Notes on Registered Rights

Question 1

What is the current UK framework for design protection?

Answer 1

(1) UK Copyright - under the CDPA 1988 Part 1, lasting 70 years from the death of the author. This is of very limited importance for three dimensional designs but of great importance to 2D ones.

(2) UK Design right – under the CDPA 1988 Part 3. Provides protection against copying lasting for 10 years from marketing or 15 from creation, whichever is shorter, for 3D designs.
[this is UK unregistered]

(3) Unregistered Community Design – under the Community Design Regulation (EC) No.6/2002. Provides protection against copying, but only lasting 3 years.
(4) Registered Community Design – also under the Community Design Regulation (EC) No.6/2002. Provides “monopoly” protection lasting up to 25 years, obtained from EUIPO in Alicante.
(5) UK Registered Design – under the Registered Designs Act 1949 (as amended). Provides “monopoly” protection lasting up to 25 years.
(6) International Design (EU) – under the Hague Agreement. A “monopoly” protection lasting up to 25 years registered, renewed and administered at WIPO in Geneva but designating the EU and having the effects of a Registered Community Design.
(6) International Design (GB) – under the Hague Agreement. A monopoly protection lasting up to 25 years registered, renewed and administered at WIPO but having the effects of a UK Registered Design. The first registrations will be with us soon.

Question 2

How did the UK Unregistered Design Right come into being?

[For background–not examinable]

Answer 2

CDPA introduced wholly new form of protection – UK UNREGISTERED DESIGN RIGHT (“UK UDR”) – intended to provide a balanced and rational scheme of protection tailored to industrial designs.

Specifically, it was created to address the following problems:

Over the 1970s and 1980s, copyright therefore become the main form of protection for industrial designs. This led to the bizarre situation whereby designs that were unregistrable – which were often the most functional or basic of designs - ended up with the longest period of (artistic) copyright protection. Because copyright law has no requirement of artistic merit and a very low threshold of originality, the most simple design drawings ended up with copyright protection which extended to the products made from them. As a result, designers sometimes found themselves arguing that their designs were not registrable in order to ensure that they had full copyright protection.

Finally, “spare parts” were considered in British Leyland Motor Corporation v Armstrong Patents Ltd.11 where the House of Lords recognised that copyright protection for spare parts could lead to a designer having an effective monopoly in the supply of spare parts market for a given product.

Furthermore, as many industrial designs are in fact recorded in copyright works such as drawings, the CDPA contained new provisions seeking to draw the boundary between copyright and the protection of designs.
a. s.236 CDPA; and
b. s.51 CDPA
An act cannot, therefore, infringe both UK UDR and copyright. The aim was clearly that design right would provide protection for industrial designs whilst copyright would provide protection for artistic works.

The Regulation on Community Designs came into being for much the same reasons.

Question 3

Which systems provide protection for 2D designs (surface decoration) and which systems provide protection for 3D designs (shape decoration)?

Answer 3

(1) Shape
 UK Registered Design protection
 Registered Community Design
 Unregistered Community Design
 UK Unregistered Design Right

(2) Decoration
 UK Registered Design protection
 Registered Community Design
 Unregistered Community Design
 Copyright

Question 4

How EU infringement relates to UK registered…

Answer 4

EU law of infringement applies to UK registered designs

Question 5

What is the definition of a design?

Answer 5

For the purposes of UK registered design, registered Community designs, and unregistered Community designs, the definition of ‘design’ is identical.

Article 3(a) Community Design Regulation/Designs Directive Art 1(1)/Registered Designs Act s 1(2):

“design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation.

There is no requirement for ornamental or aesthetic quality.

Question 6

What in a registered design in order to determine its scope of protection?

Answer 6

• Pictures (For Community Designs, and recent UK registered designs, there is a maximum of 7 representations per registration.)
• Bibliographic information
• Optionally, a little text
• NO CLAIMS

This is in accordance with Directive Recital 11:
“Whereas protection is conferred by way of registration upon the right holder for those design features of a product, in whole or in part, which are shown visibly in an application and made available to the public by way of publication or consultation of the relevant file”

Both the CA and SC decisions of Magmatic Ltd v PMS International Ltd provide guidance on how to interpret a registered design.

An applicant must file an indication of the products to which he intends to apply the design–but he does not have to classify the design. This does not mean that the design is only protected in relation to that product.

(i) For UK registered, legislation states that indication of product has no bearing on scope of protection;
(ii) For Community registered, the indication of product was held not to limit the design for purposes of validity and infringement by the CJEU in Case C-361/15 Easy Sanitary Solutions v Groupe Nivelles (Shower Drains)

Furthermore, any written description has no bearing on scope in either system.

HOWEVER, disclaimers (which may be included in the application) do.

Question 7

What is meant by a “product” and “complex product”?

Answer 7

Section 1(3) RDA 1949
(3)     In this Act—

“complex product” means a product which is composed of at least two replaceable component parts permitting disassembly and reassembly of the product; and

“product” means any industrial or handicraft item other than a computer program; and, in particular, includes packaging, get-up, graphic symbols, typographic type-faces and parts intended to be assembled into a complex product.

This is equivalent to CDR Art. 3(b).

Question 8

What is the exception under RDA s.1C(1) (based on DD Art. 7(1) and equivalent to CDR Art. 8(1))?

Answer 8

“A right in a registered design shall not subsist in features of appearance of a product which are solely dictated by the product’s technical function.” (“TECHNICAL FUNCTION EXCLUSION”)

Further guidance is given in Recital 10 of CDR: “Technological innovation should not be hampered by granting design protection to features dictated solely by a technical function. It is understood that this does not entail that a design must have an aesthetic quality.”

[Even where a highly functional design qualifies for protection, the limited design freedom will narrow its scope of protection]

There is some controversy over the correct test or tests for functionality:

One of the tests is “The Designer’s Intention Test” which is set out in ‘Amp v Utilux’ (this was a case of pre-harmonisation UK law and statute had slightly different wording so current relevance unknown).

However, the most recent decision re the tech for technical function seems to set precedent for test that should be followed: namely, the test set out in CJEU decision DOCERAM GmbH & CeramTec GmbH.

Question 9

What is the exclusion under RDA s.1C(2) (based on DD Art. 7(2) and equivalent to CDR Art. 8(2))?

Answer 9

“A right in a registered design shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions so as to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to, or placed in, around or against, another product so that either product may perform its function.” (“MUST FIT EXCLUSION”)

Examples of designs which fall into this: plugs and sockets, lock and key profiles.

Further guidance/explanation given in Recital 10 CDR, Recital 14 DD:
“… the interoperability of products of different makes should not be hindered by extending protection to the design of mechanical fittings”

Question 10

What is the “exclusion” to the exclusion under s.1C(2)?

Answer 10

The “must-fit” exclusion considered alone would take away protection for the interfitting parts of construction toys, such as Lego bricks.

However, the exclusion of “must fit features” does not apply to “modular products” according to RDA s.1C(3) (based on DD Art. 7(3) and equivalent to CDR Art. 8(3)):

“Subsection (2) above does not prevent a right in a registered design subsisting in a design serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system.”

Question 11

Can the design of part of a product be protected?

Answer 11

Yes. The definitions of “design” and “product” allow protection of the design of part of a product, provided the registration indicates that it applies only to part of what is shown.

Question 12

How are “component parts” defined?

Answer 12

A “complex product” is defined as follows (based on DD Art. 1(c) and equivalent to CDR Art. 3(c)):

Section 1(3)
(3)In this Act—
“complex product” means a product which is composed of at least two replaceable component parts permitting disassembly and reassembly of the product; and
“product” means any industrial or handicraft item other than a computer program; and, in particular, includes packaging, get-up, graphic symbols, typographic type-faces and parts intended to be assembled into a complex product.

Thus, “component parts” of such a “complex product” are parts which are combined together to make a product, and which can be removed and replaced for repair.

Design rights in spare parts of a product are given special treatment in the legislation, to limit control by manufacturers of the “after-sales” markets in repairs and spares supplies.

Question 13

What is the exclusion under section 1B(8) and (9) RDA?

Answer 13

Section 1B RDA 1949

(8) For the purposes of this section, a design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character—
(a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the complex product; and
(b) to the extent that those visible features of the component part are in themselves new and have individual character.

(9) In subsection (8) above “normal use” means use by the end user; but does not include any maintenance, servicing or repair work in relation to the product.

Thus, “internal” component parts which are not visible in normal use have no protection, under RDA s.1B(8) & (9), based on DD Art. 3(3) and (4) (and equivalent to CDR Art. 4(3) and (4)). Although visibility in general is relevant to many other aspects of design law, this provision applies only to component parts.

Question 14

What requirements must a UK registered design/Community registered design/unregistered Community design meet in order to be valid?

Answer 14

The following requirements must be met:

(1) there must be a ‘design’;
(2) the design must be ‘new’;
(3) the design must have ‘individual character’;
(4) the applicant or right holder must be entitled to the design; and
(5) the design must not conflict with earlier relevant rights (which include earlier design applications, trade mark rights, copyright, and rights relating to certain types of emblem).

Question 15

What section in the RDA coveys the fact that a design must be valid over prior art?

Answer 15

Section 1B
(1) A design shall be protected by a right in a registered design to the extent that the design is new and has individual character.

Question 16

What is meant by a new design?

Answer 16

A design is new if no identical design, or designs the features of which only differ in immaterial details, has been made available to the public before the date of application (or the priority date if priority claimed). Or, in the case of an unregistered community design, the date on which the design was first made available to the public.

The relevant section of the Act…

Section 1B
(2) For the purposes of subsection (1) above, a design is new if no identical design or no design whose features differ only in immaterial details has been made available to the public before the relevant date.

The equivalent Article in the CDR:
Article 5
(1) A design shall be considered to be new if no identical design has been made available to the public:
(a) in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public;
(b) in the case of a registered Community design, before the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority.
(2) Designs shall be deemed to be identical if their features differ only in immaterial details.

Guidance on what is meant by these 2 provisions is given in Karen Miller v Dunnes Stores, Green Lane v PMS, Gimex v Chilli Bag, Easy Sanitary Solutions.

Question 17

What is meant by “individual character” for the purposes of assessing invalidity over the prior art?

Answer 17

Section 1B(3) & (4) RDA 1949:
(3) For the purposes of subsection (1) above, a design has individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the relevant date.

(4) In determining the extent to which a design has individual character, the degree of freedom of the author in creating the design shall be taken into consideration.

The test for individual character is the overall impression test.

Further Guidance is given in Recital 14 CDR: i.e. one of the factors to consider when determining individual character
(14) The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.

[The DD contains an equivalent Recital, so the same would appear to apply to UK national designs.]

The effect of the product and sector on individual character were considered in Gimex v Chill Bag Co

Question 18

What prior art form the state of the art?

Answer 18

The state of the art consists of all designs made available before the relevant date (this will differ for each right).

However, there are a number of limits to the state of the art that exclude some pieces of prior art. These limits are listed below and are explain in more detail on other cards:

(1) the safe guard clause (where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community)
(2) confidentiality disclosure
(3) disclosures in breach of confidence
(4) grace period

Question 19

Who is the “informed user”?

Answer 19

The Informed User is a notional person used in both invalidity and infringement proceedings:

The inquiry into individual character is undertaken from the perspective of the ‘informed user’–a fictitious character used to set the standard by which the designs are judged.

As well as setting the benchmark for deciding individual character (and thus infringement), the notional informed user is also used when deciding whether an application is in conflict with earlier rights.

A number of cases provide guidance on the characteristics of the informed user.

Question 20

How is “design freedom” relevant?

Answer 20

The degree of freedom that a designer has must be taken into consideration when assessing the distinctive character of his design.

A number of cases provide guidance/factors to consider in assessing the design freedom of the designer. See, for example, Proctor and Gamble v Reckitt and PepsiCo v Grupo Promer.

Question 21

What factors are considered when assessing individual character? (this is just complied by me to get my thoughts together)

Answer 21

(1) the overall impression test;
(2) characterisation of informed user;
(3) design freedom
(4) effect of nature of product and sector
(5) banality of features)
(6) “density” of prior art field
(7) effects of functionality of features and design freedom

Question 22

When is it considered that a design has been made available to the public?

Answer 22

RDA s.1B(5) & (6)(a)-(b), based on DD Art. 6 (and equivalent to CDR Art. 7) defines what forms the content of the state of the art.

Section 1B(5) RDA 1949

(5) For the purposes of this section, a design has been made available to the public before the relevant date if—
(a) it has been published (whether following registration or otherwise), exhibited, used in trade or otherwise disclosed before that date; and
(b) the disclosure does not fall within subsection (6) below.

There are a number of exceptions that apply meaning some designs are not considered to be available to the public (i.e. form part of the state of the art). See other slide.

Question 23

What is the “safeguard clause”?

Answer 23

A “common-sense” limitation was introduced to soften the harshness of absolute novelty, in the form of the “safeguard clause”

Section 1B(6)(a)

(6) A disclosure falls within this subsection if—
(a) it could not reasonably have become known before the relevant date in the normal course of business to persons carrying on business in the European Economic Area and specialising in the sector concerned;

Question 24

What is the “grace period”?

Answer 24

RDA s.1B(6)(c)-(e)), based on DD Art. 6(2) and (3) (and equivalent to CDR Art. 7(2)).

Section 1B(6)(c)-(e)

(6) A disclosure falls within this subsection if—
(c) it was made by the designer, or any successor in title of his, during the period of 12 months immediately preceding the relevant date;
(d) it was made by a person other than the designer, or any successor in title of his, during the period of 12 months immediately preceding the relevant date in consequence of information provided or other action taken by the designer or any successor in title of his; or
(e) it was made during the period of 12 months immediately preceding the relevant date as a consequence of an abuse in relation to the designer or any successor in title of his.

As Jacob LJ explained in Green Lane v PMS81, “If the designer markets his design and within a year thereafter applies to register it, his earlier disclosure of the design does not count as prior art. This has the benefit that he can see how his design is initially received by the market – if well he can go on to register it, if not he need not bother.”

The onus of proof in demonstrating that a disclosure is to be excused by the grace period will usually rest on the proprietor

Question 25

When is the ground for invalidity based on prior filed design (part of prior rights ground) relevant?

Answer 25

This ground is only relevant where the earlier design (UK, Community or Hague) has not been published before the filing or priority date of the later. Otherwise the later would lack novelty or individual character. Most designs are published quickly after they are filed, but this is not necessarily always the case. For example, Community designs may have deferred publication for up to 30 months. This ground can be used only by the proprietor of the earlier design, so that a proprietor is safe from his own earlier filings.

The “conflict” is decided by determining whether the later design would infringe the earlier (PepsiCo Inc v Grupo Promer Mon86 (the “Metal Rappers” case).

The test for individual character over the prior art is effectively the same as the test for infringement scope (namely, whether the two designs create the same “overall impression”) so that the tests for invalidity over a prior design right and over prior art will therefore usually come to the same result.

Where, however, the later design adds an additional feature to an existing one (for example, distinctive surface decoration), the “conflict” test may result in invalidity if the earlier one is wholly reproduced and thus infringed, even if the later one adds a distinctive element and would therefore have enjoyed “individual character”.

Question 26

What is the scope of protection around a design? (Which may be infringed?)

Answer 26

Section 7 RDA 1949
(1)The registration of a design under this Act gives the registered proprietor the exclusive right to use the design and any design which does not produce on the informed user a different overall impression.

(2) For the purposes of subsection (1) above and section 7A of this Act any reference to the use of a design includes a reference to—
(a) the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied; or
(b) stocking such a product for those purposes.

(3)In determining for the purposes of subsection (1) above whether a design produces a different overall impression on the informed user, the degree of freedom of the author in creating his design shall be taken into consideration

The statutory test for infringing similarity is therefore the same as that for individual character, to the extent that Recital 13 of the Directive (and Recital 14 of the Regulation), which take into account the “design corpus”, the “nature of the product” and the “industrial sector” concerned for individual character, have also been applied by the Courts in infringement.

For registered (Community and UK) designs, infringement occurs though the “use” of the design.

For unregistered community designs, infringement also occurs through use but must be the result of copying.

Question 27

General points to consider when considering infringement….

Answer 27

(1) As when considering individual character, the assessment of infringing similarity is also affected by the subtest of design freedom. Where both designs are of products in the same sector in which there is only a small degree of freedom, the later design may appear similar to the earlier to the untrained eye, but where the similarities are due to a lack of design freedom then the differences will count more strongly against infringement.
(2) As the test person is the “informed user”, who has some knowledge of other designs and design trends (see above), pioneering or ground-breaking features may stand out and be seen as more significant.
(3) There is an interplay between valid scope and distance from the prior art. If the design in suit is more similar to the prior art than to the infringement, it cannot validly cover the infringement without being invalid.
(4) Where a design is partly dictated by function, or subject to heavy constraints on design freedom, it may be valid and also similar to the infringement, but if the similarities lie only in features dictated by function, there may nonetheless be no infringement.

Question 28

What are the exceptions to infringement?

Answer 28

There are some specific exclusions from infringement in RDA s.7A, based on DD Art. 13 (and equivalent to CDR Art. 20) - mostly similar to those for patents.

• -Private & non-commercial acts
• -Experimental purposes
• -Making citations and teaching, provided that it is all fair and non-prejudicial, AND the source is acknowledged
• -Cases C-24/16 & C-25/16 Nintendo et al allow depictions of product to sell accessories
• -Use on ships & aircraft temporarily in UK space (Can be a regular visitor: Stena v. Irish Ferries [2002] RPC 990 [50] and [2003] RPC 668 [36])

Question 29

What is the prior use defence?

Answer 29

A prior use defence exists (Intellectual Property Act 2014, inserting s.7B RDA), as in patent law, for UK designs registered after 1st October 2014. It is equivalent to that of CDR Art 22 for Community Designs, and allows a party who has begun, or made effective and serious preparations to begin, infringing acts before the priority date to continue with them. The right is a personal right, which allows the prior user to continue use but cannot be licensed, and is transferable only with the business.

Question 30

What is the “repair clause”?

Answer 30

Section 7A(5)
(5) The right in a registered design of a component part which may be used for the purpose of the repair of a complex product so as to restore its original appearance is not infringed by the use for that purpose of any design protected by the registration.

For external parts, such as car body panels, the EU Council found it almost impossible to reach a political agreement between car-producing countries such as France and Germany and consumerist countries such as the UK. However, in the end, a compromise position was defined in Art. 110 of Regulation 6/2002, which is a defence or a non-infringing act rather than a ground of invalidity.
[So the above is the UK implementation of Art 110]

Question 31

Who owns the design? (Specific to UKRD)

Answer 31

Under RDA s.2, the author (or creator) of a design is treated as the original owner of the design, unless:

(i) the design is created pursuant to a commission dating from before 1st October 2014100, for money or money’s worth, in which case the commissioner is the first owner of the rights in the design; or
(ii) the design is created by an employee in the course of his/her employment, in which case the employer is the first owner of the rights in the design.

Question 32

Who may apply for a design? (Specific to UKRD)

Answer 32

Only the person claiming to be the owner of the design can make an application for registration (RDA s.3(2)). The applicant must also claim to be the owner of any unregistered design right (RDA s.3(3)). Ownership can be challenged after registration by a person claiming to be the true owner.

[Either the proprietor or an exclusive licensee can sue]

Question 33

How is a RCD different from an UKDR in terms of law? (not sure this is comprehensive)

Answer 33

Validity and infringement are exactly as discussed above for UK rights, save that the earlier unpublished designs can be national designs of any EU country as well as earlier Community designs.

Question 34

What is the filing procedure for a CDR?

Answer 34

Community Designs are registered at the EUIPO in Alicante.

They can be filed by fax, through the EUIPO website, or through the UK Registry, as well as directly by hand or by post.

At present the fees for a single design are 350 Euros.

EUIPO lack the power to examine on prior art grounds and most other substantive. Examination is confined to formal matters, although immoral designs or those obviously not meeting the definition of a design can be rejected (far less than 1% suffer this fate!) (CDR Arts 45- 47).

Designs may be registered in as little as 48 hours, and most are registered within 3 months (unless there are problems).

Question 35

What is meant by the “unitary character” of a CDR?

Answer 35

A Community Design registration is a single registration covering the whole of the European Union. It can only be declared invalid for the whole of the Union and, in general, it can only be assigned in respect of the whole of the Union, but can be separately licensed (subject to competition law constraints). European-level exhaustion of rights applies (CDR Art. 21).

Question 36

Tell me about ownership re RCD………

Answer 36

There are no limitations on who may apply for a Community Design. The design is owned by the designer or, in the case of an employee, by the employer if the design was created in the course of employment (CDR Art. 14). “Employment” here does not include independent contractors or commissionees (FEIA, ECJ Case C-32/08104). Wrongful ownership can be challenged in the Courts for up to three years from registration (the time bar doesn’t apply in the case of bad faith registrants) (CDR Art. 15). The law of property applicable to the Community design across the whole of the EU is that of the proprietor (if he is an EU national) or otherwise, that of Spain (CDR Art. 27).

There are two potential issues on assignment:

1. A Community Design can only be assigned for the whole of the EU, and
2. An International Design (designating the EU) can only be applied for by, and assigned to, someone with the necessary connection with a Hague Agreement Member State.

Question 37

Tell me about litigation re RCD………

Answer 37

Infringement disputes are reserved for special Courts (“Community Design Courts”) which are intended to be few in number in each State. These Courts can hear infringement actions and (where national law allows) actions for a declaratory judgement of non-infringement. In England and Wales the Courts are the Patent County Court and the Patents Court (The Community Designs (Designation of Community Design Courts) Regulations 2005105).
As there will have been no examination or opposition as to substance, the Community Design Courts can also hear a counterclaim for a declaration of invalidity.