s Benelux Trademark Association (BMM) Designs INV Current text: "However, when parts of a product serve a technical function without being dictated by it within the meaning of Article 8 CDR, its features may constitute a differentiating factor to the extent that its features could be designed differently. (...)" "However, when parts of a product serve a functional purpose without being dictated by the technical function within the meaning of Article 8 CDR, its features may constitute a differentiating factor to the extent that its features could be designed differently. (...)" Reason: The GC judgment of 4 July 2017, T-90/16, EU:T:2017:464, para. 61, to which this paragraph refers, relates to the functional purposes that parts of a product can fulfil (not "its technical function without being dictated by it", which is hard to grasp). ASIPI Designs EXA Paragraph 2.7.2.5 has been deleted. We are wondering if this modification of the results either from a new practice of the Office, or pursues a further simplification of the, as we are not aware of any amendment of the Regulations nor any new Case-Law which may be applicable. We suggest moving the deleted paragraph to point 6.2.5 of the (within the part corresponding to the EXAMINATION OF APPLICATIONS FOR REGISTERED COMMUNITY DESIGNS) ASIPI Designs EXA Second paragraph says: For other means of filing an application (Article 52 CDR), the Office provides a form (Article 68(1)(f) CDIR) that can be obtained upon request. Before, it was possible to simply download it. We consider that this change just implies an inconvenience for the users that does not wish to use the user area of the EUIPO. For other means of filing an application (Article 52 CDR), the Office provides a form (Article 68(1)(f) CDIR) that can be downloaded from the Office s website. Out of ScopThe KC Designs notes that all forms are available on-line using the e-filing service. With built-in help and search options the Office s online forms make it easier to file an application. The Office s Forms and Filings page contains all our online forms, as well as the PDF forms for those services not yet covered by an online solution. The decision of the Office to no longer make downloadable forms available online is because these forms are no longer updated, due to the availability of new technology and online filing. However, users may obtain the paper version of these old forms upon request to the Office. The availability of the paper forms is a decision that has been taken at an Office level, and is out of scope of the review of the guidelines. CNIPA Designs EXA 6.2.1 We note that the amendments to section 6.2.1 propose to drop the substantive examination of priority claims and to make only a few formal checks. Whilst we understand that this will probably speed up the processing of applications that claim priority, our concern is that this will put an additional risk on both unrepresented applicants and representatives to ensure that any priority claims are not substantively defective, and which might not get picked up until validity of the design is challenged. We are concerned with this change in practice and generally feel that advantages gained in speeding up the processing of the application, do not warrant this additional risk. If the changes in practice are to be adopted, this change needs to be publicised widely and flagged up to all your users of the system, in particular to members of your Key User Programme by a direct and specific communication in respect of this change. According to the former practice, the Office did not examine whether the first application concerned the same design. Furthermore, the validity of the priority claim could have been challenged in invalidity proceedings as well. In these respects, the former registration of the priority was not reliable either. The new practice, in contrast, makes apparent that the priority is claimed only, subject to further examination if required. In the Office s estimation based on its experience in invalidity proceedings, it becomes relevant in a such a limited number of cases that a more comprehensive examination for every priority claim at filing stage does not seem merited. Furthermore, the Office notes that for the ever increasing number of international registration designating the EU, such examination does not take place either. In relation to Art. 45 CDR, the Office understands this provision to require an examination of those formal requirements which continue to be examined. Moreover, the Office notes that in the past many users have requested the Office to facilitate the priority assessment in relation to translation and certification requirements. Czech Republic Designs EXA On behalf of Mrs Světlana Kopecká, Director of the International Department, let us inform you that we have no suggestions to the draft Design 2018. Thank you. CITMA Designs EXA 6.2.1 We note that the amendments to section 6.2.1 will provide for the substantive examination of priority claims no longer to take place and to make only a few formal checks. We appreciate that this will speed up the processing of applications that claim priority, but it will put an additional risk on unrepresented applicants and representatives to ensure that priority claims are not substantively defective; further they might not get picked up until the validity of the design has been challenged. If the changes in practice are adopted, we recommend publicising this change to all your users of the system. According to the former practice, the Office did not examine whether the first application concerned the same design. Furthermore, the validity of the priority claim could have been challenged in invalidity proceedings as well. In these respects, the former registration of the priority was not reliable either. The new practice, in contrast, makes apparent that the priority is claimed only, subject to further examination if required. In the Office s estimation based on its experience in invalidity proceedings, it becomes relevant in a such a limited number of cases that a more comprehensive examination for every priority claim at filing stage does not seem merited. Furthermore, the Office notes that for the ever increasing number of international registration designating the EU, such examination does not take place either. In relation to Art. 45 CDR, the Office understands this provision to require an examination of those formal requirements which continue to be examined. Moreover, the Office notes that in the past many users have requested the Office to facilitate the priority assessment in relation to translation and certification requirements.
s FICPI Designs INV General Case names We note some inconsistency as to whether case names cited in the are capitalised or presented in lower case. We believe what is intended is for Board of Appeal case names appear in capitalised form, but for General Court/ CJEU case names to not be capitalised. However, this convention is not universally applied and there are examples of inconsistency within the themselves see, for example, page 36, paragraph 2 (reference to case R 586/2007-3, Barbecues) and page 39, paragraph 2 (reference to case R 1310/2005-3, galletas). We suggest that the chosen convention for capitalisation of case names should be consistently applied throughout the. We have revised the case names in the documents provided, and they are consistent with our rules for citing case-law, so there is no discrepancy in methodology. The inconsistencies highlighted stem from differences at source, as can be seen in the examples quoted: R 586/2007-3, Barbecues https://oami.europa.eu/copla/trademark/data/000036645-0001/download/clw/apl/2008/en/20080310_r0586_2007-3.pdf?app=caselaw&casenum=r0586/2007-3&trtypedoc=na R 1310/2005-3, galletas https://oami.europa.eu/copla/trademark/data/000058334-0001/download/clw/apl/2006/es/20061128_r1310_2005-3.pdf?app=caselaw&casenum=r1310/2005-3&trtypedoc=na In both cases, the case names are listed exactly as provided in the footer of the appeal decision however, the capitalisation of the case names in the decisions themselves differs. The issue here is that we have to choose between being faithful to the case names provided in the original decisions, or having the case names be internally consistent in the. Currently we cite the case name exactly as it is provided at source. Changing this convention would indeed require revising the entire, raise the issue of consistency between the and the original decisions. FICPI Designs INV 3.14, first paragraph We propose that the phrase as a simple measure of organisational procedure, not be relied upon as it is not necessary. FICPI Designs INV 4.1.6.1 This formulation was contained in the original text to clarify that such information shall not entail an appealable administrative decision. As such, the KCD considers the reference to be justified. Next RoundThe KC will take this suggestion on board during a future revision cycle. We propose that the EUIPO considers including wording equivalent to the following, which appears in the corresponding sections of the Practice Manual relating to trade marks (Part A, General Rules, Section 1, Means of Communication, Time Limits, 4.3) and trade mark oppositions (Part C, Opposition, Section 1, Procedural Matters, 6.2.1.2) FICPI Designs INV 5.3.2, first paragraph Where a request for extension of an extendable time limit has been filed and received before the expiry of this time limit (order of 30/01/2014, C-324/13 P, Patricia Rocha, EU:C:2014:60), the party concerned will be granted at least one day, even if the request for extension arrived on the last day of this time limit. FICPI proposes to amend the following text by adding the wording shown in bold/ underlined text: Whether Article 8(1) CDR applies must be assessed on the basis of all the objective circumstances relevant to each individual case, and not by from the perspective of the informed user, who may have a limited knowledge of technical matters. FICPI Designs INV 5.5.1.2 In the first paragraph, we propose to move the 3rd sentence ( Nor are there ) so this immediately follows the neither clause in the first sentence. FICPI Designs INV 5.5.1.8 In the fourth paragraph, we propose correction of the case name by addition of the letters EN: LEUCHTVORRICHTUNGEN FICPI Designs INV 5.7.1 We propose amendment of the proposed 3rd paragraph as shown: Our linguistic service recommends to not change the structure. Since the first sentence of the paragraph contains both neither and nor, it cannot lead on to the sentence Nor are there any provisions as to any compulsory form of evidence that must be submitted. The applicant must establish only that it has a right to prohibit use of the subsequent Community design and that. It cannot be required to establish that such right has been exercised; in other words, that the applicant has actually been able to prohibit such use (by analogy, 29/03/2011, C-96/09 P, Bud, EU:C:2011:189, 191). FICPI Designs EXA 6.2.1 Priority We note that the examination procedure concerning priority claims is to be modified. We welcomes the proposed changes calling for formal, but not substantive examination, of the priority claim.
s FICPI Designs EXA 5.2.4 Partial Views 5.2.7 Sets of Articles 5.2.8 Under 5.2.4, the applicant will be given three options when addressing an objection that the views disclose different detailed features, without showing these features connected to each other, namely: - provided unity of class can be maintained, the applicant can convert its application into a multiple application in which each individual part is a separate design and pay the corresponding fees; - if unity of class cannot be maintained, the applicant can convert its application into separate applications for each individual part, and pay the corresponding fees; - the applicant can limit its application to just one design by withdrawing the views representing other designs. We are of the opinion that the same three options should also be given to applicants in cases as mentioned under 5.2.7 Set of Articles and 5.2.8 Variations of a design. This will allow the applicant an equal opportunity to amend the application in each of the aforementioned cases. INTA Designs INV 2.3 In the first paragraph of point 2.3, the Office has added wording clarifying that well-known facts may be taken into account. It would be helpful here to define the term according to European Union (EU) jurisprudence, by inserting something along the lines of the wording in red below. This does not preclude the Invalidity Division from taking into consideration well-known facts (16/02/2017, T-828/14 & T- 829/14, Radiatori per riscaldamento, EU:T:2017:87, 90). Well-known facts are likely to be known by anyone or which may be learnt from generally accessible sources (judgment of 22 June 2004, Ruiz-Picasso and Others v OHIM DaimlerChrysler (PICARO), T-185/02, EU:T:2004:189, paragraph 29) and it is thus not necessary to prove them. INTA Designs INV 5.5.2.1 "However, when parts of a product serve a technical function without being dictated by it within the meaning of Article 8 CDR, its features may constitute a differentiating factor to the extent that its features could be designed differently. (...)" The General Court judgment of 4 July 2017, T-90/16, EU:T:2017:464, para. 61, to which the above paragraph refers, relates to the functional purposes that parts of a product can fulfil (not "its technical function without being dictated by it", which is hard to grasp). For this reason, we propose the change to this paragraph s the wording marked in red below. "However, when parts of a product serve a functional purpose without being dictated by the technical function within the meaning of Article 8 CDR, its features may constitute a differentiating factor to the extent that its features could be designed differently. (...)" INTA Designs INV 5.7 The Office appears to have deleted from this section references to an infringement of earlier distinctive sign by unfair advantage/detriment to reputation. For example, the first paragraph of 5.7.3 makes a statement that the same applies if the applicant invokes a likelihood of confusion with an earlier national registered mark. Further, in section 5.7.4, the old reference to the Office s on Trade Marks with Reputation has been removed. A reference to the, Section 5, Trade Marks with Reputation, has been added. However, contrary to the application of Art. 8(4) and (6), an additional reference to Art. 28(1)(b)(vi) CDIR does not seem required. As a result, it does not appear clear from the that infringement of this ground can be invoked and, if so, how. We suggest correcting this as per the addition of the wording in red below. 5.7.3: Where an application for invalidity is based on a right held to an earlier European Union trade mark, it is not necessary to submit the law and caselaw relating to European Union trade marks in order to substantiate such earlier right; the same applies if the applicant invokes a likelihood of confusion with an earlier national registered mark. For trademarks with reputation the application must, pursuant to Article 28(1)(b)(vi) CDIR, contain all relevant facts, evidence and arguments for establishing that Article 8(5) EUTMR (or the equivalent national provision) is satisfied (see the, Part C, Opposition, Section 5, Trademarks with Reputation (Article 8(5) EUTMR) paragraph 3.1, Earlier Mark with Reputation).
s INTA Designs EXA 2.7.2.5 INTA Designs EXA 5.2.6 We understand the rationale behind the deletion of the requirement that, where only some designs are deferred in a multiple application, the examiner sends the applicant a summary showing the first view of each design to be published without delay. Moreover, under the existing, the applicant is requested to confirm the correctness of the summary (i.e. the designs that were to be published immediately) within one month. We are concerned that, with the deletion of this summary as suggested by the EUIPO, there could be scope for error by the Office publishing by accident a design that was supposed to be deferred. For this reason, we consider that it would be preferable to retain the current practice and the deleted wording of the guidelines. Another alternative could be to, at least, during the application process, provide the applicant with the possibility of requesting an optional summary containing the first view of each design to be published without delay. The guidance on snapshots gives two possible applications, animated icons and animated graphical user interfaces. We assume that this is not intended to be exhaustive, and would suggest adding the wording in red below. This applies to, for example: * an animated icon (design consisting of a sequence)... INTA Designs EXA 6.2.1 The Office is now proposing to adopt the same approach that it takes for EUTMs, namely to no longer examine the priority claim substantively at the time of filing the application, but only when the priority date is relevant in the examination of applications for invalidity. We understand that this would lighten the workload of the Office and lead to (in our view very marginally) shorter examination periods. However, it shifts the burden to the applicant to ensure that everything that is necessary to be filed (including e.g. translations) is filed on time, without knowing whether it is truly enough until potentially much later/when an invalidity decision is rendered. It also means that the database is no longer reliable for third parties to determine the true priority date of an RCD. Designs are different to trade marks, in that if priority is not accepted the design may be invalid for lack of novelty/individual character. More than just priority may be lost. According to the former practice, the Office did not examine whether the first application concerned the same design. Furthermore, the validity of the priority claim could have been challenged in invalidity proceedings as well. In these respects, the former registration of the priority was not reliable either. The new practice, in contrast, makes apparent that the priority is claimed only, subject to further examination if required. In the Office s estimation based on its experience in invalidity proceedings, it becomes relevant in a such a limited number of cases that a more comprehensive examination for every priority claim at filing stage does not seem merited. Furthermore, the Office notes that for the ever increasing number of international registration designating the EU, such examination does not take place either. In relation to Art. 45 CDR, the Office understands this provision to require an examination of those formal requirements which continue to be examined. Moreover, the Office notes that in the past many users have requested the Office to facilitate the priority assessment in relation to translation and certification requirements. Therefore we have strong reservations about the change to the approach in the examination of priority claims by the Office. It should be noted that Article 45 CDR requires the Office to examine, as part of the registration procedure, whether the requirements concerning the claim to priority are satisfied, if a priority is claimed. Revert to previous text on priority claims. MARQUES Designs EXA 1.2.1 Duty to state reasons MARQUES would (as in earlier submissions) still welcome an elaboration on the duty to state reasons. MARQUES appreciates that the, Part A, GeneralRules, Section 2, Paragraph 1, now set out the objective of giving reasons which is, inter alia, to allow the court to exercise their scrutiny. But still, the Office highlights the minimum standard. MARQUES suggests that the guidelines not just refer to these minimal standards but encouraged the Examiners not to simply resort to often-repeated phrases but to clearly identify the legal principles applied and to explain why and how they have been applied in each individual case. The reasons given in each individual case are essential for establishing a sound body of case law from which users of the RCD system can draw reliable conclusions. Out of ScopThe essential function of the section on the duty to state reasons is to make reference to the pertinent guidelines applicable across trade mark and design proceedings. There are no peculiarities for 1st instance design decisions despite the fact that the respective body of case law is less developed. Therefore, the KC Design considers the proposal to be outside the scope of this revision cycle of the design guidelines. The, Part A, General Rules, Section 2 may be commented upon during the next revision cycle. Add at, Part A, General Rules, Section 2, Paragraph 1: The Office nonetheless aims at not just meeting the minimum standard but to identify the legal principles applied and explain why they were applied in the case at hand.
s MARQUES Designs EXA 1.2.3 Compliance with time limits In this part of the it is stated that The applicant is informed about any extension. MARQUES is of the opinion that this part should be amended since it seems to refer only to notifications when a request for extension is approved by the Office. From this part it is not clear whether the Office informs the applicant if a request for extension is not approved. Replace by: The applicant is informed about any decision of the Office as to the extension. MARQUES Designs EXA 2.4 Language of the application MARQUES encourages to clarify in the guidelines when a consent to use the second language should be given by the applicant. Amend as follows: All written communications have to be submitted in the language of filing. However, in case the first language chosen is not one of the five working languages of the Office, the Office may ask the applicant to consent to receiving communication in the second language of the application. Consent ( ) Next RoundThe KC Designs notes that according to Art. 98(2) and (3) CDR, the second language shall be accepted as a possible language of the proceedings and the Office may send its written communications in this language also when the applicant is the sole party to proceedings. Nevertheless, the Office s practice strives to send written communication in all cases at application stage in the language of filing. The suggested amendment appears to consist of a re-wording of the current text without proposing any change of practice. The KC Designs, however, would be grateful to receive further explanations for the next revision cycle about any issues with the current practice and whether the suggested amendment is limited to a clarification. In particular, the suggested amendment seems to impose an obligation on part of the Office to seek prior express consent in all cases, thereby excluding any discretion on part of the Office to choose the second language without such consent. MARQUES Designs EXA 2.5 Representatives, first paragraph MARQUES notes that in the first paragraph the draft guidelines state that only those applicants must be represented which lack a domicile or within the European Economic Area (EEA). 3.1 Conditions under which appointment is mandatory, it is stated that the appointment of a professional representative is mandatory for parties to proceedings before the Office that do not have their domicile or their principal place of business, or a real and effective industrial or commercial establishment in the EEA. MARQUES submits that Art. 77 CDR hoewver does not refer to the EEA but to the Community. MARQUES urges the Office to explicitly note that the rules for designs are different from that for trademarks. Art. 77 (2) CDR provides that persons having no domicile or seat in the Community must be professionally represented unless it is a design filing). Delete words within the European Economic Area (EEA) and insert instead within the European Union. Add after Representation) : It is important to note that in design matters before the Office with the exception of design filings as such the applicant must be represented if he lacks its domicile or tis principal place of business or areal and effective industrial or commercial establishment within the Community. Having its domicile or tis principal place of business or a real and effective industrial or commercial establishment within the EEA is insufficient. Rectification in the. Part A, general Rules, Section 5 at 3.1. Out of ScopThe practice on professional representation is laid down in the guidelines on Professional Representation. Hence, the comment is outside the scope of this review cycle of the design guidelines. The guidelines on Professional Representation may be commented upon during the next revision cycle. Attention is drawn to the current version of the on Professional Representation where it is stated, on page 4: As regards registered Community design (RCD) proceedings, according to Articles 77 and 78 CDR, the relevant territory for establishing the obligation to be represented and the place where the representative must be based in the sense of Article 78 CDR is the EU. However, following the judgment in the Paul Rosenich case (judgment of 13/07/2017, T-527/14, PAUL ROSENICH, EU:T:2017:487), the Office deems the EEA to be the relevant territory, with the result that the considerations previously applied to the EEA in trade mark matters now also apply to designs. MARQUES Designs EXA 2.7.1 Registration In order to align the style of indicating number of days/months MARQUES suggests to replace two working days by 2 working days. The KC Designs notes that the guidelines are sent for comments prior to having been sent for proofreading and that such linguistic errors are normally picked up by its proofreading team. In relation to this particular proposal, the Office applies the Interinstitutional Style Guide, numbers are spelled out up to number nine: 10.5. Numbers, dates and time (a) Figures or words? Spell out the numbers one to nine, use digits thereafter; however, where numbers in a range fall above and below this limit use figures for both: 9 to 11, not nine to 11. MARQUES Designs EXA 2.7.1 Registration Since in this part of the the term DesignClass is used for the firsttime, MARQUES suggests to make reference to the point in which this term is clarified. Add after design Class (see paragraph 6.1.4.2.)
s MARQUES Designs EXA 2.7.2.1 Priority claims and supporting documents The state that the claim of priority requires submitting a copy thereof. MARQUES suggests to specify that design register printouts should suffice as a copy. To add: Design register printouts are considered sufficient copies. In this section, the address the option to file priority documents after the filing date. In paragraph 6.2.1.2 referred to, further details including the relevant documents explained, as governed by Decision EX-17-5 of the ED concerning the formal requirements for a priority claim for RCDs. MARQUES Designs EXA 5.2.1. Alternative positions In this part of the it is expressed that the alternative positions of the movable or removable parts of a design must be shown in separate views MARQUES is of the opinion that the part in the referring to presentation in the application of designs which have different configurations resulting in different products (e.g. bag that can be converted into a towel) should be explained in more details since from the given example it follows that it is not sufficient to show alternative positions (products views) but the way of transformation of one product into another one is shown. Moreover, it is not clear how the applicant should proceed in case such different products are classified in different classes. MARQUES understanding is that if such different products are classified in different classes. This section of the addresses the proper representation of designs with alternative shapes. On the distinct issue which product indications are allowed to be claimed for such designs, the KC Designs notes that the Office s practice stipulates to indicate all relevant product indication. For the very few designs filed for which alternative position results in different products, in the Office s experience, the applicant indicates the different product on their own motion. If not, the Office will suggest to add the missing product indication. In the light thereof, the suggested text does not seem necessary. Add underneath the pictures on page 33: Where the representation of the designreveals different configurations that may result in different products, theapplicant is allowed to claim all relevant indications (see also paragraph 6.2.3.1below). MARQUES Designs EXA 5.2.4. Partial views MARQUES is of the opinion that interchangeable use of the words parts and features to cover same meaning may result in wrong/unclear interpretation. To replace features by parts. MARQUES Designs EXA 5.2.8. Variations of a design In this part of the it is written that the applicant will have two options in case there are views relating to more than one design in a single application In MARQUES opinion the third option is missing i.e. the one relating to a situation when those representations represent products that are classified in different classes i.e. fork, shoehorn, toothbrush, lamp having same shape of e.g. woman or tree. In that case, the option is to convert the application in separate applications and pay the fees. Amend third bullet: where the designs each represent products which are classified in different classes, the applicant can converts its application into separate applications, containing each one of the designs separately, and pay the corresponding fees. MARQUES Designs EXA 5.2.10 Elements external to the design It seems that RCD number of the second example is not correct. There is another design under this number in the database. Indicate correct RCD number. MARQUES Designs EXA 5.3 Use of visual disclaimers to exclude features from protection MARQUES suggests including a reference to recent case law from the General Court of the European Union (ECLI:EU:T:2017:411 para. 44 Ernst Kneidinger/EUIPO and Topseat) according to which the subject matter and scope of protection of a design solely follow from the representation as filed and can neither be replaced nor completed by a description. Add after ( ) according to Article 36(6) the following Both the subject matter and the scope of protection of a design solely follow from the representation of the design as filed and can neither be replaced nor completed by a description (General Court of the European Union (ECLI:EU:T:2017:411 para. 44 Ernst Kneidinger/EUIPO and Topseat).
s MARQUES Designs EXA 6.1.4, General principles MARQUES urges the Office to include a reference to the landmark decision Easy Sanitary Solutions BV and European Union Intellectual Property Office vgroup Nivelles (Judgment of the CJEU of 21 September 2017 Joined Cases C- 361/15 P and C-405/15 P; ECLI:EU:C:2017:720; para. 23 and 93). MARQUES considers that decision fundamentally important. MARQUES Designs EXA 6.1.6.3, Obvious mismatch Add: A design s protection does not depend on the nature of the product in which that design is incorporated or to which it is applied and that such protection is not limited only to the designs belonging to a specific sector. Rather, it follows from both Article 36 (6) and Article 19 (1) of Regulation No 6/2002 that a registered Community design confers on its holder the exclusive right to use the relevant design in all types of products, and not only in the product indicated in the application for registration (Judgment of the CJEU of 21 September 2017 Joined Cases C- 361/15 P and C-405/15 P; ECLI:EU:C:2017:720; para. 23 and 93). MARQUES suggests adding clarification relating to multi-functional designs. Add: However, where the representation of the design allows to conclude that the nature of the product is ambiguous in the sense that, for instance, the underlying product could be both a toy car or a real car, the holder is allowed to claim both the indication of product toy car and real car (see also paragraph 6.2.3.1 below). MARQUES Designs EXA 6.2.2, Description According to the Office s practice, the indication of all relevant product indications is in fact expected. This paragraph only addresses an obvious mismatch between the design s representation and the product indication. In any event, the Office is aware of the fact that practices on the product indication for multi-functional designs are not harmonized in the European Union and further clarification is merited. MARQUES suggests to include a reference to recent case law from the General Court of the European Union (ECLI:EU:T:2017:411 para. 44 Ernst Kneidinger/EUIPO and Topseat) according to which the subject matter and scope of protection of a design solely follow from the representation as filed and can neither be replaced nor completed by a description. Add: Both the subject matter and the scope of protection of a design solely follow from the representation of the design as filed and can neither be replaced nor completed by a description (General Court of the European Union (ECLI:EU:T:2017:411 para. 44 Ernst Kneidinger/EUIPO and Topseat). MARQUES Designs EXA 9.3.1, Elements subject to correction It is common sense that the Office is entitled to allow the applicant to amend the representation of the design provided that the identity of the design is retained (see paragraph 4.3). MARQUES would be pleased to see that the same is true if the applicant informs the Office on his own initiative and proposes to submit amended views provided that the identity of the design is retained, according to the general principle of equality of arms. The submission of an amended representation upon request by the Office is confined to specific legal requirements. A general permission for an applicant to file amended representations on its own motion as a correction to the application under Article 12(2) CDIR is not covered by this provision. Moreover, the KCD notes that in light of the swift registration process, an option for the unsolicited filing of amended representations is prone to cause errors in the further processing of the application, in particular when it is missed on time by the examiner. Add: Where the applicant, on his own initiative and prior to any objections by the examiner, informs the Office about existing inconsistencies between the various views of the design at issue the applicant shall be allowed to submit amended views provided that the identity of the design is retained (see also paragraph 4.3 above and paragraph 11.2.2.1 below). MARQUES Designs EXA 9.3.2, Elements that cannot be corrected Add: However, where the applicant, on his own initiative and prior to any objections by the examiner, informs the Office about existing inconsistencies between the various views of the design at issue the applicant shall be allowed to submit amended views provided that the identity of the design is retained (see also paragraph 4.3 above and paragraph 11.2.2.1 below). The submission of an amended representation upon request by the Office is confined to specific legal requirements. A general permission for an applicant to file amended representations on its own motion as a correction to the application under Article 12(2) CDIR is not covered by this provision. Moreover, the KCD notes that in light of the swift registration process, an option for the unsolicited filing of amended representations is prone to cause errors in the further processing of the application, in particular when it is missed on time by the examiner.
s MARQUES Designs INV 3.6 [Professional representation] The draft guidelines state that as a matter of principle the rules governing representation in European Union trademark proceedings apply mutatis mutandis to invalidity proceedings for Community Designs. The draft guidelines refer to, Part A, General Rules, Section 5, Professional Representation for further information. In the referred document, at point 3.1 Conditions under which appointment is mandatory, it is stated that the appointment of a professional representative is mandatory for parties to proceedings before the Office that do not have their domicile or their principal place of business, or a real and effective industrial or commercial establishment in the EEA. MARQUESsuggests that it be explicitly noted that the rules for designs are different from that for trademarks. Art. 77 (2) CDR provides that persons having no domicile or seat in the Community must be professionally represented. Therefore the proposed deletion of text under Part 3.6 will create more confusion for the users. Leave the text under Part 3.6 unaltered.amend, Part A, General Rules, Section 5, Professional Representation to reflect Art. 77 (2) CDR. Out of ScopThe KCD notes that in light of the swift registration process, an option for the unsolicited filing of amended representations is prone to cause errors in the further processing of the application, in particular when it is missed on time by the examiner. MARQUES Designs INV 3.10 [Signing the application] MARQUES notes that in a previous consultation of the, it was suggested that it was out of the scope of the Invalidity whether a signature of ABC Solicitors LLP would satisfy the requirement for a signature. It is respectfully re-submitted that clarity at this point, as well as perhaps in other documents, would be welcome. Add: A signature of the form ABC Solicitors LLP is acceptable. Or add: A signature of the form ABC Solicitors LLP is not acceptable. Out of ScopThe suggested addition should rather be reflected in the General Rules, and as such is outside the scope of this review cycle of the design guidelines. The guidelines on General Rules may be commented upon during the next revision cycle. Moreover, attention is drawn to the current version of the Professional Representation guidelines where it is stated, on page 20, paragraph 3.4.3.: The appointment of an association of representatives does not result in departure from the general rule that only professional representatives within the meaning of Article 120(1) EUTMR and Article 78(1) CDR may perform legal acts before the Office on behalf of third parties. Thus, any application, request or communication must be signed by a physical person possessing this qualification. The representative must indicate their name underneath the signature. They may indicate their individual ID number, if given by the Office, although it is not necessary to obtain an individual ID number, as the association ID number prevails. MARQUES Designs INV 4.1.3 [Scope of defence] MARQUES suggests that explicit language be included in the for the possibility of a design being amended to save it, by removing features not protected under design law, for example, non-visible component parts of complex products, features solely dictated by technical function, and features which offend public morals or policy. This is noted later in the text but should also be included here. Add after first paragraph of this section: The amendment of a design in order to save the design is permissible if the features removed are not protected by Community design law, for example, non-visible component parts of complex products, features which are solely dictated by technical function, and features which offend public morals or policy. The option to amend the Community design is addressed in the second paragraph which also contains a cross-reference to paragraph 5.10 where the pertinent requirements are indicated. MARQUES Designs INV 5.5.2.3 [Individual character] MARQUES would like to repeat its earlier suggestions, as it considers the assessment of the overall impression pivotal for design invalidity proceedings.marques suggests a rewording of the first sentence in this section. Further, MARQUES requests the inclusion of language to reiterate that only visible features can be taken into account. The judgment 21/05/2015, Joined Cases T- 22/13 and T-23/13, Umbrellas relates to the second paragraph of this section and should be mentioned there. MARQUES requests the deletion of the paragraph (and following two paragraphs and pictures) starting, According to the GC on account of the references to comfort: comfort is not a visible feature of a design, and therefore cannot be protected under design law. Replace sentence, Unless globally with The two designs must be comparedglobally, ignoring any excluded features, such as disclaimed features, featuressolely dictated by technical function etc. (see paragraph 5.5.2.1 above). The features of a design to be considered are set out in Article 3(a) of the Regulation, and include the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. Features such as comfort or weight arenot visible, and as such cannot be protected under design law. Next RoundThe Office has added a reference to Umbrellas under The overall impression and to that end the comments have been accepted. The remaining proposals require further analysis and will be dealt with in the next review cycle of the guidelines. MARQUES Designs INV 5.10 [Partial invalidity] MARQUES reiterates its suggestion to add a reference to public policy and morality, for the sake of consistency and completeness. Add, as a third bullet point: where a feature is not protected on the grounds of public policy or morality (Article 9 CDR); or. If it were possible to disclaim or remove such features on the grounds of public policy or morality, in principle, this would only apply when such features are so insignificant as to pass unnoticed. In all likelihood, the identity of the design is not usually maintained upon disclaiming or removing such features. Therefore, these scenarios are already covered by the third bullet point. Moreover, the KC Designs notes that to the best of its knowledge no case of partial invalidity relating to such feature has ever arisen before the office.
s APRAM Designs EXA Paragraph 2.7.2.5 has been deleted for a reason we do not know. We consider that it should be maintained. We suggest moving the deleted paragraph to point 6.2.5 of the, within the part corresponding to the EXAMINATION OF APPLICATIONS FOR REGISTERED COMMUNITY DESIGNS. APRAM Designs INV Second paragraph of pt 3.1 says: For other means of filing an application (Article 52 CDR), the Office provides a form (Article 68(1)(f) CDIR) that can be obtained upon request. Before, it was possible to download it. We consider that this change is inconvenient for the users that does not wish to use the user area of the EUIPO. We suggest to maintain the former wording: For other means of filing an application (Article 52 CDR), the Office provides a form (Article 68(1)(f) CDIR) that can be downloaded from the Office s website. Out of ScopThe KC Designs notes that all forms are available on-line using the e-filing service. With built-in help and search options the Office s online forms make it easier to file an application. The Office s Forms and Filings page contains all our online forms, as well as the PDF forms for those services not yet covered by an online solution. The decision of the Office to no longer make downloadable forms available online is because these forms are no longer updated, due to the availability of new technology and online filing. However, users may obtain the paper version of these old forms upon request to the Office. The availability of the paper forms is a decision that has been taken at an Office level, and is out of scope of the review of the guidelines. ECTA Designs EXA 5 Additional Requirements Regarding the Representation of the Design The purpose of the graphic representation is to disclose We recommend replacing this term with the term visual representation (in line with wording of Common Practice (CP6)). ECTA Designs EXA 5 Additional Requirements Regarding the Representation of the Design The meanings of the terms visual and graphic are largely overlapping. Whilst the wording of the Common Practice (CP6) favours visual, the established wording of the is derived, inter alia, from Article 4(1) CDIR. For the time being, the KC Designs prefers to maintain the current wording in English but will bear the suggestion in mind for future revisions across the various language versions of the. It is not clear what the preference is supposed to add to the recommendation given in accordance with CP6. Use of aspect views of the design is recommended. We recommend to supplement this wording as follows: Use of aspect view(s) of the design is recommended and preferred. This is to make it consistent with the later discussion where only one aspect view is sufficient. ECTA Designs EXA 5 Additional Requirements Regarding the Representation of the Design...and encompass the following: perspective view, front view, top view, right side view, left side view, back view and bottom view. We recommend revising as follows:.and encompass the following: perspective view(s) The pictures show 2 perspective views. ECTA Designs EXA 5.2 Consistency of the views Next RoundThe KC will take this suggestion on board during a future revision cycle. (last paragraph) In accordance with the Common Practice (CP 6), and as regards. We recommend adding a subtitle as follows: 5.2.1 Combination of several means of visual representations In accordance with the Common Practice (CP 6), and as regards. ECTA Designs EXA 5.2 Consistency of the views (last paragraph) it is recommended, in accordance with the Common Practice (CP6), that a design be represented using only one visual format (e.g. a drawing or a photograph). Whilst the suggested addition explains the reasons for the Common Practice (CP6), in accordance with the very wording of the respective common communication, it may also invite applicants to consider an overall impression test within the meaning of Art. 6 CDR to be relevant for the combination of several means of representation. Therefore, the KC Designs prefers to omit this reference which is given, in any event, as a recommendation only. We recommend adding the wording as follows at the end of the sentence: it is recommended, in accordance with the Common Practice (CP6), that a design be represented using only one visual format (e.g. a drawing or a photograph) so as to avoid disclosing aspects that can contribute to a different overall impression.
s ECTA Designs EXA 5.2 Consistency of the views (last paragraph) Therefore, the following combination of a drawing and a photograph depicting a vehicle toy, as shown in the Common Practice (CP6), should not be filed: We recommend further clarifying this wording under the CP6. Does this mean that cannot (not allowed to) be filed or is this not recommended under the CP6? ECTA Designs EXA 5.2.2 Exploded views Exploded views are views where parts of a product are shown disassembled, to clarify how they fit together. We recommend revising as follows: 5.2.2 Exploded views Exploded views are views where parts of a product are shown disassembled, to clarify how they the parts fit together. ECTA Designs EXA 5.2.7 Sets of articles A set of articles is a group of products of the same kind that are generally regarded as belonging together and are so used. See the example below. The current version of the guidelines shows only one example: the chessboard. The proposed change contained in the draft version of the guidelines is a simple formatting issue in identifying the RCD number. There are 2 examples shown, twice a chessboard. In the prior version there was a chessboard and tableware. ECTA Designs EXA 5.2.8 Variations of a design "Sets of products should not be confused with variations of a design. Different embodiments of the same concept cannot be grouped in a single application because each embodiment is a design on its own, as in the example below. The current version of the guidelines shows only one example. The proposed change contained in the draft version of the guidelines is a simple formatting issue in identifying the RCD number. There are 2 examples shown. We thus recommend revising as follows: 5.2.8 Variations of a design "Sets of products should not be confused with variations of a design. Different embodiments of the same concept cannot be grouped in a single application because each embodiment is a design on its own, as in the examples below. ECTA Designs EXA 5.2.10 Elements external to the design See, for instance, the following two RCDs, in which the inclusion of a hand in one of the views serves the purpose of illustrating how the product in which the design is We recommend adding a sentence in regard to the second example (ice car on the street). ECTA Designs EXA 5.3.1 Broken lines "Broken lines consist The general paragraph 5.3 on the use of visual disclaimers states that representations showing only the claimed design are preferred. Furthermore, where a disclaimer is used, broken lines are recommended. Only when these cannot be used due to technical reasons, other types of disclaimer may be included. We recommend adding a following sentence in this section: 5.3.1 Broken lines If a disclaimer is used, broken lines are recommended. Broken lines consist
s ECTA Designs EXA 5.3.2 Blurring "Blurring is a type of visual disclaimer that consists in obscuring the features for which protection is not sought in the drawings or photographs of a design application The general paragraph 5.3 on the use of visual disclaimers states that representations showing only the claimed design are preferred. Furthermore, where a disclaimer is used, broken lines are recommended. Only when these cannot be used due to technical reasons, other types of disclaimer may be included. In view thereof, it is not merited to reiterate these clear recommendations in the specific paragraphs on the types of disclaimers. We recommend adding the following sentence in this section: 5.3.2 Blurring Although broken lines are the preferred disclaimer, if they cannot be used, the use of blurring could be an option. "Blurring is a type of visual disclaimer that consists in obscuring the features for which protection ECTA Designs EXA 5.3.3 Colour shading "Colour shading is a type of visual We recommend adding the following sentence in this section: 5.3.3 Colour shading The general paragraph 5.3 on the use of visual disclaimers states that representations showing only the claimed design are preferred. Furthermore, where a disclaimer is used, broken lines are recommended. Only when these cannot be used due to technical reasons, other types of disclaimer may be included. In view thereof, it is not merited to reiterate these clear recommendations in the specific paragraphs on the types of disclaimers. ECTA Designs EXA 5.3.4 Boundaries Although broken lines are the preferred disclaimer, if they cannot be used, the use of colour shading could be an option. "Colour shading is a type of visual "Boundaries are a type of visual disclaimer We recommend adding the following sentence in this section: The general paragraph 5.3 on the use of visual disclaimers states that representations showing only the claimed design are preferred. Furthermore, where a disclaimer is used, broken lines are recommended. Only when these cannot be used due to technical reasons, other types of disclaimer may be included. In view thereof, it is not merited to reiterate these clear recommendations in the specific paragraphs on the types of disclaimers. 5.3.4 Boundaries Although broken lines are the preferred disclaimer, if they cannot be used, the use of boundaries could be an option. ECTA Designs EXA 5.3.4 Boundaries "Boundaries are a type of visual "Boundaries are a type of visual disclaimer used in drawings or photographs of a Community design application to indicate that no protection is sought for the features not contained within the boundary. The current text of the originates from the Common Practice (CP6). There is no sufficient reason to depart from the wording. We recommend revising as follows: Boundaries are a type of visual disclaimer used in drawings or photographs of a Community design application to indicate that no protection is sought for the features not contained within the boundary. ECTA Designs EXA 5.4 Explanatory text, wording or symbols This heading should be in bold: 5.4 Explanatory text, wording or symbols ECTA Designs EXA 6.1.1. identification of the applicant and its representative The names of legal entities must be given in full and only its legal form may be abbreviated.. Next RoundThe current text corresponds to the text on applicants in EUTM application proceedings, see paragraph 7.1. of the, Part B, Examination, Section 2, Formalities. In order to avoid discrepancies between the two sets of, the suggestion will be considered in the next revision cycle in parallel with said other guidelines. We recommend revising as follows: The names of legal entities must be given in full (statutory name) and only its legal form may be abbreviated..