Community design application: Revised Guideline of the EUIPO

Online Community design filing – simple and convenient. Electronic e-filing is highlighted as well as priority document requirements and the graphic representation of the design when applying for a Community design in the new updated version of the EUIPO Guideline.

Revised Design Guideline of the EUIPO

The revised EUIPO Guideline highlights in particular the possibility of electronic e-filing – and document requirements when applying for a Community design. An application for the registration of a Community design can be filed electronically (e-filing), by post or by personal delivery directly to the EUIPO. The application may also be filed with the central industrial property office of a Member State.

In its updated Guideline, the Office strongly recommends filing applications and applications for EU-wide protection by electronic means (e-filing). As the applicant is guided by the electronic system, the EUIPO hopes to improve the quality of applications, thereby reducing the number of possible objections and speeding up the examination procedure.

When the Office receives a communication by electronic means, the indication of the sender’s name is deemed to be equivalent to his signature.

The application can be filed in any of the official languages of the European Union. However, the applicant must also indicate a second language, which must be a language of the Office, i.e. German (DE), English (EN), French (FR), Italian (IT) or Spanish (ES). The second language must be different from the language of the application.

You find the E-Filing by following link from EUIPO: EUIPO E-Filing

Fast Track

In addition, e-filing also offers an accelerated procedure called Fast Track. An application that meets all the registration requirements can be registered within two working days if the following conditions for the fast track procedure are met:

the application was submitted electronically using the four-step form;
both the indication of the product(s) and its (their) classification were made using DesignClass
Priority documents, if priority has been claimed, are attached to the electronically filed application (this is not necessary if the earlier application was filed with the Office);
no exhibition priority has been claimed;
the representative, if any, is registered in the EUIPO database and the corresponding ID number is indicated on the form;
Fees must be debited from an account at the Office or paid by credit card;

Despite the facilitated access to the application for registration of a Community design, the registration should be made with care. In any case, the indication of the product(s) must be the classification in both a relevant class and the relevant subclass of the Locarno Classification. Furthermore, in principle, the representation may not be changed after the filing of the application.

Priority in an application for registration of a Community design

In order to claim priority when filing a design application, the updated Guideline expressly requires the indication of relevant details. Deadlines for the filing of copies are also specified. If the priority of one or more earlier applications is claimed in the application but without a copy being produced or the priority of an exhibition without a corresponding certificate being produced, the applicant may file a copy within three months of the filing date (Articles 42 and 44 CDR; Article 8(1) and Article 9(1) CDIR).

Representation of the Community design for application

Regardless of the form used for filing the application (e-filing, paper or telecopier), the design must be presented as a static view on a neutral background and must expressly not be retouched with ink or correction liquid. A background need not be neutral in colour or blank, but the design must stand out clearly and unambiguously from the background, as well as from other objects or ornaments in the representation.

Drawings, photographs (but not slides), computer-generated reproductions or other graphic reproductions are acceptable provided that they can be reproduced, including on a paper certificate of registration.

On the basis of the applicable legislation the computer-animated design-generating 3D motion simulation can only be considered as an additional technical means of viewing the design which does not replace traditional static views. CD-ROMs and other data carriers are not accepted.

In principle, it is recommended to use perspective views of the design, as the purpose of graphic representation is to disclose the features of the design to be protected – clearly and unambiguously. The views should be carefully planned because a maximum of seven different views can be submitted.

Conclusion

The EUIPO e-filing procedure may be able to improve the quality of the application documents, but it does not change the basic design right: it is an unexamined industrial property right because the Office only examines the formal requirements for registration. Novelty or distinctiveness to already registered designs are in no way examined by the EUIPO. Nevertheless, in design law as well as in patent and trademark law, a lack of novelty and individual character can lead to proceedings for a declaration of invalidity. In addition, current judgments have severely restricted the scope of protection of a Community design. According to the recent judgment of German Federal Supreme Court (BGH), products offered online also belong to the previously known treasure trove of forms (Danger for design protection: products offered online belong to the previously known designs). It should therefore be carefully considered whether a design can still guarantee the necessary scope of protection for one’s own product.