As one of the world's largest economies and one of Amazon's major e-commerce markets, applying for and protecting design patents in Europe is of great significance, especially for cross-border e-commerce. Similarly, if there are existing design patents held by others in Europe for exported products, in order to ensure the continuous normal export of products and reduce or deal with the risk of infringement, filing a patent invalidation for the existing design patent is a very effective measure.
According to the Council Regulation (EC) on Community Designs, a design means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation.
Different from China, designs in the European Union include two forms of protection. One is the Registered Community Design (RCD); the other is the Unregistered Community Design (UCD).
The Registered Community Design is the design that we usually refer to as applying for registration with the European Union Intellectual Property Office (EUIPO). Once registered, the RCD right holder can enjoy the effective exclusive right to use the design within the 27 member states of the European Union. No one may use, manufacture, sell, offer for sale, import, export, or store products that contain the RCD of others or are substantially the same as the RCD of others without permission. That is, the RCD has exclusive rights and can prevent third parties from using the design within the European Union. The term of the RCD is calculated from the date of application, and it needs to be renewed every 5 years, with a maximum protection period of 25 years.
However, it should be noted that in the European Union, unregistered designs can also obtain a certain degree of protection. That is, within 3 years from the date when the design is first made available to the public or disclosed within the European Union, no one may commercially manufacture, sell, offer for sale, market, import, or export products that contain the UCD of others without permission.
Compared with the RCD, on the one hand, the protection period of the UCD is only 3 years; on the other hand, during the protection period, the UCD right holder does not enjoy the exclusive right to use the UCD. The UCD right holder can only restrict others from using it in a plagiarized manner, and cannot claim infringement against the same design independently created by others.
The Registered Community Design (RCD) in the European Union adopts a registration system. That is, the European Patent Office only examines whether the registered object meets the definition requirements of a design and whether it violates public order and good morals, and does not conduct examinations on novelty, distinctiveness, or whether it infringes on the prior rights of others.
Anyone who believes that the RCD does not meet the authorization conditions can apply to the EUIPO for a declaration of invalidation. Since Community designs are not examined for substantive authorization conditions (novelty and distinctiveness), it may lead to some right holders directly using RCDs with poor stability to file complaints or infringement lawsuits against others. Once a complaint is filed, in the mildest case, the Listing needs to be removed from the shelves, and in the severest case, the store needs to be closed and the account frozen, which will cause great economic losses to the enterprise. Therefore, when facing a complaint or an infringement lawsuit, it is recommended that enterprises actively respond to the lawsuit, especially considering filing a patent invalidation for the RCD involved in the case first. Once invalidated, it is deemed that the design right did not exist from the beginning.
According to the RCD protection regulations, the main reasons for filing a patent invalidation for Community designs include the following:
(1) The design does not conform to the definition of a Community design in Article 3 of the protection regulation;
(2) The design lacks novelty and distinctiveness;
(3) The design is the only design determined by the technical function of the product using the design;
(4) The person applying for registration has no right to enjoy the design;
(5) It conflicts with the prior rights of others;
(6) It uses without authorization the special signs of others or works protected by copyright law.
Among them, similar to China, searching for and attacking the novelty and distinctiveness of the RCD is the main invalidation strategy. According to Article 5 of the Protection Regulation, novelty means that before the filing date (if there is a right of priority, before the priority date), no identical or substantially similar design has been filed for registration, registered, or disclosed in any other way worldwide. According to Article 6 of the Protection Regulation, distinctiveness means that compared with existing designs, the design applied for registration gives an informed user a different overall impression.
When searching for the novelty and distinctiveness of the RCD, the following aspects can be mainly focused on for searching:
(1) Search whether there are earlier registered design patents;
(2) Try to find sales links, sales records, etc. before the filing date of the RCD;
(3) Look for relevant exhibition information, news, promotional videos, etc. before the filing date of the RCD.
However, when filing a patent invalidation for the EU RCD, the following points need to be noted:
(1) Grace Period for Non-loss of Novelty
According to the provisions of China's Patent Law, within six months before the filing date of an application for a patent for an invention-creation, the invention-creation does not lose its novelty under any of the following circumstances:
(i) It is first publicly disclosed for the purpose of public interest when there is a state of emergency or an extraordinary situation in the country;
(ii) It is first exhibited at an international exhibition sponsored or recognized by the Chinese government;
(iii) It is first published at a prescribed academic or technical conference;
(iv) Its content is disclosed by others without the consent of the applicant.
That is, except for the above-mentioned special circumstances, other prior public disclosures made by the design patent right holder themselves will affect the novelty of the design patent application. Therefore, in the invalidation procedure of Chinese design patents, the prior public disclosure/publication acts of the design patent right holder on Internet platforms such as their official website, WeChat official account, and Weibo are one of the key objects of search.
According to the EU Design Protection Regulation, filing an RCD application within one year from the date when the designer publicly discloses the design will not lead to the loss of novelty. On the one hand, the grace period for non-loss of novelty is one year, and on the other hand, there is no strict restriction on the form of the designer's prior public disclosure. That is, the sales, exhibitions, and promotions of the designer within one year before the filing date of the RCD will not lead to the loss of novelty of the RCD. Therefore, when searching for the sales, exhibitions, promotions, and other acts of the RCD right holder themselves, attention needs to be paid to the time of their prior public disclosure acts.
(2) Unregistered Designs
As mentioned before, even if not registered, an unregistered design can be obtained and a certain degree of protection can be obtained within 3 years from the date when the design is first made available to the public or disclosed within the European Union. Therefore, when filing a patent invalidation for the RCD, special attention also needs to be paid to whether the prior evidence is likely to constitute the unregistered design of the RCD right holder.
(3) Evaluation Idea of Distinctiveness
Similar to China, when evaluating the distinctiveness of the EU RCD, it is also necessary to consider the similarities and differences between it and existing designs and whether it gives an informed user a different overall impression. If there are only minor differences between the disputed RCD and existing designs, and these differences are not sufficient to give an informed user a different overall impression, then the RCD is considered to have no distinctiveness compared with existing designs.
Therefore, when writing the reasons for the invalidation declaration, a detailed comparison and analysis can be first made of the similarities and differences between the disputed RCD and existing designs. Then, combined with the degree of design freedom of the designer in the product field of the disputed RCD and whether the differences between the disputed RCD and existing designs will give an informed user a different overall impression, a detailed review can be made of the distinctiveness of the disputed RCD design.
A thorough understanding of the EU design application and patent invalidation system plays an important role for enterprises to better deal with EU design patent infringement complaints or lawsuits, and further safeguards the export of enterprise products. At the same time, when applying for EU design patents, domestic applicants can also make full use of the European unregistered design system and the grace period for non-loss of novelty.
Nanjing
Suzhou
Changzhou