What can be a Eu Design Mark ?
You have just filed a design. What happens next? Is there anything you need to do?
Once we filed the registration to the European Union Intellectual Property Office (EUIPO), your application will be checked by EUIPO’s examiners. Wehn you file your application with Desig-Marks.com the route to registration will be straightforward. Most online filings are registered within a couple of days.
All applications go through a formalities check. When an examiner detects a problem, it is communicated to you or Design-Marks.com for remedying. You are normally given two months to respond to the examiner’s objection (or deficiency letter as we refer to it). If this period is not sufficient, you can request an extension. In general, EUIPO grants a first request for extension automatically. However, a second extension request is granted only if sufficiently and properly justified.
Here are some examples of problems that could arise:
1. The representation you have submitted is not suitable for reproduction, i.e. it is not clear from the representation what the protection sought is for.
You will be asked to send (by post) a clear representation of the design for which protection is sought. The date on which EUIPO receives the representation becomes the filing date.
2. The views you have submitted are inconsistent with each other.
You will be asked to:
- Remove the mismatching view(s) from your application or
- Convert your application into a multiple application for different designs and pay the corresponding fees
3. You are either a company without a place of business or a real and effective establishment in the European Union, or you are an individual whose domicile is outside the European Union and you have not appointed a representative.
We will have to appoint an official EUIPO representative
4. The fees you have paid do not cover all the designs you have applied for.
You will be asked to pay the outstanding fee or remove some of your designs.
5. You have failed to indicate a product or the indication is erroneous.
You will be asked to indicate the product or specify the nature and purpose of the products in order to permit proper classification. Design-Marks helps you with identifying the right classes using the Eurolocarno classification.
What is examined
EUIPO’s substantive examination is limited to two issues:
- Is your design a design?
Does your design represent the appearance of the whole or part of a product? An examiner will issue a notification if they believe it does not. For example, a design representing a living plant would receive such a notification.
- Does the design contain an element that goes against public policy and morality?
The concepts of public policy and morality may vary from one country to another. But given the unitary character of an RCD, it is enough that a design be found contrary to public policy in at least part of the European Union for the design to be refused.
If an examiner deems your design to be in breach of either of these two rules, they will send a deficiency letter offering you the possibility of withdrawing or amending the representation of the design. You can also submit observations. If you decide to submit an amended representation of the design, this representation will be admissible on condition that the ‘identity of the design’ is retained. Obviously, you cannot submit a completely different design. You can only remove or disclaim insignificant features, i.e. those likely to go unnoticed by the informed user.
If you do not answer at all or do not solve the problem highlighted by the examiner, they will send a notification that the design is refused. This decision can also be appealed.
Excluded from examination
The Office will not, of its own motion, check whether your design is new or if it possesses individual character. Third parties can request that your design be declared invalid. The invalidity procedure can only be launched against a design once it has been registered and not during the registration process.
Proof of registration
If no problem is detected or if you solve any issues arising, your design will be registered. It will also be published in the Community Designs Bulletin. If you have asked for your design to be deferred, only the design number, the filing date, the registration dates and the names of the applicant and representative will be published. The representation of the design itself will not be published.
A registration certificate is issued online after the registered Community design has been published in full. You are invited to download the certificate from the day after publication. A paper copy of the certificate of registration will not be issued. However, uncertified or certified copies of the registration certificate may be requested.
How to challenge an Office decision
Parties adversely affected by a final decision can file an appeal. If you wish to file an appeal, you can use our paper form. If you need to, you can also consult the explanatory notes. You can also do this online through your User Area.
Design-Marks.com will file, if needed, the appeal for you. This has additional costs on which you will be informed upfront.