Designs Flashcards
What does a UK registered design right protect?
The appears of the whole or part of a product
includes complex products (products composed of at least two replaceable component parts permitting assembly and reassembly of the product) - must be visible during normal use
e.g. lines, contours, colours, shape, texture, materials, ornamentation
What can you do to reduce filing costs for a UK registered design (and you have multiple designs)
File multiple designs in a single application to reduce costs
What are the exclusions for a UK registered design?
Features solely dictated by technical function
Must fit products - features which must necessarily be reproduced in their exact form/dimensions to permit product to be mechanically connected to or placed in/around/against, another product so that either may perform its function.
Typically applies to the points of fixture. For a car exhaust, can register a design for the exhaust but not how it fits onto the car.
Does not exclude designs for connection of mutually interchangeable products in a modular system
Designs contrary to public policy or morality
May like to include a disclaimer, e.g. exclude pattern and protect shape
No ‘must’ match exclusion but can make matching spare parts that restore the original appearance of the car.
What are the requirements for a UK registered design?
Novelty - no identical design or design differing only in immaterial details made available to the public before FD/PD
not absolute, only things that could reasonably have become known in the normal course of business to persons carrying out business within the UK and EEA and specialising in the design sector concerned. (novelty is still worldwide)
A design must also be new and have individual character over existing UK and Community registered design applications (which may not have been published at the date of the present application).
confidential disclosures are not prejudicial
there is a 12 month grace period for disclosures made directly or indirectly by the designer/successor or made as a consequence of abuse in relation to the designer/successor
Individual character - different overall impression on the informed user, taking into account the degrees of freedom of the designer
For a complex product, only features visible during normal use contribute to novelty and individual character
What is the grace period for a UK registered design
12 month grace period for disclosures by the designer/successor or anyone given the information by the designer/successor or disclosures made as a consequence of abuse in relation to the designer or successor
Does not protect against independent 3rd party design
Confidential disclosures not prejudicial
Not the same in all territories
What does an EU Registered Community Design Right protect?
The appears of the whole or part of a product
includes complex products - products assembled from 2+ pieces
Cannot file multiple designs in different Locarno classes
UK representatives cannot act before the EUIPO to protect CRDs
What does a UK Unregistered Design Right protect?
Shape or configuration of whole or part of an article
What are the exclusions for a UK Unregistered Design Right?
No surface decoration
No must fit (features which enable article to be connected/placed in, around or against another article so either may perform its function)
No must match (features dependent on appearance of another article)
No method or principle of construction
Designs dictated solely by technical function are allowed
Requirements for UK unregistered design right
First disclosure in the UK
Does not exist until design has been recorded (e.g. as a document or article)
Novelty - Must be original. Lower standard of novelty than for UK RDR - not commonplace within relevant design field in a qualifying country
Only for qualifying persons
What does an EU Unregistered Community Design protect
The appearance of the whole or part of a product
For a first disclosure in the UK
includes complex products - products assembled from 2+ pieces
Who is the first owner of a UK registered design right?
Employer if created in the course of employment.
Otherwise, the designer.
Commissioner does not own commissioned works, need contract in place to assign to commissioner
What is the scope of protection for a UK registered design right?
Monopoly right to the same design and designs creating the same overall impression
What are infringing acts for a UK Registered Design Rights
I POEM US
making, offering, putting on market, importing, exporting, using, stocking
It is a criminal offence to intentionally copy a UK RDR (to I POEM US a product exactly to the design or with immaterial differences, whilst knowing or having reason to believe the design was registered but not obtaining the consent of the proprietor)
A defence to show reasonable belief that the registration of the design was invalid or the person did not infringe the registered design.
No criminal sanctions if copied before registration (may be damages)
Rights are exhausted once product is put to market in UK/EEA with owner’s consent
Prior use defence if a person used or made serious and effective preparations to use a subsequently registered design in good faith before the application or priority date, unless the used design was copied from the design that was subsequently registered.
Prior use right can be handed down with a business but cannot be licenced or assigned.
Infringement only applies back to the date a certificate of registration is granted. No intermediate publication prior to grant.
Was is the term of protection for a UK registered design right and EU Community Registered design right?
Up to 25 years, subject to renewals every 5 years
What is the grace period for paying renewals fees for a UK registered design right?
6 month grace period to pay renewal and penalty fees
What happens if the grace period for paying renewals is missed for a UK registered design right?
Design right can be restored.
Application to restore design right needs to be made within 12 months of expiry (6 months after the lapse of the grace period)
The application may be made by the registered proprietor/joint applicants.
File evidence failure to pay the fee was unintentional
3rd party rights accrue (post grace period to restoration) so restore asap.
Infringement during the grace period is infringement if renewal fee is paid within grace period.
Who is the first owner of a UK Unregistered design right?
The employer if the design was created during employment and the employer is a qualifying person.
Otherwise designer if the designer is a qualifying person.
Otherwise first marketer in a qualifying country by a qualifying person.
Commissioner does not own commissioned works, need contract in place to assign to commissioner.
What happened to existing Registered Community Designs from IP completion day (Brexit)
Existing RCD re-registered as UK re-registered design right.
Pending RCD: 9 months to apply for UK RDR with same filing/priority date as RCD
Assignments of CRDs, licences (if cover the UK) and mortgages on CRDs are carried over to the UK re-RD
What is primary infringement of a UK unregistered design right?
Primary infringement: copying design to make articles exactly or substantially to design, or making design document for making such articles without a licence of the design right owner.
Secondary infringement: IKSHO
(importing, keeping, selling, hiring, offering) article when known or it is obvious it is an infringing article without a licence of the design right owner.
Rights are exhausted once product is put to market in UK/EEA with owner’s consent.
Where a design right has existed in a design at any time there is a presumption that an article made to the design was made while the design right was in force until proved otherwise.
Copying can be direct or indirect
It is possible to infringe a design by authorising someone else to carry out the infringing act
What is the term of protection for UDR?
Earlier of:
15 years from end of calendar year in which design was first recorded or article was first made to the design
Or
10 years from end of calendar year articles made to the design were first sold or hired anywhere in the world
Licence of right available in last 5 years
What happened to UK Unregistered Design Rights after IP completion day (Brexit)
A new supplementary UDR is issued to match EU UCD in UK only
Who is the first owner for an EU Community Unregistered design right?
Employer if created during the course of employer
Otherwise, the designer
What is the term of protection for an EU Community Unregistered Design?
3 years from the date the design was first made available in EU
Who is a qualifying person
Qualifying person = habitual resident of a qualifying country
or business formed in a qualifying country and having a substantial activity in a qualifying country
Qualifying countries = UK, Channel Islands, Isle of Man, UK protectorates e.g. Gibraltar and Cayman Islands, NZ, Hong Kong
For designs not made during employment, if at least one of the designers is a qualifying person, design right protection is available to only those qualifying persons.
If employer is not a qualifying person but designer is, no unregistered design right is available unless redeemed by being marketed in qualifying country by qualifying person
What are the novelty grace periods for design rights in other countries?
UK, EU, JP, US = 12 months
AU, IN, KO = 6 months
Preferable to register a design before disclosure rather than relying on the grace period, particularly if you plan to obtain protection overseas
Most countries require an application to be filed with them within the grace period, it is not enough that the priority date was within the grace period.
What happens if a design relates to defence
Similar secrecy provisions to s22 and s23 UKPA
The registrar may restrict publication and require designs in certain classes relating to defence to be first filed in the UK.
Who owns a UK Registered Design Right relating to a computer generated design?
The person making arrangements necessary to give rise to the design is deemed to be the author.
When is the registration date?
The date the UK application was deemed made.
Even though a claim to priority means the effective date for the purposes of prior art is the priority date, the date of registration is the application date.
What are infringement exemptions for UK registered design rights, Community registered and Community unregistered design rights?
Private and non-commercial use
experimental purposes
use/repair on ships/aircraft
temporarily in the UK
the importation of spare pairs for such ships/aircraft
The rights are exhausted when the product is put on the market in the EEA with the proprietor’s consent.
Where a registered product is a component part of a complex product, it is not an infringement to use that part in repairs to restore the original appearance of the complex product.
What is the priority period for a UK registered design right
6 months
Within 6 months of filing an application in a convention country, can file an application in the UK claiming priority
What is the Hague agreement?
The Hague agreement allows a single international application to be filed with the IB, covering more than 80 states and directly designating the UK
The application is registered on the filing date
A contracting state can refuse some or all of the application if it does not meet the requirements of their own laws
Upon registration, an application will have at least the same effect in each designated state as a regularly filed application in that state
An initial 5 year term, renewable every 5 years up to at least 15 years, and longer if allowed in a contracting state for a regular registered design right
What happens if a UK client would like registered protection for a design in Europe?
UK clients can still apply for EURDR
EURDR no longer have effect in the UK - apply both at the EUIPO for an EURDR and UKIPO for a UKRDR
What happens if a proprietor decided they don’t want a re-registered design (their EUCRD to be treated as a UKRDR)
They can opt out
unless:
a) the re-registered design has an assignment, licence or mortgage
b) proceedings based on the re-registered design have been initiated by the proprietor or with their consent.
The opt-out causes the design to cease to have effect in the UK effective as of 31/12/20
Remedies for infringement of a UK unregistered design right
Damages, injunction, order to deliver up
Infringement exemptions (unregistered UK design right)
Private and non-commercial use
experiments
teaching (provided this is fair use and attribution is given)
use on, spare parts for, or repairs of non-UK ships or aircraft temporarily in the UK
Exhaustion of rights EEA
Putting a product on the market within consent in the UK does not exhaust the IP rights in the EEA. Exporting out of the UK into the EEA runs the risk of infringing a design right there.
Licence of Right
Available in the last 5 years of an unregistered design right.
An infringer can take a licence and avoid an injunction or order to deliver up
Damages are limited to double the retroactive license fee for the duration of the infringement
What should you suggest if a client is torn between disclosing first in the UK to get a UKUDR or disclosing first in the EU to get an EUCUDR?
Disclose simultaneously in both the UK and EU (e.g. online product launch)
What is a Continuing Unregistered Design?
Ensures that all community unregistered design rights in force on IP completion day will continue to be protected an enforceable in the UK for the remaining period of protection of the right.
What is a supplementary unregistered design right
Mirrors the Community unregistered design right
Takes into account the fact that UK unregistered design rights has different protections to the community unregistered designs
Ensures designs first disclosed in the UK are not worse of than before in the UK
Both forms of unregistered design rights exist in parallel
Does not confer any protection in the EU
