The Union Model

1. Introduction: what is a Union model?

The appearance of a product or part thereof can be protected as a Union design (formerly known as a Community Design). This protection is governed by the Regulation on Union Designs (VOGMO). The Union design allows designers and companies to obtain protection for the appearance of their products in all member states of the European Union with a single registration procedure.

The regulation provides for two different protection systems:

• The registered Union model: This design receives protection after registration with the European Union Intellectual Property Office (EUIPO) in Alicante, Spain. This protection is more robust and long-lasting.
• The unregistered Union model: This design receives automatic protection without formalities from the moment it is made available to the public within the EU. The protection is more limited but offers a low-threshold option for short-lived designs.

A fundamental characteristic of the Union model is that it is unitary. This means that it can only be granted and exists for the entire EU. It is not possible to obtain protection for only one or a few EU member states. The Union Model has the same legal effect in all EU member states. Registration, transfer, surrender, revocation, cancellation and prohibition of use are possible only for the entire EU.

2. The protected object

Both the registered and unregistered Union designs protect a design, or appearance (appearance) of a product or part thereof. It covers the visual characteristics of a product, such as its outline, colors, shape, texture, materials, ornamentation and more.

Parts of composite products can also be protected, provided they remain visible during normal use and themselves meet the protection requirements.

The terms 'design', 'product', 'component' and 'composite product' used have the same meaning as for the Benelux design:

• Model: the appearance of a product or part thereof
• Progenitor: any industrially or handcrafted object, including parts intended to be assembled into a complex product, packaging, execution, graphic symbols and typographic typefaces
• Composite product: a product consisting of multiple parts that can be replaced

It is important to note that, as in the Benelux, repair parts cannot be protected as a Union design. This applies specifically to parts used exclusively to restore the original appearance of a complex product (so-called "must-match" parts).

3. The conditions of protection

A design is protected as a Union design when it meets two important conditions:

1. Novelty: A design shall be considered new if no identical design has been made available to the public before the date of filing of the application for registration or, if priority is claimed, before the date of priority. Designs shall be considered identical if their features differ only in insignificant details.
2. Own character: A design shall be deemed to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on that user by designs made available to the public before the date of filing of the application or, where priority is claimed, before the date of priority.

The "informed user" is an essential concept in this framework. This is a notional person who lies between the average consumer (who does not necessarily make detailed comparisons between different models) and the industry expert (who has very specific technical knowledge). The informed user is familiar with the various models that exist in the sector in question, has some knowledge of the elements that these models normally contain, and is relatively attentive when using the products in question.

An identical regulation to that contained in the Benelux Convention on Intellectual Property (BTIP) also applies to parts. To assess novelty and individual character of a part, the designer's degree of freedom in developing the design must be taken into account.

For unregistered Union designs, the reference point for assessing novelty and individual character is the date on which the design was first made available to the public within the EU.

Exclusions from protection

It is important to note that the following elements are excluded from protection as Union models:

• Technically determined features: External features of a product which are determined solely by its technical function are not eligible for protection. This exclusion prevents design law from being used to monopolize technical solutions, which is the domain of patent law.
• Must-fit features: Models of mechanical connections of composite products that must be reproduced in their exact shape and dimensions in order to mechanically connect the product in which the model is incorporated or to which it is applied to another product so that each of the two products can perform its function.
• Designs contrary to public order and morality: Designs which are contrary to public policy or contrary to accepted morals in a member state are excluded from protection.

4. Commencement and duration of protection

Enrolled Union model

After registration by EUIPO, a design that meets the requirements for protection is granted for a period of five years protected, starting from the date of filing the application. This initial period of protection may be extended for successive periods of five years, up to a maximum total of 25 years from the filing date.

To renew the protection, the holder must submit a renewal request to the EUIPO and pay the renewal fees. This request can be made within a period of six months before the expiration of the registration. There is also a grace period of six months after the expiration date, at which time a fee must be paid.

Non-registered Union model

A design which meets the protection requirements shall be protected as an unregistered Union design during three years from the date the design was first made available to the public within the EU.

A design shall be deemed to have been made available to the public within the EU if it:

• Published (e.g., in magazines, catalogs, etc.)
• Exhibited (for example, at trade shows)
• Marketed is
• Otherwise disclosed is

The disclosure must be such that in the ordinary course of business these facts could reasonably have come to the knowledge of EU insiders in the relevant industry.

Important: The design is not considered to have been made available to the public merely because it was disclosed to a third party under an express or implied condition of confidentiality. This means that if you show a design to potential partners or manufacturers under a non-disclosure agreement, this does not count as disclosure within the meaning of the regulation.

In addition, it is essential to know that a design that has not been disclosed within the territory of the EU is not considered an unregistered Union design. Thus, the first moment of disclosure must take place within the EU to enjoy protection as an unregistered Union design.

5. The person entitled to a Union model

In principle, the right to a Union design belongs to the designer or his assignee. The designer is the natural person who created the design.

Multiple designers

When two or more persons have jointly developed a design, they are jointly entitled to the Union design. They are joint right holders and must arrange the exercise of their rights by mutual agreement.

Employee models

When a design is developed by an employee in the performance of his duties or pursuant to his employer's instructions, the right to the Union design accrues to the employer unless:

• Otherwise provided by agreement
• Applicable national law contains a provision to the contrary

This is an important provision for businesses because it ensures that the creative labor of employees, performed within the scope of their employment, automatically accrues to the employer.

Commissioned models

It is important to note that the above rule does not apply to designs made on commission. In the case of designs made on commission, the right to a Union design belongs to the designer or his assignee, unless otherwise agreed.

This means that when you hire a freelance designer or outside design firm, you must explicitly agree that the intellectual property rights to the design will be transferred to you. Otherwise, these rights remain with the designer.

Claiming rights

Where an unregistered Union design is disclosed by or claimed by a person who is not entitled to the design, or where a registered Union design has been applied for or registered in the name of such a person, the entitled person may claim to be recognized as the rightful holder of the Union design.

6. The rights and restrictions granted

Infringement criterion

The infringement criterion for both a registered and an unregistered Union design is identical: action can be taken against any design that does not produce a different overall impression on the informed user. In assessing the scope of protection, the designer's degree of freedom in developing the design is taken into account.

Rights associated with an enrolled Union model

The holder of a registered Union design has the exclusive right to use the design and to prohibit third parties from using it without his consent. This includes the:

• Manufacture of products in which the model is incorporated or to which it is applied
• Offering such products
• Marketing of these products
• Importing or exporting these products
• Using these products
• Stocking these products for the above purposes

These exclusive rights apply to any design that does not create a different general impression on the informed user, taking into account the degree of freedom of the designer in developing the design.

Rights associated with an unregistered Union model

The protection of an unregistered Union design is more limited. An unregistered Union design carries the right to prevent the use of an infringing design only when such use results from copying the protected design.

The challenged use shall not be considered to result from copying if such use results from independent creative work by a designer who can reasonably be assumed not to have known the design disclosed by the rights holder.

This means that in the case of an unregistered Union design, it is essential to be able to prove that the alleged infringer copied your design. If he can prove that the design was developed independently without knowledge of your design, there is no infringement.

Restrictions on rights

There are various restrictions on the rights associated with a Union model, such as:

1. Private use: Acts in private and for non-commercial purposes are outside the scope of protection.
2. Experimental use: Acts for experimental purposes are permitted.
3. Quotation and teaching use: Reproductions for citation or educational purposes are permitted provided they are compatible with fair trade practice, do not interfere with the normal exploitation of the design, and the source is acknowledged.
4. Use in ships and aircraft: The right of use does not apply in respect of equipment on ships and aircraft registered in another country, when they temporarily enter EU territory.
5. Right of prior use: A person who has used in good faith in the EU before the date of filing or priority a design falling within the scope of protection of a registered Union design, or has made preparations to do so, shall be entitled to continue to use that design for those purposes.

Community exhaustion

Community exhaustion: the rights conferred by a Union design do not extend to acts relating to a product in which a design is incorporated or to which it is applied, when that product has been put on the EU market by the holder of the Union design or with his consent.

This means that once you, the right holder, have marketed your product in the EU, you cannot prevent others from reselling or otherwise using it commercially.

7. The end of protection

Protection as a Union model can end in several ways:

Nullity

A Union model may be declared null and void if:

• It is not a "design" within the meaning of the regulation
• It is not new
• It has no character of its own
• The external characteristics are determined solely by the technical function
• It is contrary to public order or morality
• The beneficiary has no claim to the Union model
• It is in conflict with an older model
• There is unauthorized use of a work protected by copyright
• There is unauthorized use of an emblem, weapon, etc.

Nullification of a registered Union design

An enrolled Union model may be declared null and void:

• On requisition at the EUIPO
• By a Union model court on counterclaim in infringement action

Nullification of an unregistered Union design

An unregistered Union model is declared null and void by a Union model court:

• On application to that court
• On counterclaim in infringement proceedings

Decay

An enrolled Union model expires:

• After the maximum protection period of 25 years expires
• If renewal fees are not paid on time

An unregistered Union model automatically expires at the end of the 3-year protection period.

Distance

The holder of a registered Union design may renounce his right. The surrender must be declared in writing to EUIPO and only becomes effective after entry in the Register. The surrender can be partial, for only certain products, if it does not affect the identity of the design.

8. Union models as part of equity

A Union design may be part of the assets and thereby be considered a national design right of the member state where:

• The holder was domiciled or headquartered on the relevant day, or
• The holder, if the above does not apply, had an establishment on the relevant day

In the case of joint holding, the Member State of the first joint holder according to the above rules, or in the case of a non-registered Union model, the joint holder mutually designated by the joint holders.

Licenses

A Union design may be the subject of a license for the whole or part of the EU. The license may be exclusive or non-exclusive.

The holder may invoke the rights attached to the Union model against a licensee who:

• Acts in violation of the term of the license
• Acts in violation of the form in which the model may be used
• The agreed product range exceeds
• Does not meet agreed-upon quality standards

Business rights

An enrolled Union model is also possible:

• In pledge are given
• Being the subject of another right in rem
• Being the subject of enforcement

Registration of property transactions

Property acts such as transfers, licenses or rights in rem can be entered in the Union Models Register. This has important legal consequences:

• As long as the transfer of a registered Union model has not been entered in the register, the assignee may not invoke the rights arising from the registration
• Transfers, rights in rem and licenses may be enforced against third parties in all member states only after being entered in the register

9. Obtaining an enrolled Union model

To obtain a registered Union model, an application must be submitted. This can be done in several ways:

1. Directly at the EUIPO in Alicante, Spain
2. At the central industrial property office of a member state
3. At the Benelux Office for Intellectual Property (BBIE)

If an application is submitted to a national office or the BOIPO, they forward the application to the EUIPO.

Application requirements

The application must include the following elements:

1. A request for enrollment
2. Data identifying the applicant
3. An image of the model suitable for reproduction
4. An indication of the products in which the design will be incorporated or to which it will be applied

Optional application may include:

• A description to clarify the image
• A request for suspension of publication (maximum 30 months)
• The mention of the designer or design team

It is important to note that the statement of products, description and classification do not affect the scope of protection of the design as such.

Single and multiple applications

An application can be a single or a multiple application:

• Single application: for the protection of one model
• Multiple application: for protection of multiple models in one application

In a multiple application, all models, except for decorations, must belong to the same class of the International Classification for Industrial Designs (Locarno Classification).

Any model that is part of a multiple application or registration may be treated independently of the other models. It may become independent:

• Executed
• Licensed
• Burdened with a right in rem
• Subject of enforcement
• Subject of insolvency proceedings
• Relinquished
• Renewed
• Transferred
• Subject of suspension of publication
• Nullified

Right of way

When filing an application for a registered Union model, the right of priority of a previous application may be invoked. The validity of this right of priority is six months from the date of filing of the first application.

Research by the EUIPO

When an application for a registered Union model is submitted, EUIPO examines:

1. Whether formal requirements have been met
2. Whether the design is a "design" within the meaning of the regulation
3. Whether the design is not contrary to public order or morality

EUIPO does not examine ex officio whether the design is new and has individual character. These grounds can only be invoked in invalidity proceedings.

Registration and publication

If an application meets all the requirements, EUIPO enters the application in the Register as a registered Union design and publishes the design. The publication includes the image of the design and any descriptions.

Suspension of publication

At the time of filing, a request may be made for a suspension of publication for up to 30 months from the date of filing or priority. This option is especially valuable for industries where surprise effects are important, such as the fashion industry.

During the period of suspension, an action under a registered Union model may be brought only if the defendant has been notified of the information in the register and file.

International registration

A registered Union design can also be obtained through an international registration under the Hague Agreement system. International applications are filed directly with the International Bureau of the World Intellectual Property Organization (WIPO), with EU designation.

An international registration with EU designation has the same legal effect as an application filed directly at EUIPO. EUIPO may refuse protection if the design does not meet the definition of "design" or is contrary to public policy or morality.

10. EUIPO and disputes concerning Union designs.

The EUIPO

The European Union Intellectual Property Office (EUIPO) in Alicante, Spain, is responsible for the registration of Union designs. Actions for invalidation of a registered Union design can also be filed with this institution.

EUIPO's decisions must be reasoned and based only on grounds against which the parties have had an opportunity to defend themselves.

Appeals against EUIPO decisions

The decisions of the investigators and the EUIPO Cancellation Division are subject to appeal. This appeal has suspensive effect.

An appeal may be lodged by any party adversely affected in proceedings before the EUIPO. The appeal shall be heard by the EUIPO Board of Appeal.

The decisions of the Boards of Appeal may be further appealed to the General Court of the EU. This appeal may be brought on account of:

• Unauthorized
• Violation of essential rules of form
• Violation of the EU Treaty or the VOGMO
• Misuse of power

A decision of the General Court can still be appealed to the Court of Justice, though only on points of law.

Language regime at the EUIPO

A specific language regime applies at EUIPO:

• The application can be submitted in any official language of the EU
• The applicant must provide a second language that is one of the five languages of EUIPO (English, French, German, Italian or Spanish)
• The procedural language is the language of the application, if it is an EUIPO language
• If the application is not written in an EUIPO language, the second language specified will be the language of procedure

11. Union model courts and disputes.

Courts for the Union model

Each member state has designated one or more courts for the Union model. In Belgium, these are the Brussels Enterprise Court and, on appeal, the Brussels Court of Appeal.

These specialized courts have exclusive jurisdiction over:

1. Legal actions concerning infringement and threatened infringement of Union designs
2. Legal actions to establish non-infringement of Union designs
3. Actions for invalidation of an unregistered Union design
4. Counterclaims for annulment of a Union model in infringement proceedings

Powers rules

The competent court for the Union model is determined according to a cascade system:

1. The court of the state where the defendant is domiciled or established
2. If the defendant is not domiciled or established in an EU Member State, the court of the Member State in which the plaintiff is domiciled or established
3. If both are not domiciled or established in an EU member state, the court of Spain (where EUIPO is located)

Parties may also choose another Union model court in a member state of their choice (choice of forum). In addition, a court has jurisdiction if the defendant voluntarily appears before it.

For infringement proceedings, the court of the member state where the infringement has occurred or is likely to occur may also have jurisdiction.

Territorial effect of decisions

A Union Model Court with jurisdiction based on the residence or domicile of the parties has jurisdiction over infringements throughout the territory of the EU.

A court having jurisdiction solely on the basis of the place of infringement has jurisdiction only over infringements committed or threatened in the territory of that member state.

Presumption of validity

In infringement cases, the Union Model Court assumes the validity of:

• An enrolled Union model, unless challenged via a counterclaim
• An unregistered Union design, if the holder proves that the design is not older than three years and indicates which features give the design individual character

Provisional and protective measures

In Union model courts, as well as in national courts that would have jurisdiction over a national model, provisional and protective measures may be sought for a Union model.

A Union model court with jurisdiction under the cascade system may order provisional measures applicable in the territory of each member state.

Attachment of procedures

If the validity of a Union model is challenged in multiple proceedings simultaneously, this may lead to suspension of proceedings:

• If an action has been filed in a Union model court and the validity is already being challenged in another court, the first court may stay the proceedings
• If an invalidity action has been filed with EUIPO and the validity is already being challenged before a court, EUIPO may suspend the proceedings (or vice versa)

12. Parallel legal actions and relationship to other forms of protection

Parallel legal actions

Where actions for infringement are brought before courts of different Member States between the same parties in respect of the same acts (one on the basis of a Union design and one on the basis of a national design right), the court before which the case was last brought shall refer the parties to the other court.

If, between the same parties, a final decision has already been rendered on the basis of a Union design or a national design right with concurrent protection, a subsequent claim on the other right must be rejected.

These rules do not apply to provisional and protective measures.

Relationship to other forms of protection

The VOGMO is without prejudice to the provisions of EU and Member State law on:

• Unregistered models
• Trademarks or other distinguishing marks
• Patents and utility models
• Fonts
• Legal liability
• Unfair competition

Cumulation with copyright

A design protected by a Union design may also be protected by the copyright laws of Member States as from the date on which the design was created or fixed in a particular form. The extent and the conditions of such protection shall be determined by each Member State.

This "cumulation" of protection provides an additional layer of security, since in many cases designs can also be covered by copyright as works of applied art, which in some countries can mean a term of protection of up to 70 years after the death of the creator.

13. How can our law firm help you?

Our law firm has extensive expertise in advising on and litigating Union models. We can assist you in a variety of ways:

Strategic advice

• Determining the right protection strategy for your designs: registered or non-registered Union model, national protection or a combination
• Determining the appropriate geographic scope of your protection (EU versus non-EU countries)
• Advising on the combination with other intellectual property rights such as trademarks, copyright and patents
• Portfolio management of your design rights

Application and registration procedures

• Preparing and submitting applications for registered Union models
• Guidance on international model applications through the Hague Agreement system
• Renewal of existing model registrations
• Suspension of publication if desired

Enforcement and procedures

• Monitoring potential infringements of your design rights
• Conducting infringement proceedings against infringers
• Obtaining provisional and protective measures
• Border measures against imports of infringing products
• Negotiating settlements

Defense

• Defending against allegations of infringement
• Conducting nullity proceedings
• Preparation of validity opinions

Contracts and agreements

• Drafting license and transfer agreements
• Drafting design briefs with clear provisions on intellectual property rights
• Due diligence in mergers and acquisitions involving design rights portfolios

Specific sectors

Our firm has experience in design rights protection in a variety of industries, including:

• Fashion and textiles
• Industrial products
• Furniture and interior design
• Packaging
• Graphical user interfaces
• Automotive
• Consumer Technology