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Disclosure in China blocks Unregistered Community Design

All designs first published within the European Union can, in principle, enjoy a 3 year term of protection as an Unregistered Community Design (UCD).

The question has been raised whether such UCD protection is also available to non-EU residents who have first published their design outside the EU (for instance in the USA or in China), and subsequently have published same in EU territory.

Following a similar decision from the Oberlandesgericht Hamburg, the German Supreme Court ("Bundesgerichtshof””) has recently confirmed that a design first published in China could not be granted protection in the EU.

In the case at hand, the plaintiff claimed UCD protection in Germany for a new design for a biscuit press (see picture), which had been sold (and thus published) in the UK shortly after the design was registered and published by the Chinese Patent Office. The Court ruled that the design, although recently introduced in the EU, was longer longer novel in the sense of the Community Design Regulation on account of its prior publication in China.

This strict interpretation of the rules applying to unregistered design protection within the EU implies that non-EU residents and companies must be very careful when timing publication of their design if their product is also likely to be marketed in the EU. That is, if they wish to rely on UCD protection alone. A more viable option may be to apply for Registered Community Design protection with the EU. For obtaining RCD protection, there is a grace period of one year and the costs of obtaining are RCD protection are quite low.