Crossing borders: protecting your designs internationally and in the European Union

Is your company growing and are your products attracting attention beyond France's borders? That's great news! But be careful: if you've taken care to protect the appearance of your creations by registering a design or model in France with the INPI, this protection stops at the limits of the national territory. To effectively defend your design on foreign markets and prevent copying by local or international competitors, you need to consider protection strategies adapted to this international dimension.

Protecting a design abroad can seem complex, with a multitude of national laws and potential procedures. Fortunately, international systems and, above all, a unified European system exist to considerably simplify your procedures and offer you extensive protection. Understanding these mechanisms is essential if you are to secure your export markets and add value to your creations on a global scale. This article explores the main avenues open to you for protecting your designs outside France, with particular emphasis on the powerful tools available within the European Union.

The foundations of international protection: territoriality and facilitation tools

Before looking at specific systems, it is important to remember a fundamental principle of industrial property law.

The principle of territoriality

A design right (like a patent or trademark) is territorial. This means that a registration obtained in France only has effect on French territory. It does not give you any rights in Germany, Spain, the United States or elsewhere. To be protected in another country, you must, in principle, obtain protection in accordance with the rules and procedures of that specific country. Filing an application in each country where you plan to market your products can quickly become a cumbersome, costly and complex process to manage. Fortunately, international agreements make this easier.

The Paris Convention and the right of priority

Most countries in the world are members of the Paris Convention for the Protection of Industrial Property. This convention lays down key principles, the most useful of which for international extension is the right of priority.

When you register your first design or model (for example, in France at the INPI), you have a period of 6 months to file the same application in other member countries of the Convention, claiming the date of your first filing. In practical terms, if you file in France on 1 March, you have until 1 September to file in Germany, Italy, the USA, etc., claiming the benefit of the 1 March priority. The advantage? Your foreign filings will be examined as if they had been made on March 1. So if an identical creation is disclosed by a third party (or even by you) between 1 March and the date of your foreign filing (e.g. 15 August), this disclosure cannot destroy the novelty of your foreign application. The right of priority therefore secures your international extension for 6 months.

The Hague Agreement: towards simplified international filing

To avoid having to multiply national depositsanother international tool exists: the The Hague System for the International Registration of Industrial Designsmanaged by the World Intellectual Property Organization (WIPO) in Geneva.

This system makes it possible to single application filed with the WIPO (directly or via the INPI), to apply for protection of your design in a large number of countries and regional organisations (including the European Union) that are party to the Arrangement. You file a single application, in a single language, and pay a single set of fees (which vary according to the designated countries). WIPO will then forward the application to the offices of the countries you have designated.

Please note that the Hague System is an international centralised procedureHowever, it does not issue a single worldwide title. Your international application results in a bundle of national (or regional, such as the EUCD if you designate the EU) rights, the validity and scope of which remain subject to the laws of each designated country. However, it greatly simplifies administrative procedures and often reduces costs compared with separate national filings, especially if you are targeting several countries.

The European Union Design (EUCD): a single form of protection for the whole of the EU

If your main market or natural area of expansion is the European Union, you have a particularly powerful and appropriate tool at your disposal: the European Union Design (formerly known as the Community Design).

The advantages of a single ticket

Established by a European regulation (EC regulation n°6/2002), the EUMD is a unique intellectual property title which produces the same effects throughout the territory of the 27 Member States of the European Union. Instead of filing 27 national applications (or designating 27 countries via The Hague), a single application will suffice to obtain uniform protection throughout the EU.

The benefits are considerable:

• Single procedure : A single application must be filed with the European Union Intellectual Property Office (EUIPO), based in Alicante, Spain.
• Unique legislation : The conditions of protection, duration and scope of rights are defined by the European Regulation and are identical throughout the EU.
• Simplified management : A single title to renew and manage (licences, assignments, etc.) to cover a market of more than 450 million consumers.
• Centralised defence : In the case of counterfeiting, a single action before a specialised court (in France, the Tribunal Judiciaire de Paris) can result in a ruling valid throughout the EU.

Two types of protection coexist: registered and non-registered

A major originality of the European system is that it provides two forms of protection for designs, which can follow on from or complement each other.

• The Registered European Union Design (RUED) :
  • Obtained : Requires the filing of an application with the EUIPO and its registration (rapid formal examination, similar to that of the INPI).
  • Duration: Initial protection of 5 years from filing, renewable for periods of 5 years up to a maximum of five years. maximum of 25 years.
  • Scope of the right : Provides operating monopoly. You can prohibit any use (manufacture, sale, import into the EU, etc.) of an identical or similar design (which does not produce a different overall visual impression on the informed observer), even if the third party has created it independently without copying you.
• The Unregistered Community Design (UCD) :
  • Obtained : Protection automatic and freewhich is born at first disclosure (publication, sale, exhibition, etc.) of your design to the public within the European Union. No formalities are required.
  • Duration: Much shorter protection : 3 years only from the date of first disclosure. Non-renewable.
  • Scope of the right : Weaker protection. It allows you to prohibit only the acts of using a intentional copying of your design. You cannot take action against a third party who has independently created a similar design without being aware of yours. The burden of proving copying (and the date of first disclosure) is on you.

Protection conditions

Whether the EUMD is registered or unregistered, the basic conditions for valid protection are the same, as defined by the European Regulation and harmonised with French law:

• New at : No identical design must have been disclosed to the public prior to the reference date (filing date for an EUCD, date of first disclosure in the EU for a SNECD). The grace period of 12 months after disclosure by the creator also applies in order to validly file an EUCD.
• Character : The design must produce an overall visual impression on the informed observer that is different from that produced by any previously disclosed design.

These conditions are assessed at European Union level (the relevant disclosure is that which could reasonably have been known to specialist circles operating in the EU).

Registered EUMD vs. unregistered NEUD: which to choose?

Faced with these two European options, which should you choose? The choice will depend on your strategy, the nature of your creations and their commercial life.

• Opt for the registered EUMD if :
  • You are aiming for long-lasting protection (over 3 years old).
  • Would you like a strong monopoly rightwhich can also be used against similar independent creations.
  • You want a official title easy to prove, to value (licences, assignments) and to defend in court.
  • Your creation has a strong commercial value justifying the investment in filing and renewal fees.
• The DMCNE may be sufficient or a good complement if :
  • Your creations have a very short lifespan (e.g. seasonal fashion collections, event-based products) and investment in a recording is not considered profitable.
  • You wish to quickly test a new design on the European market before deciding to invest in a registration.
  • You need a immediate protection upon disclosure, pending a possible filing.
  • The main risk identified is pure and simple copy rather than similar independent creation.

It is entirely possible, and often sensible, to combine the two. You automatically benefit from the DMCNE for 3 years from the first disclosure in the EU. If, during the first 12 months of this period (the grace period), you decide that the creation deserves stronger and longer protection, you can apply for a registered EUCD. This will then take over for up to 25 years from the date of filing.

Relationship with national laws and copyright law

The European system is part of a wider legal landscape.

Coexistence with national repositories

The EUCD (whether registered or not) does not replace national design systems. It coexists with them. You always have a choice:

• Filing an EUMR for a single protection throughout the EU.
• File a national application (e.g. with INPI in France) if you are targeting the French market only.
• File national applications in a few specific EU countries if those are the only ones you are targeting (although the EUMR is often simpler and cheaper once 2 or 3 countries are targeted).
• File an EUCD AND a national filing (for example, to benefit from an earlier national filing date via a priority).

The rights are independent but may cover the same creation. Rules exist to prevent multiple disputes over the same facts between the same parties before different courts (lis pendens rules).

Cumulation with national copyright

The European Design Regulation (Article 96) takes up the principle of the unity of art: protection by EUCD (registered or unregistered) accumulates with the protection afforded by legislation on copyright of each Member State.

This means that your creation, if it is protected by an EUMD, can also be protected by French copyright if it is original within the meaning of French law, by German copyright if it is original within the meaning of German law, etc. The conditions for obtaining copyright protection (in particular the degree of originality required) remain determined by the law of each country. This combination remains an important advantage, particularly in terms of the potential term of protection offered by copyright.

Managing and defending your European rights

Obtaining a DMUE is one thing, managing and defending it is another.

Nullity of the EUMD

As in the case of a national filing, a registered EUCD can be contested and declared invalid if it turns out that it did not meet the conditions of novelty or distinctiveness, or if it falls under another ground for invalidity (infringement of an earlier trademark, copyright, etc.). Invalidity proceedings may be brought before theEUIPO (administrative procedure) or, in defence of an infringement action, before a court of law. community design court (like the TJ in Paris).

The unregistered DMCNE can also be challenged before these specialised courts (but not before the EUIPO, as there is no registration).

Counterfeit EUMD

If your EUMD (registered or not) is counterfeited somewhere in the European Union, you must take action before the Community design courts jurisdiction. Jurisdiction generally depends on where the defendant is domiciled, or where the infringement is committed. If the court has jurisdiction because of the defendant's domicile (or the plaintiff's if the defendant is outside the EU), its decision (prohibition, damages) may have effect on throughout the EU. If its jurisdiction is based solely on the place of the facts, its decision will be limited to the territory of the Member State concerned.

Choosing the right protection strategy internationally and in Europe, navigating between national filing, the Hague system and the options offered by the European Union (registered or unregistered EUCD) requires a precise analysis of your needs, your markets and the nature of your creations. Our firm, expert in commercial lawguides you through this complex process and assists you in all the steps involved in registering and defending your designs, both in France and abroad.

Sources

• Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs.
• Paris Convention for the Protection of Industrial Property.
• The Hague Agreement Concerning the International Registration of Industrial Designs (and its various Acts).  
• Website of the European Union Intellectual Property Office (EUIPO).
• Website of the World Intellectual Property Organization (WIPO).