Prof. Dr. Ansgar Ohly, LL.M. (Cantab.)

Chair for Civil Law, Intellectual Property and Competition Law

European and International Intellectual Property LawPart 5: Designs

Winter Semester 2015/16

Agenda

Agenda1. Concept and justification

2. Treaties and EU law

3. Conditions of protection

4. Infringement

5. The protection of shapes in IP and unfair competition law

1. Concept and justification

What is a design? Design law in a nutshell (1)• Design= appearance of a product• Registered and unregistered rights

– Registered designs (national and EU)– Unregistered Community design

• Conditions of protection: novelty + individual character • Scope of protection

– Registered design: absolute protection against designs which do not produce a different overall impression

– Unregistered design: protection against copying only

1. Concept and justification

Design law in a nutshell (2)• Exceptions

– Non-commercial purposes– Experimental purposes– Citation and teaching

• Term– Registered design: up to 25 years– Unregistered design: 3 years

1. Concept and justification

Justification• Economic background: in marketing, design serves

several functions– Successful design combines functionality and aesthetic appeal– Designs as signals: design can help to identify product and can

convey images

• Justification: incentive to create and to invest in creative design

• Tension between two interests– Adequate protection of creativity, investment and market

transparency– Free availability of common product shapes

2. Treaties and EU law

Arts 25, 26 TRIPS (industrial designs)• Member states must protect designs which are new and

original• Must protect against making, selling and importing copies for

commercial purposes• Exceptions → thee-step test• Term: at least 10 years

2. Treaties and EU law

EU law on designs

Harmonisation of substantive law

→ EC Design law Directive (1998)

Creation of (single, autonomous) Community

design → Community Designs Regulation (2002)

Registered design rights only

Registered Community design right

Unregistered Community design right

3. Conditions of protection

Conditions of protection I (Art. 3 et seq. CDR) • Design = appearance of product (Art. 3 CDR)

– 2- or 3-dimensional– “product” includes graphic symbols and typefaces– only visible features protected

• Novelty (Art. 5 CDR)– no identical prior design– disclosed to specialised circles in Community (see Art. 7 CDR)– = “objective and relative” concept of novelty– grace period of 12 months (Art. 7 (2) CDR)

3. Conditions of protection

Conditions of protection II • Individual character (Art. 6 CDR)

– “one by one” comparison with prior design which has been mada available to the public before application date

– = overall impression produced on informed user differs from overall impression produced by other design

– freedom of designer to be taken into account

3. Conditions of protection

Prior design Application

• Has the prior design been made available to the public (Art 7 CDR)?

• “one to one” comparison → different overall impression on informed user?

• If (+), then individual character (+)

3. Conditions of protection

Example 1: OHIM, 27/04/04, EREDU v ARRMET

Application Prior Spanish registered design

3. Conditions of protection

Scene from 2001 – A Space Odyssey

Community Design 000181607-0001

Example 2: OLG Düsseldorf GRUR-RR 2012, 200; EW Patents Court, [2012] EWHC 1882 (Pat)OHIM, Apple v Samsung

3. Conditions of protection

HP Compaq TC 1000

3. Conditions of protection

German Design DE 40301867-0001 – Flat screen without

frame

3. Conditions of protection

Conditions of protection II • Individual character (Art. 6 CDR)

– = design produces impression different from prior design– “one by one” comparison– freedom of designer to be taken into account

• Grounds of exclusion (Art. 8, 9 CDR)– features solely dictated by technical function– “must fit” exception: features which must be reproduced in order to

allow interconnection, counter-exception for modular systems (“LEGO clause”)

– designs contrary to public policy or morality

Must fit – must match• “must fit” = features which must be reproduced in

order to allow mechanical connection → no design protection

• “must match” = features which must be reproduced to make a complex product look as it did before– Design protection very controversial– Economic background: interests of car manufacturers v.

free competition in spare parts market – Art 110 CDR: “repair clause” = no protection for parts

which are used for repair purposes in order to restore the original appearance

– Art 14 DD: “freeze plus” = member states may only keep their law or liberalise it

4. Infringement

Case study on “must match”: CJEU, C-500/14 – Ford v Wheeltrims

4. Infringement

Infringement• Scope of right: any design which does not produce on the

informed user a different overall impression (Art 10 CDR)• Rights conferred by registered design: owner can prevent any

third party from using it (Art 19 (1) CDR)• Rights conferred by unregistered design: owner can only

prevent use if design has been copied (Art 19 (2) CDR)

4. Infringement

Case study 1: OLG Düsseldorf GRUR-RR 2012, 200 and EW Patents Court, [2012] EWHC 1882 (Pat), – Apple v Samsung

4. Infringement

• OLG Düsseldorf, GRUR-RR 2012, 200 Rn. 104: Die harmonische schlichte Eleganz des Verfügungsgeschmacksmusters, die von der konsequenten Fortführung der minimalistischen Frontgestaltung durch die einteilige klare Gestaltung der Schale und dem konsequenten Verzicht auf nicht notwendige Gestaltungselemente lebt, findet sich folglich beim Gehäuse des "Galaxy Tab 10.1" nicht wieder, das nicht nur zweiteilig ausgestaltet ist, sondern die vorbeschriebenen weiteren Gestaltungselemente aufweist, die eine vergleichbar formstrenge Konzeption nicht erkennen lassen.

• EW Patents Court, [2012] EWHC 1882 (Pat), para. 190 (Birss J.)The informed user's overall impression of each of the Samsung Galaxy Tablets is the following. From the front they belong to the family which includes the Apple design; but the Samsung products (…) do not have the same understated and extreme simplicity which is possessed by the Apple design. They are not as cool. The overall impression produced is different.

4. Infringement

Case Study 2: Magmatic v PMS Int. Group [2014] EWCA Civ 181 (appeal pending before UK Supreme Court)

Kiddee case Trunki

5. Overlaps

Overlap of IP rights protecting shapes

Trade marks: BGH GRUR 2006, 701 – Porsche 911

Unfair competition: BGH GRUR 2006,

79 – Jeans I

Copyright: BGH GRUR 2007, 871 –

Wagenfeld-Leuchte

5. Overlaps

Other regimes of protection: TMs and © • Three-dimensional trade marks

– Different purpose: protection of sign v protection of outward appearance– Specific grounds for refusal in TM law, esp. Art 7 (e)(iii): shape which gives

substantial value to goods– Lack of distinctiveness + acquired distinctiveness

• Copyright– Must be available (Art 17 DD)– But member states can determine scope and threshold of protection– Until recently different national regimes– Harmonisation by CJEU Infopac case law?

5. Overlaps

Other regimes of protection: unfair competition law• Different national approaches

– DE: copying as such is permissible outside IP law, but offering the copy can be unfair if factors of unfairness are present (§ 4 No 3 UWG)

– FR: doctrine of parasitic copying (parasitisme)– EN: passing off (= goodwill + misrepresentation as to source + damage), but

nothing else

• So far almost no harmonisation outside IP law– But see Art 6 (2) Unfair Commercial Practices Directive– And Art 4 (g) Misleading and Comparative Advertising Directive

• Courts are often tempted to find confusion when they feel that copying is unfair.

Case study: The Tripp-Trapp chair

Tripp Trapp Babydan