Design protection in the EU

by Vanessa Guzek

In this article, we would like to explain in a simple way the different ways in which a design can be protected in the European Union. Design protection guarantees the exclusive right to use a design. This includes, in particular, making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or to which it is applied.

You can apply for design protection for the appearance of all or part of your product. The design is derived from the features of the lines, contours, colors, shape, surface texture and/or materials of your product.

Requirements for the protection of designs

The requirements for the protection of designs are novelty and individual character.

  • A design is new if no identical design has been disclosed before it. If two designers differ only in immaterial details, they will still be considered identical.
  • A design possesses individual character if the overall impression conveyed to the informed user differs from that conveyed by any other previous designs.

The European Union provides a combination of protection for fashion designs with a short-term unregistered right and a longer-term registered right. Through this Community design protection, the design is protected throughout the European Union (with the exception of the United Kingdom since Brexit). A single application can be filed with the European Union Intellectual Property Office “EUIPO” with headquarters in Alicante.

Unregistered Designs

Unregistered Community Designs (UCDs) provide automatic, short-term (up to three years) EU-wide protection against copying for new designs. You do not have to register it or pay any fees. An UCD protects your design automatically upon its publication. It is not renewable after the term of protection has expired.

Registered Designs

In addition to UCDs, the EU provides protection for Registered Community Designs (“RCDs.” ). RCDs can only be obtained by application to the EU Intellectual Property Office (“EUIPO”).

You also have one year to register your design from the publish date and it can be renewed up to a maximum term of twenty-five years, provided renewed every five years.

While anyone enforcing an unregistered design has to prove that copying has taken place, registered design protections enable a rights holder to act against third-party products that merely create the same “overall impression” as the registered design, regardless of whether there was proven copying or not. As such, registered designs provide a true monopoly right, with a notably lower bar to enforcement than unregistered designs.

Impact of Brexit

Since Brexit, all existing RCDs have been “copied” to the UK Registered Designs Registry so that registered design protection is not lost to UK owners. As fully independent UK rights, they may be challenged, assigned, licensed or renewed separately from the original RCD. The UK also has its own form of registered design protection, namely UK Registered Designs (“UKRDs”). UKRDs can only be obtained by filing an application with the UK Intellectual Property Office.

Also, since Brexit, UCD protection no longer applies to the UK. A new UK SUD (“supplementary unregistered design”) has been created for designs first published on or after 1 January 2021. However, the UK also provides automatic protection for all new designs, for 10 years from first publication or 15 years from creation.

The EU and the UK require that the first worldwide publication of the design must take place in the territory of the EU or the UK, respectively, in order for such unregistered protection to remain. Therefore, it is important for companies to choose where to market their new products.

It follows that brands/designers participating in EU events will receive design protection in the EU but not in the UK. Similarly, brands/designers that launch their new designs in the UK will automatically receive unregistered design protection in the UK but not design protection in the EU.

t is not yet clear whether the simultaneous publication of a design in the UK and in the EU, allows protection in both jurisdictions. Until the courts provide clarity, there is a risk that simultaneous publication could inadvertently extinguish both rights, as neither could claim that it was in fact the first worldwide publication of the design.

Related Posts

Leave a Comment