17 May 2016, London
Varying interpretations of acceptable PIs among Member States have resulted in the development of different practices in national intellectual property offices.
When applying for a registered Community design right (“RCD”) an applicant must specify the type of product for which protection is sought by identifying a ‘product indication’ (“PI”). Varying interpretations of acceptable PIs among Member States have resulted in the development of different practices in national intellectual property offices.
In an effort to better represent all the goods for which a design could be registered, the European Union Intellectual Property Office (“EUIPO”), formerly “OHIM”, and national EU intellectual property offices launched ‘Convergence Project 7 – Harmonisation of Product Indications’ in 2014. The results of this collaborative initiative include a harmonised and consolidated PI database, and the roll-out of DesignClass – an extensive, free, online resource of pre-accepted PIs available to users.
DesignClass serves as the searchable user interface of the harmonised and consolidated PI database, housing approximately 13,000 PI concepts translated in to all official EU languages; it is based around the traditional Locarno Classification taxonomy and is divided schematically into 32 classes (i.e. class 2 for articles of clothing and haberdashery) and 233 subclasses (i.e. subclass 6 for gloves). Users can browse or search a product for which they wish to identify an appropriate PI to view pre-approved suggestions. Links are also available to the EUIPO’s DesignView database so that would-be applicants can view competing RCDs.
Traditionally, if a particular PI that you wish to specify as part of an RCD application does not appear in the Locarno alphabetical list, each office must separately determine whether the stated PI(s) is acceptable based on their respective criteria.
By incorporating PIs that have been pre-approved and pre-translated by the 24 participating EU offices, in addition to the traditional Locarno Classification, DesignClass enables users to undertake a more transparent and comprehensive search. This dual functionality enables DesignClass to distinguish itself from the EUIPO’s more basic Eurolocarno web-based tool which has been available for a number of years.
The primary purpose of PI classification is administrative in terms of providing users the ability to search RCD databases easily to aid with applications or view competing RCDs, and indeed authorities state that neither the indication of products nor their classification affects the scope of protection of an RCD “as such“. That is not to say however that a design’s proper classification is unimportant – as part of RCD invalidity proceedings, for example, the EUIPO notes the PI for which an RCD is registered in order to assess the overall impression of the product created on the ‘informed user’.
First and foremost however, PIs exist to aid applicants and examiners, and by utilising the pre-approved PIs available via DesignClass, applicants can save on both cost (i.e. of translations) and avoid unnecessary filing delays, whilst also limiting the risk of an objection based on mere formalities.
Although DesignClass is now live, the EUIPO have stressed that it is still under development. It is expected to be finalised during the course of 2016, and for certain national EU intellectual property offices to eventually implement the tool in to their own e-filing systems. Meanwhile, DesignClass still represents a useful addition to the EUIPO’s publicly available databases, and indicates a step forward for the harmonisation of RCD practice in the EU.
 DesignClass http://euipo.europa.eu/designclass/
 DesignView https://www.tmdn.org/tmdsview-web/welcome
 Eurolocarno https://euipo.europa.eu/eurolocarno/
Originally published in DesignWrites 8th Edition.
Tobias is an associate in our Intellectual Property Group based in London. Since joining Bird & Bird in 2013, Tobias has been involved in a broad range of contentious and non-contentious intellectual property matters in relation to copyright, trade marks, passing off, designs and patents.
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