FICPI, the International Federation of Intellectual Property Attorneys, broadly representative of the profession in private practice in more than 70 countries, including national Patent Attorneys, European Patent Attorneys, Representatives before OHIM, Patent Agents and Trademark Agents in all Community countries, through the European Union Members Commission of FICPI (EUCOF), comments as follows:

FICPI is generally in support of the Draft Implementing Regulations and understands the need for harmonisation, where possible, with the Community Trade Mark procedures. Nevertheless, there are aspects of designs which are not applicable to trade marks and require special consideration. Our following comments are made, in the main, in regard to those aspects.

• Rule 2(a)
  Where protection of only part of a design is required, it should be possible to make a positive statement directed to that part as shown in the representations, rather than having a statement disclaiming matter for which protection is not sought.
  
  
• Rule 2.2
  The last sentence should be amended to read "...the designs, other than ornamentation are intended to...", to be consistent with the first line of the first sentence of the Rule.
  
  
• Rule 3.3, 3.4 and 14.2(d)
  These Rules appear to treat "products" similarly to "goods" of a trade mark. As registration of a design is in respect of any product to which it is applicable, it is unnecessary to name more than one product for classification in different classes of the Locarno Classification. Reference to different products and classes is likely to lead to doubts as to the scope of the registration, and arguments from defendants in infringement proceedings, that products and classes not specified in the registration application are not covered. Lists of different products and classes adds to the work of the translation Bureau, to effort in classification and increases Office costs and costs for applicants, all of which are undesirable and not essential.
  
  
• Rule 4.1.(c)
  This limitation to one sheet per design is contrary to the provision of Rule 4.1(a). It would be preferable to amend the latter part of the Rule to read "...multiple application, the representation of each design shall begin on a separate sheet;...".
  
  
• Rule 4.1(d)
  Explanatory text can be of assistance in some cases. Therefore, we would suggest that instead of excluding explanatory text, the Rule should be amended to permit explanatory text where necessary, in exceptional cases, to facilitate an understanding of the representations.
  
  
• Rule 4.3
  We understand that amendment has been made to allow seven views to be contained in the representations, e.g. six orthogonal views and a perspective view. Whilst this may suffice in the majority of applications, there may be certain designs, perhaps because of their complexity or unconventionality, for which more views would be desirable to illustrate the design adequately. Hence we suggest amendment of this Rule to allow discretion on the number of views that may be filed to ensure that a design can be illustrated adequately. This is for the applicant's benefit and for others to understand as clearly as possible the design that is registered.
  
  
• Rule 6.1(b)
  If a design is withdrawn before publication, the publication fee should be refundable.
  
  
• Rule 8.2
  There is inequality between this Rule and Rule 8.1. Although a priority claim may be made within one month after the filing date, it should still be necessary to file the indications and evidence within three months after the filing date of the application. Otherwise there is the risk that the Rule may be open to abuse, in that applicants may intentionally defer making the priority claim just to gain more time to obtain and file the required indications and evidence.
  
  
• Rule 10.3
  It is possible that an application may be filed with some, but not all, of the representations inadvertently omitted. The applicant should be allowed the opportunity by the Office to:
  
  (a) file the omitted representations within a specified period and accept as the filing date for the application the date of receipt by the Office of those representations, or
  
  (b) proceed with the application without the omitted representations, if feasible, so that the original filing date of the application can be retained.
  
  Option (b) may be essential for the applicant to retain a claim to priority, or because of disclosure of the design. Unlike a trade mark application where loss of an initial filing date may not have serious consequences, the loss of the original filing date of a design application may be critical to the validity of the application.
  
  
• Rule 12.2
  The prevention of any correction being made which changes the representation of the design is unduly restrictive. FICPI believes an applicant should be able to make amendment to correct an obvious mistake in the representations or to remove any part of the representation which it is found after filing the application may, or does, give rise to an objection, for example on the grounds of morality, provided such removal does not change the identity of the design. Alternatively it should be possible to add a statement in respect of the representations to disclaim any part for which protection is not or cannot be sought.
  
  This Rule might be modified to enable such amendment to be made or statement added by altering the latter part of the Rule to read ".., provided such correction does not change the identity of the design..".
  
  Further in regard to Rule 12.2, some clarification of what is meant by "obvious mistakes" is desirable. Is this intended to cover only mistakes that are self-evident from the contents of the application as filed, or would it cover also any mistakes which in the case of an application claiming priority could be recognised from the priority documents? Correction of a trade mark on the basis of the priority application was held allowable in ECFI case T-128/99.
  
  
• Rule 26
  As the Regulation permits transfer of some registered designs of a multiple application, it should be possible for the multiple application to be divided to separate out the relevant designs. This would avoid potential difficulties that might occur otherwise from joint ownership rights in transferred designs.
  
  Further in respect of Rule 26, the new proprietor of a design or designs should be enabled to become a party to proceedings in respect of the design or designs from when application is made to the Office to record the transfer of ownership.
  
  
• Rule 62.1
  FICPI is concerned that although the great majority of professional representatives appointed to act before the Office in design matters will have high standards of behaviour, there may be a small number who, in the absence of either a Code of Conduct, as maintained by the EPI, or a requirement for a signed authorisation, could claim to be representing a party when they have not in fact been authorised to do so. So long as there is no system for regulating conduct FICPI considers that in order to ensure a high standard of professional representatives in respect of Community Designs, for the benefit of applicants and the Office, Rule 62.1 should be amended to make compulsory the filing of signed authorisations, including general authorisations, for inclusion in the files for all design matters.
  
  Rule 64 does not give the Office any power to delete or suspend a professional representative for misconduct before it. Rule 68.3 provides for suspension of a professional representative by the Office but only if the representative has been suspended from acting before the central industrial property office of a member state. However, the industrial property office of the member state may be unaware of any misconduct of the representative before the Office, or may take the view that it has no jurisdiction over behaviour before the Office. Compulsory filing of authorisations would reduce one area of possible misconduct.
  
  
• Rule 66.2
  FICPI is in favour of communications being sent to the Office by telecopier, including the filing of applications. However, representations of designs so communicated may be completely or substantially illegible upon receipt. Even some loss of definition may make the design difficult to comprehend. The quality of what is received can, of course, be dependent upon the clarity of the original representation. Therefore, consideration may be desirable before this Rule is adopted as to whether it should contain provision that any replacement representation supplied in response to the invitation from the Office should be accompanied by a statement from the applicant or his representative verifying that the representation is the original from which the photocopy was transmitted. The Office should then be properly in the position of determining whether or not the application is entitled to have the date of the original transmission as its filing date.
  
  
• Rule 67.3
  The foregoing consideration for Rule 66.2 is also applicable in respect of an electronically filed application.

In conclusion, FICPI recognises the considerable commitment of the Council and European Parliament to achieving a strong and widely acceptable basis for a Community design system. We hope, however, that the foregoing comments show aspects which are of concern from the practitioner's point of view and are worthy of further consideration for the Community Design Regulation. FICPI remains fully at disposal for any further discussions.