CP6 Convergence Project - EU registered designs
20 October 2016
One of the dilemmas when preparing up a registered design application as a first filing is how to depict the design in the application within the constraints and practice of the relevant IP office at which the new application is to be filed.
In Europe, at the EU level when filing a registered Community design (RCD) application at the European Union Intellectual Property Office (EUIPO) or at the national level when filing a national registered design application such as a national UK registered design application at the UK Intellectual Property Office (UKIPO), the substantive law relating to novelty and the like is harmonised, but the practical matters of how to depict the design have varied.
The situation has now improved however, with the conclusion of a European project to provide a recommended set of depiction standards that are being adopted by the EUIPO and the national IP offices.
The project has had the formal name of the "CP6 Convergence Project on Graphic representation of designs" and has been conducted by the European Trademark and Design Network. It issued its common practice document in April 2016, and since then it has been gradually adopted by the EUIPO and the national IP offices including the UKIPO.
The EUIPO incorporated CP6 into its practice for RCD applications by issuing updated Examination Guidelines on 01 August 2016.
The Examination Guidelines provide applicants and their representatives with useful, updated guidance on, in particular, the vexed matter of how to disclaim features in a registered design application.
In an RCD application, it is not possible to use a written statement to disclaim features. The disclaiming must be done visually in the views (the figures) which illustrate or depict the design in the application.
The visual disclaiming techniques have traditionally included: dashed (broken) lines to depict the excluded features; blurring or colour shading to obscure the excluded features; and the use of a boundary to surround the features for which protection is sought and to indicate that the features outside the boundary are excluded from protection.
These disclaiming techniques are now described in the Examination Guidelines in a manner consistent with CP6, and they have also been given a hierarchy with the preference being stated that dashed (broken) lines are to be used wherever possible, and that the other techniques should only be used when dashed (broken) lines cannot be used for technical reasons such as that the views depicting the design are rendered or photographic views which, inherently, are not suited to incorporating any dashed (broken) line depiction. In these circumstances, the other techniques of blurring, colour shading and boundaries may be used.
CP6 has also caused the updated Examination Guidelines to make it clear that so-called aspect views (a perspective view and the six orthogonal views) should be the starting point when depicting a design.
Some of these aspect views may be omitted if they are not needed for the purpose of clearly illustrating the features for which protection is sought, and alternative views may be included if they are needed to satisfactorily depict the design. For example, a second perspective view might be needed, such as one showing the product in an alternative configuration (e.g. with some part of the product moved to an open position).
It may be useful to include a magnified view showing part of the product at an enlarged scale, but CP6 requires that the part which is magnified must be visible in at least one of the other views, so that the context of the magnified part can be understood. The same is also required if a sectional view is included.
The discussion of what makes a satisfactory "neutral background" in the views has also been updated in the Examination Guidelines in the light of CP6. For example, the background colour and the design must not be similar and must not melt or blend partly into one another, as this would mean that it is not clear where the product finishes and the background starts.
Care must also be taken regarding shadows and reflections which interfere with or hide parts of the design of the product.
The overall intention of CP6 as implemented in the updated Examination Guidelines is that it should be clear from the views of the granted Registered Community Design exactly what it is that makes up the protected features of the design, and this should benefit RCD owners by reducing problems when enforcing the RCD as there should be less scope for the alleged infringer to argue about what exactly is the design protected by the RCD.
For further advice regarding your design application, please do contact a member of the D Young & Co designs team: www.dyoung.com/designs.
EUIPO guidelines for examination of registered Community designs: http://dycip.com/euiporcdguide