Unregistered community designs: a secret weapon in design protection?

An unregistered community design is established merely by the disclosure of a design and triggers protection for three years from the date of disclosure. This informal right was created to satisfy the demands of the industry and creatives for a design protection right providing broad-ranging territorial protection and safety for short-lived products without an elaborate and costly registration procedure.

Our Legal Insight delves into the particularities of the unregistered community design and its relationship to its big brother – the registered community design. We take a closer look at the uncertainties, but also consider how the designer can utilise this informal right.

Registered design vs. unregistered design

The Regulation on Community Designs No 6/2002 ("CDR") generally provides for two categories of unitary titles: the "registered community design" and the "unregistered community design".

A design – be it registered or unregistered – generally protects the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation (Article 3(a) CDR).

Recitals 16 and 25 of the CDR suggest that by establishing the unitary title which the unregistered community design constitutes, the EU legislature intended, with the aim of encouraging innovation, to protect designs applied to or incorporated in products with a short market life whose designers wish to obtain rapid and efficient protection without the burden of registration formalities and where the duration of protection is less important.

Material requirements: novelty and individual character 

The substantive conditions for obtaining protection are the same for both registered and unregistered designs: in essence, a design must be "new" and have an "individual character" (Article 4(1) CDR).

A design, whether registered or unregistered, is deemed to be "new" if no identical design has been made available to the public before the date on which the design was first made available to the public (Article 5(1)(a) CDR). Designs are considered identical if their features differ only in immaterial details (Article 5(2) CDR). Novelty is to be examined by means of an individual comparison with already existing designs. A mosaic-like comparison, i.e. the comparison of individual features with other designs, is not admissible.¹

Additionally, unregistered (and registered) designs need to have an "individual character". This is the case if the overall impression produced by a design on an informed user differs from the overall impression produced on such a user by any other design that has been made available to the public before the date on which the later design was first made available (Article 6(1)(a) CDR). Individual character is examined by comparing the overall impression of the design with the prior art.

It follows that if a design lacks novelty, it also lacks individual character. However, just because a design is new does not mean that it also has an individual character.

Formal requirement: making the design available to the public

Although the material requirements are congruent, the formal conditions applicable to each of those titles differ. In order to obtain a registered community design it is necessary, by definition, to file an application for registration.

Conversely, a design enjoys protection as an unregistered community design in the European Union (including Austria) if it has been made available to the public in the EU, according to the procedures laid down in Article 11(2) CDR, without having to formally apply for registration of the design. Article 11(2) CDR defines a single criterion for the purpose of determining whether a design has been made available to the public, namely that the design has been "published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned". Design presentations, exhibitions at trade fairs or even publications of national design registrations can constitute actions of disclosing the design.²

The informal design right comes into existence at that point in time when it has been made available to the public for the first time within the EU and only once the design could have reasonably become known to the circles specialised in the sector concerned which operate in the EU. Disclosure outside the EU does not give rise to protection as an unregistered community design. However, an undesirable consequence of a disclosure outside the EU may be that the disclosed design becomes part of the prior art and therefore can lead to a lack of novelty of designs disclosed later. This is because disclosure of designs does not have to take place within the territory of the EU to be considered part of prior art. However, it is relevant that the disclosure could have reasonably become known to the circles specialised in the sector concerned which operate in the EU.³

Who is entitled to an unregistered design?

The right to the community design vests in the designer or their successor in title (Article 14(1) CDR).

The question of who becomes the proprietor of an unregistered community design if the disclosure giving rise to the informal right is made by an unauthorised third party without the consent of the designer is controversial. The predominant view in the literature and case law⁴ follows the designer principle, according to which the designer of the design also becomes the proprietor of the unregistered design even if their design is disclosed by an unauthorised third party without their consent in a manner conferring protection.

Given the predominance of the designer principle, it is of utmost importance for designers to thoroughly document all actions related to the development of a design, as it is not sufficient for establishing the ownership of an unregistered community design to prove the act of making the design available to the public in a way that justifies protection.

Scope of protection

Territorially, unregistered community designs enjoy protection within the European Union.

The duration of the protection afforded by an unregistered community design is relatively short, since it is limited to three years from the date on which the design concerned was first made available to the public (Article 11(1) CDR) and it cannot be extended.

The level of protection and, accordingly, of legal certainty enjoyed by the designer is lower compared to that of a registered community design. The owner of a registered design has the exclusive right to use it and to prevent any third party not having his consent from using it (Article 19(1) CDR). The protection afforded to the holder of an unregistered design is limited, as the holder is protected solely against the "copying" of their design (Article 19(2) CDR). Objectively, copying occurs where the imitated design gives the same overall impression to an informed user as the unregistered community design. Subjectively, use of a design that results from an independent work of creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder will not be deemed to result from copying the protected design (Article 19(2) CDR). Therefore, designers who unintentionally infringe unregistered community designs will regularly not be prosecuted. In such proceedings, the burden of proving the existence of an imitation lies with the owner of the unregistered design. However, it is up to the opponent to prove that the contested use is the result of an independent design.⁵

The fact that unregistered community designs are not subject to an application for registration inevitably entails a certain degree of legal uncertainty for third parties. There is no public register that allows economic operators to obtain clear and precise information about existing rights in respect of a particular design, as is the case for registered designs. The lack of registration thus makes it more difficult to identify in advance the precise subject of the protection claimed. It will frequently be only in the context of infringement proceedings that the designer will specify the scope of protection claimed.

In infringement proceedings, the CDR stipulates a presumption of validity for unregistered designs (Article 85(2) CDR), provided the rightsholder produces proof that the conditions laid down in Article 11 have been met. The proprietor of an unregistered community design does not have to fully furnish proof of the existence of the individual character of the unregistered design concerned, but must merely designate the element or elements of their design that give rise to its individual character.⁶

Outlook

The protection of unregistered community designs is subject to steady legal development at the European level. Currently, the Federal Court of Justice of Germany referred questions regarding unregistered community design protection to the ECJ, in which, among other things, it asked to what extent the disclosure of the overall image of a product gives rise to protection for individual parts of the product as unregistered designs.⁷ We expect there is still a lot to come.

¹ RIS-Justiz RS0120720.
² Grötschl, Das "nicht eingetragene Gemeinschaftsgeschmacksmuster", ÖBl 2007, 52 (54).
³ ECJ 13 February 2014, C-479/12, Gartenpavillion; Grötschl, Das "nicht eingetragene Gemeinschaftsgeschmacksmuster", ÖBl 2007, 52 (54f).
⁴ E.g. BGH 13 December 2012, I ZR 23/12, Bolerojäckchen.
⁵ ECJ 13 February 2014, C-479/12, Gartenpavillion.
⁶ ECJ 19 June 2014, C-345/13, KMF/Dunnes.
⁷ Saugmandsgaard Øe 15 July 2021, C-123/20, Ferrari.

author: Birgit Hirsch