Amended proposal for a Council Regulation (EC) on Community Design
29. 8. 2000 EN Official Journal of the European Communities C 248 E/3 Amended proposal for a Council Regulation (EC) on Community Design (1) (2000/C 248 E/02) (Text with EEA relevance) COM(1999) 310 final - 93/0463(CNS) (Submitted by the Commission pursuant to Article 250(2) of the EC Treaty on 21 June 1999) (1) OJ C 29, 31. 1. 1994, p. 20. INITIAL PROPOSAL AMENDED PROPOSAL THE COUNCIL OF THE EUROPEAN COMMUNITIES, Unchanged Having regard to the Treaty establishing the European Community, and in particular Article thereof, Having regard to the Treaty establishing the European Community, and in particular Article 308 thereof, Having regard to the proposal (1) from the Commission, Unchanged Having regard to the opinion of the European Parliament, Having regard to the opinion of Committee (2), the Economic and Social economic and social progress of (1) Whereas the objectives of the Community as laid down in the Treaty include establishing an ever closer union among the peoples of Europe, fostering closer relations between the States belonging to the Community, and ensuring the the Community countries by common action to eliminate the barriers which divide Europe; whereas to that end the Treaty provides for the establishment of an internal market and includes the abolition of obstacles to the free movement of goods and the institution of a system ensuring that competition in the common market is not distorted; whereas a unified system for obtaining a Community design to which uniform protection is given with uniform effect throughout the entire territory of the Community would further those objectives; (2) Whereas only the Benelux countries have introduced a uniform design protection law; whereas the only other design protection that exists in the Community is a matter for the relevant national law and is confined to the Member State concerned; whereas the territory of there is no such relevant law in any one Member State at the present time; whereas identical designs may be protected differently in different Member States and for the benefit of different owners; whereas this inevitably trade between leads Member States; in the course of to conflicts ___________ (1) OJ C 29, 31. 1. 1994, p. 20. (2) OJ C 110, 2. 5. 1995, p. 12. C 248 E/4 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL (3) Whereas the substantial differences between Member States’ design laws prevent and distort Community-wide competition between the producers of protected goods, because in comparison with domestic trade in, and competition between, products incorporating a design, and competition within the Community are trade prevented and distorted by large number of applications, offices, procedures, laws, nationally circum- scribed exclusive rights and the combined administrative expense with correspondingly high costs and fees for the applicant; the their laws are approximated, (4) Whereas the effect of design protection being limited to the territory of the individual Member States whether or not leads to a possible division of the internal market with respect to products incorporating a particular design in areas with different right owners, and hence constitutes an obstacle to the free movement of goods; a of (5) Whereas this calls for the creation of a Community design right which is directly applicable in each Member State, and authority with Community-wide powers, because only in this way will it be possible to obtain, through one application made to in accordance with a single procedure under one law, one design right for one area encompassing all Member States; Community design a of Community (5) Whereas this calls for the creation of a Community design right which is directly applicable in each Member State, and authority with Community-wide powers, because only in this way will it be possible to obtain, through one application made to the Office for Harmonisation in the Internal Market (trade marks and design) in accordance with a single procedure under one area encompassing all Member States; design right law, one for one design (6) Whereas it is thus for the Community to adopt measures to achieve those objectives, which cannot be achieved by the Member States acting individually and which by reason of the scale and the effects of the creation of a Community design right and a Community design authority can only be achieved by the Community; Unchanged the success of commercial (7) Whereas superior design is an important attribute of Community industries in competition with industries from other countries, and is in many cases decisive in the associated product; whereas enhanced protection for industrial design not only promotes the contribution of individual designers to the sum of Community excellence in the field, but also encourages innovation and development of new products and investment in their production; whereas a more accessible design-protection system adapted to the for needs of Community industries; is therefore essential the internal market (8) Whereas such a design-protection system would constitute design seeking the protection in the most important export markets of the Community; corresponding prerequisite for (9) Whereas the substantive provisions of this regulation on design law, should be aligned with similar provisions in Directive 98/71/EC on the legal protection of designs (1). ___________ (1) OJ L 289, 28. 10. 1998, p. 28. 29. 8. 2000 EN Official Journal of the European Communities C 248 E/5 INITIAL PROPOSAL AMENDED PROPOSAL (10) Whereas not should innovation technological function; whereas it be hampered by granting design protection to features is dictated solely by a technical understood that this does not entail that a design must have an aesthetic quality; whereas, likewise, the interoper- ability of products of different makes should not be hindered by extending protection to the design of mechanical fittings; whereas features of a design which are excluded from protection for those reasons should not be taken into consideration for the purpose of assessing whether other features of the design fulfil the requirements for protection; (11) Whereas the mechanical fittings of modular products may nevertheless constitute an important element of the inno- vative characteristics of modular products and present a major marketing asset and therefore should be eligible for protection; (12) Whereas full-scale approximation of for the laws of could not be complex products the Member States on the use of protected design of component parts of repair purposes achieved through Directive 98/71/EC on the legal protection of designs; whereas, within the framework of the Conciliation procedure on the said Directive, the Commission undertook to review the consequences of the provisions of the Directive three years after the implementation date of the Directive for, in particular, the industrial sectors which are most affected by the ongoing discussions on the issue of a repair clause for component parts of complex products; whereas, under these circumstances, is appropriate to exclude the design of component parts of complex products from protection under this Regulation until the Council has decided its policy on this issue on the basis of a Commission proposal. it (13) Whereas the provisions of this Regulation are without the competition rules prejudice to the application of pursuant to Articles 81 and 82 of the Treaty. Unchanged (14) Whereas a Community design right should, as far as possible, serve the needs of all sectors of industry in the Community; whereas those sectors are many and varied. Unchanged (14) Whereas a Community design right should, serve the industry in the Community; needs of all whereas those sectors are many and varied. sectors of the burden of (15) Whereas some of the sectors produce large numbers of designs for products frequently having a short market life where protection without registration formalities is an advantage and the duration of protection is of lesser significance; whereas on the other hand, there industry which value the advantages of are sectors of registration for the greater legal certainty it provides and which require the possibility of a longer term of protection corresponding to the foreseeable market life of their products. (16) Whereas this calls for two forms of protection, one being a short-term unregistered design right and the other being a longer term registered design right. C 248 E/6 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL (17) Whereas a registered Community design right requires the creation and maintenance of a register in which will be registered all those applications which comply with formal conditions and which have been accorded a date of filing; whereas the registration system should not be based upon substantive examination as to compliance with requirements for protection prior to registration, thereby keeping to a minimum the registration and other procedural burdens on applicants. (17) Whereas a registered Community design right requires the creation and maintenance of a register in which will be registered all those applications which comply with formal conditions and which have been accorded a date of the registration system should in principle not be based upon substantive examination as to compliance with requirements for protection prior to registration, thereby keeping to a minimum the regis- tration and other procedural burdens on applicants. filing; whereas (18) Whereas a Community design right shall not be upheld unless the design is new in the sense that is not identical to any other design previously made available to the public, and unless it also possesses an individual character in comparison with other designs. it Unchanged (19) Whereas it is also necessary to allow the designer or his successor in title to test the products embodying the design in the market place before deciding whether the protection resulting from a registered Community design is desirable; whereas it is therefore necessary to provide that disclosures of the design by the designer or his successor in title, or abusive disclosures during a period of 12 months prior to the date of the application for a registered Community design should not be prejudicial in assessing the novelty or the indi- vidual character of the design in question; the filing of (20) Whereas the exclusive nature of the right conferred by the registered Community design is consistent with its greater legal certainty; whereas it is appropriate that the unreg- istered Community design should, however, constitute a right only to prevent copying; whereas this right should also extend to trade in products embodying infringing designs. (21) Whereas the enforcement of these rights is to be left to national laws and it is necessary therefore to provide for in all Member States; some basic uniform sanctions whereas these should make it possible, irrespective of the jurisdiction under which enforcement is sought, to stop the infringing acts. (22) Whereas a procedure for hearing actions concerning validity of a registered Community design in a single place would bring savings in costs and time compared involving different national with procedures courts; if the single place were to be a court in the whereas, country where the design right holder is domiciled, undue costs and difficulties could still be encountered by a challenger to validity from another country. (deleted) 29. 8. 2000 EN Official Journal of the European Communities C 248 E/7 INITIAL PROPOSAL AMENDED PROPOSAL (23) Whereas it is necessary to provide safeguards including a right of appeal to a Board of Appeal, and ultimately to the Court of Justice of the European Communities; whereas the development of such a procedure would assist uniform interpretation of the requirements governing the validity of Community designs. Unchanged (24) Whereas it is a fundamental objective that the procedure for obtaining a registered Community design should present the minimum cost and difficulty to applicants, to small so as and to make medium-sized enterprises to individual designers. readily available as as well it (25) Whereas sectors of industry producing large numbers of possibly short-lived designs over short periods of time of which only some may be eventually commercialised will find advantage in the unregistered Community design; whereas there is also a need for these sectors to have easier recourse to the registered Community design; whereas the option of combining a number of designs in one multiple application would satisfy that need. (26) Whereas the normal publication following registration of a Community design could in some cases destroy or jeop- ardise the success of a commercial operation involving the design; whereas the facility of an adjournment of publi- cation for a reasonable time affords a solution in such cases. the territory of (27) Whereas it is essential that the rights conferred by the Community designs be enforced in an efficient manner the Community; whereas throughout specific rules concerning litigation based on Community designs must be provided in order to guarantee such a result; whereas for infringement actions and for actions for a declaration of invalidity a limitation in the number of national courts having jurisdiction may promote the specialisation of the judges; whereas to that end Member States should designate Community Design Courts. (28) Whereas the litigation system should avoid as far as therefore juris- possible áforum shoppingí; whereas necessary to establish clear rules of international diction. is it laws of (29) Whereas this Regulation does not preclude the application to designs protected by Community designs or other relevant those the Member States, relating to design protection acquired by registration or those relating to unregistered design rights, trade marks, patents and utility models, unfair competition or civil liability; such as C 248 E/8 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL (30) Whereas, pending harmonisation of copyright law, it is to establish the principle of cumulation of important the Community design and under protection under copyright free to establish the extent of copyright protection and the conditions under which such protection is conferred, leaving Member States law, whilst HAS ADOPTED THIS REGULATION: TITLE I GENERAL PROVISIONS Article 1 Community design 1. Designs which comply with the conditions contained in this Regulation, hereinafter referred to as Community designsí, shall be protected by a Community system of rights. A desin shall be protected under the terms of this Regu- 2. lation: A design shall be protected under the terms of this Regu- 2. lation: (a) by an áunregistered Community designí (a) by an áunregistered Community designí, if made available to the public in the manner provided for in this Regulation; (b) by a áregistered Community designí, if registered in the Unchanged manner provided for in this Regulation. A Community design shall have a unitary character. It 3. it shall shall have equal effect throughout the Community; not be registered, surrendered or be the subject of a decision declaring it invalid, save in respect of the whole Community. This principle and its implications shall apply unless otherwise provided in this Regulation. transferred or Article 2 Office for Harmonisation in the Internal Market The Office (trademarks and designs), hereinafter áthe Officeí, instituted by Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, hereinafter referred to as the Regulation on the Community Trademarkí, shall carry out the tasks entrusted to it by this Regulation. referred to as 29. 8. 2000 EN Official Journal of the European Communities C 248 E/9 INITIAL PROPOSAL AMENDED PROPOSAL TITLE II Unchanged THE LAW RELATING TO DESIGNS S e c t i o n 1 Requirements for protection Article 3 Definitions For the purposes of this Regulation: (a) ádesigní means the appearance of the whole or a part of a product resulting from the features of, the lines, contours, colours, shape and/or materials of the product itself and/or its ornamentation; (a) design means the appearance of the whole or a part of a in particular, the the product resulting from the features of, lines, contours, colours, shape and/or materials of product itself and/or its ornamentation; (b) áproductí means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex packaging, get-up, graphic and typographic typefaces, but excluding computer programs. symbols (b) áproductí means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typo- graphic typefaces, but excluding computer programs. (c) ácomplex productí means a product which is composed of multiple components, which can be replaced permitting disassembly and re-assembly of the product. Article 4 requirements Article 4 Protection requirements A design shall be protected by a Community design to 1. the extent that it is new and has individual character. 2. A design a product which constitutes a part of a complex shall only be considered to be new and to have individual character: 2. A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character: (a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter, and (b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character. Normal useí within the meaning of paragraph (2)(a) shall 3. mean any use other than maintenance, servicing or repair. Article 5 Novelty Unchanged A design shall be considered to be new if no identical design has been made available to the public: (a) in case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public, C 248 E/10 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL (b) in case of a registered Community design, before the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority. Designs shall be deemed to be identical differ only in immaterial details. if their features Article 6 Individual character Unchanged 1. A design shall be considered to have individual character impression it produces on the informed user if the overall differs from the overall impression produced on such a user by any design 1. A design shall be considered to have individual character impression it produces on the informed user if the overall differs from the overall impression produced on such a user by any design which has been made available to the public: (a) in case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public, (b) in case of a registered Community design, before the date of filing the application for registration of the design for which protection is claimed, or, if a priority is claimed, before the date of priority. 2. (deleted) In assessing individual character, the degree of freedom of 3. the designer in developing the design shall be taken into consideration. (deleted) Article 7 Date of reference Article 8 Article 8 Disclosure 1. For the purpose of applying Articles 5 and 6, a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date referred to in Articles 5(a) and 6(1)(a) or in Articles 5(b) and 6(1)(b), as the case may be, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality. 29. 8. 2000 EN Official Journal of the European Communities C 248 E/11 INITIAL PROPOSAL AMENDED PROPOSAL A disclosure shall not be taken into consideration for the 2. purpose of applying Articles 5 and 6 if a design for which protection is claimed under a Registered Community design has been made available to the public: (a) by the designer, his successor in title, or a third person as a information provided or action taken by the result of designer or his successor in title; and (b) during the 12-month period preceding the date of filing of the application or, if priority is claimed, the date of priority. Paragraph 2 shall also apply if the design has been made 3. available to the public as a consequence of an abuse in relation to the designer or his successor in title. Article 9 and designs of interconnections Article 9 Designs dictated by their technical function and designs of interconnections A Community design right shall not subsist in features of 1. appearance 1. A Community design right shall not subsist in features of appearance of a product which are solely dictated by its technical function. A Community design right shall not subsist 2. in must necessarily be reproduced in exact form and dimensions in order to permit the product in which the design is incor- porated or is applied to be mechanically to which it connected another product 2. A Community design right shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function. 3. Notwithstanding paragraph 2 a Community design right shall under the conditions set out in Articles 5 and 6 subsist in a design serving the purpose of allowingmultiple assembly or connection of mutually interchangeable products within a modular system. Unchanged Article 10 Article 10 Designs contrary to public policy Designs contrary to public policy or morality A Community design right shall not subsist in a design which is contrary to public policy or to accepted principles of morality. Unchanged C 248 E/12 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL Article 10a Transitional provision 1. Until such time as amendments to this Regulation are adopted on a proposal from the Commission on this subject, a Community design shall not exist in a design applied to or incorporated in a product, which constitutes a component part of a complex product upon whose appearance the design is dependent. The proposal from the Commission, referred to in 2. paragraph 1. , shall be submitted together with, and take into consideration, any changes which the Commission shall propose on the same subject pursuant to Article 18 of Directive 98/71/EC on the legal protection of designs (1). S e c t i o n 2 Unchanged Scope and term of protection Article 11 Scope of protection 1. The scope of the protection conferred by a Community design shall include any design which produce on the informed user a overall impression. 1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression. 2. In assess the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration. In assessing the scope of protection, the degree of the designer in developing his design shall be 2. freedom of taken into consideration. Article 12 (Unchanged) Commencement and term of protection of the unreg- istered Community design A design which meets the requirements under Section 1 1. shall be protected by an unregistered Community design for a period of three years as from the date A design which meets the requirements under Section 1 1. shall be protected by an unregistered Community design for a period of three years as from the date on which the design was first made available to the public within the Community. 2. For the purpose of applying paragraph 1 a design shall be deemed to have been made available to the public within the Community if it has been published following registration or otherwise, exhibited, used in trade or otherwise disclosed therein, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality. ___________ (1) OJ L 289, 28. 10. 1998, p. 28. 29. 8. 2000 EN Official Journal of the European Communities C 248 E/13 INITIAL PROPOSAL AMENDED PROPOSAL Article 13 Unchanged Commencement and term of protection of the registered Community design Upon registration by the Office, a design which meets the requirements under Section 1 shall be protected by a registered design for a period of five years as from the date of the filing of the application. Upon registration by the Office, a design which meets the requirements under Section 1 shall be protected by a registered Community design for a period of five years as from the date of the filing of the application. The right holder may have the term of protection renewed for one or more periods of five years each, up to a total term of 25 years from the date of filing. S e c t i o n 3 Unchanged Entitlement to the Community design Article 14 Right to the Community design The right to the Community design shall vest in the 1. designer or his successor in title. 2. a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to the Community design shall vest in the employer, unless otherwise provided by contract. 2. However, where a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to the Community design shall vest in the employer, unless otherwise provided by contract. Article 15 Plurality of designers If two or more persons have jointly developed a design, the right to the Community design shall vest in them jointly. Claims relating to the entitlement to a Community design Article 16 If two or more persons have jointly developed a design, the right to the Community design shall vest in them jointly. The conditions of exercise of this right shall be established by contractual agreement between co-owners or, failing this, by application of the law of the Member State where the exercise of the right is carried out. If the right 1. to an unregistered Community design is claimed by, or a registered Community design has been registered in the name of, a person who is not entitled to it under Article 14, the person entitled to it under that provision may, without prejudice to any other remedy which may be open to him, claim the Community design. If the right 1. to an unregistered Community design is claimed by, or a registered Community design has been registered in the name of, a person who is not entitled to it under Article 14, the person entitled to it under that provision may, without prejudice to any other remedy which may be open to him, claim to become recognised as the legitimate holder of the Community design. C 248 E/14 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL 2. Where a person is jointly entitled to a Community design, in accordance with paragraph 1, claim to that person may, joint holder. 2. Where a person is jointly entitled to a Community design, in accordance with paragraph 1, claim to that person may, become recognised as joint holder. 3. may be instituted only within a period of not more than two years after the date the Community design. This provision shall not apply if the Community design at the time when such design to him. 3. Legal proceedings under paragraph 1 may be instituted only within a period of not more than two years after the date on which the Community design came into existence. This provision shall not apply if the person who is not entitled to the Community design was in bad faith at the time when such design came into existence or was assigned to him. In case of a registered Community design, the shall be 4. entered in the register: In case of a registered Community design, the following 4. shall be entered in the register: (a) the mention that legal proceedings under paragraph 1 have been instituted; (b) the final decision or any other termination of the proceedings; (c) any change in the ownership of the registered Community design resulting from the final decision. Article 17 Unchanged Effects of a judgment on entitlement to a registered Community design 1. Where there is a complete change of ownership of a registered Community design as a result of legal proceedings under Article 16(1), licences and other rights shall lapse upon the entering in the register of the person entitled. 2. If, before the institution of the legal proceedings under Article 16(1) has been registered, the holder of the registered Community design or a licensee has exploited the design within the Community or made serious and effective prep- arations such exploitation provided that he requests within the period prescribed by the implementing Regulation a non-exclusive licence from the new holder whose name is entered in the register. The licence shall be granted for a reasonable period and upon reasonable terms. to do so, he may continue Paragraph 2 shall not apply if the right holder or the 3. licensee was acting in bad faith at the time when he began to exploit the design or to make preparations to do so. Article 18 Presumption in favour of the registered person The person in whose name the registered Community design, shall be deemed to be the person entitled in any proceedings before the Office. The person in whose name the registered Community design is registered or, prior to registration, the person in whose name the application is filed, shall be deemed to be the person entitled in any proceedings before the Office. 29. 8. 2000 EN Official Journal of the European Communities C 248 E/15 INITIAL PROPOSAL AMENDED PROPOSAL Article 19 Right of the designer Article 19 Right of the designer to be cited The designer shall have the right, as against the applicant for or the holder of a registered Community design, to be cited as such before the Office in the register. If the design is the result of team-work, the of the team may replace the citation of the individual designers. The designer shall have the right, as against the applicant for or the holder of a registered Community design, to be cited as such before the Office and in the register. If the design is the result of team-work, the citation of the team may replace the citation of the individual designers. S e c t i o n 4 Unchanged Effects of the Community design Article 20 Rights conferred by the Community design 1. A registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes. in particular, An unregistered Community design shall, however, confer 2. on its holder the right the acts mentioned in to prevent paragraph 1 only if the use contested results from copying in bad faith the design protected. 3. Paragraph 2 shall also apply to a registered Community to deferment of publication as long as the design subject relevant entries in the Register and the file have not been made available to the public in accordance with Article 52 paragraph 4. Article 21 (deleted) Rights conferred by the registered Community design Limitation of the rights conferred by a Community design Article 22 Unchanged 1. The rights conferred by a Community design shall not: The rights conferred by a Community design shall not be 1. exercised in respect of: (a) acts done privately and for non-commercial purposes; Unchanged (b) acts done for experimental purposes; C 248 E/16 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL (c) acts of reproduction for the purpose of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source. In addition, the rights conferred by a Community design 2. shall not In addition, the rights conferred by a Community design 2. shall not be exercised in respect of: (a) the equipment on ships and aircraft registered in country the territory of temporarily enter the when these Community; (a) the equipment on ships and aircraft registered in another country when these temporarily enter the territory of the Community; (b) the importation in the Community of spare parts and Unchanged accessories for the purpose of repairing such craft; (c) the execution of repairs on such craft. Use of a registered Community design for repair purposes Article 23 (deleted) Article 24 Exhaustion Article 24 Exhaustion of rights The rights conferred by a Community design shall not extend to acts relating to a product in which a design included within the scope of protection of the Community design is incor- porated or to which it is applied, when the product has been put on the market in the Community by the holder of the Community design or with his consent. Unchanged Article 25 Rights of prior use in respect of a registered Community design The rights conferred by a registered Community design shall not become effective against any third person who can establish that: (a) before the date of filing the application; or (b) if a priority is claimed, before the date of priority, he has, in good faith, commenced use within the Community - or has made serious preparations to that end - of a design included within the scope of protection of the registered Community design, which has been developed independently of the latter and which at Such a person shall be entitled to exploit the design for the needs of the undertaking in which the use was effected or anticipated. That right cannot be trans- ferred separately from the undertaking. he has, in good faith, commenced use within the Community - or has made serious preparations to that end - of a design included within the scope of protection of the registered Community design, which has been developed independently of the latter and which at the date of filing or at the date of priority of the Community design, had not yet been made available to the public within the meaning of Article 12 paragraph 2. Such a person shall be entitled to exploit the design for the needs of the undertaking in which the use was effected or anticipated. That right cannot be transferred separately from the undertaking. 29. 8. 2000 EN Official Journal of the European Communities C 248 E/17 INITIAL PROPOSAL AMENDED PROPOSAL S e c t i o n 5 Invalidity Unchanged Article 26 Declaration of invalidity A registered Community design shall be declared invalid 1. on application to the Office in accordance with the procedure in Titles VII and VIII or by a Community design Court on the basis of a counterclaim in infringement proceedings. 2. An unregistered Community design shall be declared invalid by a Community design Court on application to such a Court or on the basis of a counterclaim in infringement proceedings. even after the Community design has lapsed or has been 3. surrendered. A Community design may be declared invalid even after 3. the Community design has lapsed or has been surrendered. Article 27 Unchanged Grounds for invalidity A Community design may be declared invalid only in the 1. following cases: (a) if the design (a) if the design is not a design within the meaning of Article 3(a), (c) if the right holder in the Community design is, by virtue of a court decision, (c) if the right holder in the Community design is, by virtue of a court decision, not entitled to it under Articles 14 and 15, (b) if it does not fulfil the requirements of Articles 4 to 10a, (d) if the Community design is in conflict with a prior design which has been made available to the public after the date of filing of the application or, if priority is claimed, the date of priority of the Community design, and which is protected from a date prior to the said date by a registered Community design or an application for such a design, or by a registered design right of a Member State, or by an application for such a right, (e) if a distinctive sign is used in a subsequent design, and the Member State the Community law or governing that sign confers on the right holder of sign the right to prohibit such use, law of the C 248 E/18 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL (f) if the design constitutes an unauthorised use of a work protected under the copyright law of a Member State, (g) if the design constitutes an improper use of any of the the Paris Convention for items listed in Article 6ter of the Protection of Industrial Property, or of badges, emblems and escutcheons other than those covered by Article 6ter of the said Convention and which are of particular public interest in a Member State, The ground provided for 2. invoked solely by the person who is Community design under Articles 14 and 15. in paragraph 1(c) may be entitled to the The grounds provided for in paragraph 1(d), (e) and (f) 3. may be invoked solely by the applicant for or holder of the conflicting right. If the conflicting right is a right of a Member State and that Member State has availed itself of this option, the ground provided for in paragraph 1(d) may be also invoked by an appropriate authority designated by that Member State. 4. The ground provided for in paragraph 1(g) may be invoked solely by the person or entity concerned by the use. If is at stake has availed itself of this option, this ground may be also invoked by an appropriate authority designated by that Member State. the Member State whose public interest 5. By derogation from Article 1 paragraph 3, where the design is in breach of Article 10 and in the in the cases specified in paragraph 1(d), (e), (f) and (g), if the ground for invalidation obtains only in respect of one or some Member invalidity shall be declared only in respect of such a States, Member State or States. 6. A registered Community design which has been declared invalid pursuant to paragraph 1(b), (e), (f) or (g) may be main- tained in an amended form, if in that form it complies with the requirements for protection and the identity of the design is retained. Maintenance in an amended form may include regis- tration accompanied by a partial disclaimer by the holder of the registered Community design or entry in the Register or of a court decision declaring the partial invalidity of the registered Community design. 29. 8. 2000 EN Official Journal of the European Communities C 248 E/19 INITIAL PROPOSAL AMENDED PROPOSAL Article 28 Effects of invalidity Unchanged 1. A Community design which has been declared invalid shall be deemed not to have had, from the outset, the effects specified in this Regulation. Subject to the national provisions relating either to claims 2. for compensation for damage caused by negligence or lack of good faith on the part of the holder of the Community design, or to unjust enrichment, the retroactive effect of invalidity of the Community design shall not affect: (a) any decision on infringement which has acquired the authority of a final decision and been enforced prior to the invalidity decision; (b) any contract concluded prior to the invalidity decision, in so far as it has been performed before the decision; however, repayment, to an extent justified by the circum- stances, of sums paid under the relevant contract, may be claimed on grounds of equity. TITLE III COMMUNITY DESIGNS AS OBJECTS OF PROPERTY Article 29 Dealing with Community designs as national design rights 1. Save where Articles 30 to 34 provide otherwise, a Community design as an object of property shall be dealt with in its entirety, and for the whole area of the Community, as a national design right of the Member State in which: (a) the holder has his seat or his domicile on the relevant date; or (b) where subparagraph (a) does not apply, the holder has an establishment on the relevant date. In the case of a registered Community design, paragraph 2. 1 shall apply according to the entries in the register. 3. In the case of joint holders, if two or more of them fulfil the condition under paragraph 1(a) or, where that provision does not apply, the Member State referred to in paragraph 1 shall be determined: the condition under paragraph 1(b), C 248 E/20 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL (a) in the case of an unregistered Community design, by reference to the relevant joint holder designated by them by common agreement; (b) in the case of a registered Community design, by reference to the first of the relevant joint holders in the order in which they are mentioned in the register. 4. Where paragraphs 1, 2 and 3 do not apply, the Member State referred to in paragraph 1 shall be the Member State in which the Office is situated. Article 30 Transfer Article 30 Transfer of the registered Community design The transfer of a registered Community design shall be subject to the following provisions: Unchanged (a) at the request of one of the parties, a transfer shall be entered in the register and published; (b) until such time as the transfer has been entered in the register, the successor in title may not invoke the rights arising from the registered Community design; (c) where there are time limits to be observed in dealings with the successor in title may make the corre- the Office, sponding statements to the Office once the request for registration of the transfer has been received by the Office; (d) all documents which require notification to the holder of the registered Community design shall be addressed to the person registered as holder or his representative, if one has been appointed. (d) all documents which by virtue of Article 70 require notifi- cation to the holder of the registered Community design shall be addressed by the Office to the person registered as holder or his representative, if one has been appointed. Article 31 Unchanged Rights in rem on a registered Community design A registered Community design may be given as security 1. or be the subject of rights in rem. At the request of one of the parties, rights mentioned in 2. paragraph 1 shall be entered in the register and published. 29. 8. 2000 EN Official Journal of the European Communities C 248 E/21 INITIAL PROPOSAL AMENDED PROPOSAL Article 32 Levy of execution on a registered Community design A registered Community design may be 1. execution. levied in 2. As regards the procedure for levy of execution in respect of a registered Community design, the courts and authorities of the Member State determined in accordance with Article 29 shall have exclusive jurisdiction. On request of one of the parties, levy of execution shall 3. be entered in the register and published. Article 33 Bankruptcy or like proceedings 1. Until such time as common rules for the Member States in this field enter into force, the only Member State in which a Community design may be involved in bankruptcy or like proceedings shall be that in which such proceedings are first brought under national law or conventions applicable in this field. 2. Where a registered Community design is involved in bankruptcy or like proceedings, an entry to that effect shall be made in the register at the competent national authority and shall be published. the request of Article 34 Licensing A Community design may be licensed for the whole or the Community. A licence may be exclusive or 1. part of non-exclusive. 1(a). The holder may invoke the rights conferred by the Community design against a licensee who contravenes any licensing contract with regard to its provision in his duration, the range of the products for which the license granted and the quality of the products manufactured by the licensee. the form in which the design may be used, 2. Without prejudice to the provisions of the licensing contract, the licensee may bring proceedings for infringement of a Community design only if the right holder consents thereto. However, the holder of an exclusive licence may bring such proceedings if the right holder in the Community design, having been given notice to do so, does not himself bring infringement proceedings within an appropriate period. Unchanged C 248 E/22 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL A licensee shall, for the purpose of obtaining compen- 3. sation for damage suffered by him, be entitled to intervene in an infringement action brought by the right holder in a Community design. 4. In the case of a registered Community design, the grant or transfer of a licence in respect of such right shall, at the request of one of the parties, be entered in the register and published. Article 35 Effects vis-à-vis third parties 1. The effects vis-à-vis third parties of the legal acts referred to in Articles 30, 31, 32 and 34 shall be governed by the law of the Member State determined in accordance with Article 29. However, as regards registered Community designs, legal 2. acts referred to in Article 30, 31 and 34 shall have effect only vis-à-vis third parties in all the Member States after entry in the register. Nevertheless, such an act, before it is so entered, shall have effect vis-à-vis third parties who have acquired rights in the registered Community design after the date of that act but who knew of the act at the date on which the rights were acquired. 3. Paragraph 2 shall not apply to a person who acquires the registered Community design or a right relating to it by way of transfer of the undertaking or by any other universal succession. the whole of Until such time as common rules for the Member States 4. in the field of bankruptcy enter into force, the effects vis-à-vis like proceedings third parties of bankruptcy or shall be the Member State in which such governed by the law of proceedings are first brought under national the conventions applicable in this field. law or Article 36 The application for a registered Community design as an object of property An application for a registered Community design as an 1. object of property shall be dealt with in its entirety, and for the whole area of the Community, as a national design right of the Member State determined in accordance with Article 29. Articles 30 to 35 shall apply mutatis mutandis to 2. applications for registered Community designs. Where the effect of one of these provisions is conditional upon an entry in the register, that formality shall have to be performed upon registration of the resulting registered Community design. 29. 8. 2000 EN Official Journal of the European Communities C 248 E/23 INITIAL PROPOSAL AMENDED PROPOSAL TITLE IV APPLICATION FOR A REGISTERED COMMUNITY DESIGN S e c t i o n 1 Filing of applications and the conditions which govern them Article 37 Filing of applications Article 37 Filing and forwarding of applications An application for a registered Community design shall 1. be filed, at the option of the applicant: Unchanged (a) at the Office; or (b) at the central industrial property office of a Member State, or (c) at the Benelux Design Office. (c) in the Benelux countries, at the Benelux Design Office. 2. Where the application is filed at the central industrial property office of a Member State or at the Benelux Design Office, that office shall take all steps to forward the application to the Office within two weeks after filing. It may charge the applicant a fee which shall not exceed the administrative costs of receiving and forwarding the application. As soon as the Office has received an application which has been forwarded by a central industrial property office or by the Benelux Design Office, it shall inform the applicant accordingly, indicating the date of its receipt at the Office. 2. Where the application is filed at the central industrial property office of a Member State or at the Benelux Design Office, that office shall take all steps to forward the application to the Office within two weeks after filing. It may charge the applicant a fee which shall not exceed the administrative costs of receiving and forwarding the application. As soon as the application has been forwarded, it shall inform the applicant accordingly. As soon as the Office has received an application which has been forwarded by a central industrial property office of a Member State or by the Benelux Design Office, it shall inform the applicant accordingly, indicating the date of its receipt at the Office. 3. No less than ten years after the entry into force of this Regulation, the Commission shall draw up a report on the operation of the system of filing applications for registered Community designs, for revision that it may deem appropriate. accompanied by any proposals Unchanged Article 38 (deleted) Forwarding of the application Article 39 Unchanged Conditions with which applications must comply An application for a registered Community design shall 1. contain: (a) a request for registration, C 248 E/24 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL (b) information identifying the applicant, (c) a representation of the design suitable for reproduction. 1(a) contain: 1(a) The application shall further contain: (a) an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied; Unchanged (b) the classification of the products in which the design is intended to be incorporated or to which it is intended to be applied according to class. (b) the classification of the products in which the design is intended to be incorporated or to which it is intended to be applied according to class; (c) the citation of the designer or of the team of designers or a the statement under designer or the team of designers has waived the right to be cited. responsibility that the applicant’s 2. 3. (deleted) In addition, the application may contain (a) description explaining the representation; Unchanged (b) a request for deferment of publication of the application in accordance with Article 52. 4. (deleted) Unchanged 5. The application shall be subject to the payment of the registration fee and the publication fee. Where a request for deferment under paragraph 3(b) is filed, the publication fee shall be replaced by the fee for deferment of publication. The application shall comply with the conditions laid 6. down in the implementing Regulation. 7. The information contained in the elements mentioned in paragraph 1(a) (a) and (b) and in paragraph 3(a) does not affect the scope of protection of the design as such. Article 40 Multiple applications Unchanged Several designs may be combined in one multiple 1. application for registered Community designs. Except in cases of ornamentation, this possibility is subject to the condition that the products in which the designs are intended to be incorporated or to which they are intended to be applied all belong to the same class. 29. 8. 2000 EN Official Journal of the European Communities C 248 E/25 INITIAL PROPOSAL AMENDED PROPOSAL 2. Besides the fees referred to in Article 39 the multiple application shall be subject to payment of an additional regis- tration fee and an additional publication fee. Where the multiple application contains a request for deferment of publi- cation, the additional publication fee shall be replaced by the additional fee for deferment of publication. The additional fees shall correspond to a percentage of the basic fees for each additional design. 2. Besides the fees referred to in Article 39(5), the multiple application shall be subject to payment of an additional regis- tration fee and an additional publication fee. Where the multiple application contains a request for deferment of publi- cation, the additional publication fee shall be replaced by the additional fee for deferment of publication. The additional fees shall correspond to a percentage of the basic fees for each additional design. The multiple application shall comply with the conditions 3. of presentation laid down in the implementing Regulation. Unchanged Article 41 Date of filing The date of 1. filing of an application for a registered Community design shall be the date on which documents containing the information specified in Article 39(1) are filed with the Office by the applicant, or, if the application has been filed with the central industrial property office of a Member State or with the Benelux Design Office, with that office. 2. By derogation from paragraph 1, the date of filing of an application filed with the central industrial property office of a Member State or with the Benelux Design Office and reaching the Office more than two months after the date on which documents containing the information specified in Article 39(1) have been filed, shall be the date of receipt of such documents by the Office. Article 42 Classification Unchanged For the purpose of this Regulation, use shall be made of the classification for designs provided for in the Annex to the Agreement Establishing an International Classification for Industrial Designs, signed at Locarno on 8 October 1968. S e c t i o n 2 Priority Article 43 Right of priority 1. A person who has duly filed an application for a design in or for any State party to the Paris Convention for the Industrial Property, hereinafter referred to as Protection of áthe Paris Conventioní, or his successors in title, shall enjoy, for filing an application for a registered Community design in respect of the same design, a right of priority of six months from the date of the first application. the purpose of filing of 1. A person who has duly filed an application for a design right in or for any State party to the Paris Convention for the Protection of Industrial Property, hereinafter referred to as áthe Paris Conventioní, or to the Agreement establishing the World Trade Organization or his successors in title, shall enjoy, for the purpose of filing an application for a registered Community design in respect of the same design, a right of priority of six months from the date of filing of the first application. C 248 E/26 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL Every filing that is equivalent to a lawful national filing 2. under the national law of the State where it took place or under bilateral or multilateral agreements shall be recognised as giving rise to a right of priority. Unchanged 3. Lawful national filing means any filing that is sufficient to establish the date on which the application was filed, whatever may be the outcome of the application. 4. A subsequent application for a design which was the subject of a previous first application, and which is filed in or in respect of the same State, shall be considered as the the purpose of determining priority, first application for provided that, at the subsequent application, the previous application has been withdrawn, abandoned or refused without being open to public inspection and without leaving any right outstanding, and has not served as a basis for claiming priority. The previous application may not thereafter serve as a basis for claiming a right of priority. the filing of the date of 4. A subsequent application for a design right which was the subject of a previous first application, and which is filed in or in respect of the same State, shall be considered as the first application for the purpose of determining priority, provided that, at the date of the filing of the subsequent application, the previous application has been withdrawn, abandoned or refused without being open to public inspection and without leaving any right outstanding, and has not served as a basis for claiming priority. The previous application may not thereafter serve as a basis for claiming a right of priority. 5. If the first filing has been made in a State which is not a party to the Paris Convention, paragraphs 1 to 4 shall apply only in so far as that State, according to published findings, grants, on the basis of a filing made at the Office and subject to conditions equivalent to those laid down in this Regulation, a right of priority having equivalent effect. 5. If the first filing has been made in a State which is not a party to the Paris Convention, or to the Agreement establishing the World Trade Organization, paragraphs 1 to 4 shall apply only in so far as that State, according to published findings, grants, on the basis of a filing made at the Office and subject to conditions equivalent to those laid down in this Regulation, a right of priority having equivalent effect. Article 44 Claiming priority Unchanged An applicant for a registered Community design desiring to take advantage of the priority of a previous application shall file a declaration of priority and a copy of the previous application. If the language of the latter is not one of the languages of the Office, the latter may require a translation of the previous application in one of the languages of the Office. Article 45 Effect of priority right The effect of the right of priority shall be that the date of priority shall count as the date of the filing of the application for a registered Community design for the purpose of Articles 5, 6, 8, 25, 27 The effect of the right of priority shall be that the date of priority shall count as the date of the filing of the application for a registered Community design for the purpose of Articles 5, 6, 8, 25, 27 (1)(d) and 52(1). 29. 8. 2000 EN Official Journal of the European Communities C 248 E/27 INITIAL PROPOSAL AMENDED PROPOSAL Article 46 Unchanged Equivalence of Community filing with national filing An application for a registered Community design which has been accorded a date of filing shall, in the Member States, be equivalent to a lawful national filing, including where appro- priate the priority claimed for the said application. Article 47 Exhibition priority 1. If an applicant for a registered Community design has displayed products in which the design is incorporated, or to which it is applied, at an official or officially recognised inter- national exhibition falling within the terms of the Convention on International Exhibitions signed in Paris on 22 November 1928 and last revised on 30 November 1972, he may, if he files the application within a period of six months from the date of the first display of such products, claim a right of priority from that date within the meaning of Article 45. 2. An applicant who wishes to claim priority pursuant to paragraph 1 must file evidence of the display of the products in which the design is incorporated or to which it is applied under the conditions laid down in the implementing Regu- lation. An exhibition priority granted in a Member State or in a 3. third country does not extend the period of priority laid down in Article 43. TITLE V REGISTRATION PROCEDURE Article 48 Examination as to formal requirements Examination as to formal requirements for filing The office 1. complies with the laid down in Article 39(1) accordance of a date of filing. examine whether shall the application the for The office 1. application complies with the requirements laid down in Article 39(1) for the accordance of a date of filing. examine whether shall the 2. The Office shall examine whether: 2. The Office shall examine whether: (a) the application complies with the other laid down in in the case of a multiple application, Article 39 and, Article 40; (a) the application complies with the other requirements laid in the case of a multiple down in Article 39 and, application, Article 40; (b) the application meets the formal requirements laid down in the implementing Regulation for the implementation of Articles 39 and 40; (c) the requirements of Article 81(2) are satisfied; C 248 E/28 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL (d) the fees referred to in Article 39(5) and, in the case of a multiple application, Article 40(2), have been paid; (e) the requirements concerning the claim to priority are Unchanged satisfied, if a priority is claimed. Article 49 Remediable deficiencies 1. Where, in carrying out the examination under Article 48 there are deficiencies which may be the Office notes that corrected, to remedy the applicant the Office shall request them within the prescribed period. in due time, 2. If the deficiencies concern the requirements referred to in Article 39(1) and the applicant complies with the Office’s request the Office shall allow as the date of filing the date on which the deficiencies are remedied. If the deficiencies are not remedied within the prescribed period, the application shall not be dealt with as an application for a registered Community design. 3. If the deficiencies concern the requirements referred to in Article 48(2)(a) to (c) or the payment of the fees referred to in Article 48(2)(d) and the applicant complies with the Office’s request in due time, the Office shall allow as the date of filing the date on which the deficient application was originally filed. If the deficiencies or the default in payment are not remedied within the prescribed period, refuse the application. the Office shall 4. If the deficiencies concern the requirements referred to in Article 48(2)(e), failure to remedy them within the prescribed period shall result in the loss of the right of priority for the application. If the deficiencies or the default 3. in payment are not remedied within the prescribed period, the Office shall refuse the application. shall result in the loss of the right of priority for the 4. application. Article 49a Examination of grounds for non-registrability the application shall be refused. 1. Where the Office, to Article 48, pursuant protection is sought in carrying out that finds the examination the design for which (a) does not fulfil the requirement under Article 3, or (b) is contrary to public policy or to accepted principles of morality, 2. The application shall not be refused before the applicant has been allowed the opportunity of withdrawing or amending the application or of submitting his observations. 29. 8. 2000 EN Official Journal of the European Communities C 248 E/29 INITIAL PROPOSAL AMENDED PROPOSAL Article 50 Registration The registration shall bear the date on which the date of filing was accorded. the requirements If that an application for a registered Community design must satisfy have been fulfilled and to the extent that the application has not been refused as a result of a procedure under Article 49a, the Office shall register the application in the Community design register as a registered Community design. The registration shall bear the date on which the date of filing was accorded. Article 51 Publication the Office shall publish the registered Upon registration, Community design in the Community design Bulletin as mentioned in Article 77 the Office shall publish the registered Upon registration, Community design in the Community design Bulletin as mentioned in Article 77(1). The contents of the publication shall be set out in the implementing Regulation. Article 52 Unchanged Deferment of publication 1. The applicant for a registered Community design may request, when filing the application, that the publication of the registered Community design be deferred for a period 30 months from the date of filing the application or, if a priority is claimed, from the date of priority. 1. The applicant for a registered Community design may request, when filing the application, that the publication of the registered Community design be deferred for a period of if a 30 months from the date of filing the application or, priority is claimed, from the date of priority. Upon such request, where the registered Community 2. design shall be registered, but neither the representation of the design nor any file relating to the application shall, subject to Article 78(2), be open to public inspection. Upon such request, where the conditions set out in 2. the registered Community design Article 50 are satisfied, shall be registered, but neither the design nor any file relating to the application shall, subject to Article 78(2), be open to public inspection. the representation of 3. The Office shall publish in the Community Design Bulletin a mention of the deferment of the publication of the registered Community design. The mention shall be accom- panied by information identifying the right holder in the registered Community design, the date of filing the application and any other particulars prescribed by the implementing Regulation. Unchanged 4. At the expiry of the period of deferment, or at any earlier date on request by the right holder, the Office shall open to public inspection all the entries in the register and the file relating to the application and shall publish the registered Community design in the Community Design Bulletin, laid down in the provided that, within the time limit implementing Regulation the publication fee and, in the event of a multiple application, the additional publication fee are paid. C 248 E/30 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL If the right holder fails to comply with these requirements, the registered Community design shall, unless surrendered in accordance with the provisions of Article 55, be deemed from the outset not to have had the effects specified in this Regulation. 5. In the case of a multiple application, the provisions of may be applied to only some of the designs included therein. In the case of a multiple application, the provisions of the designs 5. paragraph 4 may be applied to only some of included therein. Unchanged (deleted) Unchanged The institution of 6. legal proceedings on the basis of a registered Community design during the period of deferment the of publication shall be subject information contained in the register and in the file relating to the application has been communicated to the person against whom the action is brought. to the condition that TITLE VI TERM OF PROTECTION OF THE REGISTERED COMMUNITY DESIGN Article 53 Term of protection Article 54 Renewal 1. Registration of the registered Community design shall be renewed at the request of the right holder or of any person expressly authorised by him, provided that the renewal fee has been paid. 2. The Office shall inform the right holder in the registered Community design and any person having a registered right in respect of the registered Community design, of the expiry of the registration in good time before the said expiry. Failure to give such information shall not involve the responsibility of the Office. for The request 3. renewal shall be submitted and the renewal fee paid within a period of six months before the last day of the month in which protection ends. Failing this, the request may be submitted and the fee paid within a further period of six months from the day referred to in the first sentence, provided that an additional fee is paid within this further period. 4. Renewal shall take effect from the day following the date on which the existing registration expires. The renewal shall be registered. 29. 8. 2000 EN Official Journal of the European Communities C 248 E/31 INITIAL PROPOSAL AMENDED PROPOSAL TITLE VII SURRENDER AND INVALIDITY OF THE REGISTERED COMMUNITY DESIGN Article 55 Surrender The surrender of a registered Community design shall be 1. declared to the Office in writing by the right holder. It shall not have effect until it has been registered. 2. Surrender shall be registered only with the agreement of the holder of a right entered in the register. If a licence has been registered, surrender shall be entered in the register only if the right holder in the registered Community design proves that he has informed the licensee of his intention to surrender; this entry shall be made on expiry of the period prescribed by the implementing Regulation. Article 56 Application for a declaration of invalidity Any natural or legal person may submit to the Office an invalidity of a registered 1. application for a declaration of Community design. Any natural or legal person may submit to the Office an invalidity of a registered 1. application for a declaration of Community design. However, (a) in the case envisaged in Article 27(1) (e) or (f), the application may be filed only by the person or persons entitled, and (c) (b) in the case of Article 27(1) (d) by the right holder of the earlier right, and (c) in the case envisaged in Article 27(1) (g), by the person or persons or entities concerned by the use. 2. The application shall be filed in a written reasoned statement. It shall not deem to have been filed until the fee has been paid. Unchanged 3. The application for a declaration of invalidity shall not be admissible if an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on by a Community Design Court and has acquired the authority of a final decision. Article 57 Examination of the application If the application for a declaration of 1. invalidity is admissible, the Office shall examine whether the grounds for invalidity referred to in Article 27 prejudice the maintenance of the registered Community design. 1. If the Office finds that the application for a declaration of invalidity is admissible, the Office shall examine whether the grounds for invalidity referred to in Article 27 prejudice the maintenance of the registered Community design. C 248 E/32 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL 2. In the examination of the application, which shall be conducted in accordance with the implementing Regulation, the Office shall invite the parties, as often as necessary, to file observations, within a period to be fixed by the Office, on communications by the other parties or those issued by itself. Unchanged 3. The decision declaring the registered Community design invalid shall be entered in the register upon becoming final. Article 58 Participation in the proceedings of the alleged infringer An application for a declaration of 1. invalidity of a registered Community design filed, and as long as no final decision has been taken by an Invalidity Division, any third party who proves that proceedings for infringement of the same design have been instituted against him may in the invalidity proceedings within three months of the date on which the infringement proceedings were instituted. The same shall apply in respect of any third party who proves both that the right holder of the design has requested that he cease an alleged infringement of the design and that he has instituted proceedings for a court ruling that he is not infringing the design. 1. In the event of an application for a declaration of invalidity of a registered Community design being filed, and as long as no final decision has been taken by an Invalidity Division, any third party who proves that proceedings for infringement of the same design have been instituted against him may be joined as a party in the invalidity proceedings on request submitted within three months of the date on which the infringement proceedings were instituted. The same shall apply in respect of any third party who proves both that the right holder of the Community design has requested that he cease an alleged infringement of the design and that he has instituted proceedings ruling that he is not for a court infringing the Community design. 2. The request to be joined as a party shall be filed in a written reasoned statement. It shall not be deemed to have been filed until the fee referred to in Article 56(2) has been paid. Thereafter the request shall, subject to any exceptions laid down in the implementing Regulation, be treated as an application for a declaration of invalidity. The request to be joined as a party shall be filed in a 2. It shall not be deemed to have written reasoned statement. been filed until the invalidity fee referred to in Article 56(2) has been paid. Thereafter the request shall, subject to any exceptions laid down in the implementing Regulation, be treated as an application for a declaration of invalidity. TITLE VIII Unchanged APPEALS FROM DECISIONS OF THE OFFICE Article 59 Decisions subject to appeal An appeal shall lie from decisions of the Administration It shall have 1. and Legal Division and Invalidity Divisions. suspending effect. An appeal shall lie from decisions of the examiners of 1. the Administration of Trade marks and Designs and Legal Division and Invalidity Divisions. It shall have suspending effect. A decision which does not 2. terminate proceedings as regards one of the parties can only be appealed against if joined with the final decision, unless the decision allows separate appeal. Unchanged 29. 8. 2000 EN Official Journal of the European Communities C 248 E/33 INITIAL PROPOSAL AMENDED PROPOSAL Article 60 Persons entitled to appeal and to be parties to appeal proceedings Any party to proceedings adversely affected by a decision may appeal. Any other parties to the proceedings shall be parties to the appeal proceedings as of right. Article 61 Time limit and form of appeal Notice of appeal must be filed in writing at the Office within two months after the date of notification of the decision appealed against. The notice shall not be deemed to have been filed until after the appeal fee has been paid. Within four months after the date of notification of the decision, a written statement setting out the grounds of appeal must be filed. Article 62 Interlocutory revision If the department whose decision is contested considers 1. the appeal to be admissible and well founded, it shall amend its decision. This shall not apply where the appellant is opposed by another party to the proceedings. If the decision is not amended within one month after 2. receipt of the appeal shall be remitted to the Board of Appeal without delay and without comment as to its merits. the statement of grounds, Article 63 Examination of appeals If the appeal 1. examine whether the appeal is to be allowed. is admissible, the Board of Appeal shall In the examination of the appeal, the Board of Appeal 2. shall invite the parties, as often as necessary, to file obser- vations, within a period to be fixed by the Board of Appeal, on communications from the other parties or those issued by itself. Article 64 Decisions in respect of appeals 1. Following the examination as to the merits of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence the department which was responsible for the decision of appealed against or remit for further action. the case to that department 2. If the Board of Appeal remits the case for further action to the department whose decision was appealed against, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same. C 248 E/34 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL 3. The decisions of the Boards of Appeal shall take effect only as from the date of expiration of the period referred to in Article 65(5) or, if an action has been brought before the Court of Justice within that period, as from the date of dismissal of such action. Article 65 Actions before the Court of Justice 1. Justice Actions may be brought before the Court of against decisions of the Office taken by the Boards of Appeal on appeals. infringement The action may be brought on grounds of lack of 2. procedural of competence, requirement, infringement of the Treaty, of this Regulation or of any rule of law relating to their application or misuse of power. essential an The Court of Justice has jurisdiction to annul or alter the 3. contested decision. 4. The action shall be open to any party to proceedings before the Board of Appeal adversely affected by its decision. 5. The action shall be brought before the Court of Justice within two months of the date of notification of the decision of the Board of Appeal. The Office shall be required to take the necessary 6. measures to comply with the judgement of the Court of Justice. TITLE IX PROCEDURE BEFORE THE OFFICE S e c t i o n 1 General provisions Article 66 Statement of reasons on which decisions are based Decisions of the Office shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. Article 67 Examination of the facts by the Office of its own motion its own motion; however, In proceedings before it the Office shall examine the facts 1. in proceedings relating to a of declaration of invalidity, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought, its own motion; however, In proceedings before it the Office shall examine the facts 1. in proceedings relating to a of declaration of invalidity, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought, except to the extent that the grounds of invalidity specified in Articles 27(1)(a), 10 and 10a are involved. 29. 8. 2000 EN Official Journal of the European Communities C 248 E/35 INITIAL PROPOSAL AMENDED PROPOSAL The Office may disregard facts or evidence which are not 2. submitted in due time by the parties concerned. Unchanged Article 68 Oral proceedings If the Office considers that oral proceedings would be 1. the they shall be held either at the instance of expedient, Office or at the request of any party to the proceedings. 2. Oral proceedings, including delivery of the decision, shall be public, unless the Office decides otherwise in cases where the public could have serious and unjustified admission of disadvantages, in particular for a party to the proceedings. Article 69 Taking of evidence In any proceedings before the Office the means of giving 1. or obtaining evidence shall include the following: (a) hearing the parties; (b) requests for information; (c) the production of documents and items of information; (d) hearing the witnesses; (e) opinions by experts; (f) statements in writing, sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up. The relevant department of the Office may commission 2. one of its members to examine the evidence adduced. If the Office considers it necessary for a party, witness or 3. expert to give evidence orally, it shall issue a summons to the person concerned to appear before it. 4. The parties shall be informed of the hearing of a witness or expert before the Office. They shall have the right to be present and to put questions to the witness or expert. Article 70 Notification The Office shall, as a matter of course, notify those concerned of decisions and summonses and of any notice or other communication from which a time limit is reckoned, or of which those concerned must be notified under other provisions of this Regulation or of the Implementing Regulation, or of which notification has been ordered by the President. C 248 E/36 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL Article 71 Restitutio in integrum for or The applicant 1. right holder of a registered Community design or any other party to proceedings before the Office who, in spite of all due care required by the circum- stances having been taken, was unable to observe a time limit in dealings with the Office shall, upon application, have his rights re-established if the non-observance in question has the direct consequence, by virtue of the provisions of this Regu- lation, of causing the loss of any rights or means of redress. 2. The application must be filed in writing within two months of the removal of the cause of non-compliance with the time limit. The omitted act must be completed within this period. The application shall only be admissible within the year immediately following the expiry of the infringed time limit. In the case of non-submission of the request for renewal of regis- tration or of non-payment of a renewal fee, the further period of six months provided for in the second sentence of Article 54(3) shall be deducted from the period of one year. 3. The application must state the grounds on which it is based and must set out the facts on which it relies. It shall not be deemed to be filed until the fee for the re-establishment of rights has been paid. The department of the Office empowered to decide on 4. the omitted act shall decide upon the application. 5. The provisions of this Article shall not be applicable to the time limits referred to in paragraph 2 and in Article 43(1). 6. Where the applicant for or right holder in a registered Community design has his rights re-established, he may not invoke his rights vis-à-vis a third party who, in good faith, during the period between the loss of rights in the application or in the registered Community design and publication of the mention of re-establishment of those rights, has put products on the market in which a design is incorporated or to which it is applied, which is comprised within the scope of protection of the registered Community design. 7. A third party who may avail himself of the provisions of paragraph 6 may bring third party proceedings against the decision re-establishing the rights of for or right holder in the registered Community design within a period of two months as from the date of publication of the mention of re-establishment of those rights. the applicant Nothing in this Article shall limit the right of a Member 8. State to grant restitutio integrum in respect of time limits provided for in this Regulation and to be complied with vis-à-vis the authorities of such State. 29. 8. 2000 EN Official Journal of the European Communities C 248 E/37 INITIAL PROPOSAL AMENDED PROPOSAL Article 72 Reference to general principles In the absence of procedural provisions in this Regulation, the implementing Regulation, the fees Regulations or the rules of procedure of the Boards of Appeal, the Office shall take into account the principles of procedural law generally recognised in the Member States. Article 73 Termination of financial obligations 1. Rights of the Office to payment of a fee shall be extin- guished after four years from the end of the calendar year in which the fee fell due. 2. Rights against the Office for the refunding of fees or sums of money paid in excess of a fee shall be extinguished after four years from the end of the calendar year in which the right arose. 3. The periods laid down in paragraphs 1 and 2 shall be interrupted, in the case covered by paragraph 1, by a request for payment of the fee and, in the case covered by paragraph 2, by a reasoned claim in writing. On interruption it shall begin again immediately and shall end at the latest six years after the end of the year in which it originally began, unless in the meantime judicial proceedings to enforce the right have begun; in such case the period shall end no earlier than one year after the judgement has acquired the authority of a final decision. S e c t i o n 2 Costs Article 74 Allocation of costs a registered Community design or The losing party in proceedings for a declaration of 1. invalidity of appeal proceedings shall bear the fees incurred by the other party as well as all costs incurred by him essential to the proceedings, including travel and subsistence and the remuneration of an agent, adviser or advocate, within the limits of scales set for each category of costs under the conditions laid down in the implementing Regulation. 2. However, where each party succeeds on some and fails on other heads, or if reasons of equity so dictate, the Invalidity Division or Board of Appeal shall decide a different appor- tionment of costs. The party who terminates the proceedings by surren- 3. dering the registered Community design or by not renewing its registration or by withdrawing the application for a declaration of invalidity or the appeal, shall bear the fees and the costs incurred by the other party as stipulated in paragraph 1 and 2. C 248 E/38 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL 4. Where a case does not proceed to judgement, the costs shall be in the discretion of the Invalidity Division or Board of Appeal. 5. Where the parties conclude before the Invalidity Division or Board of Appeal a settlement of costs differing from that provided for in paragraphs 1 to 4, the body concerned shall take note of that agreement. On request, the registry of 6. the Invalidity Division or Board of Appeal shall fix the amount of the costs to be paid so pursuant determined may be reviewed by a decision of the Invalidity Division or Board of Appeal on a request filed within the period prescribed by the implementing Regulation. to the preceding paragraphs. The amount Article 75 Enforcement of decisions fixing the amount of costs Any final decision of the Office fixing the amount of 1. costs shall be enforceable. 2. Enforcement shall be governed by the rules of civil, procedure in force in the State in the territory of which it is carried out. The order for its enforcement shall be appended to the decision, without any other formality than verfication of the authenticity of the decision, by the national authority which the government of each Member State shall designate for this purpose and shall make known to the Office and to the Court of Justice. 3. When these formalities have been completed on application by the party concerned, the latter may proceed to enforcement in accordance with the national law, by bringing the matter directly before the competent authority. 4. Enforcement may be suspended only by a decision of the Court of Justice. However, the courts of the Member State concerned shall have that enforcement is being carried out improperly. jurisdiction over complaints S e c t i o n 3 Information of the public and of the official authorities of the Member States Article 76 Register The Office shall keep a register to be known as the Community design register, which shall contain those particulars of which the registration is provided for by this Regulation or by the implementing Regulation. The register shall be open to public inspection, except to the extent that Article 52(2) provides otherwise to registered Community designs subject to deferment of publication. in relation to entries relating 29. 8. 2000 EN Official Journal of the European Communities C 248 E/39 INITIAL PROPOSAL AMENDED PROPOSAL Article 77 Periodical publications 1. This Office shall periodically publish a Community design Bulletin containing entries open to public inspection in the register as well as other particulars the publication of which is prescribed by this Regulation or by the implementing Regu- lation. Notices and information of a general character issued by 2. the President of the Office, as well as any other information relevant to this Regulation or its implementation. Notices and information of a general character issued by 2. the President of the Office, as well as any other information relevant to this Regulation or its implementation, shall be published in the Official Journal of the Office for Harmon- (trademarks and designs)í, ization in the Internal Market referred to in Article 85 of the Regulation on the Community Trademark. Article 78 Inspection of files Unchanged to for The files relating applications 1. registered Community designs which have not yet been published or the files relating to registered Community designs which are subject to deferment of publication in accordance with Article 52 or which, being subject to such deferment, have been surrendered before or on the expiry of that period, shall not be made available for inspection without the consent of the applicant for or the right holder in the registered Community design. 2. Any person who can establish a legitimate interest may inspect a file without the consent of the applicant for or right holder in the registered Community design prior to the publi- cation or after the surrender of the latter in the case provided for pursuant to paragraph 1. This shall in particular apply if the interested person proves that the applicant for, or the right holder in, a registered Community design has taken steps with a view to invoking against him the right under the registered Community design. Subsequent 3. Community design, the file may be inspected on request. publication the the to of registered 4. However, where a file is inspected pursuant to paragraph 2 or 3, certain documents in the file may be withheld from the inspection in accordance with the provisions of implementing Regulation. Article 79 Administrative co-operation Unless otherwise provided in this Regulation or in national laws, the Office and the courts or authorities of the Member shall on request give assistance to each other by States communicating information or opening files for inspection. Where the Office opens files to inspection by courts, Public Prosecutors’ Offices or central industrial property offices, the inspection shall not be subject to the restrictions laid down in Article 78. C 248 E/40 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL Article 80 Exchange of publications The Office and the central 1. the Member States shall despatch to each other on request and for their own use one or more copies of their respective publi- cations free of charge. industrial offices of 1. The Office and the central industrial property offices of the Member States shall despatch to each other on request and for their own use one or more copies of their respective publi- cations free of charge. The Office may conclude agreements to the exchange or 2. supply of publications. S e c t i o n 4 Representation Article 81 General principles of representation Subject to the provisions of paragraph 2, no person shall 1. be compelled to be represented before the Office. 2. Without prejudice to the second sentence of paragraph 3, natural or legal persons not having either their domicile or their principal place of business or a real and effective in the Community industrial or commercial establishment must be represented before the Office in accordance with Article 82(1) in all proceedings before the Office established by this Regulation, other than in filing an application for a registered Community design. Natural or 3. legal persons having their domicile or principal place of business or a real and effective industrial or commercial establishment in the Community may be repre- sented before the Office by one of their employees, who must file with it a signed authorisation for inclusion in the files, the details of which are set out in the implementing Regulation. An employee of a legal person to which this paragraph applies may also represent other legal persons which have economic connections with the first legal person, even if those other legal persons have neither their domicile nor their principal place of business nor a real and effective industrial or commercial estab- lishment within the Community. Article 82 Professional representatives Representation of natural or legal persons before the may 1. only be undertaken by: Representation of natural or legal persons in proceedings this Regulation may only be the Office under 1. before undertaken by: (a) any legal practitioner qualified in one of the Member States and having his place of business within the Community, to the extent that he is entitled, within the said State, to act as a representative in industrial property matters; or Unchanged 29. 8. 2000 EN Official Journal of the European Communities C 248 E/41 INITIAL PROPOSAL AMENDED PROPOSAL (b) any professional representatives whose (b) any professional representatives whose name has been entered on the list of professional representatives referred (b) of Regulation (EC) No 40/94 of to in Article 89(1) 20. 12. 1993 on the Community trade mark, or (c) persons whose names are entered on the special list of professional representatives for design matters referred to in paragraph 4. 2. The persons referred to in paragraph 1(c) shall only be entitled to represent third persons in proceedings on design matters before the Office. 3. The implementing Regulation shall provide whether and under what conditions representatives must file with the Office a signed authorisation for insertion on the files. 4. Any natural person may be entered on the special list of professional representatives in design matters, if he fulfils the following conditions: (a) He must be a national of one of the Member States; (b) he must have his place of business or employment in the Unchanged Community; (c) in design matters before the central requirement of conditional upon the industrial property office of a Member. Where, in that State, the entitlement is not special professional qualifications, persons applying to be entered on the list before the central industrial property office of the said State for at five years. However, persons whose professional qualification to represent natural or legal persons in design matters, before the central industrial property office of one of the Member States is officially recognised in accordance with the regulations laid by such State, shall not be subject to the condition of having exercised the profession. least (c) he must be entitled to represent natural or legal persons in design matters before the central industrial property office of a Member. Where, in that State, the entitlement to represent in design matters is not conditional upon the requirement of special professional qualifications, persons applying to be entered on the list must have habitually acted in design matters before the central industrial property office of the said State for at least five years. However, persons whose professional qualification to represent natural or in design matters, legal persons before the central industrial property office of one of the Member States is officially recognised in accordance with the regulations laid by such State, shall not be subject to the condition of having exercised the profession. Entry shall be effected upon request, accompanied by a 5. certificate furnished by the central industrial property office of the Member State concerned, which must indicate that the conditions laid down are fulfilled. Entry on the list referred to in paragraph 4 shall be 5. effected upon request, accompanied by a certificate furnished by the central industrial property office of the Member State concerned, which must indicate that the conditions laid down in the said paragraph are fulfilled. 6. The President of the Office may grant exemption from: Unchanged (a) the requirement of paragraph 4(a) in special circumstances. (b) the requirement of paragraph 4(c), second sentence, if the applicant furnishes proof that he has acquired the requisite qualification in another way. C 248 E/42 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL 7. The conditions under which a person may be removed from the list shall be laid down in the implementing Regu- lation. Unchanged TITLE X JURISDICTION AND PROCEDURE IN LEGAL ACTIONS RELATING TO COMMUNITY DESIGNS S e c t i o n 1 Jurisdiction and Enforcement Article 83 Application of the Convention on Jurisdiction and Enforcement Unless otherwise specified in this Regulation, 1. the Convention on Jurisdiction and the Enforcement of Judgements in Civil and Commercial Matters, signed in Brussels on 27 September 1968, as amended by the Conventions on the Accession to that Convention of the States acceding to the European Communities, the whole of which Convention and of which Conventions of Accession are hereinafter referred to as the Convention on Jurisdiction and Enforcementí, shall apply to proceedings relating to Community designs and applications for registered Community designs, as well as to proceedings relating to actions on the basis of Community designs and national design rights enjoying simultaneous protection. 1(a) The provisions of the Convention on Jurisdiction and Enforcement which are rendered applicable by the preceding paragraph shall have effect in respect of any Member State solely in the text which is in force in respect of that State at any given time. In the event of proceedings in respect of the actions and 2. claims referred to in Article 85: Unchanged (a) Articles 2, 4, 5(1), (3), Convention on Jurisdiction and Enforcement apply; (4) and (5), and 24 of the shall not (a) Articles 2, 4, 5(1), (3), (4) and (5), Articles 16(4) and 24 of the Convention on Jurisdiction and Enforcement shall not apply; (b) Articles 17 and 18 of that Convention shall apply subject to Unchanged the limitations in Article 86 (4) of this Regulation; (c) the provisions of Title II of that Convention which are applicable to persons domiciled in a Member State shall also be applicable to persons who do not have a domicile in any Member State but have an establishment therein. 3. (deleted) 29. 8. 2000 EN Official Journal of the European Communities C 248 E/43 INITIAL PROPOSAL AMENDED PROPOSAL Article 83a Transitional provision The provisions of the Convention on Jurisdiction and Enforcement rendered applicable by virtue of Article 83 shall not have effect in respect of any Member State for which that Convention has not yet entered into force. Until such entry into force proceedings referred to in Article 83 (1) shall be governed in such a Member State by any bilateral or multi- lateral convention governing its relationship with another Member State concerned, or, if no such convention exists, by its domestic law on jurisdiction, recognition and enforcement of decisions. S e c t i o n 2 Disputes concerning the infringement and validity of Community designs Article 84 Community design Courts The Member States shall designate in their territories as 1. limited a number as possible of national courts and tribunals of first and second instance (Community Design Courts), which shall perform the functions assigned to them by this Regu- lation. State Each Member 2. the Commission within three years of the entry into force of this Regulation a list of Community Design Courts, indicating their names and their territorial jurisdiction. communicate shall to Any change made after communication of 3. the list referred to in paragraph 2 in the number, the names or terri- torial jurisdiction of the Community Design Courts shall be notified without delay by the Member State concerned to the Commission. 4. The information referred to in paragraphs 2 and 3 shall be notified by the Commission to the Member States and published in the Official Journal of the European Communities. 5. As long as a Member State has not communicated the list as stipulated in paragraph 2, jurisdiction for any proceedings resulting from an action covered by Article 85 for which the courts of that State have jurisdiction pursuant to Article 86, shall lie with that court of the State in question which would have jurisdiction ratione loci and ratione materiae in the case of proceedings relating to a national design right of that State. Article 85 Jurisdiction over infringement and validity The Community design Courts shall have exclusive jurisdiction: C 248 E/44 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL (a) for infringement actions and if they are permitted under national law actions in respect of threatened infringement of Community designs; (b) for for actions declaration of non-infringement of Community designs, if they are permitted under national law; (c) for actions for a declaration of invalidity of an unregistered Community design; (d) for counter-claims for a declaration of invalidity of a Community design raised in connection with actions under (a). Article 86 International jurisdiction Subject to the provisions of this Regulation and to any 1. provisions of the Convention on Jurisdiction and Enforcement applicable by virtue of Article 83, proceedings in respect of the actions and claims referred to in Article 85 shall be brought in the courts of the Member State in which the defendant is if he is not domiciled in any of the Member domiciled or, States, in which he has an establishment. 2. If the defendant is neither domiciled nor has an estab- lishment in any of the Member States, such proceedings shall be brought in the courts of the Member State in which the plaintiff is domiciled or, if he is not domiciled in any of the Member States, in which he has an establishment. 3. If neither the defendant nor the plaintiff is so domiciled shall be or has such an establishment, brought in the courts of the Member States where the Office is situated. such proceedings 4. Notwithstanding the provisions of paragraphs 1, 2 and 3: the Convention on Jurisdiction and (a) Article 17 of Enforcement the parties agree that a different Community design Court shall have jurisdiction; shall apply if (b) Article 18 of that Convention shall apply if the defendant enters an appearance before a different Community design Court. Proceedings in respect of the actions and claims referred 5. to in Article 85(a) and (d) may also be brought in the courts of the Member State in which the act of infringement has been committed or threatened. Article 87 Extent of jurisdiction on infringement 1. A Community design Court whose jurisdiction is based on Article 86(1), (2), (3) or (4) shall have jurisdiction in respect of acts of infringement committed or threatened within the territory of any of the Member States. 29. 8. 2000 EN Official Journal of the European Communities C 248 E/45 INITIAL PROPOSAL AMENDED PROPOSAL 2. A Community design Court whose jurisdiction is based on Article 86(5) shall have jurisdiction only in respect of acts of infringement committed or threatened within the territory of the Member State in which that court is situated. Article 88 Action or counter-claim for a declaration of invalidity of a Community design 1. An action or a counter-claim for a declaration of invalidity of a Community design may only be based on the grounds for invalidity mentioned in Article 27. 2. The action or the counterclaim may be brought: (a) in the cases specified in Article 27(1)(c), (e) and (f) only by the person entitled to the right in question, (b) in the case specified in Article 27(1)(g), only by the person or entity concerned by the use, (c) in the case specified in Article 27(1)(d), only by the right holder of the earlier right. 3. If the counter-claim is brought in a legal action to which the right holder the Community design is not already a party, he shall be informed thereof and may be joined as a party to the action in accordance with the conditions set out in the law of the Member State where the court is situated. 3. If the counter-claim is brought in a legal action to which the right holder of the Community design is not already a party, he shall be informed thereof and may be joined as a party to the action in accordance with the conditions set out in the law of the Member State where the court is situated. The validity of a Community design may not be put in 4. issue in an action for a declaration of non-infringement. Article 89 Presumption of validity defence as to the merits threatened infringement In proceedings in respect of an infringement action or an 1. action for the Community design Court shall treat the Community design as valid unless its validity is put in issue by the defendant with a counterclaim for a declaration of invalidity. In proceedings in respect of an infringement action or an 1. action for threatened infringement of a registered Community design, the Community design Court shall treat the Community design as valid unless its validity is put in issue by the defendant with a counterclaim for a declaration of invalidity. In proceedings in respect of an infringement action or an 2. the Community design action for threatened infringement, Court shall, the right holder presents evidence to sustain his claim that the design has an individual character, treat the design as threatened In proceedings in respect of an infringement action or an 2. an unregistered infringement of action for Community design, the Community design Court shall, if the right holder presents evidence to sustain his claim that the design has an individual character, treat the design as valid, unless its validity is put in issue by the defendant with a counterclaim for a declaration of invalidity. C 248 E/46 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL 3. In proceedings referred to in paragraph 1, a plea relating to the invalidity of a Community design submitted otherwise than by way of counter-claim shall be admissible in so far as the defendant claims that the Community design should be declared invalid on account of national design right within the meaning of Article 27 belonging to him. 3. In proceedings referred to in paragraphs 1 and 2, a plea relating to the invalidity of a Community design submitted otherwise than by way of counter-claim shall be admissible in so far as the defendant claims that the Community design should be declared invalid on account of an earlier national design right within the meaning of Article 27(1)(d) belonging to him. Article 90 Unchanged Judgements of validity 1. Where in a proceeding before a Community design Court the Community design has been put in issue by way of a counter-claim for a declaration of invalidity: (a) if any of the grounds mentioned in Article 27 are found to prejudice the maintenance of the Community design, the Court shall declare the Community design invalid; (b) if none of the grounds mentioned in Article 27 is found to prejudice the maintenance of the Community design, the Court shall reject the counter-claim. 2. The Community design Court with which a counter-claim for a declaration of invalidity of a registered Community design has been filed shall inform the Office of the date on which the counter-claim was filed. The latter shall record this fact in the register. 3. The Community design Court hearing a counter-claim for a declaration of invalidity of a registered Community design may, on application by the right holder of the registered Community design and after hearing the other parties, stay the proceedings and request to submit an application for a declaration of invalidity to the Office within a time limit which shall determine. If the application is not made within the time limit, the proceedings shall continue; the counter-claim shall be deemed withdrawn. Article 95(3) shall apply. the defendant 3. The Community design Court hearing a counter-claim for a declaration of invalidity of a registered Community design may, on application by the right holder of the registered Community design and after hearing the other parties, stay the proceedings and request to submit an application for a declaration of invalidity to the Office within a time limit which the Court shall determine. If the application the proceedings shall is not made within the time limit, continue; the counter-claim shall be deemed withdrawn. Article 95(3) shall apply. the defendant 4. Where a Community design Court has given a judgement which has become final on a counter-claim for a declaration of invalidity of a registered Community design, a copy of the judgement shall be sent to the Office. Any party may request information about such transmission. The Office shall mention the judgement in the register in accordance with the provisions of the implementing Regulation. Unchanged No counter-claim for a declaration of 5. invalidity of a registered Community design may be made if an application relating to the same subject-matter and cause of action, and involving the same parties, has already been determined by the Office in a decision which has become final. 29. 8. 2000 EN Official Journal of the European Communities C 248 E/47 INITIAL PROPOSAL AMENDED PROPOSAL Article 91 Effects of the judgement on validity When it has become final, a judgement of a Community design Court declaring a Community design invalid shall have, subject to Article in all the Member States the effects specified in Article 28. When it has become final, a judgement of a Community design Court declaring a Community design invalid shall have, subject to Article 27(5), in all the Member States the effects specified in Article 28. Article 92 Applicable law Unchanged The Community design Courts shall apply the provisions 1. of this Regulation. On all matters not covered by this Regulation, a law, 2. Community design Court including its private international law. apply its national shall Unless otherwise provided 3. a Community design Court shall apply the rules of procedure governing the same type of action relating to a national design right in the Member State where it is situated. in this Regulation, Article 93 Sanctions in actions for infringement 1. Where in an action for infringement or for threatened the infringement a Community design Court a threatened infringed defendant Community design, it shall, unless there are special reasons for not doing so, issue that infringe finds to has or 1. Where in an action for infringement or for threatened the infringement a Community design Court a threatened infringed defendant Community design, it shall, unless there are special reasons for not doing so, issue the following orders: that infringe finds to has or (b) issue an order to seize the infringing products; (b) an order to seize the infringing products; (a) an order prohibiting the defendant from proceeding with the acts which have infringed or would infringe the Community design; (c) an order to seize materials and implements predominantly used in order to manufacture the infringing goods, if their owner knew the effect for which such use was intended or if such effect would have been obvious in the circum- stances; (d) any order imposing other sanctions appropriate under the circumstances which are provided by the law of the infringement or Member State in which the acts of threatened infringement including its private international law. committed, are 2. The Community design Court shall take such measures in accordance with its national law as are aimed at ensuring the orders referred to in paragraphs 1 and 2 are complied with. 2. The Community design Court shall take such measures in accordance with its national law as are aimed at ensuring the orders referred to in paragraph 1 are complied with. C 248 E/48 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL Article 94 Provisional measures, including protective measures including protective measures, 1. Application may be made to the courts of a Member State, including Community design Courts, for such provisional measures, in respect of a Community design as may be available under the law of that State on national design rights even if, under this Regulation, a Community design Court of another Member State has juris- diction as to the substance of the matter. In proceedings relating to provisional measures, including 2. protective measures, a plea otherwise than by way of counter-claim relating to the invalidity of a Community design submitted by the defendant shall be admissible. Article (2) shall, however, apply mutatis mutandis. In proceedings relating to provisional measures, including 2. protective measures, a plea otherwise than by way of counter-claim relating to the invalidity of a Community design submitted by the defendant shall be admissible. Article 89(2) shall, however, apply mutatis mutandis. 3. A Community design Court whose jurisdiction is based on Article 86(1), (2), (3) or (4) shall have jurisdiction to grant including protective measures, which, provisional measures, subject recognition and enforcement pursuant to Title III of the Convention on Juris- diction and Enforcement, are applicable in the territory of any Member State. No other court shall have such jurisdiction. to any necessary procedure for Unchanged Article 95 Specific rules on related actions 1. A Community Design Court hearing an action referred to than an action for a declaration of in Article 85, other non-infringement, shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties, or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community design is another Community Design Court on account of a counter-claim or, in the case of a registered Community design, where an application for a declaration of invalidity has already been filed at the Office. in issue before already 2. The Office, when hearing an application for a declaration of invalidity of a registered Community design, shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties, or at the request of one of the parties and after hearing the other parties, stay the proceedings where registered Community design is already in issue on account of a counter-claim before a Community Design Court. However, if one of the parties to the proceedings before the Community Design Court so requests, the court may, after hearing the other parties to these proceedings, stay the proceedings. The Office shall in this instance continue the proceedings pending before it. validity of the the 29. 8. 2000 EN Official Journal of the European Communities C 248 E/49 INITIAL PROPOSAL AMENDED PROPOSAL 3. Where proceedings protective measures, for the duration of the stay. the Community Design Court it may order provisional measures, stays the including Article 96 Jurisdiction of Community Design Courts of second instance-further appeal An appeal to the Community Design Courts of second 1. instance shall lie from judgements of the Community Design Courts of first instance in respect of proceedings arising from the actions and claims referred to in Article 85. The conditions under which an appeal may be lodged 2. with a Community Design Court of second instance shall be determined by the national law of the Member State in which that court is located. The national rules concerning further appeal shall be judgements of Community Design 3. applicable in respect of Courts of second instance. S e c t i o n 3 Other disputes concerning Community designs Article 97 Supplementary provisions on the jurisdiction of national courts other than Community Design Courts 1. Within the Member State whose courts have jurisdiction pursuant to the courts having jurisdiction for actions relating to Community designs other than those referred to in Article 85 shall be those which would have jurisdiction ratione loci and ratione materiae in actions relating to a national design right in that State. 1. Within the Member State whose courts have jurisdiction pursuant to Articles 83(1) or 83a, the courts having juris- diction for actions relating to Community designs other than those referred to in Article 85 shall be those which would have jurisdiction ratione loci and ratione materiae in actions relating to a national design right in that State. 2. Actions relating to Community designs other than those referred to in Article 85, for which no court has jurisdiction pursuant to and paragraph 1 of this Article may be heard before the courts of the Member State in which the Office is situated. 2. Actions relating to Community designs other than those referred to in Article 85, for which no court has jurisdiction pursuant to Articles 83(1), 83a and paragraph 1 of this Article may be heard before the courts of the Member State in which the Office is situated. Article 98 Unchanged Obligation of the national court A national court which is dealing with an action relating to a Community design other than the actions referred to in Article 85 shall treat the design as valid. Articles 89(2) and 94(2) shall, however, apply mutatis mutandis. C 248 E/50 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL TITLE XI EFFECTS ON THE LAWS OF THE MEMBER STATES Article 99 Parallel actions on the basis of Community designs and national design rights for for actions infringement or 1. Where threatened infringement involving the same cause of action and between the same parties are brought before the courts of different Member States, one being seized on the basis of a Community design and the other seized on the basis of a the court design right providing simultaneous protection, other than the court its own motion decline jurisdiction in favour of that court. The court which jurisdiction may stay its would be proceedings if the jurisdiction of the other court is contested. required to decline first seized shall of for for actions infringement or 1. Where threatened infringement involving the same cause of action and between the same parties are brought before the courts of different Member States, one being seized on the basis of a Community design and the other seized on the basis of a national design right providing simultaneous protection, the court other its own motion decline jurisdiction in favour of that court. The court which would be required to decline jurisdiction may stay its proceedings if the jurisdiction of the other court is contested. first seized shall of than the court 2. The Community Design Court hearing an action for infringement or threatened infringement on the basis of a Community design shall reject the action if a final judgement on the merits has been given on the same cause of action and between the same parties on the basis of a design right providing simultaneous protection. Unchanged 3. The court hearing an action for infringement or for threatened infringement on the basis of a national design right shall reject judgement on the the action if a final merits has been given on the same cause of action and between the same parties on the basis of a Community design providing simultaneous protection. The preceding paragraphs shall not apply in respect of 4. provisional measures, including protective measures. Article 100 Relationship to other forms of protection under national law The provisions of 1. this Regulation shall be without prejudice to any provisions of Community law or of the law of the Member States concerned relating to unregistered design rights, trade marks or other distinctive signs, patents and utility models, typefaces, civil liability and unfair competition. 2. A design protected by a Community design shall also be eligible for protection under the law of copyright of Member States as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State. 29. 8. 2000 EN Official Journal of the European Communities C 248 E/51 INITIAL PROPOSAL AMENDED PROPOSAL TITLE XII THE OFFICE S e c t i o n 1 General provisions Article 101 SUPPLEMENTARY PROVISIONS CONCERNING THE OFFICE Unchanged General provision Unless otherwise provided in this Title, Title XII of the Regu- lation on the Community trade mark shall apply to the Office with regard to its tasks under this Regulation. Article 102 (deleted) Administrative services Article 103 Staff Article 104 Privileges and immunities Article 105 Liability Article 106 Jurisdiction of the Court of Justice (deleted) (deleted) (deleted) (deleted) S e c t i o n 2 Unchanged Management of the Office Article 107 of the President In addition to the powers conferred on the President place before the Commission any proposal to amend this Regulation, the Fees Regulation and any the implementing Regulation, other rule to registered Community designs, after consulting the Administrative Supplementary powers of the President In addition to the functions and powers conferred on the President of the Office by Article 119 of the Regulation on the Community trade mark, the President may place before the Commission any proposal to amend this Regulation, the implementing Regulation, the Fees Regulation and any other rule to the extent that they apply to registered Community designs, after consulting the Administrative Board and, in the case of the Fees Regulation, the Budget Committee. C 248 E/52 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL Article 108 (deleted) Appointment of senior officials S e c t i o n 3 Unchanged Administrative Board Article 109 In addition to any powers conferred on by the (a) shall set the date for the first filing of applications for registered Community designs pursuant to Article 128(2); (b) it shall be consulted before adoption of the guidelines for examination as requirements, and invalidity proceedings in the Office and in the other cases provided for in this Regulation; to formal Supplementary powers of the Administrative Board In addition to any powers conferred on the Administrative Board by the Regulation on the Community trade mark or by other provisions of this Regulation, (a) The Administrative Board shall set the date for the first filing of applications for registered Community designs pursuant to Article 128(2); (b) it shall be consulted before adoption of the guidelines for examination as to formal requirements, examination as to grounds invalidity proceedings in the Office and in the other cases provided for in this Regulation; registration refusal and for of Article 110 Composition Article 111 Chairmanship Article 112 Meetings (deleted) (deleted) (deleted) S e c t i o n 4 Unchanged Implementation of procedures Article 113 Competence For taking decisions in connection with the procedures laid down in this For taking decisions in connection with the procedures laid down in this Regulation the following shall be competent: (b) and Legal Division; (b) The Administration of Trade marks and Design and Legal (a) Examiners; (c) Invalidity Divisions; (d) Boards of Appeal. Division; Unchanged 29. 8. 2000 EN Official Journal of the European Communities C 248 E/53 INITIAL PROPOSAL AMENDED PROPOSAL Article 114 Examiners shall be responsible for taking decisions in relation to an application for a registered Community design. An examiner shall be responsible for taking decisions on behalf of the Office in relation to an application for a registered Community design. Article 115 Unchanged 1. The Administration The Administration of Trade marks and Design and Legal Division 1. The Administration of Trademarks and Legal Division instituted by the Regulation on the Community trade mark shall become the Administration of Trade marks and Design and Legal Division. 2. In addition to the powers conferred upon it by the Regu- lation on the Community trade mark, it shall be responsible for taking those decisions required by this Regulation which do not fall within the competence of an examiner or an Invalidity Division. It shall in particular be responsible for decisions in respect of entries in the Register. Article 116 Invalidity Divisions Unchanged 1. An Invalidity Division shall be responsible for taking decisions in relation to an application for a declaration of invalidity of a registered Community design. An Invalidity Division shall consist of three members. At 2. least two of these members must be legally qualified. Article 117 Boards of Appeal Board of Appeal shall be responsible for deciding on appeals from decisions of the Invalidity Divisions In addition to the powers conferred upon it by the Regulation on the Community trade mark, a Board of Appeal instituted by that Regulation shall be responsible for deciding on appeals from decisions of the examiners, the Invalidity Divisions and from the decisions of the Administration of Trade marks and Design and Legal Division Article 118 (deleted) Independence of the members of the Boards of Appeal Article 119 (deleted) Exclusion and objection C 248 E/54 EN Official Journal of the European Communities 29. 8. 2000 INITIAL PROPOSAL AMENDED PROPOSAL Article 120 (deleted) Appointment of members of Invalidity Divisions and Boards of Appeal during a transitional period S e c t i o n 5 (deleted) Financial Provisions Article 121 Budget Article 122 Fees TITLE XIII FINAL PROVISIONS Article 123 Official languages (deleted) (deleted) Unchanged (deleted) Article 124 Unchanged Implementing Regulation The rules implementing this Regulation shall be adopted 1. in an implementing Regulation. Unchanged In addition to the fees already provided for in fees shall 2. be charged, in accordance with the detailed rules of application laid down in the Implementing Regulation in the cases listed below: In addition to the fees already provided for in the 2. preceding Articles, fees shall be charged, in accordance with the detailed rules of application laid down in the Implementing in the cases listed below: Regulation and a Fees Regulation, (a) late payment of the registration fee; Unchanged (b) late payment of the publication fee; (c) late payment of the fee for deferment of publication; (d) late payment of additional fees for multiple applications; (e) issue of a copy of the certificate of registration; (f) (g) registration of design; the transfer of a registered Community registration of a licence or another right in respect of a registered Community design; (h) cancellation of the registration of a licence or another right; (i) issue of an extract from the register; 29. 8. 2000 EN Official Journal of the European Communities C 248 E/55 INITIAL PROPOSAL AMENDED PROPOSAL (j) inspection of the files; (k) issue of copies of file documents; (l) communication of information of a file; (m) review of the determination of the procedural costs to be refunded; (n) issue of certified of the application. 3. The implementing Regulation and the Fees Regulation shall be adopted and amended in accordance with the procedure laid down in Article 141 of the Regulation on the Community Trademark. Article 124a Unchanged Rules of procedure of the Boards of Appeal The rules of procedure of the Boards of Appeal shall apply to appeals heard by those Boards under this Regulation, without prejudice to any necessary adjustment or additional provision, adopted in accordance with the procedure laid down in Article 141 of the Regulation on the Community trade mark. Article 125 System of exchange of information Article 126 Establishment of a committee and procedure for the adoption of implementing regulations Article 127 Fees Regulation Article 128 Entry into force (deleted) (deleted) (deleted) Unchanged 1. This Regulation shall enter into force on the 60th day following its publication in the Official Journal of the European Communities. 2. Applications for registered Community designs may be filed at the Office from the date fixed by the Administrative Board on the recommendation by the 2. Applications for registered Community designs may be filed at the Office from the date fixed by the Administrative Board on the recommendation by the President of the Office. Applications 3. filed within three months before the date referred to in paragraph 2, shall be deemed to have filed on that date. registered Community designs for Unchanged This Regulation shall be binding in its entirety and directly applicable in all Member States