The European Union Registered Design
The examination and registration of EU designs commenced in 2003. It is possible to obtain a single design registration covering the whole of the European Union (EU) at a relatively low cost. Previously, it was necessary to obtain individual registrations in the various national Designs Registries, but a single application filed with the European Union Intellectual Property Office (EUIPO) will give protection throughout the whole EU.
An EU Registered Design covers all 27 member states of the European Union, namely: Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden.
National registrations can still be obtained through the intellectual property offices of the individual countries.
To be registrable, a design must be new and have individual character. However, a grace period is provided so that publication of the design during the preceding twelve months by the designer, by his/her successor in title, or as a consequence of an abuse, will not invalidate the registration.
Although it is necessary to identify the product to which the design is to be applied, this does not limit the scope of protection. Thus, if a new design is registered for "a car" this would still cover a toy made to the same design.
Multiple unrelated designs can be included in a single application provided they all fall within the same product class. An extra fee is required for each additional design.
Where an application is filed by a company the individual designers can be named.
Publication of the design can be deferred on payment of additional fees.
The initial period of registration is five years, but this can be extended for further five-year periods up to a maximum of twenty five years.
UNITED KINGDOM WITHDRAWAL FROM THE EUROPEAN UNION
The UK withdrew from the European Union at the beginning of 2020 and the transition period ended on 31 December 2020. EU registered designs have ceased to apply in the United Kingdom, and UK representatives are no longer able to represent owners of trade marks or designs before the EUIPO.
Under the UK-EU exit agreement measures have been taken to ensure that owners of existing EU trade marks and designs will not suffer any loss of rights in respect of the United Kingdom. On 1 January 2021 the UKIPO created a corresponding UK registration for every registered EU trade mark (EUTM) and Registered Community Design (RCD).
Similar national registrations have also been created for International trade marks and designs which designate the EU.
EXISTING EU REGISTERED DESIGNS
After the deletion of UK representatives from the EU list we understand that the EUIPO will forward any notifications direct to the owner unless a new representative is appointed. We have therefore made arrangements to ensure that we continue to receive notifications from the EUIPO for all our current EU registered designs. In the interests of ensuring a smooth transition we are bearing all of the associated costs.
We shall not be taking any steps in respect of International design registrations which designate the EU as these are normally maintained through WIPO.
NEWLY-CREATED UK REGISTRATIONS
When the corresponding UK national registrations are created the UKIPO will only accept an address for service within the UK, and representatives within the EEA (European Economic Area) will not be admitted.
We shall become the UK representative in respect of the newly-created national trade marks and designs based on our existing EU cases. We shall become the address for service and carry out a check of the official register to ensure that the details have been correctly carried over. We shall also enter the new cases into our records and renewal system, sending out the usual reminders in due course. Again, this will all be done without charge for all our existing clients.
In the case of EU applications which were pending on 01 January 2021 no corresponding UK registrations have been created by the UKIPO. Provided a corresponding UK national application is filed no later than 30 September 2021, and this corresponds in all respects to the EU application, the UK case will retain the filing date of the pending EU case.
NEW EU DESIGNS
We are still able to obtain protection for new trade marks and designs within the EU via our existing associates. We can also obtain direct EU protection via the WIPO system for International registration of trade marks and designs.
FIND OUT MORE:
Visit the web site of the European Union Intellectual Property Office
© Craske & Co., 2003, 2005, 2007, 2010, 2021
Last updated: 01 January 2021