Registering a Community design

  1. What is the Community model
  2. How to file a Community model application
  3. The procedure of registration
  4. The appeal against the Office’s decisions

  5. Withdrawal and limitation of the application

  6. Assignment of the model
  7. Regulations

1. What is the Community model

The Community model instituted by the Regulations (CE) no. 6/2002 of 12.12.2001 allows to obtain with a single model application a model valid in all the territory of the European Union. The Community model is a single title in the sense that it can be registered, assigned, withdrawn, declared null or expired and its use can be banned only for the whole Community and not for single states.

Legitimated for the registration of a Community model are the natural persons having citizenship or domicile in a member state, the legal persons having their registered office or a stable organization in a member state and also the natural or legal persons having citizenship, domicile, registered office or a stable organization in one of the states adherent to the Paris Convention or to the Agreement that institutes the World Trade Organization (GATT). This system of registration coexists with the system of registration of national and international models according to The Hague agreement.

Before filing a model it is necessary to choose how to file it. If you have not done it so, we suggest you read the section Registering a model, which gives useful advice on the matter.

Once the preliminary analysis has been done carefully and, as it is always advised, with the help of an expert consultant in the field, the filing of the application for registration can be done.

2. How to file a Community model application

The application for registration of the Community model can be filed with the Office for Harmonization in the Internal Market (OHIM) that has its head office in Alicante (Spain), personally, by post, by courier or by fax. To file an application for registration it is necessary to fill in a specific form that is downloadable also from the Internet in which the information on the applicant, who will become the holder of the model, the title of the model and the indication of the class of goods to which the model belongs on the basis of the Locarno Classification have to be indicated, paying attention to checking which the edition in force is at the moment of the filing of the application.

One or more samples of the model will have to be attached to the application, depending on whether it is a single model or a multiple model. Of each model more than one view can be filed (plan, lateral, axonometric). The filling in and the sending of the application for registration of a Community model can appear to be simple but it is good to remember that the difficulty, often high, lies in the preliminary choices that have to be made BEFORE filing the application.

3. The procedure of registration

Once the application for registration has been filed, an application number and date are obtained, and from that date the examination of the file starts, which is basically formal and technical.

The OHIM does not do any search to evaluate that the model is new and has individual character.

For designs, unlike trademarks, no opposition phase is foreseen, therefore models are often granted very quickly.

The model has an initial duration of 5 years that start from the filing date but can be renewed from five years in five years by paying a specific fee and postponing the duration thereof up to a maximum of 25 years.

4. The appeal against the Office’s decisions

Against the regulations with which the office refuses, totally or partially, an application filed, it is possible to file within two months an appeal with the Appeals Commission. The appeal will have to be adequately motivated in facts and in law. Against the decisions of the Appeals Commission appeal can be filed with the First Instance Tribunal and then with the Supreme Court. Given the nature and the difficulty of the procedure it is necessary to be represented by an expert in the subject.

5. Withdrawal and limitation of the application for registration

At any moment between the filing of the application and the grant of the model, who has filed the application can always withdraw it (and therefore renounce to it) or limit it, for example by reducing the number of models in a multiple model. It may be necessary to withdraw or limit the model, for example, when there is a conflict with a third party that claims pre-existing rights or when it has been kept in secret state and the publication thereof wants to be avoided. An amendment not just allowed but due is that relative to the change of address of the holder.

Changes in the registry, withdrawals and limitations have to be communicated to the office by filing a specific petition for recordal.

6. Assignment of the model

A model, apart from used, can be assigned or licensed to third parties. In the first case, it is something analogous to a sale, by which the model changes “owner”; in the second case, it is a sort of “rent” with which the use to third parties is granted.

The model assignment contracts are very delicate. It is necessary in fact to have a wide knowledge of the model that is being sold, but above all purchasing, therefore a technical analysis is appropriate for checking that the model is alive, that there are no potential or real conflicts, that there are no co-existence agreements and the like. All that is obtained by making the model undergo an accurate analysis (the so-called due diligence) without which there is the risk of purchasing an “empty box”. Another relevant aspect is that of the value of the model, something that is not easy to assess without the help of an expert. The assignment, or license, of a model has to be recorded with the OHIM with a specific petition for recordal. The recordal is necessary for the effectiveness in front of third parties and above all to safeguard the acquiring or licensee party.

7. Regulations

Regulations (CE) no. 6/2002 of 12.12.2001