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A New Era in Designs

April 1st this year heralds the start of a new system for registering designs in the European Union. The system is intended to complement existing laws in the EU and to encourage new designs. Because of its scope, however, the new system is also likely to have a significant impact on the protection sought by trade mark owners in the EU.

 

The main benefits for trade mark owners

Like Community Trade Mark (CTM) registrations, Community Design (CD) registrations will provide unitary protection throughout the whole of the EU, thus giving uniform protection and the possibility of EU-wide injunctions against infringers.

The official fees for CD registrations are very much lower than for CTM registrations, and the registration process is expected to be much quicker and easier. There will be no substantive examination of designs and no opposition procedure. Issues of validity will be left to post-registration proceedings.

A feature of the new system is that CD registration will protect the design itself rather than, as previously, the design applied to a particular article. The significance of this is that CD registrations will provide protection against use of the design in relation to any article, and in effect in relation to most services too. Such protection will be available at considerably less cost than multi-class CTM registrations.

The test for infringement of a CD registration is different from and probably less demanding than for a trade mark registration or copyright, because there will not be a need to show either copying or confusion. The test for validity of a CD registration is also different, and it will be important always to bear this in mind.

 

Validity

To be valid, a CD registration must be "novel" and it must also possess "individual character". Novelty is defined as not being identical to an earlier known design and individual character is defined as creating a different overall impression from earlier known designs. Earlier known designs are defined as including essentially anything previously used, published or otherwise made freely available to the public anywhere in the world. There is a proviso to this, the so-called "safeguard" clause, which is that earlier designs may be disregarded for validity purposes if they could not reasonably have become known in the relevant design field in the EU in the normal course of business. There is also an exception made for any disclosures caused by the designer himself, providing he applies for protection not more than 12 months later, the so-called "grace period". Exactly what all of this will mean in practice remains to be seen, and will be determined ultimately by reference to the ECJ. For the time being, however, for trade mark owners it is sufficient to note that, unlike trade marks which can be registered long after being put into use, CD registration must be sought at an early stage.

Design law in the UK has recently undergone changes in accordance with a Directive from the European Commission, so that it is now in essentially the same terms as the CD Regulation. A look at the UK Design Register therefore offers an intriguing insight into the sort of marks that we may soon see being filed as CDs. The registrations mentioned in this article can all be viewed in greater detail on the UK Patent Office web site at www.patent.gov.uk.

 

The overlap with trade marks

Product shapes

Perhaps the most obvious area of overlap is with marks which consist of new shapes of product. It is often difficult to protect such shapes as trade marks at the outset, because of their need to be capable of acting as an identifier of the origin of the product. It is usually necessary to show not only that there is some particularly unusual aspect to the shape, but also that that aspect will be seen by the public as indicating the source of the product. In many cases, this will only be possible after a period of use, if at all. Examples of such shapes are the Dualit toaster and the Viennetta ice cream. With CD's, on the other hand, there is no concern as to whether or not the shape has any origin-identifying function. Thus, for new product shapes, although these might in time become protectable as trade marks, CD registration can provide protection in the initial stages whilst distinctiveness in a trade mark sense is being built up.

 

Functional shapes

Another potential difficulty in trying to register some product shapes as trade marks concerns their functionality. To questions referred from the Philips/Remington three-headed shaver case in the UK, the ECJ recently held that if the shape of a product is essentially attributable to its function, then that shape is precluded from being protected by trade mark registration, even if it can be shown that the product could be designed in other shapes to achieve the same function (this ground of refusal cannot be overcome by evidence of use). It is the European Commission's intention, however, that such product shapes should be protectable by CD registration, provided that the shape in question is not the only one possible to achieve the particular function.

 

Packaging designs

Another difficult area for trade mark protection is in packaging designs: the shapes, get-up and labelling of the packaging of products. Such elements are often not seen as being distinctive in a trade mark sense, ie as indicating origin, at least not without use. CD registration offers the chance of protection from the outset. Designs of this type that have been registered under the new UK Design law include a box (3005667), a blister pack (3000592), a bottle (3001202) and labels (3005039 and 3005819).

Graphic symbols and typefaces

The definition of a “product” for which a design is registrable includes graphic symbols and typographic typefaces. This means that under the new EU system, it should be possible to register what would traditionally be thought of as ordinary trade marks, eg stylised words, devices and logos, even computer icons. Examples of such marks on the UK Design Register include the new Arsenal badge (3001159), a Mars typeface (3003024), a stylised version of the word Favourite (3004497) and a Xerox computer icon (3008176). In fact, apart from plain textual marks, essentially any mark with an “appearance” could be the subject of a CD registration (this would exclude sound and smell marks). By contrast, it may not always be possible to obtain trade mark protection for some signs such as these, because of the need for a trade mark to act as a badge of origin. For example, certain symbols such as globe devices are generally regarded as generic and thus non-distinctive in the field of financial services. However, subject of course to the validity criteria, there is no reason in principle why such signs should not be protectable by CD registration.

 

Merchandising and licensing properties

The new system looks like being better suited than CTM registrations to the protection of merchandising properties such as cartoon characters and 3D action figures. The multiple-filing option for CD registrations would allow all the characters in a new cartoon series to be covered in a single application, giving protection against their use in relation to any products, and at a fraction of the cost of the numerous multi-class CTM registrations that would otherwise be needed. CD registration also offers greater benefits in this area than copyright protection, not only because of the uniformity of the new EU Design law and the fact that it extends over the whole of the EU, but also because in order to prove infringement of a CD registration, it will not be necessary to show that copying has taken place.

 

Look-alikes

Another area where trade mark protection has not been conspicuously successful is in combatting the problem of “look-alikes”, that is products that are designed to resemble a well known brand

and are usually sold alongside the premium product at a discounted price. In the past, it has proved difficult to stop the sale of look-alikes by either trade mark infringement or a passing off action, because they do not use a brand name that is either identical with or similar to that of the original product. This makes proving consumers have been confused or deceived difficult because, in most cases, consumers are well aware of what they are buying.

It may be possible for designers of new and original product get-up to overcome these problems by obtaining CD registration. This is because the test for infringement of a CD registration is whether the look-alike creates the same overall impression as the registered design (the same test as for "individual character"). This seems more likely to catch a look-alike, because no consumer confusion or deception needs to be shown.

The protection of get-up by CD registration is not limited to product and/or pack design. It may also be possible to protect, for example, the interior décor of a restaurant.

 

Colours

Designs which consist of combinations or patterns of colours can be protected by CD registration. This could apply, for example, to multi-coloured pills or dishwasher tablets, the colour combinations of which have proved to be very difficult to protect by trade mark registration. However, a single colour probably cannot be registered as a CD, because even if it is novel, it seems unlikely that it would possess the necessary "individual character". Single colours must therefore remain to be protected by trade mark registration, if they can be shown to have achieved sufficient distinctiveness through use.

 

Other features and advantages

A fundamental principle of trade mark law is that marks should be used: if they're not, their registrations may be cancelled for non-use. Or if they're not used properly, their registrations may be cancelled, eg because they have become generic or perhaps deceptive. There are no such concerns with CD registrations. A CD registration cannot be cancelled for non-use, nor on grounds such as genericness or deceptiveness caused by mis-use.

A CD registration is allowed to include any number of different designs at once. The designs do not have to be related in any way, save that if they are for three dimensional products, these must all fall within the same product class (as defined by the Locarno classification system). For two-dimensional designs, however, there is no restriction. Including a number of designs in a CD application is less expensive than filing separate CD applications, so significant cost savings are possible. There is no disadvantage in this approach, since each design is considered to exist in its own right, quite independently of all the others. Thus, even if one design is found to be invalid, this will have no effect on the validity of the remaining designs in the registration.

The CD registration system allows designs to be registered and yet (optionally) remain unpublished for up to 30 months. In multiple design filings, this can apply to some designs but not others and, if desired, for different lengths of time.

It is also worth noting that there are no qualification criteria for filing or ownership of CD registrations - they are available to all. The position is thus less restricted than for CTM registrations, where there are still some countries that the Office does not recognise.

 

Searching

CD registrations will be classified according to the Locarno classification system based on the product or products specified in the registration. The Locarno system is akin to the Nice classification system for trade marks, in that it groups products in a number of classes. A CD registration protects against use in relation to any product, however, regardless of the particular product(s) specified. Therefore, it is quite feasible for a CD registration to be classified in one particular class of product and yet be the same as or similar to a design proposed to be used for another class of product. However, such a design would not be found by a normal search limited by product class. For trade mark owners, therefore, this means that when seeking to clear a new mark, serious consideration should be given to searching the whole of the CD Register.

 

Watching

Unlike CTM owners, owners of CD registrations will not receive any notifications from the Office warning them about later filed applications. They may therefore wish to consider setting up their own watching service. Various searching organisations have indicated an intention to provide such a service.

 

Conclusion

The new CD registration system is likely to add significantly to the armoury available to trade mark owners in Europe. It can be used as a complement to trade mark protection and it can be used where trade mark protection may not be possible. Since the system is aimed at new and original designs, the greatest benefits are likely to be felt by those trade mark owners with the most creative branding initiatives. The Jenkins Design Team is available to advise on and assist with strategies for design protection.