Protecting creative endeavors and designs is a core activity of just about all fashion companies. Fashion items (clothing, accessories, handbags, shoes, etc.) can indeed be protected by copyright and design rights within the European Union.

Lesser known is the ‘unregistered community design’ (or: ‘UCD’) established by the European legislator in 2002 for the protection of products with a short lifespan. As the fashion industry is driven by rapid innovation, based on seasonal collections with new designs each time, this specific, unregistered and therefore inexpensive intellectual property right provides the ideal protection for many fashion companies. As fashion is a wide spread phenomenon and knows no boundaries, this intellectual property right could turn out to be the excellent fit not only for European fashion companies, but also for US fashion companies operating within the EU.

In this post, we will take a closer look at the how, what and why of this unregistered design right.

The object of protection in design law

The design right, be it the registered or unregistered variant, essentially protects the appearance of a product, which is determined by its characteristic features. These are in particular the lines, contours, colors, shape, texture, decorations, logos, photos, illustrations, materials, etc. For example, new designs of clothing or accessories, as well as decorative prints qualify for design protection.

The requirements for protection

To claim design protection, the design must meet two requirements: the design must be new and have an individual character.

The design will be considered new if no identical design has been made available to the public. Designs are considered to be identical if their characteristics differ only in unimportant details.

The design will have an individual character if the general impression it has on the informed user (the attentive consumer, shopper, fashionista or fashion blogger) differs from the general impression that the user has in comparison with older, existing designs. In other words, no déjà-vu feeling may arise.

In order to be able to claim an unregistered community design, it is also important that the designer properly notes, maintains and documents who created which designs, when, and when they were first disclosed to the public. Conversely, to avoid wrongful allegations of infringement, it is important to properly document and date the entire design process. Only in this way it can be demonstrated that the design was independently developed. Sketches, inspiration boards and brainstorming sessions are therefore best kept in a structured and chronological manner.

The choice between the registered and the unregistered community design

As soon as the design meets the above requirements, the designer has two options in the field of design law:

1) The designer chooses to register the design for a fee at a national or international design agency (for example the European Office, the EUIPO, or the Benelux Office, the BOIP). The protection lasts for a term of 5 years, after which it can be extended up to 5 times against payment up to a maximum protection term of 25 years;

2) or the designer opts for the unregistered design, which is created automatically (read: free and without registration obligation) for a one-time term of protection of 3 years from the date the design is made available to the public within the European Union for the first time. The designer must therefore disclose his creation to the public instead of undergoing the whole registration process. Public disclosure or making the design available to the public means: publishing, exhibiting, placing on the market or otherwise making publicly available in such a way that, in normal practice, the specialized circles operating within the European Union can reasonably be aware of the design. In other words, a design that has remained on the drawing board will not be deemed to have been made public.

The scope of protection of the registered and unregistered community design

However, the scope of protection of a registered and unregistered design will be different. As such, the holder of an unregistered design can only take action against counterfeiting in the literal sense of the word. It will thus be necessary to prove that the copycat-design was created by copying the older design.

On the other hand, a registered design has a broader scope of protection: its holder may exclusively exploit this design and has the right to oppose the use or subsequent registration by third parties of products with the same appearance or with an appearance that does not create a different overall impression.

Tips and tricks for the unregistered design

Although an unregistered community design offers less scope for protection, it remains a hugely interesting intellectual property right in the fashion sector. It is free, flexible, requires no administrative hassle, and offers a relatively short but clear scope of protection against counterfeiters. A well-documented and chronologically structured creation process, on the other hand, is indispensable in order to be able to claim this protection (or, to defend against possibly unjustified claims of design holders).

This article was originally published in Fashion United here.