Lecture 5 - Intellectual property PDF

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LECTURE 5 PROTECTION OF DESIGNS – Part 1 – Registered Designs "Art has to move you and design does not, unless it's a good design for a bus." - David Hockney This week and next we will be looking at how designs are protected under UK law. This is done in 2 ways, through a registered design right (the subject of this week’s session), or an unregistered design right (the subject of the next session). The term “design” covers a wide range of areas – industrial design, graphic design, costume design, fashion design and product and packaging design. Broadly, design is concerned with the non-functional nature and appearance of objects. For our purposes, “design” means an aspect of or feature applied to an article or product – it is not the article or product itself. As with copyright, design is an international issue. TRIPS Agreement contains protection for “industrial designs” under Article 25 and Article 26 You will be unsurprised to learn that European Law plays a significant role in Design protection. 2 pieces of legislation are key:1. Designs Directive (98/71/EC) - this harmonises the essential substantive features of national registered design laws of Member States, the directive does not affect national unregistered design rights. 2. The Regulation on Community Design 2001 (6/2002/EC) – this introduces both a Community level registered design and an unregistered design right which co-exist with national rights. The substantive provisions of the Directive and the Regulation are virtually identical. They involve the same criteria for assessing whether a design can be protected, the same criteria for infringement and validity and, for registered rights, the same lifespan. Accordingly, there is a single EU law of designs applicable to national and community rights. With the advent of this EU legislation, there are now four types of right available to protect designs in the UK, and a single design could be protected by all four rights at the same time.

The rights are:   

UK Registered Design right - governed by Registered Designs Act 1949 (since amended to implement the EU directive). Community Registered Design right. Introduced by the 2001 regulation. Has been available since 1st April 2003. UK Unregistered Design right - governed by the CDPA 1988. This will be covered in greater detail in next session. Community Unregistered Design Right. Also introduced by the 2001 regulation. Has been available since 6th March 2002. This will be covered in greater detail in next session.

There is potential overlap between the two types of rights (registered and unregistered) themselves and between the two rights and copyright. N.B. The Intellectual Property Act 2014 (received Royal Assent in May 2014) will make changes to various practices in Design Law. A major development is that this act introduces a criminal sanction for copying of Registered designs, thus bringing designs into line with Trade Mark and Copyright Law. The act itself can be found here:- http://www.legislation.gov.uk/ukpga/2014/18/contents/enacted Commentary on the purpose of the act can be found here:- http://www.ipo.gov.uk/hargreaves-ipbill Registered Designs generally (but not exclusively) relate to the aesthetic appearance of a product; Unregistered Design Rights (known as “Design Rights”) protect the internal or external shape of products; finally, Design Copyright protects design documents.

The creator of a registered design is known as its “author”. The owner of a registered design is known as its “proprietor”, and will normally be the creator unless the design was created by an employee or under a commission. Registered designs in the UK The UK has had a system for registering designs since the early 19th century. While initially it was used for textile designs, it slowly expanded to encompass all types of designs. UK Design law then remained relatively static for the last 50 years, until the Registered Design Regulations 2001 came into effect. These were introduced to comply with the European Directive 98/71/EC. These regulations do not replace the Registered Designs Act 1949, but amend it greatly. We are not going to go through the old law, except to the extent it sheds light on the new law. N.B. that pre-2001 designs will still be subject to the old law. Under the new law, there are 4 basic requirements for registrability and protection:1. 2. 3. 4.

The design must come within the definition of “design”; The design must be “new” and have “individual character” The design must not be purely functional The design must not be contrary to public policy/accepted principles of morality.

Definition of “design”:RDA 1949 S. 1(2) defines design as meaning:“the appearance of the whole or a part of a product resulting from the features of … the lines, contours, colours, shape, texture or materials of the product or its ornamentation.” S.1(3) states that a product is:“any industrial or handicraft item other than a computer program, and in particular includes packaging, get-up, graphic symbols, typographic type-faces and parts…” N.B. what is protected by the design right may be different from the product as a whole. Generally, design is only concerned with particular ornamental features of the product, not the intrinsic product itself. “New” and “individual character” Under S. 1(b)(1), there are two requirements for novelty – 1. that the design be new, and 2. that it display “individual character”. S. 1(b)(2) says that a design is “new” if no “identical design or no design whose features differ only in immaterial details has been made available to the public”. This was also used in law prior to 1949, so existing case law sheds light. Household Articles Ltd’s Registered Design [1998] F.S.R. 676

Laddie J described the novelty requirement as follows: “if all the difference between the prior art and design in suit are immaterial or common trade variants then the design in suit is deemed not to be novel. Immaterial details are features which make no significant impact on the design.” Re Visco BV’s Application [1980] RPC 509 Concerned an Indian style design applied to textiles. It was held that a reduction in size of the design in comparison to previous designs was an immaterial difference. But, contrast this with:Cook and Hurst’s Design Application [1979] RPC 197 A rearrangement in colours was held to have a special effect and thus was new. When judging the novelty of the design need against what has gone before, this need not be in respect of products actually available to the public, merely “in the public domain”. The Design register is, of course, public domain. Pitacs Ltd. v Kamil Korhan Karagulle 26th April 2006 OHIM Claimants had registered a design for a radiator, and challenged the validity of a later design filed by Defendant (which was a rip off). Designs were slightly different in their dimensions and proportions, and this was not enough to make the later design novel. The relevant date for determining “novelty” will be the date upon which the design is made public. Those seeking design protection need to keep careful records of when their designs were disclosed. Section 1(b)6 has a list of putative disclosures which will not count as disclosure. Significantly, any disclosure of the design made in the 12 months before filing for registration will not count as disclosure – this gives designers the ability to test market their products to determine whether it is economically worth their while to actually apply for protection. If the design is available to the public but not actually disclosed, e.g. because it is part of a larger product and is not readily visible to the average consumer, then Section 1(b)8 applies. This states that designs applied to or incorporated into a component part of a larger complex product will be excluded unless the design remains visible during normal use. This provision is intended to exclude ‘under the bonnet’ spare parts from protection. Individual character: This requirement is new to UK law, although it may be said to be similar to the earlier test of “common trade variants”. In determining whether a design has individual character, the degree of design freedom will be crucial. Thus, in area where there is less design freedom, small differences over the prior art may be sufficient. S. 1(b) defines what is meant by individual character: “the overall impression it produces on the informed user differs from the overall impression on such a user by any design which has been made available to the public before the relevant date.” This needs to be taken in conjunction with S. 1 (b) 4, which states:“in determining the extent to which a design has individual character, the degree of freedom of the author in creating the design shall be taken into consideration.” So, this new concept needs to be analysed according to:

“informed user” – i.e. not merely a consumer, but someone familiar with existing designs, especially in a particular sector (i.e. a toaster salesman)

 

“overall impression” – unlike “novelty” which examines details of designs, this considers product as a whole. “designer freedom” – usually a designer designs something with a function (i.e. mobile phone must have keypad). The limitations placed should not be a factor on overall impression on informed user.

As this is a new concept in UK law, we are unable to rely on any prior UK cases. Accordingly, we need to elsewhere for guidance, particularly the EU Trade Mark and Design Registry (OHIM). Rodi Comercial SA v Vuelta International SpA 20th December 2005 OHIM Relates to a design for bicycle wheels. This was challenged for lack of novelty/individual character based on an International Patent application. “Informed user” was held to be aware of functional nature of product. Design freedom was limited, so informed user would pay attention to these features. Design held to lack individual character. Exceptions: Even if a design is new and has individual character, there are a number of important exceptions to registration:

Designs dictated by technical functions. Under section 1(c)(1), features of a product which are solely dictated by product’s technical function are excluded. Further, section 1(c)(2) excludes:- “features of appearance of a product which must necessarily be reproduced in their exact form and dimensions so as to permit the product in which the design is incorporated or to which it has been applied to be mechanically connected to, or placed in, around or against, another product so that either product may perform its function.” This is very similar to the “must fit” exception contained in CDPA S.213(3) for unregistered designs. The idea is that a monopoly should not be given if there are only a very limited number of ways of designing something to fulfil its necessary function. Thus, one could not apply for design protection for the design of the prongs on a three-pronged electrical plug, since all electrical plugs in the UK need three prongs. However, you could apply for design protection for the overall plug itself, although the prongs will not be protected as part of the design if a right issues. Before the advent of the EU regulations, the UK law on functionality was dictated by:Amp v Utilux [1972] RPC 103 Concerned registrability of design for electrical terminals. Held that design was dictated by function, even though it was possible to design the terminal in other ways for it to still be functional. The idea of “dictated solely by function” did not mean a design could not be registered just because it was the only way a product could be made. Rather, it meant that features of design were there purely for function alone. However, Recital 10 of Community Design Regulation states:“Technological innovation should not be hampered by granting design protection to features dictated solely by a technical function” The exclusion of purely functional designs does not however require that designs have an aesthetic quality. Therefore, just because a design may look functional does not mean that it necessarily is. Accordingly, it seems as though the introduction of the Community Regulation is moving the law back to the position pre Amp v Utilux, so for guidance, we need to look at pre Amp case law.

PB Cow v Cannon [1959] RPC 347 Hot water bottle was designed with thick diagonal ribs. The ribs served the purpose of providing insulation, but could have been vertical or horizontal. Under Amp rules this would be refused. But, it is likely under new EU derived legislation that as design of how water bottle is not solely dictated by function it would be registrable. See also:Interlego Ag v. Tyco Industries [1989] AC 217 Bailey v Haynes [ 2006] EWPCC 5 Contrary to public policy or immoral designs. Section 1(d) states that the right in a registered design shall not subsist in a design which is contrary to public policy or to accepted principles of morality. Masterman’s Design [1991] RPC 89 A novelty Scotsman doll which revealed “all” when its sporran was lifted was not contrary to public policy. Test is not whether public would be offended, but rather whether the public would think it wrong to grant protection. Certain emblems Schedule a-1 lists a wide variety of protected emblems – often royal insignias or heraldry marks – which cannot be included in any protected design. Additionally, a design may be invalidated if it constitutes an unauthorised use of a work protected by copyright. Duration of design A registered design initially last for 5 years. However, it can be renewed for an additional 4 periods, for a total of 25 years. Note that mere designs, which require little investment or inventive effort, are given a potential period protection longer than that of patents. Rights granted: S. 7(1) gives the holder of a registered design right the exclusive right to use the design and any other design which does not produce on the informed user a different overall impression. “Use” is defined as “making, offering, putting on the market, importing, exporting” or otherwise using a product in which the design is incorporated or to which it is applied, including stocking such a product. The registered design right thus operates much like a patent, in that it is an absolute monopoly, and anyone else using the design – even if they were unaware of the right, and created the design themselves—are infringing. Section 7a(2) creates a number of exceptions to patent infringement, such as act done for private or non-commercial purposes, experimental or teaching purposes.

RECAP Potential overlap between the two types of rights (registered and unregistered) and copyright. Creator of registered design = “author”. Owner of registered design = “proprietor” Influence of EU law on UK design law Requirements for registrability and protection  The design must come within the definition of “design”;  The design must be “new” and have “individual character”  The design must not be purely functional  The design must not be contrary to public policy/accepted principles of morality. Definitions of these...