Design rights Flashcards

Question

What is the duration of the EU registered community design right?

Answer 1

Up to 25 years from date of filing subject to renewal every five years.

Answer 2

Designs need to (i) be new, ie no identical designs or designs differing in only immaterial details have been made available to the public, and (ii) have ‘individual character’, ie create a different overall impression on an ‘informed user’ to known designs.

Answer 3

Application filed at European Union Intellectual Property Office (EUIPO) and payment of fee (€350 for registration and publication of one design).

Answer 4

All of the usual remedies for IP rights infringement including: - damages - an account of the infringer's profits - an injunction - delivery up or destruction of the infringing goods - publication of the judgment against the infringer - declarations of infringement (or any other declaration needed in the particular case) Additional remedies: flagrancy damages, where the infringements committed were particularly brazen, and merit an increase in the normal IP infringement level of damages to the extent the defendant has benefited from committing infringing acts.

Answer 5

Article 89 of Assimilated Regulation (EU) 6/2002 (transplanted to UK after Brexit expressly gives the courts the power to order the following remedies, unless there are special reasons not to do so: - injunction restraining the infringement - seizure of infringing products - seizure of materials and implements predominantly used in order to manufacture the infringing products (if their owner knew the effect for which such use was intended or if such effect would have been obvious in the circumstances) - any order imposing other appropriate sanctions in circumstances provided by law - delivery up and destruction of infringing goods in the Community Design Regulations 2005, regs 1B and 1C

Answer 6

Article 89 of the CDR provides: - an order prohibiting the defendant from proceeding with the acts that have infringed or would infringe the Community design - an order to seize the infringing products - an order to seize materials and implements predominantly used to manufacture the infringing goods, if their owner knew the effect for which such use was intended or if such effect would have been obvious in the circumstances - any order imposing other sanctions appropriate under the circumstances that are provided by the law of the Member State in which the acts of infringement or threatened infringement are committed, including its private international law.

Answer 7

RDA 1949, s 24A provides that all relief that is available in relation to other IP rights will be available to a registered design owner including: - damages or an account of the infringer’s profits - an injunction - delivery up or destruction of the infringing goods - publication of the judgment against the infringer - declarations of infringement (or any other declaration needed in the particular case). Such relief includes interim remedies. See, for example, Utopia Tableware v BBP Marketing [2013] EWPCC 15 (not reported by LexisNexis®), in which an interim injunction to restrain UK registered design infringement was granted.

Answer 8

Article 89 of the CDR provides: - an order prohibiting the defendant from proceeding with the acts that have infringed or would infringe the Community design - an order to seize the infringing products - an order to seize materials and implements predominantly used to manufacture the infringing goods, if their owner knew the effect for which such use was intended or if such effect would have been obvious in the circumstances - any order imposing other sanctions appropriate under the circumstances that are provided by the law of the Member State in which the acts of infringement or threatened infringement are committed, including its private international law.

Answer 9

Disclosure of a design during the 12 months prior to filing will not prejudice novelty/individual character if disclosure was made by the proprietor/with their consent.

Answer 10

Disclosure of a design during the 12 months prior to filing will not prejudice novelty/individual character if disclosure was made by the proprietor/with their consent.

Answer 11

Exclusive right to prevent copying by third parties. The burden of proof is on the claimant to show subsistence and duration of the right and that the defendant has copied or had the opportunity to copy. Primary acts of infringement include: (i) making articles to the design, and (ii) making a design document recording the design for the purposes of enabling such articles to be made. Secondary acts of infringement include importing or dealing with infringing articles. *subject to non-commercial, experimental or teaching exceptions, and exceptions for overseas ships and aircraft

Answer 12

Exclusive right to prevent copying by third parties. The burden of proof is on the claimant to show subsistence and duration of the right and that the defendant has copied or had the opportunity to copy. Infringing acts include: making, offering, putting on the market, importing, exporting; using; or stocking the design or designs which do not form a different overall impression to the design. *subject to non-commercial, experimental or teaching exceptions, and exceptions for overseas ships and aircraft

Answer 13

Exclusive right to prevent copying by third parties. The burden of proof is on the claimant to show subsistence and duration of the right and that the defendant has copied or had the opportunity to copy. Infringing acts include: making, offering, putting on the market, importing, exporting; using; or stocking the design or designs which do not form a different overall impression to the design. *subject to non-commercial, experimental or teaching exceptions, and exceptions for overseas ships and aircraft

Answer 14

Infringing acts include: making, offering, putting on the market, importing, exporting; using; or stocking the design or designs which do not form a different overall impression to the design. This is a monopoly right so there is no need to show copying. There is a right of prior use in limited circumstances when another person has independently created a similar or identical design prior to the application date of the registered design. *subject to non-commercial, experimental or teaching exceptions, and exceptions for overseas ships and aircraft

Answer 15

Infringing acts include: making, offering, putting on the market, importing, exporting; using; or stocking the design or designs which do not form a different overall impression to the design. This is a monopoly right so there is no need to show copying. There is a right of prior use in limited circumstances when another person has independently created a similar or identical design prior to the application date of the registered design. *subject to non-commercial, experimental or teaching exceptions, and exceptions for overseas ships and aircraft

Answer 16

- No costs involved in acquiring right - Right holders can select which part of a design to rely on when enforcing it against infringers

Answer 17

- No presumption that the right exists- heavy evidential burden on the owner - Requirement to show copying to establish infringement - Less likely to act as a deterrent to potential infringers as no searchable register - Not as attractive- less lucrative in terms of licensing/assigning rights - Only covers 3D designs

Answer 18

- No costs involved in acquiring right - Covers 2D and 3D designs - Right holders can select which part of a design to rely on when enforcing it against infringers.

Answer 19

- No presumption that the right exists- heavy evidential burden on the owner - Requirement to show copying to establish infringement - Less likely to act as a deterrent to potential infringers as no searchable register - Not as attractive- less lucrative in terms of licensing/assigning rights

Answer 20

- Covers the whole of the EU - No costs involved in acquiring right - Covers 2D and 3D designs - Right holders can select which part of a design to rely on when enforcing it against infringers

Answer 21

- No presumption that the right exists so heavy evidential burden on the owner - Requirement to show copying to establish infringement - Less likely to act as a deterrent to potential infringers as no searchable register - Not as attractive and hence less lucrative in terms of licensing/assigning rights.

Answer 22

- No requirement to produce evidence that right exists - Enforced quickly and at lower cost - Monopoly right registration acts as a deterrent to potential infringers - Rights are more appealing to potential licensees/assignees because of certainty of registration to generate more revenue - Covers 2D and 3D designs

Answer 23

- Cost involved in achieving registration - It should be noted that the application is not examined in respect of novelty or individual character at registration so validity is only ascertained when tested in litigation

Answer 24

- Covers the whole of the EU - No requirement to produce evidence that right exists - Enforced quickly and at lower cost - Monopoly right registration acts as a deterrent to potential infringers - Rights are more appealing to potential licensees/assignees because of certainty of registration to generate more revenue - Covers 2D and 3D designs.

Answer 25

- Cost involved in achieving registration - It should be noted that the application is not examined in respect of novelty or individual character at registration so validity is only ascertained when tested in litigation

Answer 26

Copyright, Designs and Patents Act 1988 s233: - (1) Where in an action for infringement of design right brought by virtue of section 226 (primary infringement) it is shown that at the time of the infringement the defendant did not know, and had no reason to believe, that design right subsisted in the design to which the action relates, the plaintiff is not entitled to damages against him, but without prejudice to any other remedy.

Answer 27

Copyright, Designs and Patents Act 1988 s233: (2)Where in an action for infringement of design right brought by virtue of section 227 (secondary infringement) a defendant shows that the infringing article was innocently acquired by him or a predecessor in title of his, the only remedy available against him in respect of the infringement is damages not exceeding a reasonable royalty in respect of the act complained of.

Answer 28

Copyright, Designs and Patents Act 1988 s233: (3)In subsection (2) “innocently acquired” means that the person acquiring the article did not know and had no reason to believe that it was an infringing article.