Design Protection in the European Union

Community Design law - introduction and key issues

• What is a design, what is a product, what are component parts of complex products?
• Subject matter of a design: 'what you see is what you get'
• Classification, indication of product and description
• Unitary character and territorial effect

Application proceedings before the EUIPO

• Filing requirements: advantages, best practice, international registrations
• Priority claims: substantive requirements, formalities
• EUIPO practice: formalities examination, deficiencies, reply to office actions
• Latest Board of Appeal case-law

Invalidity proceedings before the EUIPO

• Grounds for invalidity: novelty, individual character, earlier rights
• Consequences of invalidity
• How to show invalidity: facts, evidence and arguments
• Interplay with infringement issues: tactics, counterattacks, stay of

• Latest case-law from the Boards of Appeal and the General Court of the EU

Infringement and defences to infringement

• Presumption of validity of a registered Community design
• Scope of protection and freedom of the designer (degree and constraints)
• Right to use and right to prevent third party use (infringing acts)
• Defences to infringement: private use, prior use, exhaustion, right to make citations
• Lack of unity as a valid defense

Unregistered Community Designs

• Establishing protection (disclosure in the territory of the EU)
• Protection against copying
• Term of protection

Infringement actions: jurisdiction and sanctions (remedies)

• Competent courts, international jurisdiction, forum shopping
• Sanctions (injunction, damages, other remedies) and applicable law
• Territorial scope of sanctions
• Provisional measures
• Possible defences and counter-attacks (counterclaim, request for a declarationof invalidity or action for declaration of non-infringement)

CJEU case-law update

Case study: 'DOCERAM' revisited ('Paper dispenser', 'LEGO')