A revised set of Guidelines for the Examination of Registered Community (EU) Designs (RCDs) came into force on 1 March 2021, introducing a number of changes to the way that RCD applications are filed and examined. These changes include the abolition of communication with the EUIPO by fax, the implementation of WIPO DAS, and the clarification of aspects of examination procedure relating to filing date deficiencies and formality deficiencies.
Abolition of Fax Communication
Chapter 2.2.1 is updated to state that "fax can no longer be offered and will no longer be used as a means of communication in procedures before the Office".
The withdrawal of fax communication follows from Decision No. EX-20-9 dated 3 November 2020, which outlines the "technical limitations and malfunctions affecting the reliability and preventing the uninterrupted functioning of communications by fax".
Filing of RCDs can now be done in one of two "official" ways:
- By mail or courier (this includes delivery by hand)
- Electronically via the EUIPO user area (e-filing)
However, the EUIPO clearly recognises that there may be circumstances in which neither of the above are suitable, and the updated Guidelines therefore provides for two "back-up" filing solutions:
- A general upload platform that allows documents to be attached and sent to the EUIPO; this platform is located in the Communications section of the EUIPO user area;
- A file-sharing solution located outside the EUIPO user area; upon request, the EUIPO will provide the account holder with temporary access (i.e. username and password) to a secure file-sharing location where the document can be uploaded.
If either of the above "back-up" solutions is used, users will be required to re-submit the RCD via e-filing within 3 days in order to keep filing date, according to EX-20-9.
As a result of the withdrawal of fax communication, accepting e-communication becomes compulsory, and it is no longer possible to opt out. This applies to new and existing EUIPO user area account holders, including those who previously opted out. All users can activate alert notifications, so they receive an email when an e-communication is issued.
The WIPO Digital Access Service (DAS) is a system which allows priority documents to be exchanged electronically between participating IP offices. A participating "Office of First Filing" (i.e. the office at which a priority application is filed) allows applicants to request that an electronic copy of the application is made available to "Offices of Second Filing" (i.e. offices at which priority-claiming applications are subsequently filed). This system avoids the need for an applicant to provide a complete copy of the priority application.
The EUIPO has participated in WIPO DAS as an Office of First Filing since July 2020, but from 12 September 2020 will also participate as an Office of Second Filing (see Decision No. EX-2-7).
This change means that on filing an RCD application which claims priority from an application filed with a DAS-participating office, the applicant need only provide the EUIPO with the DAS access code for the priority application. Participating offices include the IPOs of China, Japan and the US.
According to Chapter 184.108.40.206 of the Guidelines, the EUIPO will still accept a copy of the priority document within 3 months of filing as evidence of the priority claim.
Clarification of Examination Procedure – Filing Date Deficiencies
Chapter 3.3.1 of the updated EUIPO Guidelines for RCDs clarifies the requirements for receiving a filing date.
The Guidelines now explicitly require that the application must contain a representation that enables the matter for which protection is sought to be identified, before a date of filing can be obtained. This clarification is the result of the 2018 Court of Justice ruling in C-217/17, Mast-Jägermeister SE v EUIPO.
Briefly, in 2015 Jägermeister filed two RCD applications specifying Class 07.01 ("beakers") as the indication of the product. On the day of filing, the EUIPO Examiner advised that this indication was considered to be incorrect, since the representation also showed bottles, and that the indication 'Bottles' in Class 09.01 should be added, and the application divided. Following a number of examination reports, both applications were rejected on the basis that the deficiencies had not been rectified, and therefore a filing date for the applications had not been obtained.
Jägermeister then appealed; the appeal was rejected by the EUIPO Board of Appeal and also by the General Court (in 2017). The European Court of Justice issued its ruling on the matter in July 2018, dismissing Jägermeister's appeal.
In its judgement, the ECJ stated that:
"Article 12(2) of Regulation No 2245/2002 provides that a correction of the application for registration cannot change the representation of the design concerned. That necessarily implies that, before the application for registration can obtain a date of filing, it must contain a representation that enables the matter for which protection is sought to be identified. It is not possible to interpret Regulation No 6/2002 as allowing an application for registration to be considered validly filed when it does not enable the design for which registration is sought to be clearly identified and that deficiency can no longer be remedied".
Consequently, the EUIPO Guidelines are updated to state that:
"It is not possible to interpret the CDR as allowing an application for registration to be considered validly filed when it does not enable the design for which registration is sought to be clearly identified".
Chapter 220.127.116.11 of the Guidelines is further updated to allow ex officio change of the indication of a product where there is an "obvious mis-match":
"Since one of the main objectives of the product indication and classification is to enable the Community Designs Register to be searchable by third parties, where the product indication clearly does not match the product as disclosed in the representation of the design, the examiner will replace that product indication with the correct one".
Clarification of Examination Procedure – Formality Deficiencies
Various sections of Chapter 5 of the EUIPO Guidelines for Examination of RCDs have been updated for clarification. These updates relate to the issuance of deficiency letters in specific circumstances, including the following:
- Inconsistency of views caused by use of different visual formats (2.1)
- Exploded views that are not accompanied by a view of the assembled product (3.2)
- Magnified views that are filed within another view, rather than shown separately (3.3)
- Partial views that are not accompanied by a view of the assembled product (3.4)
- Views showing a set of articles that are not accompanied by a view of the entire set (3.7)
In each of the above cases the deficiency letter will set a (usually) two month period for rectifying the relevant deficiency. If this is not done, the RCD application will be refused.
The Guidelines are clarified to indicate that each of the above deficiencies are "formality" deficiencies, in that they will not lead to a failure to obtain a filing date. In the case of refusal of the application, the filing fee will therefore not be refunded.
The above updates and clarifications to the EUIPO Guidelines for Examination of RCDs will be welcomed by applicants and practitioners alike. Since filing by fax was generally only used as a method of last resort, it is reassuring to see that the EUIPO has taken steps to provide back-up filing solutions where conventional methods are unavailable.
The UK has left the EU – Marks & Clerk has not. Post-Brexit, we continue to file and prosecute Registered Community (EU) Designs on behalf of our clients. We can also provide clients with guidance and support on issues such as validity, and the infringement of clients' and third party RCD designs.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.