General notes on UKUDR Flashcards
What is the definition of a “design” under UKUDR?
SECTION 213 CDPA
(1) Design right is a property right which subsists in accordance with this Part in an original design.
(2) In this Part “design” means the design of . . . the shape or configuration (whether internal or external) of the whole or part of an article.
Subsection 213(2) was amended in 2014 to remove the wording “any aspect of… [the shape or configuration]”. The new wording only applies to designs created after 1 Oct 2014.
This rewording made a change to the law by ‘preventing claims in respect of disembodied features, arbitrarily selected, which are not, in design terms, part of the design.’ (Neptune v Devol Kitchens)
What is needed in order to establish a UK unregistered design right?
It is necessary to show:
(i) that there is a design;
(ii) which falls outside the exclusion from design right;
(iii) which is ‘original’
(iv) which qualifies for protection in the UK.
What was meant by “aspect” in relation to the old definition of a design?
In contract, what is meant by “parts” of a design?
An aspect of a whole or part of an article is a ‘discernible or recognisable’ part of the article (Dyson v Qualtex [2006])
While ‘aspects’ of a design includes ‘disembodied features which are merely recognisable or discernible’, parts of a design are ‘concrete parts which can be identified as such’. (Neptune v Devol Kitchens)
Generally speaking, how does the scope of protection under UKUDR differ to the harmonised registered design systems?
The subject-matter of UKUDR is more limited than the harmonised registered design systems, insofar as the UK registered design right does not protect most 2D features.
In many other respects however, the subject-matter of UKUDR is as broad as UK registered designs, community registered designs, and unregistered community designs:
–UKUDR can protect designs that are not aesthetic; no requirement that the design feature needs to be visible to the naked eye;
–can protect designs that are purely functional (e.g. internal features of a flurry separator in Farmers Build v Carier Bulk Materials Handling).
A key feature of the definition of design is that it only applies to the shape and configuration of articles (or parts thereof).
This does not limit design to 3D shapes: ‘you can have 2D features of shape or configuration, e.g. one produced by cutting one out of a piece of paper’ (Dyson v Qualtex)
What features are excluded from UKUDR protection?
Section 213(3) (3) Design right does not subsist in—
(a) a method or principle of construction,
(b) features of shape or configuration of an article which—
(i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function, or
(ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part, or
(c) surface decoration.
Why is surface decoration excluded from UKUDR protection?
As explained in Dyson v Qualtex, the exclusion of ‘surface decoration’ is related to its inclusion in ‘ordinary’ copyright law. The Judge further said that the exclusion is confined to ‘that which can fairly be described as a decorated surface’.
What does/does not constitute “surface decoration” for the purposes of the exclusion under section 213(3)(c)?
(1) surface decoration covers the application of colour in two dimension (such as stripes on a shirt), but is not confined to two dimensional features (strictly defined). This means, for example, that surface decoration would include both where ‘a surface is covered with a thin layered where the decoration, like Brighton rock, runs throughout the article’. (Lambretta Clothing Company Ltd v Teddy Smith)
(2) surface decoration may be three dimensional.
(a) However, in some cases 3D features may not be regarded as decoration but as part of the overall shape and configuration. On the basis that unregistered design right was developed to protect functional designs , it has been suggested that surface features that have ‘significant function’ would not be excluded on the ground that they were surface decoration.
(i) CA held in Dyson that because the ribbing of the handle of a vacuum cleaner functioned to provide grip , it was not excluded as surface decoration.
(iii) Court also held in Dyson that in situations where a design feature is both functional and decorative, a subsidiary functional purpose does not take the design aspect out of the exception if the primary purpose is surface decoration.
How may the “article” in section 213(3)(b)(i) be interpreted?
Section 213(3) [“must-fit” exclusion]
(3) Design right does not subsist in—
(b) features of shape or configuration of an article which—
(i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function
In Dyson v Qualtex, the Court held that ‘article’ not only includes machines and objects, but also includes the human body.
What did Dyson say re “closeness of fit’ re section 213(3)(b)(i)?
Features are only excluded as ‘must fit’ features if they enable one article to fit with another article. Perhaps the most important question is how closely shapes need to correspond to each other in order for the features of one article to enable the articles to be connected.
CA Judgement:
“The Judge is not saying that to fall within the exception parts have to touch. He is merely saying that if the surface were closer it would foul the catch – that in itself does not mean it “enables” the handle to perform its function. It is merely so positioned that it does not interfere with the function. Any working part must of course be so located so as not to interfere with the working of other parts – that does mean that any spacing between parts is a feature which enables function.”
What is meant by “dependent upon the appearance of another article” in section 213(3)(b)(ii)?
Section 213(b)(ii) [“must-match exclusion”]
(3) Design right does not subsist in—
(b) features of shape or configuration of an article which—
(ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part
The fact that designs are aesthetically linked to (or dependent upon) the appearance of the article as a whole lies at the heart of the rationale for the “must-match” exclusion.
A part will be dependent and thus unprotected if it is not possible for it to be replaced with a different part without radically altering the appearance or identity of the vehicle as a whole [A Mercedes-Benz with a Volkswagen roof is no longer a Mercedes-Benz, but a cannibalised mismatch.] Where a part is dependent, the maker of the spare part has to produce a part that looks exactly like the original or it is unable to be sold. The maker has NO DESIGN FREEDOM.
In Dyson v Qualtex, the Court therefore ruled that ‘if there is, as a practical matter, design freedom for the part, then there is no dependency.’
[e.g. steering wheel can be replaced without while leaving the general appearance of the vehicle unchanged.]
How is it decided that a UKUDR is original?
PART 1
Section 213(4) (4) A design is not “original” for the purposes of this Part if it is commonplace [in a qualifying country] in the design field in question at the time of its creation[; and “qualifying country” has the meaning given in section 217(3)].
Deciding whether a design is original involves 2 stages:
(1) Deciding whether design is original in copyright sense;
(2) Deciding whether design is ‘commonplace in the field in question’. [see other side]
(1) To determine originality in the copyright sense….
In Farmers Build v Carier Bulk Materials, the Court ruled that it must be satisfied that the design originated with the designer and was not slavishly copied.
Next, an originality test must be applied. Thus, a question has arisen of whether for the purposes of UK unregistered design right, the traditional British idea of copyright originality applies (which requires the author to have spent sufficient time, labour, and skill in the creation of the work), or whether the new CJEU test for originality applies (which talks of the work comprising the expression of the author’s intellectual creation).
In Whitby Specialist Vehicles v Yorkshire Specialist Vehicles, he Judge assumed, without deciding, that the new CJEU test now applies.
How is it decided that a UKUDR is original?
PART 2
Deciding whether a design is original involves 2 stages….
(2) Deciding whether design is ‘commonplace in the field in question’.
The concept of ‘commonplace designs’ is peculiar to this right.
In Farmers Build v Carier Bulk Materials Handling, the Court provided the following methodology in determining “commonplaceness”:
- Compare with other articles in the same field at the date of its creation.
- Compare each aspect of the similarities and the differences with the other articles in the field. The more similarities, especially ones not deriving from copying, the greater the chance that the design is “commonplace”.
- Be careful to filter out similarities due to direct copying
- Be careful to filter out similarities due to functional design constraints
[In this case, the Court said it would be wrong to attempt any further determination of what ‘commonplace’ meant, but rather approach it interns of legislative history and purpose. Given that unregistered design right is intended to protect functional designs, only provide relatively weak protection, and include safeguards excluding the protection of spare parts, it would be wrong to interpret commonplace broadly. Instead, the Court said that its purpose was ‘to guard against situations in which even short term protection for functional designs would create practical difficulties.]
How may a design qualify for protection?
A design may qualify for protection in one of four ways:
(1) by reference to a designer;
(2) by reference to an employer;
(3) by reference to a commissioner (for designs created before 1 October 2014);
(4) by references to the circumstances of first marketing.
Section 213(5)
(5) Design right subsists in a design only if the design qualifies for design right protection by reference to—
(a) the designer or the person by whom [the designer was employed] (see sections 218 and 219), or
(b) the person by whom and country in which articles made to the design were first marketed (see section 220),
or in accordance with any Order under section 221 (power to make further provision with respect to qualification).
What is meant by “qualifying person”?
Section 217
1) In this Part—
[“qualifying person” means—
(a) an individual habitually resident in a qualifying country, or
(b) a body corporate or other body having legal personality which—
(i) is formed under the law of a part of the United Kingdom or another qualifying country, and
(ii) has in any qualifying country a place of business at which substantial business activity is carried on].
For design right to subsist, the designer, employer, commissioner, or first marketer must be a qualifying person–depending on the circumstances.
How does a design right qualify through first marketing?
A design might qualify depending on the circumstances of its first marketing and if it does, the first owner of UKUDR is the first marketer.
-For designs created before 1 October 2014, a design qualifies if its first marketer is a qualifying person exclusively authorised (by the person who would have been the owner of UKUDR as designer, employer or commissioner if he had been a qualifying person or someone claiming title from such a person) to sell those goods in the UK and the territory in which it is first marketed is a qualifying country.
-For designs created since 1 October 2014, a design qualifies if its first marketer is a qualifying person and the territory in which it is first marketed is a qualifying country.
Section 217
(3) In this section “qualifying country” means—
(a) the United Kingdom,
(b) a country to which this Part extends by virtue of an Order under section 255,
(c) another member State of the European Economic Community, or
(d) to the extent that an Order under section 256 so provides, a country designated under that section as enjoying reciprocal protection.
