of ornamentation, this possibility is subject to the condition that the**
**products in which the designs are intended to be incorporated or to which they are intended**
**to be applied all belong to** **die** **same sub-class, or to** **die** **same set or composition of items.**

**(2) Besides the fees referred to in Article 39(5), the multiple application shall be subject to**
**payment of an additional registration fee and an additional publication fee. Where the**
**multiple application contains** **a request** **for deferment of publication, the additional publication**
**fee shall be replaced by the additional fee for deferment of publication. The additional fees**
**shall correspond to a percentage of** **the** **basic fees for each additional design.**

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

**67**

**Article 41**
**Date of filing**

**The date of filing of an application for a Registered Community Design shall be the date on**
**which documents containing** **die** **information specified in Article 39(1) or (2) 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 subject to payment**
**of the fees referred to in Article 39(5) and, where appropriate, Article 40(2) within a period of**
**two months of the filing of** **the** **abovementioned documents.**

**Article 42**

**Classification**

**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.**

**Section 2**
**Priority**

**Article 43**
**Right of priority**

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

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

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

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

**68**

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

**Article 44**
**Claiming priority**

**An applicant for a Registered Community Design desiring to take advantage of the priority of**
**a previous application shall file a declaration of priority and a copy of** **the** **previous application.**
**If** **the** **language of the latter is not one of the languages of** **procedure** **of** **the** **Office, the latter may**
**require a translation of the previous application in one of the languages of procedure of the**
**Office. The procedure to be followed in carrying out this provision is laid down** **in** **the**
**Implementing Regulation.**

**Article 45**
**Effect of priority right**

##### **The effect of the right of priority shall be that the date of priority shall count as the date of die**

**filing of the application for a Registered Community Design for the purpose of**
**Articles 5, 6, 8, 25 and 27(2).**

**Article 46**
**Equivalence of Community filing with national filing**

**An application for a Registered Community Design which has been accorded a date of filing**
**shall, in the Member States, be equivalent to a lawful national filing, including where appropriate**
**the priority claimed for the said application.**

**Article 47**
**Exhibition priority**

**(1) If an applicant for a Registered Community Design has displayed** **products** **in which the**
**design is incorporated, or to which it is** **applied,** **at an official or officially recognized**
**international 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 Regulation.**

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

**69**

**TTTLE V**

**REGISTRATION PROCEDURE**

**Article 48**
**Examination as to formal requirements**

**(1) The Office shall refuse any application for a Registered Community Design the subject of**
**which is obviously not covered by the definition in Article 3.**

**(2) The Office shall examine whether:**

**(a) the application complies with the conditions laid down in Article 39(1) and (2) for the**
**accordance of a date of filing;**
**(b) the application complies with the other conditions laid down in** **Article.** **39** **and,** **in** **the case**
**of a multiple application, Article 40;**
**(c)** **die** **requirements concerning the claim to priority are satisfied, if a priority is claimed.**

**Article 49**

**Remediable deficiencies**

**(1) Where the application** **does not** **satisfy the requirements referred to in Article 48(2)(a)** **and** **(b),**
**the Office shall request the applicant to remedy the deficiencies or the default on payment**
**of the fees within the prescribed** **period.**

**(2) If the applicant complies with the Office's request in due time, the Office shall allow as the**
**date of filing the date on which the deficient application was originally filed. If, however,**
**compliance with the Office's request concerns deficiencies relating to the conditions referred**
**to in Article 39(1) or (2), the Office shall allow as date of filing the date on which the**
**deficiencies are remedied.**

**(3) If the deficiencies or the default in payment established pursuant to paragraph (1) are not**
**remedied within the prescribed** **period,** **the Office shall refuse the application.**

**(4) Failure to satisfy the requirements concerning the claim to priority shall result in the loss of**
##### **the right of priority for the application.**

**Article 50**
**Registration**

**An application which has been accorded a date of filing shall forthwith be registered as a**
**Registered Community Design. The registration shall bear the date on which the date of filing**
**was accorded.**

**70**

**Article** **51**

**Publication**

**Upon registration, the Office shall publish the Registered Community Design in the Community**
**Design Bulletin as mentioned in Article 77(a). The publication shall contain:**

##### **(a) information identifying the right holder in the Registered Community Design;**

**(b) the number and the date of filing and, if a priority has been claimed, the priority date;**
**(c) the citation of the designer or the indication of the team;**
**(d) the reproduction of the representation of the design;**
**(e) where a specimen or a sample has been filed, a reference to such filing;**
**(f) any other particulars prescribed by the Implementing Regulation.**

**Article 52**

**Deferment of publication**

**(1) The applicant for a Registered Community Design may request, when filing the application,**
**that the publication of the Registered Community Design be deferred for a period not**
##### **exceeding 30 months from the date of filing die application or, if a priority is claimed, from**

**the date of priority.**

**(2) Upon such** **request,** **where the application has been accorded a date of filing, the Registered**
**Community Design shall be registered, but neither the representation of** **the** **design nor any**
**file relating to the application shall, subject to Article 78(2), be open to public inspection.**

**(3) The Office shall publish in the Community Design Bulletin a mention of the deferment of the**
**publication of the Registered Community Design. The mention shall be accompanied by**
**information identifying at least** **the** **right** **holder in the Registered Community Design, the date**
**of filing the application,** **die** **length of the period for which deferment** **has** **been requested 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 Register and the file relating**
**to the application and shall publish the Registered Community Design in the Community**
**Design Bulletin, provided that, within the time limit laid down in the Implementing**
**Regulation:**

**(a) the publication fee and, in the event of** **a** **multiple application, the additional publication**
**fee are paid;**
**(b) where use has been made of the option under Article 39(2), the** **right** **holder** **has** **filed with**
**the Office a representation of the design suitable for reproduction.**

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

**71**

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

(6) The institution of legal proceedings on the basis of a Registered Community Design during
the period of deferment of publication shall be subject to the condition that the information
contained in the register and in the file relating to the application has been communicated to
the person against whom the action is brought.

(7) References in this Regulation to the date of publication of the Registered Community Design
shall be understood, in the case of a Registered Community Design subject to deferment of
publication, to mean the date on which the Office performs the act referred to in
paragraph (4).

**TTTLE** **VI**

**TERM OF PROTECTION OF THE REGISTERED** **COMMUNTTV** **DESIGN**

Article 53
Term of protection

The term of protection of the Registered Community Design shall be five years as from the date
of filing of die application. It may be renewed pursuant to Article 54 for periods of five years
each up to a total term of 25 years as from the date of filing of the application.

Article 54

Renewal

(1) Registration of the Registered Community Design shall be renewed at the request of the right
holder or of any person expressly authorized 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 die Office.

(3) The request for renewal shall be submitted and the renewal fee paid within a period of six
months before the last day of the month in which protection ends. Failing this, the request
may be submitted and die 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 die day following the date on which the existing registration
expires. The renewal shall be registered.

**72**

**TITLE** **VU**

**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 registered.

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

Article 56
Application for a declaration of invalidity

(1) The Commission, Member States and any other namral or legal person may submit to the
Office an application for a declaration of invalidity of a Registered Community Design;
however, in the case envisaged in Article 27(1 )(d), the application may be filed only by the
person or persons entided and, in the case envisaged in Article 27(2), only by the right holder
of the earlier right.

(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.

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

Article 57
Examination of the application

(1) If the application for a declaration of invalidity is admissible, the Office shall examine
whether the grounds for invalidity referred to in Article 27 prejudice the maintenance of the
Registered Community Design.

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

(3) The decision declaring the Registered Community Design invalid shall be entered in the
Register upon becoming final.

**73**

Article 58
Participation in the proceedings of the alleged infringer, the Commission

and the Member States

(1) If an application for a declaration of invalidity of a Registered Community Design is filed,
and as long as no final decision has been taken by an Invalidity Division, any third party who
proves that proceedings for infringement of the same design have been instituted against him
may intervene in die invalidity proceedings, if he gives notice of intervention within three
months of the date on which the infringement proceedings were instituted. The same shall
apply in respect of any third party who proves both that the right holder of the Design has
requested that he cease an alleged infringement of the Design and that he has instituted
proceedings for a court ruling that he is not infringing the Design.

(2) The Commission and Member States shall have the right to be joined as parties to the
proceedings in accordance with the provisions hereon set out in the Implementing Regulation.

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

**TITLE Vm**

**APPEALS FROM** DECISIONS **OF THE** OFFICE

Article 59
Decisions subject to appeal

(1) An appeal shall lie from decisions of the Formalities Examination Divisions, Design
Administration and Legal Division and Invalidity Divisions. It shall have suspensive effect.

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

Article 60
Persons entitled to appeal and to be parties to appeal proceedings

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

**74**

**Article 61**
**Time limit and form of appeal**

**Notice of appeal must be filed in writing at the Office within two months after the date of**
**notification of the decision appealed from. The notice shall not be deemed to have been filed**
**until after the appeal fee has been paid. Within** **four** **months after the date of notification of the**
**decision, a written statement setting out the grounds of appeal must be filed.**

**Article 62**
**Interlocutory revision**

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

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

**Article 63**
**Examination of appeals**

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

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

**Article 64**

**Decisions in respect of appeals**

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

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

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

**75**

Article 65

Actions before the Court of Justice

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

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

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

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

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

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

**TTTLEIX**

**PROCEDURE BEFORE THE OFFICE**

Section 1
General provisions

Article 66

Statement of reasons on which decisions are based

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

comments.

Article 67
Examination of the facts by the Office of its own motion

(1) In proceedings before it the Office shall examine the facts of its own motion; however, in
proceedings relating to a declaration of invalidity, the Office shall be restricted in this
examination to the facts, evidence and arguments provided by the parties and the relief
sought.

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

76

**Article 68**
**Oral** **proceedings**

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

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

**Article 69**
**Taking of evidence**

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

**(a) hearing the parties;**
**(b) requests for information;**
**(c) the production of documents and items of information;**
**(d) hearing the witnesses;**

**(e) opinions by experts;**
**(f) statements in writing, sworn or affirmed or having a similar effect under the law of** **die**
**State in which the statement is drawn up.**

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

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

**(4) The parties shall be informed of the hearing of a wimess or expert before the Office. They**
##### **shall have the right to be present and to put questions to the wimess 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.**

**77**

**Article 71**
**Restitutio in integrum**

**(1) The applicant for or right holder of a Registered Community Design or any other party to**
**proceedings before the Office who, in spite of all due care required by the circumstances**
##### **having been taken, was unable to observe a time limit in dealings with the Office shall, upon**

**application, have his rights re-established if the** **non-observance** **in question has the direct**
**consequence, by virtue of** **the** **provisions of** **this** **Regulation, of causing the loss of** **any** **rights**
**or means of redress.**

**(2) The application must be filed in writing within two months of the removal of the cause of**
**non-compliance with the time limit. The omitted act must be completed within this period.**
**The application shall only be admissible within** **die** **year immediately following the expiry of**
**the infringed 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 54(3) shall be deducted from the period of one year.**

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

**(4) The department of** **the** **Office empowered to decide on the omitted act shall decide upon** **die**
**application.**

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

##### **(6) Where the applicant for or right holder in a Registered Community Design has his rights re-**

**established,** **he may not invoke his** **rights** **vis-à-vis** **a** **third party who, in good faith, during the**
**period between** **die** **loss of rights in the application or in the Registered Community Design**
**and publication of the mention of re-establishment of those rights, has put products on** **die**
**market in which a design is incorporated or to which it is applied, which is comprised within**
**the scope of protection of** **the** **Registered Community Design.**

**(7) A third party who may avail himself of the provisions of paragraph (6) may bring** **third party**
##### **proceedings against the decision re-establishing the rights of the applicant for or right holder**

**in the Registered Community Design within a period of two months as from** **die** **date of**
**publication of the mention of re-establishment of those rights.**

##### **(8) Nothing in this Article shall limit the right of a Member State to grant restitutio in integrum**

**in respect of** **time** **limits provided for in this Regulation and to be complied with vis-à-vis the**
**authorities of such State.**

**78**

**Article 72**
**Reference to general principles**

**In the absence of procedural provisions in this Regulation, the Implementing Regulation, the Fees**
**Regulations or** **the** **Rules of Procedure of the Boards of Appeal, the Office shall take into account**
**the principles of procedural law generally recognized in the Member States.**

**Article 73**
**Termination of financial obligations**

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

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

**arose.**

**(3) The periods laid down in paragraphs (1) and (2) shall be interrupted, in the case covered by**
**paragraph (1), by a request for payment of** **the** **fee and, in the case covered by paragraph (2),**
**by a reasoned claim in writing. On interruption it shall begin again immediately and shall end**
**at the latest six years after the end of the year in which it originally began, unless in the**
##### **meantime judicial proceedings to enforce the right have begun; in such case the period shall** **end no earlier than one year after the judgment has acquired the authority of a final decision.**

**Section 2**

**Costs**

**Article 74**

**Allocation of costs**

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

**(2) 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 apportionment**
**of** **costs.**

**(3) The party who terminates the proceedings by surrendering the Registered Community Design**
**or by not renewing its registration or by withdrawing the application for a declaration of**
**invalidity or the appeal, shall bear** **die** **fees and the costs incurred by the other party as**
**stipulated in paragraphs (1) and (2).**

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

**79**

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

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

**Article 75**
**Enforcement of decisions fixing the amount of costs**

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

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

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

**(4) Enforcement may be suspended only by a decision of the Court of Justice. However, the**
**courts of the Member State concerned shall have jurisdiction over complaints that**
**enforcement is being carried out improperly.**

**Section 3**
**Information of the public and of the official authorities**

**of** **the** **Member States**

**Article 76**
**Register**

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

**80**

**Article 77**

**Periodical publications**

**The Office shall periodically publish:**

**(a) a** **"Community** **Design Bulletin" containing entries open to public inspection in the Register**
**as well as other particulars the publication of which is prescribed by this Regulation or by**
**the Implementing Regulation;**
**(b) an "Official Journal of the Community Design Office", containing 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.**

**Article 78**
**Inspection of files**

**(1) The files relating to applications for Registered Community Designsr which have not yet been**
**published or the files relating to Registered Community Designs which are subject to**
**deferment of publication in accordance with Article 52 or which, being subject to such**
**deferment, have been surrendered before or on the expiry of that period, shall not be made**
**available for inspection without the consent of** **die** **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** **die** **consent of**
##### **the applicant for or right holder in the Registered Community Design prior to the publication**

**or after the surrender of** **die** **latter in the case provided for under paragraph (1). This shall in**
**particular apply if the interested person proves that the applicant for, or the right holder, in**
**a Registered Community Design has taken steps with a view** **to** **invoking against him the right**
**under** **die** **Registered Community Design.**

**(3) Subsequent to the publication of the Registered Community** **Design,** **the file may be inspected**
**on request.**

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

**Article 79**
**Administrative and legal cooperation**

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

**81**

**Article 80**
**Exchange of publications**

**(1) The Office** **and** **the central industrial offices of the Member States shall despatch to each other**
**on request and for their own use one or more copies of** **their** **respective publications free of**
**charge.**

**(2) The Office may conclude agreements relating to the exchange or supply of publications.**

**Section 4**
**Representation**

**Article 81**
**General principles of representation**

**(1) Subject to the provisions of paragraph (2), no person shall 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.**

**(3) Natural or legal persons having** **their** **domicile or principal place of business or a real and**
**effective industrial or commercial establishment** **in die** **Community may be represented before**
**the Office by one of their employees, who must file with it a signed authorization 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 establishment within the Community.**

**Article 82**
**Professional representatives**

**(1) Representation of natural or legal persons before the Office may only be 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**
**(b) professional representatives whose names appear on the list maintained for this purpose**
**by the Office.**

**Representatives acting before the Office must file with it a signed authorization for inclusion**
**on** **die** **files, the details of which are set out in the Implementing Regulation.**

**82**

(2) Any natural person who fulfils the following conditions may be entered on the list of
professional representatives:

(a) he must have his place of business or employment in the Community;
(b) he must be entitled to represent namral or legal persons:

    - in patent matters before the European Patent Office, or

    - in trademark matters before the Community Trade Mark Office, or

    - in industrial property matters, including design matters, before the central industrial
property office of the Member State in which he has his placer of business or
employment. Where, in that State, the entitlement is not conditional upon die
requirement of special professional qualifications, persons applying to be entered on the
list who act in industrial property matters, including design matters, before the central
industrial property office of the said State must have habitually so acted for at least five
years. However, persons whose professional qualification to represent-natural or legal
persons in industrial property matters, including design matters, before die central
industrial property office of one of the Member States is officially recognized in
accordance with die regulations laid down by such State, shall not be subject to the
condition of having exercised the profession.

(3) Entry shall be effected upon request, accompanied by a certificate furnished by the central
industrial property office of the Member State concerned, or by the European Patent Office
or by the Community Trade Mark Office, which must indicate that the conditions laid down
in paragraph (2) are fulfilled.

(4) The President of die Office may grant exemption from the requirement of the second sentence
of paragraph (2Kb), third indent, if the applicant furnishes proof that he has acquired the
requisite qualification in some other way.

(5) The conditions under which a person may be removed from the list of professional
representatives shall be laid down in the Implementing Regulation.

**TTTLEX**

**JURISDICTION AND PROCEDURE IN LEGAL ACTIONS RELATING TO COMMUNTTV**

**DESIGNS**

Section 1

Jurisdiction and Enforcement

Article 83
Application of the Convention on Jurisdiction and Enforcement

(1) Unless otherwise specified in this Regulation, the Convention on Jurisdiction and the
Enforcement of Judgments 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 "Convention on Jurisdiction

83

**and** **Enforcement", shall apply to proceedings relating to Community Designs** **and** **applications**
**for Registered Community Designs, as well as to proceedings relating to actions on the basis**
**of Community Designs and national design rights enjoying simultaneous protection.**

**(2) In the event of proceedings in respect of the actions and claims referred to in Article 85:**

**(a) Article 2, Article 4, Article 5 No 1, 3, 4 and 5 and Article 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.**

**(3) Article 16 No 3 of the Convention on Jurisdiction and Enforcement shall be complied with**
**by bringing proceedings in respect of** **an** **action or claim referred to in Article 85(c) and (d)**
**before any Community Design Court having jurisdiction under Article 86.**

**Section 2**

**Disputes concerning the infringement and validity of Community Designs**

**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 Design Courts), which**
**shall perform the functions assigned to them by this Regulation.**

**(2) Each Member State shall communicate to 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.**

**(3) Any change made after communication of the list referred to in paragraph (2) in the number,**
**die** **names** **or** **territorial jurisdiction of the Community Design Courts shall be notified without**
**delay by the Member State concerned to the Commission.**

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

**(5) As long as a Member State has not communicated the list as stipulated in paragraph (2),**
**jurisdiction for any proceedings resulting from an action covered by Article 85 for which the**
**courts of that State have jurisdiction under 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.**

**84**

**Article 85**
**Jurisdiction over infringement and validity ***

**The Community Design Courts shall have exclusive jurisdiction:**

**(a) for infringement actions and - if they are permitted under national law - actions in respect of**
**threatened infringement of Community Designs;**
**(b) for actions for 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 for a declaration of invalidity of** **a** **Community Design raised in connection**
**with actions under (a).**

**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** **die** **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.**

**(2) If** **the** **defendant is neither domiciled nor has an establishment 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** **die** **Member States, in which he has an**
**establishment.**

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

**(4) Notwithstanding the provisions of paragraphs (1), (2) and (3) above:**

**(a) Article** **17** **of the Convention on Jurisdiction and Enforcement shall apply if the parties**
**agree that a different Community Design Court shall have jurisdiction;**
**(b) Article 18 of** **that** **Convention shall apply if** **the** **defendant enters an appearance before** **à**
**different Community Design Court.**

**(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.**

**Article 87**
**Extent of jurisdiction on infringement**

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

**85**

**(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**

**(1) An action or a counterclaim for a declaration of invalidity of** **a** **Community Design may only**
**be based on the grounds for invalidity mentioned in Article 27.**

**(2) In the case specified in Article** **27(1** **)(d),** **the action or the counterclaim may be brought only**
**by the person or persons entitled to the Community Design and, in the case specified in**
**Article 27(2), only by the right holder of** **the** **earlier right.**

**(3) If** **the** **counterclaim is brought in a legal action to which the right holder in 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.**

**(4) The validity of a Community Design may not be put in issue in an action for a declaration**
**of non-infringement.**

**Article 89**

**Presumption of validity - defence as to the merits**

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

**(2) In proceedings in respect of** **an** **infringement action or an action for threatened infringement,**
**the Community Design Court shall, when the right holder presents evidence to sustain his**
**claim that the design has an individual character, treat the design as new within the meaning**
**of Article 5 unless in any counterclaim for a declaration of invalidity proof is presented to**
**the contrary by the defendant in the main action.** **,** **4**

**(3) In proceedings referred to in paragraph (1), 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 a**
**national design right within the meaning of Article 27(2) belonging to him.**

**86**

**Article 90**

**Judgments on 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,** **die** **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 Register.**

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

**(4) Where a Community Design Court has given a judgment which has become final on a**
**counterclaim for a declaration of invalidity of** **a** **Registered Community Design, a copy of** **die**
**judgment shall be sent to the Office. Any party may request information about such**
**transmission. The Office shall mention the judgment in** **the** **Register in accordance with the**
**provisions of** **the** **Implementing Regulation.**

**(5) No counterclaim for a declaration of 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.**

**Article 91**
**Effects of the judgment on validity**

**When it has become final, a judgment of a Community Design Court declaring a Community**
**Design invalid shall have, subject to Article 27(3), in all the Member States the effects specified**
**in Article 28.**

**87**

**Article 92**
**Applicable law**

**(1) The Community Design Courts shall apply the provisions of this Regulation.**

**(2) On all matters not covered by this Regulation, a Community Design Court shall apply its**
**national law, including its private international law.**

**(3) Unless otherwise provided in this Regulation, 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.**

**Article 93**
**Sanctions in actions for infringement**

**(1) Where in an action for infringement or for threatened infringement a Community Design**
**Court finds that** **die** **defendant has infringed or threatened to infringe a Community Design,**
**it shall, unless there are special reasons for not doing so, issue an order prohibiting the**
**defendant from proceeding with** **die** **acts which have infringed or would infringe the**
**Community Design.**

##### **(2) Where in an action for infringement a Community Design Court finds that the defendant has**

**infringed a Community Design, the Court shall, unless there are special reasons for not doing**

**so:**

**(a) enjoin the infringer to provide forthwith information concerning the origin of the**
**infringing products and** **die** **channels through which they are commercialized;**
**(b) issue an order to seize the infringing products.**

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

**(4) In all other respects the Community Design Court shall apply the law of the Member State**
**in which the acts of infringement or threatened infringement were committed, including its**
**private international law.**

**Article 94**
**Provisional measures, including protective measures**

**(1) Application may be made to the courts of a Member State, including Community Design**
**Courts, for such provisional measures, including protective measures, in respect of a**
**Community Design as may be available under the law of that State on national design rights,**
##### **or those which follow from the application of the provision in Article 93(2)(a), even if, under**

**this Regulation, a Community Design Court of another Member State has jurisdiction as to**
**the substance of** **the** **matter.**

**88**

**(2) In proceedings relating to provisional measures, including protective measures, a plea**
**otherwise than by way of counterclaim relating to the invalidity of a Community Design**
**submitted by the defendant shall be admissible. Article 88(2) shall, however, apply mutatis**
**mutandis.**

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

**Article 95**
**Specific rules on related actions**

**(1) A Community Design Court hearing an action referred to 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** **die** **parties**
**and after hearing the other parties, stay the proceedings where the validity of the Community**
**Design is already in issue before another Community Design Court on account of a**
**counterclaim or, in the case of a Registered Community Design, where an application for a**
**declaration of invalidity has already been filed at the Office.**

**(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 die** **validity of the 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.**

**(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 - further appeal**

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

**(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.**

**(3) The national rules concerning further appeal shall be applicable in respect of judgments of**
**Community Design Courts of second instance.**

**89**

**Section 3**
**Other disputes concerning Community** **Designs**

_• ._ _>•_

**Article 97**
**Supplementary provisions on the jurisdiction of national courts**

**other man Community Design Courts**

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

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

**Article 98**
**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. Article 89(2) and Article 94(2)**
**shall, however, apply mutatis mutandis.**

**TTTLEXI**

**EFFECTS ON THE LAWS OF THE MEMBER STATES**

**Article 99**
**Parallel actions on the basis of Community Designs**

**and national design rights**

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

**(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 judgment on die merits**

**has been given on** **die** **same cause of action and between the same parties on the basis of a**
##### **design right providing simultaneous protection.**

**90**

(3) The court hearing an action for infringement or for threatened infringement on the basis of
a national design right 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 Community
Design providing simultaneous protection.

(4) The preceding paragraphs shall not apply in respect of provisional measures, including
protective measures.

Article 100
Relationship to other forms of protection under national law

(1) Nothing in this Regulation shall prevent actions concerning designs protected by Community
Designs from being brought under any legal provisions of the Community or of a Member
State relating to trademarks or other distinctive signs, patents and utility, models, typefaces,
civil liability and unfair competition.

(2) Pending further harmonization of the laws of copyright of the Member States, a design
protected by a Community Design shall also be eligible for protection under such laws as
from the date the design was created or fixed in any form, irrespective of the number of
products to which such design is intended to be incorporated or to be applied and irrespective
of whether the design can be dissociated from the products to which it is intended to be
incorporated or applied. The extent and the conditions under which such a protection is
conferred, including the level of originality required, shall be determined by each Member
State.

(3) Each Member State shall admit to the protection under its law of copyright a design protected
by a Community Design which fulfils the conditions required by such law, even if in another
Member State which is the country of origin of the design, the latter does not fulfil the
conditions for protection under die law of copyright of that State.

**TTTLE** **XII**

**THE COMMUNITY DESIGN OFFICE**

Section 1
General provisions

Article 101
Legal status

(1) The Office shall be a body of the Community. It shall have legal personality.

(2) The Office shall be located at the seat of the Community Trade Mark Office.

91

**(3) In each of the Member States, the Office shall enjoy the most extensive legal capacity**
**accorded to legal persons under their laws; it may, in particular, acquire or dispose of**
**movable and immovable property and may be a party to legal proceedings. For these**
**purposes, the Office shall be represented by its President.**

**Article 102**

**Administrative services**

**The Community Design Office may have recourse to the administrative services of the**
**Community Trade Mark Office under conditions defined in the implementing regulations**
**established under the Council Regulation (EEC) No. .../... on the Community Trade** **Mark** **[(3)]** **and**
**those established under the present regulation.**

**Article 103**

**Staff**

**(1) The Staff Regulations of officials of the European Communities, the Conditions of**
**Employment of other servants of the European Communities and the rules adopted by**
**agreement between the Institutions of the European Communities for giving effect to those**
**Staff Regulations and Conditions of Employment shall apply to the staff of the Office,**
**without prejudice to the application of Article** **118** **to the members of** **the** **Boards of Appeal.**

**(2) Without prejudice to Article 108,** **die** **powers conferred on each Institution by the Staff**
**Regulations and by the Conditions of Employment of other servants shall be exercised by the**
**Office in respect of its** **staff.**

**Article 104**
**Privileges and immunities**

**The Protocol on the Privileges and Immunities of** **the** **European Communities shall apply to the**
**Office.**

**Article 105**
**Liability**

**(1) The contracmal liability of the Office shall be governed by the law applicable to the contract**
**in question.**

**(2) The Court of Justice of the European Communities shall be competent to give judgment**
**pursuant to any arbitration clause contained in a contract concluded by the Office.**

**(3) In the case of non-contractual liability, the Office shall, in accordance with the general**
**principles common to the laws of** **the** **Member States, make good any damage caused by its**
**departments or by its servants in the performance of their duties.**

**(3)** **OJNoL**

**92**

**(4) The Court of Justice shall have jurisdiction in disputes relating to compensation for the**
**damage referred to in paragraph 3.**

**(5) The personal liability of its servants towards the Office shall be governed by the provisions**
**laid down in their Staff Regulations or in the Conditions of Employment applicable to them.**

**Article 106**

**Jurisdiction of the Court of Justice**

**The Court of Justice shall have jurisdiction in actions brought against the Office under the**
**conditions provided for in Articles 173 and 175 of the Treaty unless the decision in question is**
**subject to appeal to the Board of Appeal under the provisions of this Regulation.**

**Section 2**
**Management of the Office**

**Article 107**

**Powers of the President**

**(1) The Office shall be managed by the President.**

**(2) In addition to the powers conferred on the President by the present Regulation:**

**(a) he shall take all necessary steps, including the adoption of internal administrative**
**instructions and the publication of notices, to ensure the functioning of the Office;**
**(b) he may place before the Commission any proposal to amend this Regulation, to the extent**
**that it applies to Registered Community Designs, the Implementing Regulation, the rules**
**of procedure of** **the** **Boards of Appeal, the Fees Regulation and any other rule applying to**
**Registered Community** **Designs** **after consulting the Administrative Board;**
**(c) he shall submit a management report to the Commission, the European Parliament and the**
**Administrative Board each year;**
**(d) he shall exercise in respect of the staff the powers referred to in Article 103(1);**
**(e) he may delegate his powers.**

**(3) The President shall be assisted by one or more Vice-Presidents. If** **the** **President is unable to**
**act, the Vice-President or one of** **the** **Vice-presidents shall take his place in accordance with**
**the procedure laid down by the Administrative Board.**

**Article 108**
**Appointment of senior officials**

##### **(1) The President of the Office shall be appointed by die Commission from a list of at most three**

**candidates, which shall be prepared by the Administrative Board. Power to dismiss the**
**President shall lie with the Commission, acting on a proposal from** **die** **Administrative Board.**

**(2) The term of office of the President shall not exceed five years. This term of office shall be**
**renewable.**

**93**

(3) The Vice-President or Vice-Presidents of the Office shall be appointed or dismissed as in
paragraph 1, after consultation of the President.

(4) The Commission shall exercise disciplinary authority over the officials referred to in
paragraphs 1 and 3 of this Article.

Section 3

Administrative Board

Article 109
Creation and powers

(1) An Administrative Board is hereby set up, attached to the Office.

(2) In addition to any powers conferred on it by other provisions of the present Regulation:

(a) it shall set the date for the first filing of applications for Registered Community Designs
pursuant to Article 128(2);
(b) it shall advise the President on matters for which the Office is responsible;
(c) it shall be consulted before adoption of the guidelines for examination as to formal
requirements and invalidity proceedings in the Office and in the other cases provided for
in this Regulation;
(d) it shall, at regular intervals, hold an exchange of views on the development of the caselaw communicated under the system of exchange of information established by
Article 125;
(e) it may deliver opinions and requests for information to the President and to the
Commission where it considers that this is necessary.

Article 110
Composition

(1) The Administrative Board shall be composed of one representative of each Member State and
one representative of the Commission and their alternates.

(2) The members of the Administrative Board may, subject to the provisions of its rules of
procedure, be assisted by advisers or experts.

Article 111
Chairmanship

(1) The Administrative Board shall elect a Chairman and a Deputy Chairman from among its
members. The Deputy Chairman shall ex officio replace the Chairman in the event of his
being prevented from attending to his duties.

(2) The duration of the terms of the Chairman and the Deputy Chairman shall be three years. The
terms of office shall be renewable.

94

**Article** **112**
**Meetings**

**(1) Meetings of the Administrative Board shall be convened by its Chairman.**

**(2) The President of the Office shall take part in the deliberations, unless the Administrative**
**Board decides otherwise. He shall not have the right to vote.**

**(3) The Administrative Board shall hold an ordinary meeting once a year; in addition, it shall**
**meet on the initiative of its Chairman or at the request of the Commission or of one-third of**
**the Member States.**

**(4) It shall adopt rules of procedure.**

**(5) The Administrative Board shall take its decisions by a simple majority of the representatives**
**of** **die** **Member States. However, a majority of three-quarters of the representatives of the**
**Member States shall be required for the decisions which the Administrative Board is**
**empowered to take under Article 108(1) and (3). In both cases each Member State shall have**
**one vote.**

**(6) The Administrative Board may invite observers to attend its meetings.**

**(7) The Secretariat for the Administrative Board shall be provided by the Office.**

**Section 4**
**Implementation of procedures**

**Article** **113**
**Competence**

**The following departments of the Office shall be competent for taking decisions in connection**
**with the procedures laid down** **m** **this Regulation:**

**(a) Formalities Examining Divisions;**
**(b) a Design Administration and Legal Division;**
**(c) Invalidity Divisions;**
**(d) Boards of Appeal.**

**Article 114**
**Formalities Examining Division**

**A Formalities Examining Division shall be responsible for taking decisions in relation to an**
**application for a Registered Community Design.**

**95**

**Article** **115**
**Design Administration and Legal Division**

**(1) The Design Administration and Legal Division shall be responsible for those decisions**
**required by this Regulation which do not fall within the competence of a Formalities**
**Examining Division or an Invalidity Division. It shall in particular be responsible for**
**decisions in respect of entries in the Register.**

**(2) It shall also be responsible for keeping the list of professional representatives which is**
**referred to in Article 82.**

**(3) A decision of the Division shall be taken by one member.**

**Article 116**
**Invalidity Divisions**

**(1) An Invalidity Division shall be responsible for taking decisions in relation to an application**
**for a declaration of invalidity of a Registered Community Design.**

**(2) An Invalidity Division shall consist of** **three** **members. At least two of these members must**
**be legally qualified.**

**Article 117**

**Boards of Appeal**

**(1) A Board of Appeal shall be responsible for deciding on appeals from decisions of the**
**Formalities Examining Divisions, Design Administration and Legal Division and Invalidity**
**Divisions.**

**(2) A Board of Appeal shall consist of three members. At least two of these members must be**
**legally qualified.**

**Article** **118**
**Independence of the members of the Boards of Appeal**

**(1) The members, including the Chairmen, of the Boards of Appeal shall be appointed for a term**
**of five years in accordance with the procedure laid down in Article 108 for the appointment**
**of** **die** **President. They may not be removed from office during this term, unless there are**
**serious grounds for such removal and** **die** **Court of** **Justice,** **on application by the body which**
**appointed them, takes a decision to this effect. Their term of office shall be renewable.**

**(2) The members of** **the** **Boards of Appeal shall be independent. In their decisions they shall not**
**be bound by any instructions.**

**(3) The members of** **the** **Boards of Appeal may neither be members of any other department of**
**the Office, nor be members of any department of** **die** **Community Trade Mark Office, except**
**its Boards of Appeal.**

**96**

**Article** **119**

**Exclusion and objection**

**(1) Members of the Invalidity Divisions and Boards of Appeal may not take part in any**
**proceedings if they have any personal interest therein, or if they have previously been**
**involved as representatives of** **one** **of** **the** **parties. Members of** **the** **Boards of Appeal may not**
**take part in appeal proceedings if they participated in the decision under appeal.**

**(2) If, for one of** **the** **reasons mentioned in paragraph 1 or for any other reason, a member of** **an**
**Invalidity Division or Board of Appeal considers that he should not take part in any**
**proceedings, he shall inform the Division or Board accordingly.**

**(3) Members of** **an** **Invalidity Division or Board of Appeal may be objected to by any party for**
**one of the reasons mentioned in paragraph 1, or if suspected of** **partiality.** **An objection shall**
**not be admissible if, while being aware of a reason for objection, the party has taken a**
**procedural step. No objection may be based upon the nationality of members.**

**(4) The Invalidity Division or Board of Appeal shall decide as to the action to be taken in the**
**cases specified in paragraphs 2 and 3 without the participation of the member concerned. For**
**the purposes of taking this decision, the member who withdraws or has been objected** **to** **shall**
**be replaced by his alternate.**

**Article 120**
**Appointment of members of Invalidity Divisions and Boards of Appeal**

**during a transitional period**

**(1) During a transitional period, the expiry of which shall be determined by the Commission on**
**a proposal by the President of the Office, the President may appoint on a short-term contract**
**basis as members of the Invalidity Divisions persons employed in the central industrial**
**property Offices of** **the** **Member States or in the Benelux Design Office or in courts or other**
**authorities of the Member States and having an experience in issues relating to the validity**
**of design rights or applications for such rights in the Member States. These persons may**
**continue their existing employment. They may be reappointed.**

**(2) During a transitional period, the expiry of which shall be determined by the Commission on**
**a proposal by the President of the Office, the Commission may appoint as members of the**
**Boards of Appeal members of courts** **or** **other authorities of the Community or of the Member**
**States who may continue their activities in the court or the authority of** **origin.** **These persons**
**may be appointed for a term of less than five years, though this shall not be less than one**
**year, and may be reappointed.**

**97**

**Section 5**
**Financial provisions**

**Article 121**

**Budget**

**(1) The revenues of** **the** **Office shall consist of** **the** **fees paid in accordance with the provisions**
**of this Regulation and, to the extent necessary, of a contribution from the Community.**

**(2) The expenditure of** **the** **Office shall include the costs of** **staff,** **administrative, infrastructure**
**and operational expenses.**

**(3) By 15 February each year at the latest, the President shall draw up a preliminary draft**
**budget covering expenditure** **and** **the program of work anticipated for** **the** **following financial**
**year, and shall forward this preliminary draft to the Administrative Board together with an**
**establishment plan.**

**(4) Revenue and expenditure shall be in balance.**

**(5) By 31 March each year at the latest, the Administrative Board shall establish** **the** **draft**
**budget and forward it together with the establishment** **plan** **to the Commission which on that**
**basis shall establish the relevant estimates in the preliminary draft general budget of the**
**European Communities.**

**(6) The Administrative Board shall adopt the Office's final budget before the beginning of the**
**financial year, adjusting it where necessary to the Community contribution and the Office's**
**other resources.**

**(7) The President shall implement the Office's budget.**

**(8) Control of** **the** **commitment and payment of all the Office's expenditure and control of the**
**existence and recovery of all the Office's revenue shall be exercised by the Commission's**
**financial controller.**

**(9) By** **31** **March each year at the latest, the President shall forward to the Commission, the**
**Administrative Board** **and the Court** **of Auditors the accounts for all the Office's revenue and**
**expenditure in respect of the preceding** **financial** **year.**

**The Court of Auditors shall examine them in accordance with Article 206a of the Treaty.**

**(10) The Administrative Board shall give a discharge to the President in respect of the**
**implementation of the budget.**

**(11)** **The Administrative Board shall adopt the internal financial provisions of the Office after**
**consultation with the Commission and the Court of Auditors.**

**98**

Article 122

Fees

The amount of the fees referred to in this Regulation shall be established by the Commission
following consultation of the Committee referred to in Article 126.

**TTTLE Xm**

**FINAL PROVISIONS**

Article 123
Official languages

The official languages and the languages of proceedings of the Office shall be the same as those
for the Community Trade Mark Office.

Article 124
Community implementing provisions

The rules implementing this Regulation, in particular the rules concerning die filing of
applications, multiple applications, examinations as to formal requirements, registration,
publication, and the deferment of the publication, and the rules of procedure of the Boards of
Appeal shall be adopted in an Implementing Regulation in accordance with the procedure laid
down in Article 126.

Article 125
System of exchange of information

A system of exchange of information is hereby established concerning decisions relating to the
compliance with the requirements for protection both as regards Community designs and design
rights of Member States. The Implementing Regulation shall set out how and by which authority
such a system will be operated.

Article 126
Establishment of a committee and procedure
for the adoption of implementing regulations

The Commission shall be assisted by a committee of an advisory nature on Fees, Implementation
Rules, and the procedure of the Boards of Appeal, which shall be composed of the representatives
of the Member States and chaired by the representative of the Commission.

The representative of the Commission shall submit to the committee a draft of the measures to
be taken. The committee shall deliver its opinion on the draft, within a time limit which the
chairman may lay down according to the urgency of die matter, if necessary by taking a vote.

99

**The opinion shall be recorded in the minutes; in addition, each Member State shall have the right**
**to ask to have its position recorded in the minutes.**

**The Commission shall take the utmost account of the opinion delivered by the committee. It shall**
**inform the committee of the manner in which its opinion has been taken into account.**

**Article 127**
**Fees Regulation**

**(1) The Fees Regulation shall determine in particular the amounts of the fees and the ways in**
**which they are to be paid.**

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

**(a) late payment of** **die** **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** **the** **transfer of a Registered Community Design;**
##### **(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 Register;**
**(j)** **inspection of the files;**
**(k) issue of copies of file documents;**
**(1) communication of information of a file;**
**(m) review of the determination of the procedural costs to be refunded;**
**(n) issue of certified copies of the application.**

**(3) The amounts of** **the** **fees shall be fixed at such a level as to ensure that the revenue in respect**
**thereof is in principle sufficient for the Office's revenue and expenditure to be balanced.**

**Article 128**
**Entry into force**

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

**(2) Applications for Registered Community Designs may be filed at the Office from the date**
**fixed by the Administrative Board on the recommendation by the President.**

**(3) Applications for Registered Community Designs filed within three months before the date**
**referred to in paragraph (2) shall be deemed to have been filed on that date.**

**100**

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

**Done at Brussels,**

**For the European Parliament** **For the Council**
**The President** **The President**

**101**

FINANCIAL STATEMENT

1 **Tide**

Proposal for a Council Regulation (EEC) on the Community Design

2. **Budget Heading**

B5-305, to be created

3. **Legal Base**

Article 100a of the Treaty

**4.** **Description of the measure**

4.1 Specific objectives

The proposed Regulation would create a unitary protection system throughout the
Community for designers' work and would comprise two kinds of Community Design, one
being a registered right and the other an unregistered right. By securing such a right, a
designer would be able to protect himself from infringers of his design. A Community
system would remove the problem which results from present national design laws, namely
that conflicting rights can exist in different Member States with obvious negative impact on
the functioning of the internal market.

The registered right requires the setting-up of a Community Designs Office, as a body with
the necessary legal, administrative and financial independence for carrying out the tasks
associated with registration. It is foreseen that this Office would have a structure based on
that of the Community Trade Marks Office proposed in the Communication of the
Commission to the Council of 25 November 1980, modified on 9 August 1984
(OJ No C 230 of 31 August 1984) concerning a Regulation on the Community Trade Mark)
and would have the status of a Community body having legal personality, and would
exercise the powers conferred on it by the proposed Regulation.

As envisaged, the Office would consist of four departments for, respectively, formalities
examination, assessing invalidity of registrations, administrative and legal matters, and
Boards of Appeal. Many administrative functions would be the same as those encountered
in the Community Trade Marks Office itself, and economies of scale would dierefore be
achievable, for example in the area of administration if the Offices were to share some
administrative services.

**102**

4.2 Period

Actions to implement the Regulation will continue over several years. It is assumed that up
to two years may be needed for the Community Design Office to be set up prior to opening,
and it is estimated that it will have become fully operational after a further period of three
to five years from establishment. Preferably, this period will be four years (see paragraph
7.4 below). By this time the expenses of the Office should be covered by the receipts from
registration and other fees.

It is, however, not yet possible to say when these actions will start, nor therefore when the
Community Design Office will open, but nothing is envisaged before 1996 at the earliest.

4.3 Persons affected by the measure

Community Design protection will affect applicants for, and right holders in, Community
Designs, and also those who trade in design goods, and any infringers. Many of the
industries in the Member States will therefore be affected.

The measure will also affect some Community instimtions including, in addition to die new
Community Designs Office itself, the Community Trade Marks Office, the Court - to which
appeals will be possible under the regulation and the Commission because of its right to
participate in certain actions concerning design rights before the Office.

5- **Classification of expenditure and receipts**

**5.1 DNO**

**5.2** CD

**6** **Nature of the expenditure and** receipts

6.1 Subvention at 100%

For the assumed two years before opening of the Designs Office, expenditure is estimated
to be of the order of ECU 1 570 000 for the first year, and ECU 2 254 540 for the second
year, this being the amount needed to cover the costs of setting up the Office and of putting
it into operation. As no fees will be received during this time, subventions will be needed
to cover these amounts. It is assumed that the Community Trade Mark Office will already
exist, so that the setting-up costs for the Designs Office may be lower than they would
otherwise have been.

103

6.2 Co-financement

After opening, the Office will begin to receive fees income, and subvention will only be
needed to supplement this to cover expenditure for a period of approximately four years.
After this estimated period, the Office should be fully operational and self-supporting. Only
if this were not the case would the Community need to be asked to grant a sufficient
continuing subsidy until balance was achieved. This subsidy would in any case progressively
be reduced, the object being to ensure that the Office will recover its costs from the income
derived from fees as soon as this can be reasonably achieved. Suitable choice of fees can
be used to some extent to control the date when this balance is reached between income and
expenditure. This is explained further in paragraph 7.4 below which also warns, however,
that the scope for such control is limited, particularly by the fact that renewal fees only
become payable from the fifth year and these are to be a major source of income.

6.3 Interest

None

6.3 Other

None

6.5 Reimbursement

No

6.6 Modification of level of receipts

No

?• **Financial Effects**

7.1 Total cost of the measure

The initial costs of setting up the Office are estimated to be ECU 70 000 and
ECU 2 254 540 respectively, in each of the two years before opening, giving a total of
ECU 3 824 540. It must be remembered that the actual year of opening is not yet known.
The figures are derived by considering direct staff costs, namely salaries, other staff-related
costs such as welfare, pension provisions, insurances and so on, provision of services for the
Office and the provision of equipment including initial computer installations.

**104**

**These computer installations will include more** **than** **just the computer which has to perform**
**the Office's general admininstrative functions. A major computer installation will be the**
**essential tool of the Design registration system - itself the** **"raison** **d'être"** **for the Office - and**
**will have** **to** **perform with high reliability the many functions associated with registration and**
**with any subsequent actions including legal actions which may flow from it over a possibly**
**extended** **period.** **If the Office is to operate efficiently and** **cost-effectively,** **the computer will**
**need to be sophisticated, state of the art equipment which is able to record graphic and**
**pictorial images by optical scanning, to associate these with various textual data, and to**
**reproduce this data in various ways according to demand.**

**The cost will therefore inevitably be high and must arise in the period before the Office**
**opens. It will, however, be a once-only cost.**

**72 budgetary** **breakdown -** **ECUs**

-1

**14**

**966 140**

**288 400**

**1 000 000**

**2 254 540**

1

**22**

**1 564 200**

**466 400**

**750 000**

**2 780 600**

Year

I Total staff

Staff (1.1)

Staff (1.2)

Equipment (2)

Total

-2

**10**

**670 000**

**200 000**

**700 000**

**1 570 000**

2

45

3 294 000

983 250

250 000

4 527 250

**The year** **"-2"** **means the first of the two years before the Office opens. This cannot be**
**earlier than 1996, and is quite likely to be later. The figures include an annual inflation**
**factor.**

**105**

**7.3 Echéancier indicatif**

ECUs CE CP

Year -2 (1996?) 1 570 000 1 570 000

Year -1 (1997?) 2 254 540 2 254 540

Year +1 (1997?) 2 780 600 2 780 600

Year +2 (1998?) 4 527 250 4 527 250

**This assumes** **that** **year -2 is** **1996,** **but as already explained it could well be later. From year**
**+1 onwards, receipts from fees will begin to offset expenses until they balance .**

**^4** **Estimated fees income**

**A large range of different fees is contemplated. The fifth year after opening (year +5) will**
**be the significant year because this is when renewal fees first become payable. These will**
**be set at a relatively higher level and will represent a major source of income. Before this**
**date, however, the most significant fees will be those associated with registration, covering**
**registration** **itself,** **publication, possible multiple** **applications,** **and so on. For the purposes**
**of this estimate, these are combined** **notionally** **into a general registration fee, and the**
**following table summarizes the impact on the Community subsidy of choosing figures for**
**this fee of ECU 200, 300 and 400. It assumes a more or less linear rise in registrations over**
##### **the first five years. Fees for challenging validity of registrations will also arise but are likely**

**to have less effect, for the purpose of** **this** **estimate, than the registration fees.**

```
 +4

1 967 250

 967 250

 -32 750

```

```
 +5

 -192 750

-1 192 750

-2 192 750

```

```
 +1

1 735 600

2 040 600

1 335 600

```

```
  +2

 3 247 250

 2 747 250

 2 247 250

```

**106**

```
 +3

2 507 250

1 707 250

 907 250

```

```
 -1

2 254 540

2 254 540

2 254 540

```

```
 Y E A R

 Subsidy

1 ECU 200

| Subsidy

 ECU 300

 Subsidy

 ECU 400

```

```
 -2

1 570 000

1 570 000

1 570 000

```

**If the general registration fee is ECU 300, this would lead to a surplus in year +5 and**
**subsidy would be no longer needed. If, the registration fees were set at ECU 200, then**
**balance would only just be achieved in year +5, with no room for unforeseen effects. The**
**validity-challenge fees cannot be set too high as this could give rise to political difficulties.**
**If, however, registration fees were set at ECU 400, the break-even year would be year +4**
**instead of year +5, although this would lead to an excessive surplus of income over**
**expenditure in Year +5 when renewal fees become payable. Such a surplus may be difficult**
**to** **justify to fee payers, but this would nevertheless be the preferred option because balance**
**would then be achieved as soon as possible. If necessary the fees could be reviewed at that**
**stage, and this review could take account of public reaction.**

**8.** **Anti-fraud measures**

**The President of the Office must submit each year to the Commission** **and** **to the Court of**
**Auditors accounts of the entire Office's total revenue and expenditure for the preceding**
**financial year. In addition, the financial rules applicable to the general budget of the**
**Communities will apply to the Office. Anti-fraud measures are therefore foreseen as being**
**covered by these procedures.**

**9.** **Cost Efficiency**

**9.1 Objectives**

**The proposed measure is to meet the desire for a Community scheme under which**
**enterprises may obtain by a single procedure a design right providing protection with**
**uniform effect throughout the Community. After an initial period of five years from**
**opening, the Community Designs Office should** **be** **fully operational** **and** **self-supporting, and**
**be issuing 8 000 registrations per annum. In addition, it is estimated that it will, on request,**
**consider the validity of** **3** **600 registrations per annum, and its Boards of Appeal will hear**
**500 appeals against decisions taken by the Office.**

**9.2 Justification for the measure**

**The reasons justifying the financial intervention of the Community are, as mentioned in**
**paragraph 4.1 and explained more fully below, that a unitary system is the only way of**
**removing the internal market barriers caused by the existence of conflicting national design**
**rights in the Member States. Harmonization measures alone would not be sufficient to**
**achieve this result. It is also important to note that** **financial** **support from the Community**
**will be needed for only a relatively small number of** **years,** **because once the Office is fully**
**functional it is intended to make it self-supporting by appropriate calculation of** **the** **fees.**

**The object of** **the** **Regulation is to provide a single procedure by which a unitary right may**
**be acquired having uniform effect throughout all territories of the Community. Present**
**design protection laws differ considerably between Member States and as a result trade and**
**competition in products incorporating a design are hindered and distorted by the large**
**number of applications, offices procedures, laws, and nationally circumscribed exclusive**
**rights, and by the consequently high costs and fees for designers seeking protection.**

**107**

**Although approximation of national design laws is desirable, this is still no substitute for a**
**Community-wide protection system and would not satisfy the needs of the internal market**
**since protection would still end at the frontiers of** **die** **States in which it had been acquired.**
**Thus in spite of approximation of laws, there would remain a strong risk that conflicting**
**rights could exist in other Member States, and the only solution to this is a supranational**
##### **protection system. This calls for a design right which is directly applicable in each Member**

**State and for a Community design authority with Community-wide powers, because only**
**in this way will it be possible for a designer to obtain through one application to a single**
##### **design office in accordance with a single procedure under one law, a single design right for**

**one area encompassing all Member States.**

**The present Regulation is the legal instrument for achieving** **this.** **It is clearly necessary**
**because there is no way in which national procedures would be able in themselves to**
**provide this supranational solution to the internal market problem of conflicting rights.**

**9.3** **Follow up and evaluation**

**9.3.1** **Indications of performance**

**These will include:**

**the number of designs registered by the Office;**
**the number of applications for declarations of invalidity examined by the Office;**
**the number of appeals against decisions of** **die** **Office made to the Boards of Appeal.**

**9.3.2 Evaluation**

**The Office must submit a management report to the Commission and to the**
**Administrative Board of the Office each year.**

**9.4** **Coherence:**

**94.1** **Financial programme of** **DG** **XV (ex** **DG** **IIP**

**The preparatory work on the measure by the officials concerned is foreseen in the**
**financial programme of DG XV (ex DG III).**

**9.4.2 Corresponding objectives**

**The Community Designs Office would conveniently share administrative services with the**
**Community Trade Marks Office. Its budgetary procedure and financial control will be**
**regulated in accordance with Section 5 of** **Title** **XII of the proposed Regulation. Estimates**
**of revenue** **and** **expenditure for the Community Design Office will be prepared each year.**
**They will be entirely separate from the Community Trade Mark Office's budget.**

**108**

**There is therefore a common interest in achieving these two objectives of a Community**
**Trade Marks Office and a Community** **Designs** **Office. Nevertheless, the Designs Office**
**is to be made an independent institution, and it is therefore not foreseen that progress on**
**the present proposal need be prejudiced by lack of further progress on the other.**

**9.4.3** **Uncertainties**

**No specific factors affecting the outcome of the measure may be foreseen at this stage.**

**10.** **Administrative expenses**

**10.1** **Commission staff**

**No increase in staff is necessary. At present, the work already** **occupies** **the fulltime**
**services of two A Grades and a certain amount of time** **at** **Head of Unit level and B Grade**
**level. This** **will** **continue to be required in order to handle the work associated with the**
**progress of this proposal, including representation at Council Working Groups and**
**maintaining continued discussion with public interest groups.**

**10.2** **Administrative expenditure**

**Additional expenditure may arise from the need for:**

**Missions - (Budget line A 1300)**

**A possible** **10** **missions per year, each involving 1 person for an average of 2 days, and**
**likely to take place in one of the major Community capitals, imply annual costs estimated**
**at ECU 7 000 starting in 1993.**

**Special** **meetings,** **such as experts meetings - (Budget line A 2500)**

**The cost of 2 meetings per year in Brussels each with 20 participants is estimated at**
**ECU 24 000 per year starting in 1993.**

**109**

THE IMPACT OF THE PROPOSAL ON BUSINESS
(with special reference to SMEs)

1. Why is Community legislation necessary?

To establish a Community system for the protection of industrial design with the aims of:

(a) ensuring that designers and design industries may organize better protection through
a single action with direct and uniform effect throughout die Community;

(b) improving the functioning of the Internal Market;

(c) improving competitiveness for the European designs industry, by supporting the
acknowledged superiority of European designers' products over competing products
from other parts of the world.

**2.** **Which business will be affected?**

(a) The sector mainly affected will be those manufacmring businesses whose products
have an appearance which embodies commercially valuable design features.

(b) All sizes of business are likely to be affected, from multinationals, where design may
be only one aspect of a far more complex product or range of products, to SMEs
including enterprises consisting of only very small numbers of people. In the latter
cases, the design may constitute the major selling-point of the product.

(c) There is no reason to suppose that particular geographical areas will predominate.

**3.** **What will businesses have to do to comply with** **die** **proposal?**

Businesses will need to acquire only a single Community registration for each design.
They need no longer make individual national registrations under different national
procedures in all those countries where a potential market for the product may exist.
Because, in addition, they will enjoy automatic protection for an initial period under the
unregistered Community design, life will be made much easier for these businesses.

On the other hand, it has been argued by several organizations representing small and
medium-sized producers of automobile spare parts that, in contrast to the Commission's
intentions, the interpretation which the Office, and in the last resort the European Court
of Justice, may give to the criteria for individual character and novelty could lead to a
lower protection threshold than envisaged.

110

If this happened, it could mean, it is claimed, that a large number of products of largely
functional design with little or no aesthetic character and largely predetermined outward
shape might fall into the scope of protection of the regulation.,

**4.** **What economic effects is the proposal likely to have?**

(a) on employment?

Greater ease in securing Community-wide protection should stimulate the activities of
designers both to innovate and to market more widely, with a positive impact on
employment especially in smaller enterprises.

These rights must be observed by third parties, such as competing manufacturers, and
those who trade in the design-protected products of others. However, the proposal
contains measures which aim to avoid any unduly onerous effects on SMEs trading
in replacement parts of complex products such as motor cars.

(b) on investment and the creation of new businesses?

Community-wide protection of their designs will give businesses much greater
confidence in being able to recover their costs and will thereby encourage investment.
It is difficult to judge exactly the impact for large manufacturing businesses where
design may only represent one aspect of a product but industry has clearly indicated
the importance it attaches to Community design protection. On the other hand, there
should be positive encouragement for creation of smaller businesses where the
emphasis may lie in the design of a product.

As regards enterprises who trade in design-protected products, there are provisions
which limit to a certain extent the exercise of design rights against those whose
business is in the replacement parts market, such as for example suppliers, repairers
and insurers in the motorcar aftermarket. While providing protection to promote
creation, therefore, the provisions permit a measure of competition from independent
producers.

(c) on the competitive position of businesses?

The confidence given by easily obtained Community-wide protection should encourage
more extensive exercise of design skills and more thorough exploitation of the
resulting rights. It is in the nature of protectable designs that they do not exhaust the
fields of opportunity for other designers in a given product area, and the enhanced
competitiveness which results from this freedom should benefit all sizes of enterprises,
without posing a severe threat even to very small ones.

Ill

**5.** **Does the proposal contain measures to take account of** **me** **specific situation of SMEs?**

**It is intended that fees for the registered Community Design should be as low as**
**possible. Although** **the** **measures contained in** **die** **proposal are not directed specifically**
**at small and medium-sized enterprises, these may benefit proportionately more than**
**large firms, because the greater simplicity and lower costs of securing Community-**
**wide protection should be of** **greater** **significance in SMEs. It is in some of the smaller**
**SMEs that many of today's most innovative and original designers may tend to**
**concentrate.**

**The proposal will introduce exclusive** **rights** **for** **designers** **and their successors in title,**
##### **and these rights must be respected by competitors. As for SMEs trading in the design-**

**protected products of** **others,** **it is not appropriate that industrial property law should**
**itself contain exemptions for specific industrial sectors. However, for** **the** **reasons given**
**above, traders in and manufacturers of replacement parts are given certain relief from**
##### **the exercise against them of such rights as may exist in these parts. Since rights come**

**into existence without examination, the Community Design Office is to provide a low**
**cost system for anyone to challenge the validity of design rights exercised or**
**exercisable against them. The proposal clearly foresees an opportunity for active**
**involvement of the Commission in this process, as well as of Member States, with a**
**view to ensuring that the relevant provisions are applied in the manner intended.**

**Fears about the entering into force of such rights without examination have been**
**voiced by some quarters, who feel it could lead to excessive** **litigation.** **However, the**
**experience of Member States such as France and Germany does not appear to**
**substantiate these fears. Litigation cannot be entirely excluded, and where it occurs it**
**may be costly.**

**6.** **Consultation**

**The Commission Services published a Green Paper** **"The** **Legal Protection of Industrial**
**Design"** **(HI/F/5131/91),** **This was widely circulated to thousands of** **recipients.** **On the**
**basis of a considerable number of submissions from major industrial organizations**
**received,** **interested parties were invited to a Hearing in Brussels on 25 and**
**26 February** **1992.** **Reactions have been generally very favourable, and although many**
**detailed aspects will need discussion there are only a few issues of difficulty to be**
**resolved, mainly concerned with the criteria for protectability** **and what kinds** **of** **design**
**should not be eligible for protection.**

**Some have expressed concerns that manufacture of certain functional products may**
##### **be monopolized by the existence of design rights, these allegations being based upon**

**the absence of a distinction between aesthetic and functional design. However,**
**experience shows that this distinction is largely arbitrary and that protection for**
**functional** **designs** **needs in any case to be provided for by some means. The** **Design**
**Regulation makes protection dependent upon distinctive appearance, and in view of**
**this,** **these concerns should not prove to be justified.**

**112**

**Some industries have expressed the view that the market for replacement parts would**
**benefit if protection were denied for any** **design** **constrained wholly by the need for**
**the product embodying it to interconnect mechanically with another product, and the**
**proposal contains appropriate provisions to this end. These concerns have arisen**
**notably in the motor and computer industries, with independent producers of**
**replacement parts arguing against the perceived monopoly position of the original**
**manufacturers.** **ACEA** **[(1)]** **,** **representing the original motor manufacturers, argue strongly**
**that they deserve and require** **design** **protection for certain component parts of motor**
**cars in order to be able to recover their design costs, and they consider therefore that**
**they have made sufficient concession in accepting these provisions on the non-**
**protectability** **of** **a** **product design dictated wholly by the way it has to fit mechanically**
**with another product. On the other** **hand,** **EAPA** **[(2)]** **,** **CLEDIPA** **[(3)]** **,** **AIRC** **[(4i]** **and** **CLEPA** **[(5)]** **,**
**representing the component and replacement part manufacturers, continue to argue**
**strongly not only against protection for those designs which must mechanically fit, but**
**also against protection for other designs which must visually match, the remaining**
**parts of a complex product such as a car. They have variously suggested solutions**
**such as a** **"must-match"** **exception from protection, or a legal licence provision,**
**declaring that they are not opposed to paying royalties, but objecting to being**
**prohibited from manufacturing and dealing in spare parts.**

**Representatives of** **die** **insurance industry and consumers also argue that design**
**protection of such parts will raise the costs of repair work and of insurance premiums.**

**0 )** **ACEA:** **Association des Constructeurs Européens d'Automobiles.**
**(2)** **EAPA:** **European Automotive Panel Association.**
**(3)** **CLEDIPA: Comité de Liaison Européen de la Distribution Indépendante de Pièces de**

**rechange et Equipements pour Automobiles.**
**(4)** **AIRC:** **Association Internationale des Réparateurs en Carrosserie.**
**(5)** **CLEPA:** **Comité de Liaison de la Construction d'Equipements et de Pièces**
**d'Automobiles.**

**113**

##### **ISSN 0254-1475**

### **COM(93) 342 final**

# **DOCUMENTS**

## **EN 08**

### **Catalogue number : CB-CO-93-414-EN-C** **ISBN 92-77-58375-4**

##### **Office for Official Publications of the European Communities** **L-2985 Luxembourg**