How to enforce your design right throughout the EU
If you do not have a registered design all is not lost. A number of important features of the unregistered Community design right make it particularly suitable to protect a product design.
The duration of an unregistered Community design right is only for three years and it is intended to provide efficient short-term protection for products with a short market life. This is particularly so for fashion items and toys. You do not have to be an EU company and the right is available to non European companies. It ought to be of interest to US Companies also who would not be able to avail themselves of the UK unregistered design right. As the US does not offer reciprocal protection comparable to the UK unregistered design right US companies are not conferred rights under the UK unregistered designs legislation contained in the Copyright Designs and Patents Act 1988.
The Community unregistered design allows for European wide relief including injunctive relief and damages, without the need to take enforcement proceedings in all European jurisdictions. The prefix pan implies that the identity applies throughout Europe, and especially in an EU context, ‘pan-European’ is often contrasted with national.
The jurisdiction of an EU court can be found in Articles 82(1) and (2) of the Community Designs Regulation, which states:-
Article 82(1) “Subject to the provisions of this Regulation and to any provisions of the Convention on Jurisdiction and Enforcement applicable by virtue of Article 79, proceedings in respect of the actions and claims referred to in Article 81 [namely infringement or validity] shall be brought in the Courts of the Member State in which the Defendant is domiciled or, if he is not domiciled in any of the Member States, in any Member State in which he has an establishment”.
Article 82(2) “if the Defendant is neither domiciled nor has an establishment 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 any Member State in which he has an establishment”.
Mattel v Simba was considered to be the first case concerning the UCDR to come to trial before the High Court.