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24 August 2017, 15:20

PROTECTION OF DESIGNS IN EUROPEAN COMMUNITY LAW

Harun Eksi
Harun Eksi economist, special for "Yurydychna Gazeta"

The Community Trademark was settled through a code passed in 1993. Office for Harmonization in the Internal Market-Trade Marks and Designs (OHIM), established by the Trademark Code, has begun accepting Community Trademark applications since April 1, 1996. From then on until the end of 2001, about 250,000 applications were made and about 135,000 of them were registered as Community Trademarks. 

The work pertaining to designs in Community Law dates back to the early 1960s. However, the first important step in this issue was the publication of the Green Paper about the topic in 1991. Later, in 1993, the Directives and Code Designs were adopted. The Directive went into effect in 1998 after several amendments. The main aim of the directive is to harmonize design legislation among the member countries. The Community bodies have taken one step further, this time putting the Code pertaining to designs into effect. The adoption of the Regulation is an important development in terms of designs. Indeed, with the Council Code No. 6/2002, which entered into force on March 6, 2002, a new idea called Community design right in the European Union was born. Works on Implementing Regulation on Community Design continued and this regulation entered into force in 2002 (COUNCIL REGULATION (EC) ON COMMUNITY DESIGN DURING NUMBERED 6/2002 AND DATED DECEMBER, 2001).

Today, there are also some formations that eliminate the principle of territoriality in the world. The first of these is the regulation in Community Law. If the Benelux countries (Belgium, the Netherlands and Luxembourg) are left aside, the principle of territoriality has been adopted in the world for the protection of designs as it is for other intellectual rights. In other words, only Benelux countries have enacted standard design protection legislation. In all other Member States, the protection of designs is dealt with under the scope of the relevant national law and is limited to the territory of the Member State concerned. Hence, identical designs can be protected in different Member States for different owners and in different manners. As an inevitable consequence of this, there occur conflicts in the trading process among the Member States.

As a matter of the principle, design owners are entitled to be awarded protection according to the law of that country by registering in each country individually for protection. This principle implies considerable cost and labour expenditure in terms of beneficiaries. This is a major obstacle for trade in the Common Market. That is why, instead of national protection by Code, regional protection principle has been introduced and only one law has been established in terms of designs as well as in trademarks.

It should be emphasized that the Community Law does not only apply to forms, such as the application and registration of designs, but it is also applicable to applications in the fundamental matters (material law) such as protection requirements and nullity. For this reason, regulation of the Code includes regulation of Madrid Convention and Madrid Protocol on Marks, and even more advanced regulation than the protection system in the European Patent Convention to which many countries are party. In short, regional protection has been provided in a way to cover 28 EU countries thanks to the protection provided for Community Design as it is in the Community Mark. In a matter of speaking, 28 countries were treated like a single country and protection was provided.

Whether or not the laws are harmonized with each other, the effect of the protection of design restricted to the territory of a Member State leads to a possible division of the internal market in terms of products containing a design which constitutes the subject matter of the national rights possessed by different persons and thus constitutes an obstacle for the free movement of goods. This situation forces a Community design to be valid in each Member State to be formed because, only in this way, whether the impression of the Internal Harmonization Office (Trademark and Design) in compliance with a single procedure within the framework of the law is clearly different from the impression created by the existing design on the user must be taken as basis. In this case, the nature of the product to which the design applies and particularly the industry to which it belongs, and the extent to which the designer has the freedom for creating the design should be taken into account.

As mentioned above, the Regulation on this matter settling the Community Design is the Regulation of European Council No. 6/2002. This Regulation, which consists of 111 articles, outlines the principles of Community Design in general terms as the following:

  • Contrary to the Community Trademark, two types of protection, namely, registered and unregistered, have been adopted for Community Designs (two-tier approach). Registered designs are protected for a maximum of 25 years from the date of filing, while unregistered ones are protected for 3 years from the date of publication in the Community (m.11-12). The legislator thus intended to respond to the needs of sectors with short-lived products such as textiles and fashion.
  • Community (Registered and Unregistered) Design is unitary character and applies in all Community. It shall not be registered, transferred, deemed to be null or cancelled for one or more territories or countries of the Community. All of these transactions can be done for the whole of the Community [art. 1 / (3)]. In this context, Community Design is treated like member country designs (art.27).
  • As in the Trademark Code, Design Code shall also find its application area autonomously (autonomy) for Community Design. In order to be able to apply Member State laws to Community Design, there must be a clear provision in the Code accordingly.
  • Citizenship or residence in a Member State of the Community is not a requirement for obtaining a Community Design certificate. Turkish nationals can also make applications. However, those who are not citizens of the Member States of the Community, or those who do not reside in the Community or have no commercial centres or real industrial or commercial establishments can only carry out OHIM operations through Design Deputy authorized to deal with transactions (art. 77). It is therefore possible to apply from all countries for the Community Design certificate. However, there is a need for a Design Deputy to conduct operations except for the application before OHIM. On the other hand, there is no such obligation for those residing, or having industrial or commercial establishments in the Community.
  • The Community (Registered and Unregistered) Design must be novelty and individual character so that it can be protected (Articles 5-6). As a rule, absolute innovation (innovation in the world) has been accepted. However, the absolute innovation principle is limited by some considerations. In this context, it is possible to apply for designs which have not previously been made public in the Community. However, designs that have been made available to the public in a relevant area of the industry in the Community have also lost the novelty character. For instance, it may be possible to obtain a Community Design Document for a design that is displayed on the museum in a remote place.
  • Designs that do not leave options as well as the designs in conflict with the public schemes and common morality are not protected (Articles 8-9). No solution has been found for the designs which cause significant controversy to be used for the repairs (spare part designs). As yet (the stand-still clause), it has been accepted that such designs shall not protected (art. 110)
  • In terms of making the design public, the design owner has been granted a 12-month grace period (art. 7), allowing that design owner to test the design’s commercial success on the market.
  • Community Registered Design grants a patent-like right to its owner. In this context, the right owner has exclusive rights. In contrast, the Community Non-Registered Design only protects against copying (Art. 19). This is the most significant difference between registered and unregistered protection.
  • Community design and member country designs will co-exist for a while (co-existence). After a while, it is planned that member country designs shall be removed if conditions permit. This means that existing national designs shall continue to be protected at the national level but not be protected as Community Design. There are no transitional provisions in the Code that allow existing designs to be registered as Community Design. The provision pertaining to 12-month grace period mentioned above is reserved (Art.7)
  • Community Designs shall benefit from the 6-month pre-emption rights (priority) as provided for in Article 4 of the Paris Convention, as they are in national designs
  • In the Code, design right is agreed to exhaust (exhaustion of rights) in the Community, as in other intellectual rights (Art. 21). For this reason, after submitting the product with a Community Design to the market in any country of the Community, the design owner cannot prevent the importation of this product into other member countries claiming the design right.  
  • The Code adopts the cumulative (multiple) protection principle in terms of designs (Article 96). In this context, Community Design may be protected as Community Trademark, as well as according to national legislation on intellectual property rights, provided that it meets the working requirements. In fact, it becomes compulsory that both the national and Community Design, which meets the protection requirements, shall be protected as per legislation on intellectual and art works of member states. This obligation, however, imposed on the member states doesn’t cover the obligation to protect the designs through other intellectual rights such as trademarks, patents and utility models, and the member states have been released in these matters.
  • To obtain Community Design, it is necessary to make application to the OHIM directly or through the Office of Intellectual Property of the Member States of the Community or the Benelux Design Office (art. 35).
  • In accordance with the Locarno Convention of 1968, it is possible to make multiple applications (multiple application) for the design of products of the same class. Designs do not have to belong to the same class in order to make multiple applications in terms of trimmings (Art.37)
  • OHIM, as a rule, examines the applicants in terms of forms (formal examination). However, it makes substantive examination upon appeal (substantive examination) (Articles 45 and 52 et seq.). Appeals pertaining to decisions made may be lodged against OHIM (Art. 55 et seq.). Appeals may be brought against Court of First Instance of the European Communities (CFI)  within 2 months against the decisions of the OHIM Appeal Board (Article 61)
  • Infringement and nullity cases may be brought forward in the Community Design Courts. Each country shall inform the Commission about the courts to be appointed as the first and second instance of the Community Design Court. In addition, the nullity of Community Registered Designs can also be put forward before OHIM (Art. 52)

Consequently, it is possible to benefit from design protection in 28 Community member countries with only one application. The Community Tradename has achieved more than anticipated in that, the estimates should be acknowledged considering the protection afforded by a single application although this achievement leads to optimistic estimates of the design. Moreover, the Code does not only regulate procedures such as application and registration, but also governs essential matters such as protection conditions, infringement and nullification. Thus, the rights owners will not have to know the design legislation of the 28 member states, it shall be necessary to know only supra-national Community Law. This arrangement is significant for designers and design owners.

Finally, it should be pointed out that designs are frequently expressed to fail in attaining the internationally deserved protection, and the statistics confirm this view. In this context, Community Design will also emphasize design protection as well as other intellectual rights such as patents and trademarks in international trade. In other words, other countries, especially the US, will be able to act to make design legislation more relevant to today's needs. As a matter of fact, America closely follows the Community Law on this subject. Therefore, it would not be wrong to say for now that Community Design will function as locomotive in the international arena.

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