Designs

Question 1

What do UK RDRs protect?

Answer 1

Appearance of whole or part of a product

Question 2

Can parts forming part of a complex product be protected?

Answer 2

Only to the extent that what is VISIBLE DURING NORMAL USE is new and has individual character

Question 3

Can designs dictated solely by technical function be protected?

Answer 3

Only by UK UDR

Question 4

To which rights does the must-fit exclusion apply?

Answer 4

All four

Question 5

To which rights do the must-match exclusion apply?

Answer 5

UK UDR

Question 6

What is a new design?

Answer 6

One which differs from the prior art by more than immaterial details.

Question 7

What is included in prior art for UK UDR, EU RCD and EU UCD?

Answer 7

Disclosures that would have reasonably become known in the normal course of business within the UK and the EEA, in the specialist sector of the design

Question 8

What is the grace period in the UK, EU and US for filing after a disclosure originating from the designer?

Answer 8

12m from the disclosure

Question 9

What must you remember when making use of the grace period for filing?

Answer 9

It does not protect against independent 3rd party designs.

Question 10

What does it mean for a design to have individual character?

Answer 10

it’s overall impression on the informed user differs from the overall impression of any prior design

Question 11

Who is the original proprietor of a design?

Answer 11

The designer, unless it was created by an employee in the course of employment, in which case the employer is the proprietor

Question 12

Who owns commissioned designs?

Answer 12

The designer, unless a commissioning contract assigns the design to the commissioner

Question 13

How can you save money when filing designs?

Answer 13

File multiple designs in the same application. Can’t file multiple unrelated designs or multiple surface decor designs in single EU RCD application.

Question 14

What is the scope of protection afforded by a registered design?

Answer 14

Exclusive use of design and any design having the same overall impression on the informed user

Question 15

Which acts infringe on registered designs?

Answer 15

Making, offering, putting on the market, importing, exporting, or using a product incorporating the design, or stocking the product for any of these purposes.

Question 16

Explain prior user rights (designs).

Answer 16

Prior use or serious and effective preparations to use made in good faith before filing/priority date may continue, unless used design was copied from subsequently registered design.

Question 17

Can prior use rights be transacted?

Answer 17

They can only be assigned with part of the business.

Question 18

What is the maximum term of a UK RDR and EU RCD?

Answer 18

25 years from registration, renewals due every 5 years

Question 19

What if you miss the renewal due date for UK RDR or EU RCD?

Answer 19

6m grace period in which to pay fees with penalty. Can restore within 12m of expiry if failure to pay unintentional.

Question 20

What is the deadline for filing a priority claiming convention application? (Designs)

Answer 20

Within 6m of filing priority app.

Question 21

What is the grace period in Japan, Australia, India and Korea for filing after a disclosure originating from the designer?

Answer 21

6m from the disclosure

Question 22

What is the grace period in China for filing after a disclosure originating from the designer?

Answer 22

There isn’t one.

Question 23

What is the term of a US RDR?

Answer 23

15 years from issue. No renewals.

Question 24

What do UK UDR protect?

Answer 24

Shape or configuration (whether internal or external) of all or part of an article.

Question 25

What’s excluded from UK UDR protection?

Answer 25

Surface decoration, must-fit features, and must-match features.

Question 26

What is the requirement for UK UDR to subsist?

Answer 26

The design must be ORIGINAL - i.e. not commonplace in the relevant field within a QUALIFYING COUNTRY

Question 27

What are qualifying countries for UK UDR?

Answer 27

UK, UK protectorates, NZ and HK. EU states are not qualifying countries since 31/12/20.

Question 28

For who are UK UDRs available?

Answer 28

A qualifying person - i.e. a resident of or business formed in and having a substantial activity in a qualifying country.

Question 29

Who owns a UK UDR?

Answer 29

Qualifying designer but qualifying employer if created during employment, or
First qualifying marketer if created in non-qualifying country.

Question 30

Which acts are primary infringement on UK UDR?

Answer 30

Exactly or substantially COPYING design to make articles or design documents for commercial purposes.

Question 31

Which acts are secondary infringement on UK UDR?

Answer 31

Importing, keeping, selling, hiring out, or offering an article that they KNOW/HAVE REASON TO BELIEVE is an infringing article.

Question 32

Where does the burden of proof lie with respect to articles infringing on UK UDR?

Answer 32

Defendant must prove that article was not made while the design right was in force.

Question 33

Which rights require copying for infringement?

Answer 33

UK UDR and EU UCD

Question 34

When does a UK UDR expire?

Answer 34

Earlier of:
- 10 years from end of calendar year in which design was first put on the market, or
- 15 years from end of calendar year in which design was first recorded / made.

Question 35

What happens in the last five years of UK UDR term?

Answer 35

Anyone can requestion license as of right.

Question 36

How long does an EU UCD last?

Answer 36

3 years from first disclosure in the EU