In today’s competitive market, protecting the visual appearance of your products is as crucial. For businesses operating in Europe, the European Union Intellectual Property Office (EUIPO) offers a robust system for protecting industrial designs.
The EU system is unique in that it provides a dual-protection mechanism: the Registered European Union Design (REUD) and the Unregistered European Union Design (UEUD). This dual approach allows to choose a form of protection that best suits their commercial needs and lifecycle of their products.
The two main forms of EU Design protection
Registered European Union Design (REUD): An REUD provides protection for a period of up to 25 years. By registering your design with the EUIPO, you secure an exclusive right throughout the entire European Union. This offers robust legal security and makes it easier to enforce your rights against infringers. The application process requires providing clear and precise graphical representations of the design.
Unregistered European Union Design (UEUD ): For creations with a shorter commercial lifespan, the UEUD provides automatic protection for 3 years from the date the design is first disclosed to the public. This protection is granted instantly upon public release, without any formal registration or fee. However, the holder must demonstrate that a third party’s product is the result of a copy of their design. The legal action is based on the act of imitation, and the claim can be rejected if the defendant proves that their design was created independently, even if the two designs look very similar.
Key conditions for design protection
For a design to be valid, whether registered or unregistered, it must meet two main conditions:
- Novelty: Your design must be new. This means no identical design was made available to the public before the application date or the date of first disclosure.
- Individual character: The design must create a different overall visual impression on the “informed user” compared to any existing designs. The concept of the “informed user” is central to this evaluation and is determined by considering the product’s field of use.
Prior art, which is anything previously disclosed, is crucial for assessing both novelty and individual character. The burden of proof for showing prior art typically falls on the person challenging the design’s validity. The EUIPO will not automatically assess novelty or individual character during the registration process.
Nullity actions and overlapping rights
If you believe a competitor’s design should not have been granted protection, or if your own design is being challenged, you can file (or defend against) a nullity action before the EUIPO.
A registered Registered European Union Design can be declared invalid on several grounds, notably lack of novelty, lack of individual character, or conflict with earlier rights (such as trade marks, copyright or prior designs). Nullity has retroactive effect: once invalidated, the design is treated as if it never existed, which extinguishes any infringement claims based on it.
However, a design may also be protected by other IP rights (copyright, unregistered designs, trade marks). This means that even if you succeed in cancelling an RCD, the right holder might still rely on these overlapping rights to restrict use of your product.
The importance of professional legal advice
The EU design protection system is complex, with specific rules on what constitutes valid disclosure, the scope of protection, and how to defend your rights. A common example of this complexity is the “repair clause” and its application to spare parts like car wheels. The Court of Justice of the European Union has made it clear that these parts are often not considered to be used for repair purposes but rather for aesthetic customization, and are therefore eligible for design protection.
Whether you are looking to register a new design, assess the validity of a competitor’s product, or defend your intellectual property, experienced legal counsel is essential to navigate these nuances and ensure your interests are fully protected.
For an initial analysis of your situation, you can send an email to: nb@bressand-avocat.fr