Protection of industrial designs in Europe is provided by means of a registration system. There is a single, European Union-wide registration system administered by the European Union Intellectual Property Office (EUIPO) (Registered Community Design), together with systems for national registration in each European country which is necessary for European countries that are not members of the EU, such as Switzerland and Norway. In both cases, it is necessary to provide drawings or photographs showing the design, together with an indication of the industrial product to which it is applied. Applications are examined to confirm that the design in question is one which falls within the categories for protectable designs, and for compliance with formal requirements. There is no substantive examination with respect to prior art.

Finnegan is able to represent applicants for design registration directly at EUIPO. Finnegan’s European patent attorneys can advise on the suitability of a design for registration, and on how to best present the application to ensure that the registration has as wide a scope as possible.

Registration at EUIPO can be a relatively fast and straightforward process for obtaining protection for a design with a wide geographic scope. Each design can have a maximum of seven views of the object in question. Where the design has variations based around a central design concept, a series application can be filed which is significantly cheaper than filing several parallel applications, allowing representations of each variant to be shown.

An application filed at EUIPO can also provide the basis for an international registration under the Hague Agreement, which enables protection to be obtained in a number of countries with simplified processing and reduced cost.

Following registration of a community deign at EUIPO, third parties can challenge validity on a number of grounds. The application is handled by EUIPO which is relatively fast in reaching a decision. The final decision is binding in all member states but can be appealed to the Boards of Appeal at EUIPO. Finnegan’s qualified European design attorneys can handle validity challenges and appeal to the Boards of Appeal at EUIPO, and can advise on the best use of these procedures.

Decisions of the Boards of appeal can be appealed to the General Court (GC) of the EU, with final appeal to the Court of Justice of the European Union (CJEU).

Registration of designs in the United Kingdom can also be accomplished by filing at the UK Intellectual Property Office (UKIPO). The law and procedures at the UKIPO are essentially similar to that applied by EUIPO. The process for challenging validity at the UKIPO is similar to that at EUIPO. Decision of the UKIPO, whether on decisions to refuse registration, or following post grant challenges to validity, can only be appealed to the High Court with subsequent appeal to the Court of Appeal, and to the Supreme Court in exceptional circumstances.

Finnegan’s UK-qualified attorneys can handle all aspects of design registration and validity challenges at the UKIPO, as well as managing appeals to the courts.

Cornell, Clare
Partner, European Trade Mark and Patent Attorney
+44 (0)20 7864 2815

Cupitt, Philip
Partner, European Patent Attorney
+44 (0)20 7864 2811

Hyden, Martin
Partner, European Patent Attorney
+44 (0)20 7864 2810

Wall, Leythem
Partner, European Patent Attorney
+44 (0)20 7864 2814