Designs Flashcards
Essential features of design right
- protects the appearance of a purely functional product
- right to prevent copying which does not require registration
International design law basis
- Paris Convention
- Berne Convention
- Hague Agreement
- Locarno Agreement
- TRIPS
Design approach
in the European law
• design protected as a marketing tool
• sui generis protection tailor-made (no
copyright approach, no patent approach) – a design approach
• full harmonization of substantive provisions on specific design protection on the national and EU level
Design Protection on National level
Harmonized in the EU MS Directive 98/71
Design Protection on EU level
unified in the EU Regulation 6/2002 - pan-EU unitary design right - registered and unregistered Community designs - EU design registrations administered by EUIPO in Alicante
Unregistered Community design has a term of 3 years
Registered Community Design can last up to 25 years
Novelty + individual character
Requirements for both UCD and RCD
Proving infringement for UCD and RCD differs…
Because UCD required same overall impression on the informed user AND proof of copying
Claiming systerm for registered and unregistered design differs because…
Unregistered design = ex post - product’s apperance as disclosed
Registered design = ex ante - graphic representation
Grounds for exclusion from protection
• design features solely dictated by its
technical function
• designs contrary to public order or
morality
Remedies available to design right owner
- Damages
- Injunctions
- Order for delivery up or destruction of the infringing articles
Novelty
no identical prior design disclosed to
specialised circles in Community
(quasi- identity)
Individual character
- overall impression produced on informed user differs from overall impression produced by other prior design
- freedom of designer to be taken into account
(qualitative step)
Relative novelty
Disclosure may happen anywhere in the world as long
as those events could reasonably have become
known in the normal course of business in the
circles specialized in the sector concerned operating
in the EU
Disclosure
• designs made avalable to the public before
the relevant date, if published (incl. registration), exhibited, used in trade (available in the marketplace), otherwise disclosed
• by an image (photograph, drawing) or by a
product
Confidential disclosures
The design shall not, however, be deemed
to have been made available to the public
for the sole reason that it has been
disclosed to a third person under explicit
or implicit conditions of confidentiality
Relevant prior art
Includes any design for any kind of product
from any sector
A RCD has a a grace period of
12 months
Individual character
• overall impression produced on informed user
differs from overall impression produced by
other prior design
• a side-by-side comparison
• freedom of designer to be taken into account
• concept of informed user relevant
informed user (in design law) is different from an average consumer (of trademark law) and person skilled in the art (patent law)
particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question
average consumer (in trademark law)
person who is reasonably well informed and reasonably observant and circumspect
Scope of designer’s freedom
the more that freedom is restricted, the more likely minor differences between those designs will be sufficient to produce a different overall impression on
the user
Copyright may coexist with registered design and with design right
if it is possible to sue for copyright infringement, that action must be pursued: an action for design right infringement may not be brought
Aspect of shape or configuration
Design right protection can extend to “the shape or configuration (whether internal or external) of the whole or part of an article”
Repair clause (Art. 110 CDR) and freeze plus in Art. 14 DD
“protection as a Community design shall not exist for
a design which constitutes a component part of a complex product used within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance”.
C-397/16 i C-435/16 Acacia/Audi/Porsche (Scope of the repair clause)
- definition of the spare parts (no requirement of the dependence upon the appearance of the complex product)
- aim of the repair
- precautionary measures of the spare parts manufacturer or supplier
General criteria of TM infringement
use:
- by the infringer
- in the course of trade
- in relation to goods and services
- affecting the TM functions
Effects of the repair clause on trade mark
law: Infringement
neutralized TM use
- confusion excluded
- limited adverse effect on the protected TM functions - due cause
Effects of the repair clause on trade mark
law: limitations
- descriptive use - Art. 14 (1) b TMD 2015/2436 (TM as a characteristic of a spare parts)
- referential use - Art. 14 (1) c TMD 2015/2436 (+ comparative advertising Art. 4 g MCAD)
- standards of honest practices (established in Acacia case)
Art. 3 CDR (c) “complex product”
a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product
Design protection of parts of a complex
product
Design protection of a part of a complex product which is visible in normal use
Design protection denied to:
• parts of complex products that are invisible in normal use
• „must fit” elements
• exclusively functional elements
Art. 110 CDR Repair Clause
protection as a Community design shall not exist for
a design which constitutes a component part of a complex product used within the meaning of Article 19(1) for the purpose of the repair of that complex product so
as to restore its original appearance
in Art. 110 CDR and freeze plus in Art. 14 DD
DESIGN repair clause
CJEU order in C-500/14 Ford/Wheeltrims
CJEU: repair clause provided for in the design regime
cannot be applied per analogiam in trademark law
C-397/16 i C-435/16 Acacia/Audi/Porsche - Scope of the repair clause
- definition of the spare parts (no requirement of the dependence upon the appearance of the complex product)
- aim of the repair
- precautionary measures of the spare parts manufacturer or supplier (information + contractual liability + liability for indirect infringement)
Defences to CDR infringement
• exhaustion (Art. 21 CDR) • good faith prior use (Art. 22 CDR) • repair clause (Art. 110 CDR) • limitations (Art. 20 CDR): – private and non-commercial use – experimental use – citation, teaching – ships and aircrafts
designs are assessed from the perspective of the informed user
user of the product in which the design is intended
to be incorporated, not a designer, technical expert, manufacturer or seller
Article 10(2) RCD - Effect of design freedom on the scope of protection
- a registered design should receive a broader scope of protection where thedesigner had a greater degree of freedom and
- a narrower scope of protection where the designer had a lesser degree of freedom.
C-488/10 Celaya
Article 19(1) of Council Regulation (EC)
No 6/2002 of 12 December 2001 on Community
designs must be interpreted as meaning that, in
a dispute relating to infringement of the
exclusive right conferred by a registered
Community design, the right to prevent use by
third parties of the design extends to any
third party who uses a design that does not
produce on informed users a different overall
impression, including the third party holder
of a later registered Community design.
Designs developed by an employee
Article 14 (3) CDR provides for a special
system for Community designs developed
in the context of an employment
relationship - the original ownership of designs made by
employees is granted to the employer
Designs developed pursuant to a commission
the commissioner is presumed to be the original owner of the commissioned design
Transfer (Article 30 CDR)
• the Community design right may be
transferred only for the whole territory
of the EU and its transfer shall have equal
effect throughout the EU
• form of CDR/UCDR transfer (national law
determined under Article 27 CDR
Licensing (Article 32 CDR)
• RCD/UCD may be licensed for the whole
or part of the EU (exception to the unitary
character of this right - Article 1 (3) CDR
• authorization to use RCD/UCD
• exclusive or non-exclusive
• license agreement may be limited to
certain categories of products
Sui generis design protection shall be without prejudice to any other form of IP or UC protection of designs
Art. 16 & 17 Directive 98/71 + Art. 96 Regulation 6/2002
Interpretation of Article 17 in C-168/09 Flos
Article 17 of Directive 98/71/EC must be interpreted as precluding legislation of a Member State which excludes from copyright protection in that Member State designs which were protected by a design right registered in or in respect of a Member State and which entered the public domain before the date of entry into force of that legislation, although they meet all the requirements to be eligible for copyright
protection
