DESIGNS Flashcards
How many avenues of design protection are available in the UK and what are they?
5 UK Design right UK unregistered design UK Registered design unregistered community design Registered community design
What is a Design for the purposes of the act?
A design means the
APPEARANCE of the whole or part of a PRODUCT including
lines contours shapes colour textures or materials of the product or its ornamentation
What is a product for the purposes of the design act?
A product is any industrial or handicraft item including:
the packaging , getup graphic symbols, typefaces, and parts for assembly into a so called complex product
What is excluded from registered design protection
computer programs
some symbols - national emblems - olympic rings (copyright)
AND
Any feature who’s form is dictated by its function (patent)
AND
against morality
AND
any part that must fit (mounting points, unless part of a modular system)
MUST MATCH NO LONGER EXCLUDED
What form is used for registering designs?
DF2A
What is the criteria for a UK registered design?
The design must be NEW and have INDIVIDUAL CHARACTER
New in that it differs in more than immaterial details from previous designs that can reasonably become known within the EEA in the normal course of business in the sector concerned.
AND
Individual character in that the OVERALL IMPRESSION given to the INFORMED USER differs from the prior art
What is taken into account when deciding individual character?
The degree of freedom available to the author in creating the design
What classification system is used by registered designs?
Locarno
What is a complex product?
A product that can be assembled from two or more components
What are the novelty requirements for a UK registered design
A design that differs in less than immaterial differences must not have been made available to the public before the date of registration
IN THAT
The design must make a DIFFERENT OVERALL IMPRESSION ON THE INFORMED USER
UNLESS
The disclsclosure could not reasonably have become known within the EEA in the course of business by a specialist in the sector
OR
The disclosure originated from the Author intentionally or as a consequence of abuse within 12 months of the filing date
OR
The disclosure was made in confidence implied or contractual
what are the requirements for INDIVIDUAL CHARACTER for a
The design must make a different overall impression on the informed user?
Who owns a registered design?
The author (creator) of a design is the owner
UNLESS
The author is an employee and the design is created in the course of that employment.
What is the registration date of a registered design?
The filing date or the effective filing date?
by priority
OR
if re-dated by modification that changed the individual character of the design i.e. changed the overall impression on the informed user.
what rights persist in a registered design?
The proprietor has the exclusive right to use the registered design and any design that does not form a different overall opinion on the informed user - taking into account the degree of freedom of the designer
what is using a design for the purposes of registered designs?
M aking O ffering U sing P utting on sale I mporting E xporting S tocking - for any of the above
What acts infringe a registered design?
M aking O ffering U sing P utting on the market I mporting E xporting S tocking the design for any of the above purposes
Exclusions
Private and non commercial
Experimental
for teaching purposes - providing the source is credited AND the act does not prejudice the normal exploitation of the design
the use of equipment on foreign aircraft or ships registered in another country
importation of spare parts or accessories for servicing said ships and aircraft
Waht is the duration of protection of a registered design?
5 years from application
renewable for a further 5 years up to 4 times total 25 years
When can renewal fees be paid?
The renewal date is the 5th anniversary of filing.
upto six months before and one month after the renewal date with no renewal fee
from one month after until 6 months after you can renew with a late fee of £24 per complete month from the renewal date.
What will occur if a renewal fee is not paid
If the renewal fee is not paid in the 6 month extended period the design registration will expire.
Is it possible to bring back an expired registered design?
Yes a registered design that has expired can be restored up to 12 months from the point the design ceased to have effect (the 5th anniversary of the relevant period)
IF
form DF29 is filed with the relevant fee
AND
Supporting evidence is supplied that the missed renewal was unintentional
how many views can be included in an application for a UK registered design?
12
how many views can be included in an application for a Comunity registered design?
7 +3 unprotected views
how long does registered design protection last in the US?
15 years no renewals
What is the grace period for a registered design application in the US?
12 months but only if filed
What is type of offence is infringing a registered design?
To INTENTIONALLY infringe a registered design is a CRIMINAL OFFENCE
If a restoration is refused what are the applicants options?
The applicant has 1 month from the date of the notification to request a hearing with the comptroller
What is the grace period for filing a registered design in the US?
12 Months but only if filed directly in the US or by PCT
What is the length of time you can claim priority under the paris convention for a registered design?
6 Months
How long do unregistered community and UK designs last?
3 years from first disclosure in the EU.
Who is entitled to a community and UK registered design?
There are no requirements. It is open to anyone.
What is a design for UK Design right?
A design is the shape or configuration of the whole or part of an article.
What are excluded from UK Design right protection?
A principle or method of construction
AND
-Must fit (shape or configuration of an article which enable the article to fit next to, into or agaist another such that either can fulfil their function)
- Must match (an article which is dependent on the appearance of another article that the article is to form an integral part)
AND
Surface decoration (different to all other rights)
AND
Excluded symbols eg olympic rings, national/military emblems
What is required for Design Right to subsist
The design is excluded if:
Novelty - the design is excluded if it is not “original”
AND
The design must be recorded in a design document or made
AND
The design was made before the enactment of this act in 1988
AND
the design has been made by a person (natural or legal) from a qualifying country.
- country is UK inc Channel Isles and IOM, UK protectorates, NZ and HK
- Person must be a habitual resident in the above or business must be formed under the law of and conduct substantial business activity
What is the Novelty requirement for UKDR
The design must be “original”
Thus must not be common place in a qualifying country in the design field in question at the time of its creation.
A qualifying country is: the UK inc channel isles and IOM, Uk protectorates, NZ and HK
how long does design right last?
Design right expires:
15 years from the end of the calendar year in which the design was first recorded in a design doc or an article was first made to the design (the earliest)
OR
10 years from first sale or hire world wide! if in good faith
Who owns a design right?
The designer is first owner
UNLESS
employed and created in the course of employment then the company owns.
OR
if a design qualifies for protection by reference to first marketing in a qualifying country as it is not eligable for design or sale - then the person who markets the design is the owner
What right is vested by a design right?
The owner has the exclusive right to:
M ake the article
M ake a design doc for the purpose of enabling the design to be made
What infringes a design right?
PRIMARY INFRINGEMENT:
Making articles or a design doc to the design - exactly or substantially to the design
Authorising another to do the above without the authorisation of the owner
SECONDARY INFRINGEMENT
imports for commercial purposes
possession for commercial purposes
sells, lets for hire in the course of business
What remedies are available to the owner of a UKRD?
Damages
Account of profit
Injunction
Order up for delivery - to the owner or designated person
Offer up for destruction or disposal
HOWEVER
if the infringer is unaware or did not have reasonable cause to suspect design right subsisted then no damages are due - all other remedies such as account of profits, offer up or order up
OR
If the secondary infringer bought the article was innocently acquired the only remedy available is damages equivalent to a reasonable license.
Under what conditions can a UKDR be subject to a compulsory license?
in the last 5 years of cover any person can apply for a license on reasonable terms. Such terms will be set by the comptroller.
