Prior searches and outline of the procedure before EUIPO

Study of prior art before creating a new design

The main requirements for a design are novelty and individual character.

To comply with these requirements, it is therefore necessary to have a good knowledge of the state of the art in the field of interest, even if the knowledge will not be complete. Indeed, a prior design can also be filed but not published, or even not filed but protected by the copyright or as an unregistered designs, for example within the European Community.

Prosecution of the registered Community design

The requirements for the protection by the Registered Community Design right are that

  • it must be new at the filing date (Article 5 ) or at the priority right ; and
  • the design must have an individual character (Article 6).

The disclosure by the creator himself is opposable if it has occurred more than one year before the filing (grace period provided for by Article 8).

However, a disclosure does not destroy the novelty nor the individual character when it concerns designs which "could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community".

The components parts of a complex product are protected only if both requirements (novelty and individual character) are fulfilled. Furthermore, they have to remain visible by the final observer (Article 4).

Detached parts: an isolated part is not protected if its shape is dictated by the whole product.

Prosecution

As for the Community mark, the filing of a Community design involves the choice of two languages : the first one is selected among the 22 official languages of the European Community and the second one among the 5 official languages of the Office for the Harmonization in the Internal Market (OHIM), i.e. English, French, German, Italian and Spanish.

For the inter partes prosecutions (cancellation procedures), the plaintiff can use one of the two languages used by the applicant. The applicant may respond in the other chosen language without having to provide any translation contrary to the Community mark prosecution. It will therefore fall to the Office to translate the applicant's argumentation into the prosecution language (a maximum fee will probably be established for the cost of the translation taken over).

The OHIM does not undertake any examination on the merits; there is no opposition prosecution but a <link 167>cancellation proceeding</link> is possible, without any time limit after the publication.

The design is registered for a period of 5 years which may be renewed for one or more periods of five years each, up to a total term of 25 years (Articles 13 and 54).

Time scales involved in the registration process

We file the applications online and therefore immediately receive the application number. The publication notification is received within 1 week and the certificate is received within 2 or 3 weeks from the filing.

 

Renewal of a Community design

A Community design is protected during a period of 5 years from its filing date. This protection is renewable by successive periods of 5 years until a maximum period of 25 years.

Prorogation

The extension of a design must be requested within a period of 6 months expiring the first day of the month during which the protection of the design comes to end.

For example, if a design was filed the 5th January, 2006, it is possible to ask its extension from the 5th July, 2010 and until the 31st January, 2011.

In case of extension defect of the design within the time limit, the extension can still be requested by paying a fine, within an additional period of 6 months beginning the 1st day of the month following the expiration of the design. Thus, if the extension of the design filed the 5th January, 2006 has not been requested, it is possible to do it until the 1st August, 2011.

Recording a change before the Community designs office

Recording a change of name/address before the EUIPO

There is no official fee for recording a change of name or address of the owner of a Community design.
The change will be recorded in the Office’s database for all the designs owned by the same owner.
No document showing the change is needed.
If we were not the representative for the application, we need a power of attorney.

Recording an assignment / a license before the EUIPO

The official fee for recording an assignment or licence is of 200 €.

We need to know the name and address of the party to which the design is assigned, as well as the name and capacity of the persons signing the document for both parties.

We prepare and send you for signature:

  • the declaration to be signed by both parties, and
  • a power of attorney to be signed by your client.

The documents do not need to be notarized or legalized.

Competitive watches

Thanks to the competitive watch, French and Community designs filed in a specific field or by specific applicants can be received on a regular basis.

The watch is also very useful to follow the activity of a specific competitor.

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