Registered designs only have legal effect in the country in which they are registered (territoriality principle). Designs registered at the German Patent and Trade Mark Office (DPMA) are protected in the Federal Republic of Germany only.
If you need protection for your design outside Germany the following options are available to you:
- an application for a Community design and
- an international application
Forwarding of Design applications by the German Patent and Trade Mark Office
You can file applications for registration of a Community design or international registration, at your choice, either directly at the competent offices – the European Union Intellectual Property Office (EUIPO) as well as the World Intellectual Property Organization (WIPO) – or via the German Patent and Trade Mark Office.
For forwarding an application to EUIPO or WIPO, a fee of 25 euros per application is charged by the DPMA.
With regard to an application for the registration of a Community design, the day on which the application is received at the DPMA is deemed the filing date of the Community design.
With regard to an international application, the filing date depends on the specific act of the Hague Agreement for the International Registration of Industrial Designs. If the international application is based only on the Geneva Act, the day of receipt at the DPMA is relevant for the filing date provided the application is received by WIPO within one month. In all other cases, the receipt of the application by WIPO is relevant for the filing date.
European Design protection
The registered Community design
The registered Community design provides uniform protection in all member states of the European Union with a single application.
The European Union Intellectual Property Office (EUIPO) in Alicante (Spain) is responsible for the registration of Community designs. Information on the application procedure is available on the homepage of EUIPO.
The effects of protection of the registered Community design are similar to those of the design registered by the DPMA.
The unregistered Community design
No application for registration is required for an unregistered Community design. Protection is automatically conferred by way of disclosure, that means when the design is first made available to the public within the European Union. A design is disclosed to the public by exhibiting it, offering it or otherwise publishing it (e.g. media advertising campaign).
The first disclosure can also mean the publication of a German design in the Design Gazette (Designblatt).
The unregistered Community design provides only limited protection. As the designer or his successor in title, you only have the right to prohibit others from copying your design provided that, when creating the rival design, they had knowledge of your design. Independent parallel creations cannot be challenged. Furthermore, the duration of protection is limited to three years.
If you rely solely on the protection provided by the unregistered Community design, you must provide proof of the conferring of protection and the copying of the design in any later infringement proceedings. Therefore, it is essential that you document the disclosure of your design.
The international registration
Under the Hague Agreement Concerning the International Registration of Industrial Designs, it is possible to register a design in an international register.
The Hague system consists of various acts (Hague Act, Geneva Act), which individual countries, including Germany and France, but also the European Union have become party to. It does not provide “worldwide” protection, but only covers those contracting parties designated in the application.
The international application is processed by the International Bureau of the World Intellectual Property Organization (WIPO). An earlier national application is not necessary. Forms and information in English, French and Spanish are available on the WIPO homepage.