Designs

Question 1

What is the main difference between registered and unregistered designs?

Answer 1

Registered designs do not need to proof copying

Question 2

What does ‘design’ mean?

Answer 2

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.

Question 3

Can a computer program interface have a design right?

Answer 3

no

Question 4

Can registered designs include the olympic symbol or national flags?

Answer 4

No

Question 5

Can each part of a product be registered as a design separately?

Answer 5

Yes

Question 6

Do designs need to be novel?

Answer 6

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.

Question 7

For a product forming part of a complex product, how should the novelty and individual character be assessed?

Answer 7

The novelty and character of what is visible during normal use - by the end user, not maintenance, service, repair etc.

Question 8

Is novelty w.r.t designs absolute?

Answer 8

No - it excludes materials that could not have reasonably become known to EEA businesses in the relevant specialist dector.

Question 9

Is there novelty unpublished prior art w.r.t to designs?

Answer 9

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).

Question 10

How is ‘individual character’ w.r.t designs determined?

Answer 10

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.

Question 11

What are the statutory exclusions to Designs?

Answer 11

1. 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.

2. One cannot register a design that is contrary to public policy or morality.

Question 12

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?

Answer 12

Except in the case of features enabling mutually interchangeable (modular) systems.

Question 13

Can a registered design protect how an exhaust fits into a car?

Answer 13

no - ‘must fit’ exclusion, which typically applies to the points of fixture of one object to another object for functional purposes.

Question 14

Is there a grace period for designs?

Answer 14

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.

Question 15

What are the length of the grace periods for designs in UK, EU and the US?

Answer 15

12 months

Question 16

What are the length of the grace periods for designs in Japan, Australia, India and Korea?

Answer 16

6 months

Question 17

Does China have a grace period for designs?

Answer 17

No

Question 18

If utilising a grace period, can one rely on a priority date within that grace period?

Answer 18

No, it is advisable to file a direct application each country possible if utilising a grace period, rather than rely on a priority filing.

Question 19

Do grace periods apply to third party disclosure and design applications/registrations?

Answer 19

No - it is advisable to file an application as soon as possible rather than wait until the end of a grace period.

Question 20

Do secrecy provisions apply to designs?

Answer 20

Yes.

Question 21

Who owns a design?

Answer 21

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.

Question 22

In the case of a commissioned work, who is the owner of a design by default?

Answer 22

The author - clearly, however, a commissioning contract can still assign ownership of the commissioned work to the commissioner.

Question 23

When is the date of registration of a design not the date on which the UK application is deemed to be made?

Answer 23

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)

Question 24

How can money be saved when filing Designs?

Answer 24

Can file up to 50 applications together which do not have to be related.

Question 25

The registered proprietor of a UK design is entitled to exclusive use of the design and what?

Answer 25

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).

Question 26

What are the defences to design infringement?

Answer 26

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

Question 27

Design infringement applies back to what date?

Answer 27

The date the certificate of registration is granted.

Question 28

Can a patent be infringed by exporting a covered product?

Can a design be infringed by exporting a covered product?

Answer 28

No for patents, Yes for designs.

Question 29

Can indirect infringement occur w.r.t designs?

Answer 29

No

Question 30

Case law suggests that the test for design infringement is the same as what?

Answer 30

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.

Question 31

How is it possible for someone to infringe a TM but not to infringe an otherwise identical design right?

Answer 31

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.

Question 32

How can the effective scope of protection provided by a registered design be affected by how a design is represented?

Answer 32

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.

Question 33

Do prior use defences exist w.r.t registered designs?

Answer 33

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.

Question 34

What is the exception to the prior use defence w.r.t registered designs?

Answer 34

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.

Question 35

Can prior use rights be assigned or licenced?

Answer 35

No - same as with patents. They can be handed down with business but not otherwise transferrred.

Question 36

Can a product be marked with a link to a website listing design registrations?

Answer 36

Yes - since 2017. This can limit the scope for an accidential infringement defence.

Question 37

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?

Answer 37

Criminal (both?)

Same for offer, put on market, import, export or use or stock.

Question 38

What is the duration of right in a registered design?

Answer 38

5 years from date of registration, renewable up to four times = total of 25 years.

Question 39

Is there a grace period for the renewal (every 5 years) of a registered design right?

Answer 39

Yes = 6 month grace period.
penalty fee.

Question 40

Can lapsed registered designs be restored?

Answer 40

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).

Question 41

What is the deadline for restoring a lapsed registered design?

Answer 41

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.

Question 42

What are the grounds for invalidlity of registration? (5)

Answer 42

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.

Question 43

Is there a priority period for designs?

Answer 43

Yes, 6 months.

Question 44

How long do US registered designs last?

Answer 44

15 years from the date of issue, there are no renewals.

Question 45

Are renewals due on a US registered design?

Answer 45

No. The term is 15 years from date of issue.

Question 46

Is there a grace period for US designs?

Answer 46

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.

Question 47

Can a UK registered design be extended to other countries?

Answer 47

Yes - to some Commonwealth countries.

Question 48

What is a re-registered design?

Answer 48

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.

Question 49

Could the proprietor of a CRD decide not for the CRD to be treated as a UK RD?

Answer 49

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.

Question 50

How are pending CRD applications treated following 31/12/20?

Answer 50

The applicant or their successor in title could have applied for UK RD before the end of 9 months from 31/12/20.

Question 51

What is the must fit exclusion?

Answer 51

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.

Question 52

what is the must match exclusion?

Answer 52

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.

Question 53

Can a design right exist in a surface decoration?

Answer 53

no

Question 54

When does an unregistered design right exist?

Answer 54

When it is first recorded (as a document or article)

Question 55

What is the purpose of the must fit exclusion?

Answer 55

To allow the spare parts trade.

Question 56

Can a purely functional design be protected in the UK? If so, how? if not, why?

Answer 56

Yes - but only via unregistered design right.

Question 57

What are the qualifying countries for the purposes of novelty w.r.t unregistered designs?

Answer 57

UK (channel islands and the Isle of Man), UK protectorates, New Zealand and Hong Kong.

The novelty criterion for unregistered designs is not universal.

Question 58

What is a qualifying person w.r.t unregistered design rights in the UK?

Answer 58

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).

Question 59

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?

Answer 59

The right belongs only to them.

Question 60

What does qualification by reference to designer mean?

Answer 60

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).

Question 61

What does qualification by reference to employer mean?

Answer 61

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.

Question 62

What does qualification by reference to first marketing mean?

Answer 62

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).

Question 63

What happens if the Employer is not a QP w.r.t to ownership of a DR?

Answer 63

No DR is available to either the Employer or QP unless via first marketing through a qualifying route.

Question 64

What is the situation w.r.t commissioners of a design vs Employers and DR ownership?

Answer 64

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.

Question 65

Are the US and JP qualifying countries?

Answer 65

No, a JP designer receives no design right in the UK for a design made in Japan, and vice-versa.

Question 66

Are EU member states qualifying countries?

Answer 66

Not since 31/12/20.

Question 67

Is Hong Kong a QC?

Answer 67

Yes

Question 68

Is Gibraltar a QC?

Answer 68

Yes

Question 69

Is the Cayman Islands a QC?

Answer 69

Yes

Question 70

Is New Zealand a QC?

Answer 70

Yes

Question 71

What is primary infringement of a DR?

Answer 71

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.

Question 72

What is secondary infringement of a DR?

Answer 72

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.

Question 73

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?

Answer 73

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.

Question 74

Is it possible to infringe a design right by authorising someone else to carry out an infringing act?

Answer 74

Yes.

Question 75

Are the remedies for design infringement the same as patent?

Answer 75

Yes, include injunction, damages, and orders to deliver up.

Question 76

Is it possible to innocently infringe a design right?

Answer 76

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.

Question 77

w.r.t secondary infringement of a design right, what test applies?

Answer 77

knowledge test - the infringer knew or had reason to believe the article infringed.

Question 78

What is the situation w.r.t exhaustion of rights for a design bought in the UK and exported to the EEA?

Answer 78

No exhaustion of rights exist. This would be an infringing act. The reverse would not be an infringing act.

Question 79

What is the length of a design right?

Answer 79

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’

Question 80

When are licences of right available for designs?

Answer 80

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.

Question 81

What happens to designs created in Europe prior to 31/12/2021 which are protected by Community Unregistered Design Rights (CUDRs)?

Answer 81

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.

Question 82

Do designs created in the UK after 31/12/2021 have access to an automatic and unregistered design right in Europe?

Answer 82

Nope.
Designs disclosed in the UK before this date will still be treated as having CUDR in the rest of Europe.

Question 83

Do designs created in the UK before 31/12/2021 have access to an automatic and unregistered design right in Europe?

Answer 83

yes

Question 84

If a design was copied prior to registration can criminal sanctions apply?

Answer 84

No

Question 85

To what type of design does the concept of a qualifying person apply?

Answer 85

Unregistered UK designs only.

Question 86

Which type of design right can protect surface details?

Answer 86

Registered.

Question 87

Are EU member states still qualifying countries?

Answer 87

Not since 1st Jan 2021

Question 88

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.

Answer 88

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.

Question 89

How long does an unregistered community design right last?

Answer 89

3 years

Question 90

How long does a UK UDR last? (3)

Answer 90

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.

Question 91

How is the scope of protection of a UK design registration determined? (3)

Answer 91

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)

Question 92

What are the minimum requirements for obtaining a filing date in the UK for a design application? (5)

Answer 92

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).

Question 93

What options are available for filing applications covering the USA, China and Japan following the filing of a UK design application? (5)

Answer 93

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).

Question 94

Can publication of a design application be deferred? If so, for how long? Why would someone wish to do this?

Answer 94

Yes - for up to 12 months from filing date.
To keep design secret.

Question 95

Is a person habitually resident in a qaulifying country a QP?

Answer 95

Yes

Question 96

A body corporate which is formed under the law of a Q.C. can be a QP under what circumstances?

Answer 96

If a substantial business activity is carried on in a Q.C.

Question 97

List circumstances in which a disclosure of a design does not destroy the novelty of a later filed UK registered design. (5)

Answer 97

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

Question 98

Is the restoration deadline for a design the same as a patent that has lapsed?

Answer 98

No 13 months from end of grace period (19 months) for patent,
12 months from end of grace period (18 months) for designs.

Question 99

Explain the meaning of “infringing article” as defined in relation to UDR. (4)

Answer 99

(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.

Question 100

In assessing the individual character of a design what is taken into consideration?

Answer 100

The degree of freedom of the designer is taken
into consideration.

Question 101

The informed user is generally framed as having a level of knowledge about the product in question which is in between what?

Answer 101

An ordinary user and an expert.

Question 102

Can aspects of an app be registered as a design?

Answer 102

Yes.
Screen layout, distinctive elements can be registered.

Question 102

Can aspects of an app be registered as a design?

Answer 102

Yes.
Screen layout, distinctive elements can be registered.

Question 103

W.r.t QP only, when will a design qualify for UDR? (2)

Answer 103

If:
(1) the designer is a QP or
(2) it is created in the course of employment with a QP.

Question 104

What is a design defined as?

Answer 104

The shape or configuration (internal or external) of the whole or part of an article.

Question 105

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? (

Answer 105

(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

Question 106

What key country is not part of the Hague system?

Answer 106

China

Question 107

What is primary infringement of a design right? (8)

Answer 107

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.

Question 108

What is secondary infringement of a design right?

Answer 108

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.

Question 109

It is a defence for a person charged wth design infringement to show that: (3)

Answer 109

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.

Question 110

How soon after filing do design applications publish?

Answer 110

within weeks

Question 111

What are the benefits of a registered design right over unregistered design right? (7)

Answer 111

1. Term of up to 25 years vs 3 year CUD or 10/15 year UDR;
2. Registration provides a monopoly; infringement does not require copying;
3. Clear start of term (filing date);
4. Option to extend protection abrod with convention filing after 6m;
5. Option to mark goods as registered;
6. Deferred publication provides option to register design without disclosure;
7. No qualification requirement/any legal person can file/own a registration.

Question 112

What relief is available for infringement of registered designs? (4 - non-exhaustive)

Answer 112

1. Order/injunction stopping defendant from continuing with infringing acts;
2. Delivery up of infringing articles;
3. 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;
4. Damages;