Unregistered Community designs

A design that is entitled to protection as a registered Community design will automatically be protected by an unregistered Community design for three years from the date it is first made available to the public. (Non-confidential disclosures which could not reasonably have become known in the normal course of business to specialists in the relevant business sector within the Community do not count for this purpose).

The requirements for Community design protection include that a design must be new and have individual character. (See what can be protected by a registered Community design?). In the context of an unregistered Community design, the relevant date for assessing whether a design is new and has individual character is the date when the design is first made available to the public.

As for registered Community designs, there are no nationality restrictions as to whom may own an unregistered Community design. Subject to a written agreement to the contrary (or, where relevant, national laws), the first owner of an unregistered Community design will be the designer, or the designer’s employer if the design was created by an employee in the course of employment. An unregistered Community design may be assigned or licensed in broadly the same way as a registered Community design. However, as there is no register of unregistered Community designs, there is, obviously, no requirement to record the transfer.

Not only does an unregistered Community design last for a shorter length of time than a registered Community design, but it also provides a weaker form of protection. An unregistered Community design can be infringed by the same type of acts that constitute infringement of a registered Community design. However, the infringing acts must have involved copying. In contrast, a registered Community design can be enforced against a design that has been created independently, without copying.

The evidential burdens that a pursuer faces in an infringement action will be greater if he is relying on an unregistered Community design rather than a registered Community design. In addition to the requirement to establish copying, he will also need to prove that the unregistered design right exists and that it is owned by him. However, with a registered Community design, the certificate of registration is taken as evidence that the registered right exists and that the registered proprietor is entitled to it. It is for the defender to raise a challenge if he believes that he has grounds to do so.

Although it is strongly advisable to secure registered protection where possible, an unregistered Community design can be useful in certain circumstances. For example, if a disclosure has made it impossible to obtain a valid registered Community design, if it is necessary to bring infringement proceedings before a registered Community design has been granted, or if the financial resources are not available to obtain a registration, perhaps because a product is short-lived.

If it is necessary to bring an infringement action based on an unregistered Community design, the proceedings will, like those for a registered Community design, be heard in a Community design court of an EU member state that has jurisdiction. A Community design court can also hear counterclaims of invalidity in infringement proceedings and applications for declarations of invalidity.