Designs (Registered) Flashcards
UKRDR/CRD
What is a design right? How is design defined?
A design may be registered upon making an application for registration under the RDA.
Design = the appearance of the whole or part of a product, arising from such features as lines, contours, colours, shape, texture or materials of the product or its ornamentation.
Product = any industrial or handicraft item (other than a computer program); including packaging, get-up, graphic symbols, typefaces and parts for assembly into a complex product
NB apperance does not require ‘eye appeal’
Complex product = an object that can be assembled/reassmbeled from two or more replaceable parts
UKRDR/RCD
What is the novelty requirement for registered designs?
Novelty requires that the design differs from the prior art designs by more than immaterial differences.
Novelty includes existing published designs in different classifications.
A design must also be new (and have individual character) over existing UK or community registered design applications (which may not have published yet)
UKRD/RCD
What is the individual character requirement for registered designs?
As well as being novel, the design must create an overall impression on the informed user that differs from the overall impression of any prior art design, taking account of the degree of freedom available in creating a design.
(A narrow degree of freedom will mean that smaller differences will lead to a different overall impression - consider e.g. tablet devices)
UKRD/RCD
How is novelty and individual character assessed for a complex product?
For a product forming part of a complex product, assess the novelty and individual character of what is visible during normal use.
‘normal use’ = by the end user, but not any maintenance, servicing or repair work
UKRD/CRD
Who is the ‘informed user’ for registered designs?
Following Proctor & Gamble v Reckitt Benckiser, the informed user is someone experienced with the products in question and with the designs and relevant constraints in that field.
As such they are more like the skilled person in patents, than the average consumer in trade marks.
UKRD/RCD
What designs are considered to be disclosed?
A design is disclosed by any public dissemination prior to the application/priority date, unless:
- This would not reasonably become known in the normal course of business within the EEA in the specialist sector of the design;
- The design was disclosed in confidence
- The design was disclosed by the designer or by anyone given, entitled to or abusing information from the designer within 12 months prior to the application/priority date (i.e. a 12 month grace period - covers both voluntary and involuntary).
NB the grace period doesn’t prevent a 3rd party who independently creates a design (not copied) from registering a similar design - therefore advise filing ASAP.
UKRD/RCD
What advise would you give to a client who wants to make use of the grace period and file overseas?
The grace period conditions vary around the world.
UK, EU, US and JP all provide a 12 month grace period.
Australia, India and Kora provide 6 month grace periods.
China has no grace period.
Therefore, preferable to register a design before disclosure.
NB most countries require that you file an actual application with them inside the grace period (i.e. not a reference to a priority).
UKRD/RCD
What exclusions apply to registered designs?
1C(1) - A right in a registered design does not subsist in those features of the product whose appearance are solely dictated by the product’s technical function
- DOCERAM - ‘no aesthetic consideration’ test - is the technical function the only reason for the design feature? (NOT multiplicity of forms test).
1C(2) - A registered design does not protect those features required in order to connect to, or fit (i.e. to place in, around or against) another product so that either may perform its function. (MUST FIT EXCLUSION).
NB no must-match exclusion for registered designs, but there is a right to repair exception in infringement
UKRD/RCD
When does the must-fit exclusion not apply?
Doesn’t apply in the case of features enabling mutually interchangeable (modular systems)
e.g. lego, modular sofas
UKRD/RCD
Who owns a design by default?
The author of the design is the original proprietor, unless it was created by an employee in the course of their employment, then the employer is the proprietor.
NB no proviso for commissioned works - these will still belong to the designer unless specifically assigned.
UKRD/RCD
Can registered designs be transferred?
Yes, ownership can be assigned to or shared with another party, and that other party is treated like the original proprietor.
UKRD/RCD
Who is the author for a computer generated design?
The person making the arrangements necessary to give rise to the design (i.e. CAD designer) is deemed to be the author.
UKRD/RCD
What date is given to a completed registration?
The date on which the UK application was deemed to be made.
If the effective date for the purpose of evaluating prior art is earlier then:
- If due to a priority claim (6 month period) - the date of registration is (still) the date of the UK application;
- If due to splitting an initial UK application or validly amending the design to satisfy registration requirements such that a new application if filed, the date of registration is the date of the initial UK application.
NB so effectivelty, can get a longer term by filing an EU claiming priority from UK.
UKRD/RCD
Can multiple designs be filed together?
Yes, if they are in the same product class.
For RCDs - they must be in the same top-level EuroLocarno class.
Design fees and publication fees (and optionally the publication deferment fee) are all 1/2 price for 2nd to 10th, and even cheaper for 11th+
This will save initial fees, but each design is subject to its own renewal fees.
What are the merits of line drawings vs solid drawnigs?
Can file either line drawings OR solid drawings.
Cannot have a single design application with both (unless it is a multiple design application, but each seperate design must only have one or the other).
One style might be better for any necessary disclaimers (which can be verbal or visual).
Surface decoration/text may be easier to show on a solid drawing.
