Presentation on EU and UK Design law given before BPP School of Law

BPP Professional DevelopmentBPP Professional Development

Design Law – A Practical Guide

Niall TierneyContego Intellectual Property

[email protected]

BPP Professional Development

Topics

1. What is a design? - the principles of ‘novelty’ and ‘individual character’

2. Design Right, Registered Designs and Community Designs.

3. Drafting a Registered Design application.

4. The rights afforded by a Registered Design.

5. Challenging a Registered Design.

6. The relationship between Designs and other forms of IP.


• Design - the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation

• Product - Any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, including packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs.

What is a Design?


• A design is considered new if:-

• No identical design has been made available to the public before the date of filing of the application for registration, or if priority is claimed, the date of priority.

• Designs shall be deemed to be identical if their features differ only in immaterial terms.

Protection of a Design - Novelty


Novelty – cont’d : Built NY Inc v I Feng Kao

• Earlier Design • Later Design


Novelty cont’d : Patacs v Kamil Korhan

• Earlier Design • Later Design


Individual character – a design is deemed to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority.

Individual character


The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design

Overall impression


• An ordinary consumer or customer of the product in question is not an ‘informed user’

• Is not a designer or someone who is professionally engaged in or an expert in design activity as they are not using the design in question

• To be informed, the user is somebody who knows the existing design market of the product in question, could be a professional buyer.

Who is an ‘informed user’?


There is an generally accepted acknowledgement that a designer is designing a product which will ultimately perform some sort of function and therefore must have features which enable that function to be performed, e.g. a knife must have a cutting edge.

PepsiCo v Groupo Promer Mon Graphic, C-281/10

Opinion of Advocate General

Concept of ‘designer freedom’


Shenzhen Taiden Industrial Co.Ltd v OHIM

• Earlier design • Later design


Svedbergs Dalstorp AB v Gofab Design AB



Dyson Ltd v Vax Limited (2011)

Dyson Vax


• Case concerned ‘overall impression’ on an informed user;

• Informed user is reasonably discriminatory: not the same person as ‘average consumer’ of trade mark law;

• Degree of designer freedom refers to the registered design not the degree of freedom of the designer of the offending design;

• Court held an ‘informed user’ looking at the two designs would notice the difference between them because the overall impressions are different: ‘smooth, curving, elegant’ v ‘rugged, angular, industrial’

Dyson Ltd v Vax Limited (2011)


• Designs are deemed to be made available to the public if:-

• they are already published – does not depend upon registration;

• exhibited;

• used in trade;

• otherwise disclosed.

• In certain circumstances, disclosure outside the European Union might not affect ‘novelty’ or ‘individual character’.

‘Made available to public’ requirement


• Article 7.2 of the Design Directive stipulates that a disclosure shall not be taken into consideration for the purposes of assessing ‘novelty’ or ‘individual character’ during the 12 month period preceding the date of filing of the application.

• The 12 month grace period is important because it would cover instances of disclosure that might not otherwise have been made in confidence.

• 12 month grace period also covers third party disclosures.

The 12 month ‘grace period’


• Article 8 of the Designs Directive - a Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function.

• It is important to note that the above requirement does NOT mean that a design must have an aesthetic quality.

Prohibition on functional designs


• In Amp v Utilux - ‘solely dictated’did not mean that a design was unregistrable only if it was the one possible design; it meant simply that the features of the design were there for the purpose of function alone.

• There are very few designs that would be excluded from protection on purely functional grounds because the function of most products can be achieved by other designs, e.g. knives and forks.

Functionality – ‘solely dictated’


Ampel Inc24 Vertriebs-GmbH & Co KG v Daka Research



• A product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product

• To qualify for protection, a design applied to a complex product must

• Be visible while the complex product is in use;

• The visible parts must in themselves be ‘novel’ and have ‘individual character.

—

Complex Product


Kwang Yang Motor Co Ltd v OHIM

Later design Earlier design


• Court held upper side of engine determines overall impression produced by the engine;

• An informed user was a person wishing to use one of those products who, for example, needs to purchase one, and who has become informed on the subject;

• Shape, configuration and placement of certain components of internal combustion engines are not dictated by technical and functional constraints.

Kwang Yang Motor Co Ltd v OHIM


• Design Right is unique to the United Kingdom.

• Design Right is a form of un-registered protection.

• Design Right gives automatic protection for the internal or external shape or configuration of an original design.

• Design Right does NOT provide protection for two dimensional designs such as patterns.

Design Right


• Design Right allows the holder to stop third parties from copying the shape or configuration of the product.

• Design right lasts the earlier of either:-

• 10 years after the first marketing of the product bearing the design, or

• 15 years after creation of the design

• A licence of right is available to third parties during the last five years of protection.

• Functional designs are NOT excluded from Design Right protection.

Design Right – cont’d


• In Mackie Designs v Behringer Specialised Studio Equipment - electronic circuit diagrams were covered by UDR as ‘configuration’ rather than shape.

• It is possible that on the basis of the Mackie Designs decision, mechanical engineering designs, chemical or process flow diagrams may qualify for UDR protection.

• Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd - Design Right does not subsist in the configuration of colours, e.g. patterns in a patchwork quilt.

• A Fulton Co Ltd v Grant Barnett & Co Ltd - outward facing seams in an umbrella holder qualified for protection as ‘configuration’ even though they were only marginally three-dimensional.

Shape and Configuration


‘Originality’ & exclusion of ‘commonplace’ designs

• A design is not ‘original’ if it is commonplace in the design field in question at the time of its creation.

• There is a two step approach in determining whether a design is original, i.e.

1. Is the design original in the copyright sense of being

independently produced as a result of the designer’s skill and labour, and not copied from another work?

2. Is the design commonplace in the relevant design field? This may require analysis as to what is the precise design field.


• In C&H Engineering Ltd v F Klucznik & Sons Ltd - Aldous J held that the ‘originality’ in Design Right is the same as in copyright, i.e. the design must be the independent work of the designer.

• In Ocular Sciences Ltd v Vision Care Ltd - Laddie J - Any design which is trite, trivial, common-or-garden, hackneyed or of the type which would excite no particular attention in those in the relevant art is likely to be commonplace.

• Design Right does not apply to features which allow one product to be functionally fitted or aesthetically matched to another – ‘must fit’ and ‘must match’ exceptions.

• While design right protection arises automatically when the design is created, it is to be noted that s 213(6) of the CDPA stipulates:

Design right does not subsist unless and until the design has been recorded in a design document or an article has been made to the design

‘Originality’ & ‘Commonplace’ designs – cont’d


• In the UK, a registered design grants exclusive rights for the look and appearance of a product to which it is applied.

• A Registered Design prevents others from copying the design regardless of whether they directly copied or created their design independently.

• Protection of a Registered Design lasts for 25 years from the filing date of the relevant application provided the required renewal fee is paid every 5 years.

• A Registered Design does not protect features which are solely dictated by function.

Registered Designs


• There is no need to show that the Registered Design was directly copied in order to enforce rights.

• Unlike Design Right, it is possible to extend the rights afforded to a Registered Design to other countries.

• Certain transactions can be recorded against a Design Registration, e.g. transfers, licences, security interests.

Registered Designs – cont’d


• An un-registered Community Design (UCD) is an automatic right that can be enforced throughout the 27 Member States of the European Union.

• Protection under an Un-Registered Community Design lasts 3 years from the date the design was first made available to the public.

• A design is deemed to have been made available to the public within the European Union if it has: • Been published

• Exhibited

Un-registered Community Design (UCD)


• Used in trade or otherwise disclosed in the normal course of business.

• The above events must have become reasonably know to the circles, specialized within the sector concerned, operating in the European Union.

• A design is not deemed to have been disclosed if it was done so under an obligation of confidentiality.

• A UCD only grants an exclusive right against direct copying. It does not

protect against innocent copying.

Un-registered Community Design (UCD)


• A UCD protects the overall appearance of the design, but excludes features which are dictated solely by technical function.

• To qualify for UCD protection, a design must:-

• Be new

• Have Individual Character

• UCD protection only covers the European Union and cannot be extended to other countries.

UCD – cont’d


• A Registered Community Design (RCD) gives the holder of a design the right to use it and to prevent any unauthorized third party from using it anywhere in the European Union.

• The process of registering an RCD is governed by Council Regulation (EC) No.6/2002 of 12 December 2001 on Community Designs and Commission Regulation (EC) No.2245/2002 of 21 October 2002 (Implementing Regulation).

Registered Community Design (RCD)


• The criteria for registration is essentially the same as that for a UK Design.

• An RCD provides protection for the outward appearance of a product or part of it, resulting from the features (in particular, the lines, contours, colours, shape, texture and/or materials) of the product itself and/or its ornamentation.

• An RCD protects both against deliberate copying and independent development of a similar design.

Registered Community Design (RCD)


• Rights in an RCD cover:

• Making

• Offering

• Marketing

• Importing

• Exporting

• The holder of an RCD can both

• Issue proceedings for infringement at any of the Community Design courts;

• File requests for action with national customs authorities in order to assist in seizure of suspected counterfeit goods.

RCD – cont’d


• Registration of a design gives its holder the exclusive right to use the design and any design which produces the same overall impression on the informed user.

• In assessing the scope of protection, the degree of freedom of the designer in developing the design is taken into consideration.

• Under s 9 (1) of the Registered Design Act 1949, a defendant who proves that at the date of infringement he was not aware, and had no reasonable ground for supposing, that the design was registered escapes liability from damages.

• It is not enough for the holder of the Design Registration to indicate that the design is ‘Registered’ or to use an abbreviated term unless the number of the design accompanies such words.

Rights afforded by a Registered Design


• The rights afforded by registration shall not cover:-

• Acts done privately and for non-commercial purposes;

• Acts done for experimental purposes;

• Acts of reproduction for the purpose of making citations or of teaching.

Note these acts must be compatible with fair trade practice

and not unduly exploit the normal exploitation of the design

Rights afforded by a Registered Design


• In the UK, if a design was registered before 9 December 2001, an application has to be made to cancel the registration.

• A design can be cancelled on the grounds that:-• It was not new or lacked material differences with an earlier design at

the time it was applied for;

• Other reasons for which it could have been refused registration.

Challenging a Registered Design


• In the UK, if a design was registered after 9 December 2001, an application has to be made to invalidate the registration.

• A design registration can be invalidated on the grounds that:-

• It was not new or lacked individual character when compared with an earlier design at the time it was applied for;

• That the registered proprietor is not the proprietor of the design.

Challenging a Registered Design – cont’d


• An RCD may be declared invalid on the following grounds:- • It is not a design within the meaning set out in the Community

Design Regulation;

• It lacked novelty at the time of filing;

• It lacked individual character at the time of filing;

• It is a design which has features of appearance of the product which is solely dictated by technical function;

Challenging an RCD


• It is a design which is contrary to public policy or morality;

• The proprietor is not the true owner of the design;

• It conflicts with a prior design and which is protected by an RCD or Registered Design Right of an EU Member State or by application for such a right.

• It conflicts with an earlier copyright or use of an earlier distinctive sign (a trade mark right)

• Once declared invalid, an RCD is deemed not to have had, as from the outset, the effects specified in the CDR.

Challenging an RCD


• The closest relationship between designs and other IPRs is with copyright.

• A design on a piece of paper or computer may also be considered a copyright work, e.g. as an artistic work.

• So long as there is sufficient originality ( a requirement for copyright protection), copyright can in theory cover all forms of designs regardless of how functional or simple they are.

• Important to bear in mind that copyright can be infringed by making a three dimensional work of a two dimensional drawing.

• The form of protection afforded to designs under copyright law has now been severely cut back.

Designs and other IPR rights


• It would appear that sections 51-52 of the CDPA provides that there is no infringement of copyright in a design document or model by making articles to the design.

• Under s 51(3) a design document is described as:-

Any record of a design, whether in the form of a drawing, a written description, a photograph, date stored in a computer or otherwise.

Designs and other IPRs – cont’d


• If there is a design document for an artistic work, e.g. architects plans for a building, s 51 CDPA would grant full copyright protection. The author of the copyright in question will be able to stop others from reproducing the work, including the making of three dimensional copies.

• A distinction must be made as to whether a drawing is the design of an artistic work or whether it is simply the design of an article. Copyright protection is only available if the design is an artistic work.

• If an artistic work is exploited commercially (making 50 or more copies) s 52 CDPA restricts the scope of copyright protection. The right to use copyright to restrict 3D productions is lost 25 years after exploitation.



• Under Trade Mark legislation, certain shapes may qualify for registration.

• Registration will not be granted if the shape is

• Typical of the goods for which registration is sought;

• Functional;

• Adds value to the goods for which registration is sought.



• CIPA – Designs and Copyright Training Manual.

• Community Designs Handbook – David Musker.

• OHIM

• UK Intellectual Property Office

• WIPO

Useful sources and materials


• What is a design

• The appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation

Quiz


• What is a product?

• Any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, including packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs.

Quiz


• What is needed for a design to qualify for protection?

• To qualify for protection, a design must be:-

• Novel

• Have individual character

Quiz


• When is a design considered to be novel?

• A ‘design’ shall be considered new if:-

• No identical design has been made available to the public before the date of filing of the application for registration, or if priority is claimed, the date of priority.

• Designs shall be deemed to be identical if their features differ only in immaterial terms.

Quiz


• When is a design deemed to have individual character?

• If the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority

Quiz


What does ‘overall impression’ mean?

Overall impression is what is produced on an informed user viewing the design believes that it clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design

Quiz


Who is an informed user?

• An ordinary consumer or customer of the product in question is not an ‘informed user’

• Is not a designer or someone who is professionally engaged in or an expert in design activity as they are not using the design in question

• To be informed, the user is somebody who knows the existing design market of the product in question, could be a professional buyer.

Quiz


What is meant by ‘Designer freedom’?

An acknowledgement that a designer is designing a product which will ultimately perform some sort of function and therefore must have features which enable that function to be performed, a knife must have a cutting edge. These are limitations imposed on the designer which should not be taken into account when assessing individual character.

Quiz


When are designs deemed to be made available to the public?

• They are already published – does not depend upon registration;

• Exhibited;

• Use in trade;

• Otherwise disclosed.

Quiz


What is Design Right?

A form of un-registered protection in the UK which gives automatic protection for the internal or

external shape or configuration of an original design.

Quiz


On what basis can a Registered Community Design be invalidated?

•It is not a design within the meaning set out in the Community Design Regulation;•It lacked novelty at the time of filing;•It lacked individual character at the time of filing;•It is a design which has features of appearance of the product which is solely dictated by technical function;•It is a design which is contrary to public policy or morality;•The proprietor is not the true owner of the design;•It conflicts with a prior design and which is protected by an RCD or Registered Design Right of an EU Member State or by application for such a right.•It conflicts with an earlier copyright or use of an earlier distinctive sign (a trade mark right)

Quiz


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Presentation on EU and UK Design law given before BPP School of Law

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Transcript of Presentation on EU and UK Design law given before BPP School of Law