The Registered Community Design (RCD) registration system and links to the Hague Agreement

Transcription

1 The Registered Community Design (RCD) registration system and links to the Hague Agreement

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3 1. Definition of industrial design 2. Representation of the design 3. Indication of Product 4. Multiple Designs Application 5. Absolute grounds for refusal 6. The Hague Agreement 3

4 1. Definition of industrial design 4

5 Design: the appearance of the whole or a part of a product resulting from the features of, in particular, the... lines colours shape texture contours materials ornamentation 5

6 Product: any industrial or handicraft item, including inter alia: Parts assembled into a complex product Packaging Get-up Graphic symbols Excluded: Computer programs 6

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8 Complex Products: Product composed of multiple components which can be replaced permitting disassembly and re-assembly of the product. Parts intended for assembly into a complex product 8

9 Foodstuffs (class 1) 9

10 Logos

11 Transformable products 11

12 Set of articles Articles having aesthetic and functional complementarity (common features, being on sale or intended to be used together) 12

13 Plans, Blueprints (printed matter) 13

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15 Not designs Natural products Words without any figurative element Ideas, methods, processes Functions (patents) Smells and fragrances Music and sounds do not constitute the appearance of a product and therefore do not comply with the definition of a design. 15

16 Natural products 16

17 Logos/Graphic symbols 17

18 2. Representation of a design 18

19 The representation can be photos, computer drawings or drawings by hand, in colour or BW. Paper application The design must be reproduced on opaque white paper sheet A4 size, either pasted or printed directly on it The space used for the reproduction must be no larger than 26.2cmx17cm with a margin of 2.5cm on the left-hand side Electronic application Image file format: JPEG format, limited to a maximum of 5Mb Only 1 image per electronic attachment 19

20 1. Request for design registration 2. Information identifying the applicant 3. Representation of the design suitable for reproduction: Good quality all details of the design for which protection is sought should be visible Neutral background the design should be clearly identifiable in its environment 20

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26 What is neutral background? The background in a view is considered neutral as long as the design shown in this view is clearly distinguishable from its environment without interference of any other object, accessory or decoration, whose inclusion in the representation could cast doubt on the protection sought. In other words, the requirement of a neutral background neither demands a neutral colour nor an empty background. It is instead decisive that the design stands out so clearly from the background that it remains identifiable. The examiner must be able to identify the design for which protection is sought in each view without knowing the indication of product or checking the other views of the design. 26

27 INDP: Drying Racks 27

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30 INDP: Pavilions 30

31 INDP: Vendors carts 31

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35 How to remedy INDP: Chair 35

36 INDP: Housings for air filters, for engines 36

37 INDP: Housings for air filters, for engines 37

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45 Representation of the design Other requirements All views must show the same product All views must show the same colour Only 1 view per electronic attachment (e-filing technical restriction) Views should not contain explanatory text, wording, numbers or symbols Detail views of portions of the design should not be shown together with the design in the same view Set of articles & complex products must contain in the representation a global view of the design Typefaces must contain all the capital and small letters of the alphabet, Arabic numerals and a text of 5 lines written in that typeface Disclaimers are acceptable provided they are shown on the views 45

46 Same product? 46

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49 Separation lines 49

50 Views in colour Views of the same product showing different colours do not relate to the same design. Design is the appearance of a product resulting from the features of, among others, its colours 50

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52 Colour views CANNOT be combined with BW views 52

53 Views in different grey shades are not acceptable as one design 53

54 Positive-Negative 54

55 Only 1 view per electronic attachment 55

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57 Detail views of portions of the design cannot be included in the same view 57

58 Set of articles A set of articles is accepted as one design, provided the articles making up the set are linked by aesthetic and functional complementarity and are, in normal circumstances, sold altogether as one singe product. It should be clear that the protection is sought for a design resulting from the combination of the articles. At least one view must show the set of articles together. 58

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60 Complex products 60

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62 Exploded views 62

63 Disclaimers 63

64 INDP: Luggage carriers for cycles 64

65 Colouring, Shading, Blurring 65

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67 Do you consider the following representations acceptable? INDP Lamps INDP seat covers 67

68 INDP kitchen furniture 68

69 3. Indication of products 69

70 The application must contain an indication of product The term must be clear and not too general, so that its classification is possible The indication must correspond to the images. 70

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73 Suggested changes (examples) Ornamentation Where the design represents ornamentation for a given product, and that product as a whole is indicated in the application, the examiner will suggest to replace that product indication by the indication Product(s) X (Ornamentation for -). The product would thus be classified under Class of the Locarno Classification. Graphic symbols/logos Where the design represents a graphic symbol or logo but the indication of the products describes what this logo/graphic symbol represents or to which kind of products it refers to, the examiner will suggest to indicate the proper product indication, namely logo/graphic symbol. Products and their parts Where a design represents the appearance of a product as whole, and a part of that product is indicated in the application the examiner will suggest either to delete that indication when the whole product is indicated as well or that the product indication is replaced by the indication of the whole product. Long lists of products More than one product can be indicated in an application. However, in order to ensure that the designs register remains searchable where the product indication contains more than five products that do not belong to the same subclass of the Locarno Classification, the examiner will suggest that the applicant limit the number of products to five and select products accordingly. Where all of the same subclass (and all corresponding to the images) the examiner will ask the applicant to replace them with some general term(s). Where applicable the heading of the relevant subclass, or part of it, may be used. Multiple applications List of indications corresponds to the total of the designs of the multiple but not to each of them. 73

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78 INDP: parts & accessories for cars class

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80 INDP for all the designs: Household appliances

81 Washing machines Refrigerators Dishwashers Vacuum cleaners class washing, cleaning and drying machines Ovens (cooking) Coffee machines Juice extractors

82 Where the indication of products is Ornamentation and the design does not limit itself to representing this ornamentation but also discloses the product to which the ornamentation is applied, or part of it, without its contours being disclaimed, this product will be added to the indication of products and the classification will be amended accordingly. Cups (ornamentation for-) Cups

83 4. Multiple application and unity of designs 83

84 More than one design is allowed in an application, provided the products are in the same Locarno class. The indication Ornamentation or Product (Ornamentation for) in class of the Locarno Classification, in respect of some designs, is neutral and thus ignored for the purpose of examining whether the indication of products in respect of the remaining designs meets the unity of class requirement. The same reasoning applies to the following indications of products in class of the Locarno Classification namely, Graphic symbols, Logos and Surface patterns. Get-up is excluded form the above rule. 84

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90 5. Absolute grounds for refusal 1) Public policy, public order and morality 90

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93 5. Absolute grounds for refusal 2) Statutory Prohibitions 93

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97 Case study 97

98 INDP lace 99

99 6. The Hague Agreement

100 Components of the Hague Agreement The Hague Agreement is an international treaty administrated by WIPO that serves the purpose of facilitating the filing of design applications at international level. It was adopted in 1925 and entered into force in June It was later revised by 3 Acts: the 1934 Act (The London Act) in force 1939 the 1960 Act (The Hague Act) in force 1987 the 1999 Act (The Geneva Act) in force 2004 EU Accession: 01/01/2008

101 65 Hague Union Members Geneva Act (1999): African IP Organization (AIPO), Albania, Armenia, Azerbaijan, Bosnia and Herzegovina, Botswana, Brunei Darussalam, Bulgaria, Croatia, Denmark, Egypt, Estonia, European Union, Finland, France, Georgia, Germany, Ghana, Hungary, Iceland, Japan, Kyrgyzstan, Latvia, Liechtenstein, Lithuania, Monaco, Moldova, Mongolia, Montenegro, Namibia, Norway, Oman, Poland, Korea, Romania, Rwanda, Sao Tome and Principe, Serbia, Singapore, Slovenia, Spain, Switzerland, Syria, Tajikistan, F.Y.R. of Macedonia, Tunisia, Turkey, Turkmenistan, Ukraine, United States of America (50) Hague Act (1960): Belgium, Belize, Benin, Côte d Ivoire, D.P.R. of Korea, Gabon, Greece, Italy, Luxembourg, Mali, Morocco, Netherlands, Niger, Senegal, Suriname (15)

102 Who may use it a. Be a national of a Contracting Party or a member State of an intergovernmental organization which is a Contracting party, such as the European Union or the African Intellectual Property Organization, b. Have a domicile in the territory of a Contracting Party, c. Have a real and effective industrial or commercial establishment in the territory of a Contracting Party

103 Special Features Protection of designs cannot be obtained in countries which are not members of the Hague Agreement. Notable exceptions: China, Russia, Brazil, India, most Latin American Countries, Canada. Only members of the same Act can be designated. Selfdesignation is possible. No prior national application or registration necessary. A design can be protected for the first time at the international level through the Hague Agreement system (contrary to Madrid Protocol system for trade marks).

104 Special Features Direct filings to WIPO by the applicant or his representative. The application can also be filed electronically. The application can be filed in any of the 3 languages: FR, EN, ES Fees payable to WIPO (in Swiss francs). An international application is subject to 3 types of fees: basic fee publication fee individual fee for each designated Contracting Party Fee calculator available in Multiple applications: max 100 designs of the same Locarno Class Deferment of publication may be requested for a period that cannot exceed 30 months (under 1999 Act) from the date of filing or the date of priority.

105 WIPO examines formal requirements such as those relating to the quality of the representations of the design(s) and the payment of the required fees. The applicant is informed of any deficiencies and is given a time limit of 3 months to correct them. If he fails the application is considered abandoned. Where the application complies with the formal requirements the design is recorded to the International Register and published in the Bulletin (unless deferment of publication has been requested). Substantive examination falls within the exclusive competence of the Office of each designated Contracting Party (6 to 12 months for refusal). Scope of protection, duration and renewal according to the domestic legislation of Contracting Parties. Invalidity only at the Contracting Party level.

106 EUIPO procedure EUIPO: examination on grounds for non-registrability: - no compliance with design definition - against public policy and morality 6 months to communicate to WIPO the outcome of examination EUIPO charges 62 per design No republishing in the Registered Community Designs Bulletin, only providing a link to the Hague Express Bulletin 47% of International applications contain EU designation

107 Additional information about the Hague System

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110 Statistics (29/02/2016) INDIA 111

111 EUIPO website: Statistics: statistical travel pack EUIPO Search sources: 112

112 Design Protection in Europe The traditional route, i.e. applying for a Design in each country Using the Hague system to obtain designs in the territory of the Member States Applying for a European Union Registered Community Design for the whole territory of the European Union The Unregistered Community Design 113

113 National Protection for Designs File individual applications at each of the National Industrial Property Offices of the EU 114

114 International Protection for Designs A single fee is paid to WIPO An individual fee is payable to some National Offices No single unitary right is granted - of rights bundle Each Trade Mark or Design is subject to the national laws of each country 115

115 Protection for Designs in the European Union Unitary character One Office for all One fee for all Use is not compulsory in all Member states Fast-track options available E-filing and e-payment available Online search engines to perform pre-checks Status of applications available online Applications can be filed in any of the 24 languages 116

116 Fees for Designs ortal/en/rcd-fees-directlypayable-to-euipo 117

117 Language regime at EUIPO EUIPO working languages: French German English Spanish Italian Official languages of the European Union Bulgarian Czech Danish German Estonian Greek English Spanish French (Gaelic) Croatian Italian Lithuanian Latvian Hungarian Maltese Dutch Polish Portuguese Rumanian Slovak Slovenian Finnish Swedish 118

118 Expert s name: Christophe Gimenez former EUIPO IP Attaché in Beijing, China European Union Intellectual Property Office (EUIPO) Thank You 119