Common Guidance on Applying for Design Registrations - Part 1

The offices of the European Trade Mark and Design Network continue to collaborate in the context of the Convergence Programme.  They have now agreed on the first Common Practice of Designs with the aim of giving guidance for the examination procedures on how to:

use appropriate disclaimers;
use types of views;
represent designs in a neutral background; and
the format of views.

(together the "Main Objectives").

The first Common Practice has resulted in the Common Communication ("Communication") for the 'CP6 project'.  The Communication is the first common communication in the area of designs and the 61 page document can be viewed here.

The following are not within the scope of the project: verbal disclaimers, additional elements, priority, disclosure, the number of views a specific design application can include, computer animated representations etc.

This Communication has been made available with the purpose of increasing transparency, legal certainty and predictability for both examiners and users alike. The Communication also sets standards for offices to accept design applications electronically and on paper.

This Common Practice is the first step taken to harmonise design practices and it is the start of a relationship between the IP Offices who have agreed the Communication in the field of designs. EUIPO's Academy will aim to deliver a webinar educating users and examiners on the new Common Practice. This is expected to be in May 2016.

Objective 1 - Use of visual disclaimers

Before the CP6 project was launched, there was no consistency in the way of using visual disclaimers in an application for registration of a design. Although many offices examine design applications and accept visual disclaimers, there were no clear and harmonised rules to assist applicants to disclose their designs correctly. The Communication provides clear advice as to how an applicant can make a valid disclaimer in order to include or exclude a specific feature of the design during the examination period.

Objective 2 – Types of views

An applicant of a design registration is required to file the different types of views for the design. They should be clear, full and detailed disclosure of the design. They can submit additional views subject to the maximum views allowed by each IP Office. The Communication guidance which has been released to all participating Offices aims at helping applicants to file a design correctly with the appropriate type of view while facilitating the work of the examiners. This means that an application for a design is less likely to be delayed or rejected because the applicant has conformed to the correct advice within the Communication.

Objective 3 – Neutral backgrounds

An analysis of the Offices' practices on what was meant by a 'neutral background' showed that there was no common approach or definition and often confused applicants. It prevented the establishment of clear and harmonised requirements meant to help applicants on how to represent their designs correctly on a neutral background throughout the EU. Therefore, in order to assess if a background is 'neutral' the following should considered: use of colour, contrast and shadows.

Objective 4 – Format of views

It was considered that some Offices' have legal constraints regarding the quality standards required for applications received on paper and electronically. Recommendations for representations of the designs filed in the form of photographs or drawings are provided within the Communication. Specifically, the Communication mentions that for drawings, blurry lines, drawings with corrections or deletions and general poor quality should be avoided if their design application is to progress to registration.

Conclusion

In conclusion, the above objectives have been introduced as a method of guiding design applicants of improving their chances if they are to be successful in registering their design. Examiners will certainly find it more helpful that there are set rules in place to refer to when deciding on design applications.