In today's competitive landscape, securing a wide range of IP rights is a key part of a company´s overall business strategy. In this article we specifically discuss advantages of obtaining design rights in the European Union and how filing first in the EU can be particularly effective.
Obtaining a Registered Community Design (EU Design) is almost always a swift and efficient process when done properly. Unlike the lengthy timeline associated with, for example, patent design registrations in the United States, where approval can take up to two years, obtaining a registration certificate for an EU Design can be achieved in approximately one week. This accelerated process allows for quick enforcement of rights within the EU, which can be a valuable advantage for entering the market and staying ahead of the competition.
The cost-effectiveness of filing first in the EU is significant. With bulk discounts provided for further designs filed in the same application, the financial advantages are substantial. To put this in perspective, the costs associated with filing a US design patent application can easily range from $3000 to $4000, while the same budget can secure 5 or 6 EU Designs. Even if a foreign filing license for filing outside the US may be needed, the cost-effectiveness of Community Designs and the benefits of broad protection in the EU are substantially more significant even when considering any additional expense for an expedited foreign filing license.
EU Designs allow for comprehensive variations of designs. This flexibility ensures that variations that might be excluded in national applications due to budget constraints can be protected in the EU. This strategic approach provides broad design protection in the EU, which allows time to decide what designs to pursue in other jurisdictions.
An EU design application is flexible with respect to the drawings or pictures that can be accepted. Using US drawings in the EU application would be an easy approach for a priority application in USA.
The EU system has no limitation on the number of designs filed in a single application, as long as they belong to the same Locarno class. This facilitates extensive protection, allowing an applicant to cover numerous designs within a single application. The proposals to amend Council Regulation (EC) No 6/2002 (the Community Design Regulation) and in parallel to recast Directive 98/71/EC (the Design Directive) aim to align the design protection system in the EU with the digital age and make it more accessible and efficient for applicants. The Parliament and the Council reached a provisional agreement on 5 December 2023, which now needs to be confirmed and formally adopted by both institutions. If the proposal is adopted, the unity of class requirement for multiple designs in a registered design application will be removed, further expanding design protection possibilities.
Design protection in the EU is not limited to a particular type of product unlike the situation with trademarks that are limited somewhat by the list of goods and services.
An EU application can be kept secret for up to 30 months. This option can be of interest if the applicant does not want the design to become public before subsequent applications claiming priority have been filed in other jurisdictions or before the product is launched on the market. However, if launching will take place within 2-3 years, filing first in the EU provides the option to extend secrecy 6 months when filing the US application at the end of the priority period. Please note that the publication of a community design can be requested any time within these 30 months.
If you are aiming for quick protection, one should consider filing directly at the EUIPO. As the EU design is very flexible with acceptance of views/drawings, filing directly at the EUIPO will allow you to choose those views that best show the design without the limitations of other jurisdictions that are less permissive in this respect.
In conclusion, filing first for Community Designs in the EU is not just about legal protection. It is about maximizing opportunities and securing strong and broad protection in a cost-effective manner.
The blog is originally published in Lexology. For more information on EU designs, see Berggren´s Design Chapter in Lexology´s Panoramic linked to here.
Join us for a fast-paced 45-minute, interview-style webinar on 10 April 2024 to gain a comprehensive understanding of EU designs. The webinar, led by Berggren´s own Robert Alderson and Paula de Andrés Gómez, has been created specifically for non-Europeans who would like to learn more about EU design practice and the strategic advantages (and possible requirements) when filing your design application in Europe first. Read more and register.
We'll be there too! If you’d like meet anyone from Berggren´s INTA Team, please contact us at: internationaldesk@berggren.fi