Posts Tagged ‘OHIM’

Another one of those lacuna in European design law (yay!).

Under European design law the designer has a right to be cited:

Article 18 – Right of the designer to be cited
The designer shall have the right, in the same way as the applicant for or the holder of a registered Community design, to be cited as such before the Office and in the register. If the design is the result of teamwork, the citation of the team may replace the citation of the individual designers.

However, you can still file, and receive a certificate of registration for, a design where the designer is not cited. For example, the Manual for The Examination of Registered Community Designs states in section 5.2.4:

“The citation and the waiver or the absence of any indication regarding the designer(s) is merely optional and is not subject to examination”.

The question is, then: what could happen under national design law if designer information was omitted?

Having a quick look at the commentary the jury would appear to be out.  The Community Designs Handbook states in section 4-051 that one possible remedy is:

“an amendment at the behest of the designer”.

and that it is:

“safest to name the designer where possible”

with an eye to US design rights where the designer must be named.

Under UK Design Law a designer does not need to be named (in fact there is no mechanism to do this). So in the UK at least, as long as the ownership of the design is clear, there would appear to be no consequence if designer information was omitted. Whether this applies across other European countries though is unknown. If any Design Attorneys in other European Countries have any observations please feel free to add them to the comments.

[Of course: this discussion is independent of one on ownership, which is assumed to be taken care of here. This is a separate important factor that needs to be checked carefully.]

It is possible to have a European multiple design application with designs in different Locarno classes. The conditions is that all the designs must relate to ornamentation.

(C) Puffinmuffin on WikiCommons

(C) Puffinmuffin on WikiCommons

The Community Design Handbook and the OHIM Examination Guidelines refer to a “checkbox on the form” to indicate whether a design is ornamentation. However, this isn’t actually on the form (downloadable or online – D’OH).

However, I have been informed by OHIM that where you the product classes contain the word “ornamentation”, or where this is indicated in an accompanying description, you should not receive a unity of design objection even if you have different Locarno classes for multiple designs in a multiple design application.

See:

Article 37 Multiple applications

1. Several designs may be combined in one multiple application for registered Community designs. Except in cases of ornamentation, this possibility is subject to the condition that the products in which the designs are intended to be incorporated or to which they are intended to be applied all belong to the same class of the International Classification for Industrial Designs.

Guidelines (as above link):

8.2. Unity of Class (Art. 37(1) CDR)
Except in cases of ornamentation (see below) all products indicated for each and every design in a multiple application must fall in the same class of the Locarno Classification.

8.3. Ornamentation (Art. 37(1) CDR)
Ornamentation is an additional and decorative element capable of being applied to the surface of a variety of products without significantly affecting their contours.

In the case of a multiple application in which all designs are for ornamentation, the “unity of class” (see above) does not apply.

Whether an application concerns ornamentation or not is indicated by the applicant either by ticking the corresponding box in the form provided by the Office or by providing an equivalent information where the applicant uses his own form. The decision of the applicant is not subject to in-depth examination. However, an objection will be raised where prima facie the examiner has strong doubts as to whether the design is for ornamentation.