Achievements in 10 Years
of Community Designs
Paul Maier
Director of the European Observatory on
Infringements of Intellectual Property Rights, OHIM
David Musker
Jenkins & Co.
Gerhard Bauer
IP consultant
Former Chief Trademark Counsel for Daimler AG, Germany
Grégoire Bisson
Director, The Hague Registry, Brands and Designs Sector, WIPO
Chair: Sir Robin Jacob
Professor of IP Law, UCL
RCD Milestones
David Musker
R G C Jenkins & Co
Countdown to Sunrise
• Preparatory materials available from 1991.
• CDR in force in early 2002.
• CDIR finalised October 2002.
• Forms available in draft November 2002.
• CDFR finalised 16 December 2002.
• Filings possible from 1 January 2003 – getting a date
of 1 April 2003.
• We flew to Alicante 31 Dec 2002.
The Sunrise Filings
• Smaller “spike” than for CTMs,
but still several thousand filed.
• Including 396 GB, 394 JP, 25 CN, 3 KR.
• First two filed overnight on 31 December / 1 January – RCD 13
(Casio) and RCD 21 (DaimlerChrysler).
The
st
1 April
pioneers
Country of origin
25.00%
23.71%
20.00%
15.00%
12.63%
10.82%
10.00%
7.22%
6.96%
5.67%
5.15%
5.00%
4.38%
3.61%
3.09%
0.00%
DE
GB
ES
IT
NL
Countries
US
DK
SE
FR
JP
The first registrations
• 138 registered and published on 1 April.
• These were the last to be registered on their
date of filing until last two years – typical times
were three to six months.
• But 2,659 same-day registrations in 2012.
The first e-Design
• 46547-0001.
• Filed 1 June 2003.
• Registered 11 November 2003.
• 2% in the first year.
• Now 81%.
The totals for Year 1
• Total number of designs – 37,084.
Applicant nationalities in Year 1
• Applications:
DE, GB, IT, US, FR.
• Designs:
DE, IT, US, UK, FR.
Applicant nationalities in Year 10
• Much the same, except that:
– US up, GB down;
– EU still high; and
– China, Taiwan, Korea low
despite high domestic
filing rates.
Some lesser filing countries …
State
Design
CENTRAL AFRICAN REPUBLIC
700299
GABON
509088
HONDURAS
478466
QATAR
2110981
SIERRA LEONE
996376
TURKS AND CAICOS ISLANDS
326632
Iran
• 10 designs filed.
• Two of them
surrendered.
• Wonder who
objected? 
Democratic People’s Republic of Korea
• What do you mean,
no RCDs?
Refusals in 2003
• 15 refusals.
• Only five due to “not a Community Design”
subject-matter.
• Small number of morality refusals.
Immorality – the dividing line
• RCD 5097 – examined late 2003:
– Nakedness: good.
– Use of animals: baaad 
Indication of origin?
• RCD 559653
• But why filed through a
Hamburg firm?
Designers … Least productive?
• Apple’s 001227003-0001
• 26 designers
including Steve Jobs.
• (But many of them also
appear on several designs).
Designers … Most productive?
• Jean-Michel Le Broussois: 2,314.
• 1.5 days per design!
• Peter Thun-Hohenstein: 2,005.
• 2 days per design.
• Christophe Decarnin: 1,847.
• 2 days per design.
• Steve Jobs – a mere 422.
• 10 days per design.
Biggest applications?
• Quite a few with several hundred designs.
• Biggest – over 400.
• Does the fee structure benefit “large entities”?
• Is € 80 too cheap?
Year 2 – OHIM case law
• ICD 24 – EREDU v ARRMET
• The chair – one of the commonest
subjects for revocation.
• Design revoked.
• “Informed User” defined.
• Applied in Procter & Gamble v Reckitt
Benckiser (UK), Karen Millen v Dunnes
(IE).
Year 2 - Appeals
• Bicycle Lock – appeal allowed, filing date restored on
balance of proof.
• Farbmustertafeln – OHIM colour practice defined.
• Most influential appeal since then - Lindner Recyclingtech
v Franssons Verkstäder R 690/2007-3 Chaff Cutters:
– Reversed 1st instance, A-G; contrary to travaux
préparatoires.
– Followed in UK (Dyson, Samsung v Apple), also in
s‘Graveninge.
Customs Enforcement 2011
“As regards design and model
rights, a wide variety of
products were concerned with
an emphasis on shoes,
medicines and toys.”
DETENTIONS
Cases
Articles
Retail value
Total
91,245
114,772,812
€1,272,354,795
Designs
-1,308,410
€50,894,191
Online enforcement
• e.g. Quads4Kids v Campbell
– eBay VeRo takedown
• RCD 000474416-0015
• Deferred publication –
now surrendered
Civil Enforcement – working as hoped?
• Pan-EU relief available:
– first UK case Mattel v Simba, July to October 2003.
– Defendant submitted to injunction under UCD, but RCDs
also registered.
• But – is forum shopping still too tempting?
– Is there really a difference between interim and final
judgments? Are first impressions best?
– Apple/Samsung, P&G v RB – too many parallel cases?
Scope – is it worth filing at all?
• Piracy often stops with customs, or settles early.
• But non-identical copying is more of an issue.
• Are applicants caught both ways?
– OHIM BoA decisions take a broad-brush view of similarity
– many designs invalid, but …
– Courts appear to take a narrow view – many designs not
infringed.
– Do we really have the same test, or is there “murky grey
water” in between?
Are we handling validity right?
• Invalidation very slow for important cases
– e.g. Apple/Samsung still at first instance
– e.g. Crocs still awaiting CFI
– Could take eight years to invalidate a design registered
in eight hours – average lifetime is less than five years.
– So, how to handle stays in infringement?
• Should courts look at the state of the art?
– Can vastly increase cost and length of trials
– Results in Courts invading OHIM’s territory
• Should courts dissect functionality? (Ditto.)
Do other rights baffle the market?
• Copyright – e.g. Crocs shoe, Maglite torch, Stokke
Tripp Trapp chair.
• Unfair competition – e.g. Apple in Germany.
• Should we harmonise these, to include the
safeguards of design law?