Your humble servant was honoured to be present and speaking at the recent conference organised by OHIM in Alicante to celebrate 10 years ofthe Registered Community Design.  

There was much tweeting of the conference by your correspondent, @OAMITWEETS, and others (see the hashtag #RCD10), and the presentations themselves will shortly be present on the conference website where the speaker has consented. 

Sir Robin Jacob attended the conference, and championed the idea that the conference should not be retrospective, looking back over the past 10 years, but rather should look to the future and see how the system could be improved to be made even better.  This idea was taken up by the OHIM president António Campinos, so that with commendable celerity a suggestions box appeared.  This correspondent thought that it would be good to share with the Class 99 readership his proposals, starting with the probably rather uncontroversial, and ending with the positively polemical. 

1)      End the seven representation limit 

OHIM places an arbitrary limit of seven representations per design.  While this is adequate in relation to a simple design, it fails in the case of designs where more than one perspective view is needed, where one or more enlarged views are required, where exploded views are appropriate, or in the case of kinetic or modular designs.  More particularly, application regularly arrive from jurisdictions like Japan where the local office mandates particular views, even when uninformative, and these can regularly contain 10 to 15 representations.  It is time-consuming and unproductive to analyse these representations to simply re-order them to conform to the limit, and mistakes can easily be introduced by this process. 

I therefore propose either to raise, or completely remove, the limit.  It may be necessary to keep some high limit to avoid applicants using a ridiculous number such as 100.  

 2)      Publish the description, and increase its significance

Article 36 of the Community Design Regulation states that the description “shall not affect the scope of protection of the design as such”.  Opinion is divided among practitioners whether this means that the description is completely ignored, or whether it can be used to interpret the representations, albeit not to give them a meaning that they do not already potentially have.  Your correspondent was informed by a German judge who has heard hundreds of designs cases that she had never been presented with a description for consideration. 

I consider that certainty would be increased by allowing the description to be used to clarify the representations, for example by explaining any drawing conventions used (eg that the shaded portion is disclaimed).  The description should then be published, and Article 36 amended accordingly.  The description should not be permitted to be used to change the design from that shown in the representations, only to clarify it.  Thus, for example, the description would not be permitted to say “The design is that shown in the black-and-white drawings, except that it is coloured red”.  In such a case the drawings themselves would have to be red. 

I appreciate that there may be an issue concerning translation.  Since the description will be short and generally use routine phrases, I hope that this can be addressed.  

3)      Limit the registration to the named product 

There is an unhappy inconsistency at the heart of EU Design Law which, in the opinion of your correspondent, will continue to create unhappiness and uncertainty for as long as the law remains in its current form. 

Before the Community design system, many European countries limited the scope of a design registration to the situation where the design was applied to the product named in the registration.  The new law in 2002 changed this, and removed the product limitation, expanding the scope of protection of the registration, as well as the relevant prior art. 

However, numerous commentators have pointed out that this sits very unhappily with the aspects of EU design law where the product is still clearly relevant, for example in establishing the degree of freedom of the designer, and the “circles specialised in the sector concerned”.  There has been debate as to how the product is permitted to be identified, given that the named product shall, according to Article 36 “not affect the scope of protection of the design as such”.  The best view is possibly that the product is permitted to be identified from the representations, but this is hardly satisfactory. 

The hugely expanded scope of protection from one product to everything causes theoretical and practical problems, and yet is probably rarely important – usually the proprietor wants to stop competing products, where the product definition will be the same.  Therefore the mischief is disproportionate to the benefit. 

I don’t expect that this suggestion will be well received, but I do think it makes sense.  It places the whole system on a much more sensible and solid foundation.  The detachment of the design from the product was always an odd idea with both theoretical and practical problems, and it is time for it to be ended.