Designs Flashcards
What is the main difference between registered and unregistered designs?
Registered designs do not need to proof copying
What does ‘design’ mean?
A ‘design’ means the appearance of the whole or a part of a product, arising from such features as lines, contours, colours, shape, texture, or materials of the product or its ornamentation.
Can a computer program interface have a design right?
no
Can registered designs include the olympic symbol or national flags?
No
Can each part of a product be registered as a design separately?
Yes
Do designs need to be novel?
Yes - it must differ from prior art designs by more than immaterial detailsm and its overall impression on an informed user must differ from the overall impression of any prior art design - taking into account the degree of freedom available in creating the design.
For a product forming part of a complex product, how should the novelty and individual character be assessed?
The novelty and character of what is visible during normal use - by the end user, not maintenance, service, repair etc.
Is novelty w.r.t designs absolute?
No - it excludes materials that could not have reasonably become known to EEA businesses in the relevant specialist dector.
Is there novelty unpublished prior art w.r.t to designs?
A design must be new and have individual character over existing UK or community registered design applications (which may not have been published at the start of the present application).
How is ‘individual character’ w.r.t designs determined?
By the overall impression of the ‘informed user’. The informed user is someone experienced with the products in question and with the designs and relevant design constraints in the field. More like the ‘skilled person’ in patents than the ‘average consumer’ in trade marks.
What are the statutory exclusions to Designs?
- Designs dictated by technical function
- a right in a registered design does not subsist in those features of a product whose appearance are soley dictated by the product’s technical function.
- a registered design does not protect those features required in order to connect to or to fit (i.e. to place in, around or against) another product so that either may perform its function….except in the case of features enabling mutually interchangeable (modular) systems.
- One cannot register a design that is contrary to public policy or morality.
A registered design does not protect those features required in order to connect to or to fit (i.e. to place in, around or against) another product so that either may perform its function, except when?
Except in the case of features enabling mutually interchangeable (modular) systems.
Can a registered design protect how an exhaust fits into a car?
no - ‘must fit’ exclusion, which typically applies to the points of fixture of one object to another object for functional purposes.
Is there a grace period for designs?
A design is not considered disclosed to the public if:
it was disclosed in confidence;
it was disclosed by the designer or by anyone given, entitled to or abusing information from the designer within 12 months prior to the application or priority date.
What are the length of the grace periods for designs in UK, EU and the US?
12 months
What are the length of the grace periods for designs in Japan, Australia, India and Korea?
6 months
Does China have a grace period for designs?
No
If utilising a grace period, can one rely on a priority date within that grace period?
No, it is advisable to file a direct application each country possible if utilising a grace period, rather than rely on a priority filing.
Do grace periods apply to third party disclosure and design applications/registrations?
No - it is advisable to file an application as soon as possible rather than wait until the end of a grace period.
Do secrecy provisions apply to designs?
Yes.
Who owns a design?
The author (creator) unless it was created by an employee in the course of their employment, in which case the employer is the owner.
Ownership can be assigned or shared.
For computer generated designs, the person making the arrangements necessary to give rise to the design is deemed to be the author.
In the case of a commissioned work, who is the owner of a design by default?
The author - clearly, however, a commissioning contract can still assign ownership of the commissioned work to the commissioner.
When is the date of registration of a design not the date on which the UK application is deemed to be made?
1) if this is due to splitting an initial application or validly amending the design to satisfy registration requirements such that a new application is filed, the date of registration of the new application is the date of the initial UK application.
2) if there is a priority claim then the reg date is still filing date of UK app. (same as patents - term runs from filing not priority date)
How can money be saved when filing Designs?
Can file up to 50 applications together which do not have to be related.
The registered proprietor of a UK design is entitled to exclusive use of the design and what?
and any design that does not produce a different overall impression on the informed user (taking account of the degree of freedom in creating the design).
What are the defences to design infringement?
1) Private + non-commercial
2) Experimental
3) teaching (if source given and does not unfairly prejudice normal exploitation of the design)
4) foreign ships/aircraft temporarily in UK;
5) importation of spare parts for such vessels
6) repair of such vessels
7) Exhaustion of rights, once product put on market in UK/EEA;
8) Where registered product is a component of a complex product and it is used to repair the original appearance of complex product
Design infringement applies back to what date?
The date the certificate of registration is granted.
Can a patent be infringed by exporting a covered product?
Can a design be infringed by exporting a covered product?
No for patents, Yes for designs.
Can indirect infringement occur w.r.t designs?
No
Case law suggests that the test for design infringement is the same as what?
Basically the same as the test for novelty and individual character - process is to check whether a product falls under the design’s exclusivity is to first determine those aspects of the design eligible for comparison on the basis of their overall appearance, and then for the ‘informed user’ to weight the similarities and differences of these aspects to reach a conclusion.
How is it possible for someone to infringe a TM but not to infringe an otherwise identical design right?
The informed user is more experienced and discriminating than the ‘average consumer’ of TMs, and so for an otherwise identical TM and registered design, in principle it is possible for something to infringe the TM but not the design.
How can the effective scope of protection provided by a registered design be affected by how a design is represented?
A line drawing of a design is intepreted as protecting the sape only, irrespective of surface decor, whilst a shaded, untextured CAD render of the same design could be interpreted as providing guidance on surface appearance.
Do prior use defences exist w.r.t registered designs?
Yes - person who before the application/priority date, used a subsequently registered design in good faith or made serious and effective preparations to do so, may continue to do so - unless the used design was copied from the design that was subsequently registered.
What is the exception to the prior use defence w.r.t registered designs?
Yes - person who before the application/priority date, used a subsequently registered design in good faith or made serious and effective preparations to do so, may continue to do so - unless the used design was copied from the design that was subsequently registered.
Can prior use rights be assigned or licenced?
No - same as with patents. They can be handed down with business but not otherwise transferrred.
Can a product be marked with a link to a website listing design registrations?
Yes - since 2017. This can limit the scope for an accidential infringement defence.
Is it a criminal or civil offence to intentionally copy a UK registered design in order to make a product exactly to that design or only with immaterial differences, whilst knowing or having reason to believe that the design was registered?
Criminal (both?)
Same for offer, put on market, import, export or use or stock.
What is the duration of right in a registered design?
5 years from date of registration, renewable up to four times = total of 25 years.
Is there a grace period for the renewal (every 5 years) of a registered design right?
Yes = 6 month grace period.
penalty fee.
Can lapsed registered designs be restored?
yes - if the registrar is satisfied that the failure to pay the fee(s) was unintentional, if so, he will restore the right upon payment of the fee(s).
Need to pay fees within 12 months of missed renewal deadline (6 months after the end of the grace period).
What is the deadline for restoring a lapsed registered design?
Need to pay fees within 12 months of missed renewal deadline (6 months after the end of the grace period).
Prove it was unintentional in the first place.
What are the grounds for invalidlity of registration? (5)
1) Not novel or individual character;
2) Not novel or individual character over a previously registered UK design made available to the public on or after the application date of the later design but which was registered, or applied for registration, prior to the application date of the later design;
3) Entitlement, true owner objects;
4) Design incorporates earlier distinctive sign and owner objects; or
5) Design incorporates copyright material and owner objects.
Is there a priority period for designs?
Yes, 6 months.
How long do US registered designs last?
15 years from the date of issue, there are no renewals.
Are renewals due on a US registered design?
No. The term is 15 years from date of issue.
Is there a grace period for US designs?
Yes - 12 months, but the application must be filed in the US at the end of this period, either directly, or as a PCT application.
Can a UK registered design be extended to other countries?
Yes - to some Commonwealth countries.
What is a re-registered design?
A re-registered design is what a CRD is now known as in the UK following Brexit. It inherits the application and registration dates of the CRD.
Infringement back to date of grant does not apply and there is no issue of certificate upon registration.
Could the proprietor of a CRD decide not for the CRD to be treated as a UK RD?
Yes - after 31/12/20 they could serve notice on the registrar that they want the design not to be treated as a UK RD unless the resulting UK re-registered design has accrued an interest (assignment, licence etc.) or proceedings based on the re-registered design have been initiated by the owner or with their consent.
How are pending CRD applications treated following 31/12/20?
The applicant or their successor in title could have applied for UK RD before the end of 9 months from 31/12/20.
What is the must fit exclusion?
A design right can not exist in features of shape or configuration of an article that enable the article to co-operate with another article so either article can perform its function.
what is the must match exclusion?
A design right can not exist in features of shape or configuration of an article that aesthetically depend uppn another article that the article is intended to form an integral part of.
Can a design right exist in a surface decoration?
no
When does an unregistered design right exist?
When it is first recorded (as a document or article)
What is the purpose of the must fit exclusion?
To allow the spare parts trade.
Can a purely functional design be protected in the UK? If so, how? if not, why?
Yes - but only via unregistered design right.
What are the qualifying countries for the purposes of novelty w.r.t unregistered designs?
UK (channel islands and the Isle of Man), UK protectorates, New Zealand and Hong Kong.
The novelty criterion for unregistered designs is not universal.
What is a qualifying person w.r.t unregistered design rights in the UK?
A qualifying person is a habitual resident of a qualifying country, or a government of a qualifying country, or a business formed in a qualifying country and having a substantial activity within a qualifying country (i.e. excluding dealings in goods wholly outside that country).
For unregistered designs not made during employment, what occurs if only one of a team of designers who came up with the design is a qualifying person?
The right belongs only to them.
What does qualification by reference to designer mean?
For designs not made during employment, then if at least one of the designers is a QP then DR protection is available to (only) those qualifying person(s).
What does qualification by reference to employer mean?
If a design is created in the course of employment, then DR protection is available if the employer (i.e. the would-be proprietor) is a QP.
For joint employment, if at least one of the employers is a QP then DR protection is available to (only) the QPs.
What does qualification by reference to first marketing mean?
If there is no DR already with an employer or designer (because designed in a non-qualifying country) then a design qualifies for a DR protection if the first marketing of articles made to the design is by a qualifying person and in a qualifying country.
For joint persons, if at least one is a qualifying person under subsection 1(a) then design right protection is available to only the qualifying person(s).
What happens if the Employer is not a QP w.r.t to ownership of a DR?
No DR is available to either the Employer or QP unless via first marketing through a qualifying route.
What is the situation w.r.t commissioners of a design vs Employers and DR ownership?
Commissioners of a design, unlike Employers, do not enjoy automatic ownership of the commissioned work. Commissioners need ownership assigned to them by the current rightful owner, for example as part of the commissioning agreement.
Again, as an assignee they will need to be a qualifying person to enjoy the right.
Are the US and JP qualifying countries?
No, a JP designer receives no design right in the UK for a design made in Japan, and vice-versa.
Are EU member states qualifying countries?
Not since 31/12/20.
Is Hong Kong a QC?
Yes
Is Gibraltar a QC?
Yes
Is the Cayman Islands a QC?
Yes
Is New Zealand a QC?
Yes
What is primary infringement of a DR?
This occurs when someone acts to exactly or substantially copy the design to make articles or design documents (for the purpose of making such articles) for commercial purposes - or by authorising another to do so - without the licence of the design right holder.
What is secondary infringement of a DR?
This occurs where, without a licence, a person imports into the UK for a commercial purpose, keeps in the UK for a commercial purpose or sells, hires out, or offers for sale or hire, in the course of a business, an article that is, and they know or have reason to beleive, is an infringing article.
Where a design right has existed in a design at any time, what is the presumption w.r.t an article made to the design?
The presumption, unless proved otherwise, is that article was made to the design while the DR was in force and hence is an infringing article.
Design documents are not infringing articles.
Is it possible to infringe a design right by authorising someone else to carry out an infringing act?
Yes.
Are the remedies for design infringement the same as patent?
Yes, include injunction, damages, and orders to deliver up.
Is it possible to innocently infringe a design right?
Yes - for example if a party commissions a designer who then secretly plagiarises a design, the commissioner may well be an innocent infringer of the right in the plagiarised design.
The remedy of damages from that party is no longer available to the plaintiff, though they may still be prevented from use of the design.
w.r.t secondary infringement of a design right, what test applies?
knowledge test - the infringer knew or had reason to believe the article infringed.
What is the situation w.r.t exhaustion of rights for a design bought in the UK and exported to the EEA?
No exhaustion of rights exist. This would be an infringing act. The reverse would not be an infringing act.
What is the length of a design right?
It expires at the earliest of 15 years from the end of the calendar year in which it was first recorded or made OR if the design was made available for sale or hire anywhere in the world within the first five years from the end of that calendar year, then up to ten years from the end of the calendar year in which that occured.
So it will be shorter if exploited within first 5 years of ‘existence’
When are licences of right available for designs?
In the last 5 years of a design right anyone may request a licence as of right.
Terms settled between parties - if not, the Comptroller will set them.
An infringer can take a licence during infringement proceedings and thereby avoid an injunction or order to delvier up, whilst damages are limited to double the retroactive licence fee for the duration of the infringement.
What happens to designs created in Europe prior to 31/12/2021 which are protected by Community Unregistered Design Rights (CUDRs)?
Like registered designs, the UK is cloning the UK portion to create a corresponding ‘continuing unregistered design’.
All community unregistered designs will continue to be protectable and enforceable in the UK for the remaining period of protection of the right.
Do designs created in the UK after 31/12/2021 have access to an automatic and unregistered design right in Europe?
Nope.
Designs disclosed in the UK before this date will still be treated as having CUDR in the rest of Europe.
Do designs created in the UK before 31/12/2021 have access to an automatic and unregistered design right in Europe?
yes
If a design was copied prior to registration can criminal sanctions apply?
No
To what type of design does the concept of a qualifying person apply?
Unregistered UK designs only.
Which type of design right can protect surface details?
Registered.
Are EU member states still qualifying countries?
Not since 1st Jan 2021
Who owns the unregistered design right in this scenario:
X, not a QP, employed by Z, not a QP, creates a design right in the US.
Y, a third party, markets the design in the UK.
Y, the third party, wouldown the UK UDR.
The US is not a qualifying country.
A UK UDR can belong to a party if the first marketing of an article made to the design is done so in a QC. However, such a first marketer would only own the UK UDR if the person or company who created the design was not considered a QP.
How long does an unregistered community design right last?
3 years
How long does a UK UDR last? (3)
15 years from the end of the calendar year it was first recorded in a design document or an article was first made to the design, whichever first occured, OR
If articles are made to the design within 5 years (end of calendar year) of first creation, then 10 years from the end of calendar year in which that occured.
How is the scope of protection of a UK design registration determined? (3)
The registration of a design under this Act gives the registered proprietor the exclusive right to use the design (1 mark)
and any design which does not produce on the informed user a different overall impression (1 mark).
In determining whether a design produces a different overall impression on the informed user, the degree of freedom of the author in creating his design shall be taken into consideration (1 mark)
What are the minimum requirements for obtaining a filing date in the UK for a design application? (5)
The minimum requirements for obtaining a filing date in the UK are the filing
of an application to register the design/of a request to register the design (1 mark)
on Form DF2A;
identification of the person making the application (1 mark);
and either (i) a representation of the design (1 mark);
or (ii) a specimen of the design (1 mark);
and the prescribed fee (1 mark).
What options are available for filing applications covering the USA, China and Japan following the filing of a UK design application? (5)
File a national application (0.5 mark) in China (0.5 mark)
and either
i) file national applications (0.5 mark) in the USA (0.5 mark) and Japan (0.5 mark); or
ii) file a Hague International Design application (0.5 mark) designating the USA (0.5 mark) and Japan (0.5 mark).
In each case, a priority claim to the first UK filing (0.5 mark) should be made within 6 months of the first UK filing (0.5 mark).
Can publication of a design application be deferred? If so, for how long? Why would someone wish to do this?
Yes - for up to 12 months from filing date.
To keep design secret.
Is a person habitually resident in a qaulifying country a QP?
Yes
A body corporate which is formed under the law of a Q.C. can be a QP under what circumstances?
If a substantial business activity is carried on in a Q.C.
List circumstances in which a disclosure of a design does not destroy the novelty of a later filed UK registered design. (5)
1) if it could not reasonably have become known before the relevant date in the normal course of business to persons carrying on business in the Geographical Area Comprising the UK and EEA (NOT EU) and specialising in the sector concerned;
2) Made by a person other than the designer or owner, under conditions of confidentialty
3) Made by designer etc. within 12 months (grace period)
4) made by someone who the designer showed the design too during 12 month grace period
5) later filed UK claims priority of earlier right
Is the restoration deadline for a design the same as a patent that has lapsed?
No 13 months from end of grace period (19 months) for patent,
12 months from end of grace period (18 months) for designs.
Explain the meaning of “infringing article” as defined in relation to UDR. (4)
(1) an Article is an infringing article if its making to a design was an infringement of design right in the design;
(2) an Article is also an infringing article if it has been or is proposed to be imported into the UK and
(3) its making to that design in the UK would have been an infringement of the design right in question or
(4) the breach of an exclusive licence agreement relating to the design.
In assessing the individual character of a design what is taken into consideration?
The degree of freedom of the designer is taken
into consideration.
The informed user is generally framed as having a level of knowledge about the product in question which is in between what?
An ordinary user and an expert.
Can aspects of an app be registered as a design?
Yes.
Screen layout, distinctive elements can be registered.
Can aspects of an app be registered as a design?
Yes.
Screen layout, distinctive elements can be registered.
W.r.t QP only, when will a design qualify for UDR? (2)
If:
(1) the designer is a QP or
(2) it is created in the course of employment with a QP.
What is a design defined as?
The shape or configuration (internal or external) of the whole or part of an article.
Your client, Ava, has designed an item with a distinctive decorative pattern etched into it. She intends to apply the same pattern to a number of different items made of different materials each item will have a different shape but wll will incorporate the pattern. She would like protection for the design in the UK, France, Germany, USA, China and Japan, minimising the initial cost as she is awaiting funding which is expected in the next 3 months.
What are her options? (
(1) minimise costs by filing a UK priority design application and then file paris concention applications in each of France, Germany, USA, China and Japan claiming priority from the first application within (2) 6m;
(3) could file national applications in each country of interest, (4) allowing us to tailor application to suit the requireemnts in each country. This would be expensive (5) as we would need local representation in each country and a pain to organise/manage mulitple applications.
(6) File an EU application to cover EU countries, file national applications in China, Japan and USA. (7) Tailor applications but again expensive and management a problem. (8) EU is a unitary right so can be invalidated centrally.
(9) file a Hague application and designate required countries and (10) file in China separately as it not part of Hague system
What key country is not part of the Hague system?
China
What is primary infringement of a design right? (8)
When a person who without a (1) licence or the (2) consent of the design right owner (3) does OR (4) authorises another to (5) reproduce the design for (6) commercial purposes by making articles to the design OR (7) by making a design document recording the design for (8) the purposes of enabling such articles to be made.
What is secondary infringement of a design right?
When a person imports into the UK for commercial purposes or has in his possession for commercial purposes or sells, lets for hire, offers, or exposes for sale or hire, in the course of business an infringing article.
It is a defence for a person charged wth design infringement to show that: (3)
1) the person reasonably believed that the registration of the design was invalid;
2) the person did not infringe the design in question; or
3) the person reasonably believed they did not infringe.
How soon after filing do design applications publish?
within weeks
What are the benefits of a registered design right over unregistered design right? (7)
- Term of up to 25 years vs 3 year CUD or 10/15 year UDR;
- Registration provides a monopoly; infringement does not require copying;
- Clear start of term (filing date);
- Option to extend protection abrod with convention filing after 6m;
- Option to mark goods as registered;
- Deferred publication provides option to register design without disclosure;
- No qualification requirement/any legal person can file/own a registration.
What relief is available for infringement of registered designs? (4 - non-exhaustive)
- Order/injunction stopping defendant from continuing with infringing acts;
- Delivery up of infringing articles;
- Delivery up of material and implements predominantly used in order to manufacture the infringing goods if their owner knew they would be used this way or it would be obvious they would be used this way;
- Damages;
