12) Designs Flashcards
How long is the term for protection of Copyright?
Contrast with terms for design rights
70Y from the death of designer
Much longer protection over even the longest design right term (RDR = 25Y)
But only a subset of products are protected by Copyright (i.e., creative and artistic expressions of an original idea)
How long is the term of protection of Trademarks
Contrast with terms for design rights
5Y which can be renewed in perpetuity
Much longer over Copyright or the longest design right term (RDR = 25Y)
What is the term of an UK RDR?
25Y from the application date (RF every 5Y)
What is the term of an international design obtained via Hague Agreement
15Y from date of registration/application (RF every 5Y)
What is term of supplementary UDR or Community UDR?
3Y from date of first disclosure (EU or qualifying country)
What is the term of UK UDR?
How long is the max term of monopoly?
Earliest of:
- 15Y (end of Calendar Y) from first recordal of design/ making of article (whichever was first)
- 10Y (end of Calendar Y) from being first made available for sale/hire
[Last 5Y of term —> Licence of right]
NB. Maximum term of monopoly 10Y because needs to be on the market
Which shapes cannot be registered using a TM
Shapes:
- With an essentially technical function
- With a substantial aesthetic value
- Resulting from the nature of the goods
- Which do not identify the origin of the goods
- Are not distinctive
Describe the prosecution process of a RDR
- Filing (with or without priority claim)
[No intermediate publication]
[No substantive examination] - Grant
- Publication
What is the requirement for a Supp UDR to apply?
Product must be first disclosed (e.g., marketed) in the UK
What are the validity requirements for a UK RDR/RRD and Supp UDR?
Design must:
1. be New
2. have Individual Character
In UK RDR/RRD and Supp UDR, what is not a “new” design?
Identical designs
and
Designs whose features differ only in immaterial details
In UK RDR/RRD and Supp UDR, what is “individual character”?
Contrast with “inventive step”
Must produce an different overall impression on the informed user, relative to any prior design
Lower bar than patent’s inventive step
Who is the informed user?
Contrast with “average consumer” (TM)
Someone familiar with the products in question
Typically a consumer/wholesaler/retailer dealing in the relevant products
NB. They are more experience and discriminating than the average consumer
What must the court take into account when assessing the Overall Impression of the Informed User
- Nature of the product
- Industrial Sector
- Degree of design freedom
What niche rights can a RDR base its priority on?
Clue: Cross-IP priority claims
What is the priority period?
- PCT applications
- Utility models
6M
What does a UK RDR/ RRDR protect?
The appearance of the whole or part of a product arising from such features as:
-lines
-contours
-shape
-texture
-materials
of the product
- its ornamentation
According to s1(3) of RDA what is a product?
Any industrial or handicraft item, including:
- packaging
- get-up
- graphic symbols
- typefaces
- parts for assembly into ‘complex products’
According to s1(3) of RDA what is a Complex product?
Product which is composed of at least 2 replaceable component parts permitting assembly and reassembly of the product
Clues it’s a CP = Product has:
- user-removable parts
- user-serviceable parts
- consumable components
When talking about parts of a Complex product which are not visible during normal use (as excluded from protection for UK RDR and RRDRs) what is meant by “normal use”?
Use by the end user (not during maintenance, servicing, repair work)
What is meant by absolute novelty in patent apps vs. non-absolute novelty in design apps?
2 extra types of non-prejudicial disclosures exist for design apps:
1. GP of 12M prior to filing of disclosures made by the designer
2. Material which could not have reasonably become known to UK or EEA businesses in the relevant specialist sector
Which appearances cannot be registered using a UK RDR/ RRDR?
- Computer programs
- Appearance is solely dictated by technical function
- Must fit
- Designs contrary to morality
- Parts of a Complex product which are not visible during normal use
- Protected insignia (e.g., Olympic symbol, national flags…)
Complete the statutory description of the “must-fit” exclusion (RDR and UDRs):
Features required in order to […1] or to […2] another product so that either may […3].
Except features enabling […4]
1 Connect to
2. Fit (place in, around or against)
3. Perform its function
4. Mutually interchangeable (modular) system (Think: LEGO!)
Explain why the appearance and the shape or config. of a spoiler is protectable by design rights?
The must-fit exclusion does not stop the whole spoiler from being protected, only the part which interacts with the vehicle
Does the UK Abusive disclosure/ Breach of Confidence provision for Patent apps differ from that of Design apps? If so, how?
Length:
Yes, grace period is 12M for designs, longer than 6M for patents
NB. In some countries (AU, IN, KR), it is also 6M for designs
Anchor date:
Period backdates from Application or Priority date for design; whereas for patents - only Application date!
Complete the statutory position of ownership of UK RDR/RRDR:
The author (i.e., creator) of a design is the […1] unless it was created by […2] in the course of their […3], in which case the […4] is the proprietor.
- Original proprietor
- An employee
- Employment
- Employer
Who is the deemed author for computer-generated designs (e.g., CGIs)?
The person making the arrangements necessary to give rise to the design
Not the computer!
If a design is commissioned by a commissioner, then who, in the absence of a contract, owns the design?
Since 2014, the author owns the work by default (not the commissioner)
What is the date of registration understood to be for UK RDR/RRDRs?
The date on which the UK application was deemed made (regardless of priority dates)
What types of design would infringe a UK RDR/RRDR?
Designs which:
1) do not produce on the Informed User a different overall impression
2) are not materially different
What acts make up the proprietor’s right to use the design or a design which does not produce a diff. overall impression on the informed user?
Clue: infringement = MOPIEUS
Use =
1. Making
2. Offering
3. Putting on the market
4. Importing/Exporting
5. Using a product incorporating the design or to which it is applied
6. Stocking the product for any purpose 1-5
What acts are not infringing acts of a UK RDR/RRDR?
a) Private & non-commercial acts
b) Done for experimental purpose
c) Reproductions for making citations, teaching purposes (source must be mentioned)
d) use on foreign ships/aircraft temporarily in the UK
e) importation of spare parts for such ships/ aircraft
f) repair of such ships/ aircraft
g) using a part of Complex Product to restore the original appearance of the CP
Is provisional protection a thing for UK RDR/RRDR
No (because no publication prior to Grant)
Infringement only applies back to the date on which the Certificate of Registration is granted.
Are you allowed to, without the consent of proprietor, knowingly copy a UK RDR/RRDR to make a product exactly to that design or only with immaterial differences, whilst knowing that the design was registered?
No, it’s a criminal offense!
What is the period for restoration of a UK RDR/RRD - does it differ from a patents?
Yes, 1M shorted than for patents.
12M from the end of GP
What is a re-registered design right (RRDR)?
What properties of the CRDR does a RRDR carry?
Upon IP completion date (31 Dec 2020) - it is the UK component of an existing CRDR(EU) was cloned into a RRDR (UK).
RRDR inherits the CRDR’s application/registration & priority date
If a CRD had been transferred (assigned, licensed, mortgage/securities) prior to 31 Dec 2020, what happens to that transfer upon cloning of the CRD into RRDR?
Transfer of CRD is also carried over to RRDR
What does UK Unregistered Design Rights (UDR) protect?
The shape or configuration (whether internal or external) of all or part of an article
What is excluded from UDR protection?
a) Methods or Principles of Construction
b.i) Must-fit
b.ii) Must-match
c) Surface decoration
d) Protected symbols (national flags, Olympic symbols, etc)
Complete the statutory description of the “must-match” exclusion (UDRs):
Feature(s) that aesthetically […1] upon another […2] that the article is intended to form an […3] part of
- Depend(s)
- Article
- Integral
NB. Must-match parts derive their form from the thing they complement, so as to maintain an aesthetic motif
What are the validity requirements for a UK UDR?
Clue: Low threshold, not universal
- Original
= not a slavish copy of a prior design
= not commonplace within a qualifying country when created
What countries are Qualifying Countries?
- UK (incl. Channel Islands + Isle of Man)
- UK protectorates (e.g., Gibraltar and Cayman Islands)
- New Zealand
- Hong Kong
NB. EU member states are no longer qualifying countries since 31 Dec 2020
What is protected by UK UDRs which is not protected by UK RDRs?
Purely functional designs!
Who are the possible owners of a design right? What is the “hierarchy” of ownership
- Qualifying Employer
- Qualifying designer
OR - If no 1 or 2, then Qualifying person making the first marketing in a qualifying country
What makes a person “qualifying”?
a) Habitual resident of a qualifying country (QC)
b) Government of a QC
c) Business formed in QC and having substantial activity within a QC
Who owns the UK UDR if the designer is employed and a qualified person but the Employer is not qualified?
No design right available to either…
The right does not automatically pass onto the qualifying designer
Who owns the UK UDR if the designer is US-based (not qualifying) but a qualifying person (UK-based) is the first to place the product on the market in the UK (with the authorisation of the designer obvs)
The UK-based person owns the UK UDR
What types of infringement of UK UDRs exists?
- Primary
- Secondary
What is Primary Infringement of UK UDR?
Without a licence:
1) Acting to exactly or substantially copy the design to make articles or design documents for commercial purposes or
2) Authorising another to do so (eg sub-contracting)
What is Secondary Infringement of UK UDR?
Without a licence:
1) Importing or keeping for commercial purposes
2) Selling/hiring or offering to sell/hire out
How can an Infringer avoid having to stop (injunction) or deliver-up the infringing article?
Clue: Time is last 5Y of UK UDR term….
Take out a licence as of right
What damages will the owner of an infringed design get, if his design is being infringed in the last 5Y of UK UDR term?
Damages are limited to 2X the retroactive licence fee for the duration of the infringement
In what situation can you get both a CUDR(EU) and Supp UDR (UK)? Why would you normally not get both?
A “type A” UDRs is conferred for a first disclosure (either EU or UK)
Cannot get a “type A” from a subsequent disclosure
Failure to first disclose in UK will prevent Supp UDR…
Unless, you coordinate a simultaneous “first disclosure” in both EU and UK
Does a design document or other record of the design to make an article or copying that article infringe COPYRIGHT
No, unless the the article is an artistic work or type face (s51 CDPA)
Except (copyright is not infringed) when dealing in or exploiting a UK RDR/RRDR corresponding to the artistic work (s53 CDPA)
What different types of drawings exist for Representation filed at UKIPO
- Line drawings
- CAD drawing
- Solid drawings
- Colour drawings
Which type of design would a line drawing not be appropriate for?
Patterns/ Surface decorations
Can you file different types of drawings (e.g., CAD and line drawings) in the same “multiple design” application?
No, must file 2 separate design apps
