Notes on Registered Rights Flashcards
What is the current UK framework for design protection?
(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.
How did the UK Unregistered Design Right come into being?
[For background–not examinable]
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.
Which systems provide protection for 2D designs (surface decoration) and which systems provide protection for 3D designs (shape decoration)?
(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
How EU infringement relates to UK registered…
EU law of infringement applies to UK registered designs
What is the definition of a design?
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.
What in a registered design in order to determine its scope of protection?
- 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.
What is meant by a “product” and “complex product”?
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).
What is the exception under RDA s.1C(1) (based on DD Art. 7(1) and equivalent to CDR Art. 8(1))?
“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.
What is the exclusion under RDA s.1C(2) (based on DD Art. 7(2) and equivalent to CDR Art. 8(2))?
“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”
What is the “exclusion” to the exclusion under s.1C(2)?
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.”
Can the design of part of a product be protected?
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.
How are “component parts” defined?
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.
What is the exclusion under section 1B(8) and (9) RDA?
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.
What requirements must a UK registered design/Community registered design/unregistered Community design meet in order to be valid?
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).
What section in the RDA coveys the fact that a design must be valid over prior art?
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.