Unregistered Community Design Right: Must First Disclosure Occur Within The EU?

This article was taken from the Venner Shipley Newsletter edition 20

Unregistered Community Design Right (UCDR) provides a 3-year period of protection for designs within the EU from the date of first disclosure of the design.

Date of Commencement of UCDR

According to the Community Design Regulation (CDR), Unregistered Community Design protection commences from the ‘date on which the design was first made available to the public within the Community’ ­ i.e. ‘if it has been disclosedÉ such that Éthese events could reasonably have become known to circles specialised in the sector concerned, within

the Community’.

The above wording has raised questions as to whether UCDR would be triggered by any disclosure that became known in the Community, whether or not the disclosure itself was made within the Community. The plain wording of the Regulation would suggest that the disclosure only needs to be known within the Community but not actually have occurred within it. Unfortunately, not all European language versions of the CDR are consistent on this matter, as the Danish version of the Regulation actually specifies that the disclosure must have taken place within the Community.

To try to resolve this issue a further article was introduced into the CDR in 2004 which states that ‘a design which has not been made public within the territory of the Community shall not enjoy protection as an unregistered Community Design.’

In spite of this, the question of whether a disclosure must physically occur within the Community for UCDR to commence is still open for debate. However, it would appear that the intention of the new Article is that UCDR will only come into existence as of the date of disclosure of the design within the boundaries of the Community.

The above conclusion has two consequences: firstly, a great deal of legal uncertainty will arise when trying to determine when first publication occurs within the Community, rather than when first global publication occurs (e.g. individuals may bring goods into the EU from, say, the US); secondly, it brings into question what effect a disclosure outside the Community will have on the novelty of a UCDR that commences based on a subsequent disclosure within the boundaries of the Community.

Novelty of UCDR

On the face of it, it may seem that disclosure of a design before UCDR commences would destroy the novelty of the design. However, the wording of the CDR which dictates how the novelty of a design is determined suggests otherwise because it states that a design is ‘new if no identical design has been made available to the publicÉ before the date on which the design for which protection is sought has first been made available to the public’.

In this context, a design is deemed to have been made available to the public if it has been disclosed before the date referred to in the quotes in the previous paragraph except where these events could not have become reasonably known within the Community.

However, as it is commonly accepted that virtually all disclosures will become known within the Community, the date at which novelty is assessed is the date the design is first disclosed anywhere, and so a design first disclosed by a designer outside the Community would not invalidate the novelty of an UCDR for the design commencing when the design is subsequently disclosed within the Community.

Conflicting German Decision

A decision in a regional German court came to a different conclusion. A design was first disclosed in the US in May 2002, then subsequently disclosed in the EU in October 2002. The court held that UCDR did not commence until October 2002 (consistent with the conclusion above) but that the May 2002 disclosure in the US rendered the UCDR lacking in novelty.

The German court stated that ‘a design is deemed novel if no identical design has been made available to the public prior to the date on which the design is first protected, i.e. made available to the public for the first time.’

This statement is not in accordance with the CDR which, as discussed above, does not mention the commencement date of UCDR as being relevant for the assessment of novelty.

Uncertain implication of the decision

Consistent with the apparent intention of the additional CDR article, the court dismissed the suggestion that the UCDR could have commenced with the US May 2002 disclosure, even though it may be ‘known to the circles specialised in the sector concerned, operating within the Community’. However, the court’s decision on novelty appears in conflict with the exact wording of the CDR.

The court’s decision implies that unless a design is first disclosed within the Community, then no UCDR can exist, since the non-Community disclosure will automatically render any subsequent UCDR not novel. However, it seems unlikely that this is the intention of the Commission regarding the purpose and function of UCDR and seems an overly dictatorial standpoint for the EU to assume over companies and designers. Even EU-based companies may well wish to first disclose their designs outside the EU, but in doing so, would lose valuable protection.

This issue will not be concluded for certain until a case reaches the European Court of Justice, or the Commission make a further clarifying amendment to the CDR.

Alex Brown 02 Oct 2006

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