Industrial Property Law

Disclosure implies that the design is likely to be reasonably known, in accordance with current business practice in the sector concerned, to professionals acting in the territory of the EU, before the date of filing of the application for registration or before the date of priority claimed (Art. L. 511-6, para. 1, IP Code) . The category of professional includes anyone operating in the same secto …

Conditions of disclosure

Disclosure implies that the design is likely to be reasonably known, in accordance with current business practice in the sector concerned, to professionals acting in the territory of the EU, before the date of filing of the application for registration or before the date of priority claimed (Art. L. 511-6, para. 1, IP Code) . The category of professional includes anyone operating in the same sector, and not only those who, within the sector concerned, are responsible for designing models and developing or manufacturing products in accordance with these models . It is not, however, necessary for the typical informed user of the product in which the design is incorporated or to which it is applied to be aware of such prior art . On the other hand, the fact that the design or model has been disclosed to a third party, under an explicit or implicit condition of secrecy, does not constitute disclosure to the public (Art. L. 511-6, para. 2, IPI Code).

Under the former Article L. 511-6, in its version resulting from the 1992 law, disclosure of the design by its creator prior to filing did not entail destruction of the novelty or invalidity of the title . The same applied when the disclosure was made by an undertaking which derived its rights from the designer him or herself . A registered design could, however, constitute a prior art destroying novelty, due to the similarity of the characteristics of the two designs, even if they belonged to the same owner .

Since the Ordinance of 25 July 2001, the filing of a design or model has constituted a right and no longer merely a notification. As a result, the novelty of a design is now assessed on the day it is filed, rather than on the day it is created. Disclosure of the creation prior to filing or the claimed priority date, even by the designer himself, destroys the novelty of the design if it has the effect of making it accessible to the public, and if it reasonably enables specialists in the sector concerned to become acquainted with it, in accordance with current practice . Creators or their successors in title are thus obliged to complete the registration formalities before any exploitation begins. However, Article L. 511-6, paragraph 3, provides for a grace period which makes it possible to disregard a disclosure made within the twelve months preceding the date of filing of the application or the priority date claimed, if it emanates from the creator or his successor in title, or from a third party, on the basis of information provided or acts carried out by the creator or his successor in title .

After this period, the designer may no longer register the design . Designs disclosed before 1 October 2001 are subject to a transitional regime, by virtue of paragraph 4 of Article L. 511-6, which declares the twelve-month time-limit inapplicable to disclosure by the creator or the successor in title before that date . Clarifying the scope of the legislation, the Paris Court of Appeal has ruled that the creator of a design having disclosed his work under the old law is entitled to a twelve-month grace period from 1 October 2001 to apply for protection without risking invalidity, and not from the actual date of prior disclosure . The transitional regime applies when the disclosure originates from the creator or his successor in title, and not from a third-party undertaking, even one affiliated to the creator .

Finally, if disclosure took place within the twelve months preceding the date of filing of the application or the date of priority claimed, it is not taken into consideration if the design was disclosed as a result of abusive behavior towards the creator or his successor in title (Art. L. 511-6, al. 3, b) IP Code). As in the case of self-disclosure, this time-limit benefits from the transitional regime where disclosure took place before 1 October 2001 (Art. L. 511-6, al. 4, IP Code).

TGI Paris, 30 March 2017, LawLex202100003280JBJ; Cass. com. 24 May 2017, LawLex202100003829JBJ, which states that a proforma invoice that comes from a company based in Hong Kong and relates to a thousand products does not make the accessibility of the model in the community of professionals in the sector certain, and therefore does not constitute proof of prior use that destroys novelty.

Case C-479/12 H. Gautzsch Großhandel GmbH & Co. KG, Judgment of 13 February 2014, LawLex202300008980JBJ.

CA Paris, 7 November 2007, LawLex200800000571JBJ.

Cass. com., 9 March 2010, LawLex202100003845JBJ.

Case C-361/15 P Easy Sanitary Solutions BV et European Union Intellectual Property Office (EUIPO), Judgment of 21 September 2017, LawLex202300008961JBJ.

CA Paris, 22 September 2000, LawLex200200000738JBJ.

CA Versailles, 27 May 2004, LawLex202200009646JBJ.

Cass. com., 27 May 1997, LawLex202200000883JBJ.

CA Paris, 24 January 2017, LawLex202100004731JBJ.

CA Paris, 31 May 2013, LawLex202100002885JBJ; Cass. com., 9 March 2010, LawLex202100003845JBJ.

CA Paris, 2 December 2011, LawLex202200001370JBJ.

CA Paris, 28 January 2009, LawLex202200001359JBJ.

Industrial Property Law

434. Conditions of disclosure

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434. Conditions of disclosure

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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