Module 10

Question 1

What are the two different types of protections given to a design?

Answer 1

the formal or informal.

Question 2

Which provision does explicitly envisages a potential overlap between the design regime and other IP regimes?

Answer 2

Article 16 of the Design Directive has an equivalent in the CDR - Article 96 - the accumulation of specially designed protection with copyright is regulated separately in Article 17 of the design directive.

Question 3

What is a possible result when concurrent applications of different forms of design are filed?

Answer 3

The reduction of the public domain.

Question 4

Can different IP rights overlap?

Answer 4

Yes, they can result in conflicts or regime clashes which may be used to block actions allowed under one regime by use of prohibitions provided for another regime. As a result of concurring protection of design rights, an IP right may belong to two different persons.

Question 5

What are the different types of appearances protected under IP?

Answer 5

Different forms of intellectual property protection may cover different aspects of the product’s appearance (i.e. functional features, esthetic values, distinctiveness).

Question 6

________ is also fostered by phenomena and tendencies within the whole system of intellectual property protection.

Answer 6

Cumulation

Question 7

The overlap of different forms of protection is a result of the hypertrophy of the intellectual property law system. During the last decades, what are the two trends particularly visible in this system?

Answer 7

The first is the expansion process within the traditional subject matters of intellectual property which, in many cases, is a consequence of lowering the protection thresholds.
The second is the proliferation of the forms of protection.

Question 8

Is it suitable to combine formal and informal protection? If no, what are the drawbacks?

Answer 8

No. The quality of notice of the registered rights and the role of the public domain.

Question 9

The laws dealing with industrial designs typically build a system which is different from the patent and copyright ones, trying to find a proper balance between two sorts of interests.
The establishment of this balance requires careful consideration of a number of matters. Mention some important subject matters that must be considered.

Answer 9

i) The definition of the subject matter of protection;
ii) The rights which apply to the proprietor of the subject matter; the duration of such rights;
iii) The entitlement to such rights;
iv) The method of acquisition of such rights.

Question 10

Why do national laws typically treat industrial design as a separate piece of intellectual property?

Answer 10

Because this kind of innovation does not fit properly within the copyright systems and therefore requires separate rules.

Question 11

What is the focus of definition of a product in EU Design Directive and Regulation?

Answer 11

It encompasses not only an industrial and handicraft item but also packaging, get-up, and graphic symbols which in turn increase chances of overlapping with copyright protection.

Question 12

Define purerly artistic designs.

Answer 12

Creations having only or, at least, mainly a decorative purpose, without any substantial industrial aim. The principal motive of these designs is to be admired (paintings, sculptures, engravings etc.).

Question 13

Define industrial designs.

Answer 13

Creations intended to be used for practical purposes (clothing, furniture, household implements, etc.).

Question 14

What is the separatist theory of art?

Answer 14

Some of the States (e.g. US, formerly Italy) establish an absolute distinction between industrial designs and artistic designs (applying the so-called «separatist theory of art»).

Question 15

What is theory of unity of art?

Answer 15

Some national systems take the opposite view and provide for cumulative protection (under the so-called «theory of the unity of art»).

Question 16

What is the principle of unity of art?

Answer 16

Copyright provisions and those specific to registered designs are both aimed at protecting the same creations.

Question 17

In the European law, which provision regulates the relationship of sui generis design protection to copyright?

Answer 17

Article 17 EU Design Directive and in Article 96(2) CDR envisage cumulation of design protection with copyright

Question 18

What does Article 17 of EU Design Directive deal with?

Answer 18

A design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State.

Question 19

What does Article 96(2) of CDR deal with?

Answer 19

Article 96(2) CDR: A design protected by a Community design shall also be eligible for protection under the law of copyright of Member States as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State.

Question 20

In which case did the CJEU considered the principle of cumulative designs under sui generis and copyright regime?

Answer 20

C-168/09 Flos SpA v Semeraro Casa e Famiglia SpA.

Question 21

How will you interpret the landmark Birthday Train decision of the Federal Court on 13 November 2013 (BGH, I ZR 143/12)?

Answer 21

A decline of “the two-tier theory”

Question 22

What are the potential outcomes of overlapping in copyright and design protection?

Answer 22

Conflicts, collisions and regime clashes.

Question 23

What would your advise in cases of potential overlapping to avoid problems and conflicts on the ownership level?

Answer 23

Ensure a proper allocation of rights and entitlements in a separate agreement.

Question 24

Is Cumulation of design rights and trademarks rights explicitly allowed?

Answer 24

under the design regime by Article 16 EU Design Directive and Article 96(2) CDR and under the trademark regime by recital 40 EU Trade Mark Directive and Article 17(2) EUTMR

Question 25

How does EU Design Directive and Regulation define “product?”

Answer 25

A product includes not only any industrial and handicraft item but also packaging, get-up, and graphic symbols, increases the potential of overlap with trademark protection. Creations falling within the definition of design are also potentially protectable as trademarks.

Question 26

Is simultaneous registration of both design and trademark possible?

Answer 26

Yes, it is possible.

Question 27

A design has been present in the marketplace for some time exceeding the 12-months grace period. What has it acquired?

Answer 27

A higher degree of distinctiveness, but its novelty has already been destroyed.

Question 28

Under which provisions, are natural, functional and ornamental signs excluded from trademark protection curtailing trademark and design overlapping in the general public interest?

Answer 28

Article 4(1)(e) EU Trade Mark Directive and Article 7(1)(e) EUTMR.

Question 29

What are the provisions for resolving the conflicts between different right holders of overlapping rights?

Answer 29

On the one hand, a design may be declared invalid if a distinctive sign is used in a subsequent design (Article 11(2)(a) EU Design Directive and Article 25(1)(e) CDR).
On the other, under Article 60(2) EUTMR an EU trade mark shall also be declared invalid on application to the EUIPO or on the basis of a counterclaim in infringement proceedings

Question 30

In Ford v. Wheeltrim, what was the major issue that the CJEU dealt with?

Answer 30

The problem of uncoordinated limitations to trademark and design rights

Question 31

Are there any express provisions which provide for subsistence of other forms of protection beside the design rights?

Answer 31

Article 16 EU Design Directive and Article 96(1) CDR.

Question 32

Is overlap between patent and design protection allowed?

Answer 32

Yes.

Question 33

Which provision excludes purely esthetic creations from patentability?

Answer 33

Article 52(2) European Patent Convention, provisions equivalent to this exclusion are found in national patent legislation.

Question 34

Is protection granted for utility models?

Answer 34

Yes, but for a shorter period of time (e.g. in Poland for 10 years) and very often without substantive examination and subject to less strict criteria (e.g. requiring usefulness or inventiveness rather than an inventive step).