Registered Designs (Requirements and Process) Flashcards
Define “design”, “product” and “complex product” in the legal sense of registered designs.
A “design” is the appearance of the whole or 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.
“Product” means any industrial or handicraft item other than a computer program and, in particular, includes packaging, get-up (see below), graphic symbols, typographic type-faces and parts intended to be assembled into a complex product.
A “complex product” is a product composed of at least two (non-consumable) replaceable component parts, permitting disassembly and reassembly of the product.
NB the “appearance” of a product is broader than the shape/configuration definition of unregistered designs. In particular, things like colours are included, which means surface decoration is not excluded.
NB a bicycle is a complex product because it can be dissassebled and reassembled. The “replaceable component” bit just means the product must actually be capable of real dissassembly, not just, for example, cutting a unitary metal rod in half and then gluing it back together.
NB “get-up” means the get-up of a product, which means the combination of fonts, colours, shapes etc. that come together to define how the product is presented. The get-up of a McDonald’s burger might be the shape of its distinctive burger box, the doodle colours and drawings, the font, etc., all combined.
“It is only possible to protect a design if it has ____ and ______. “
Fill the gaps.
It is only possible to protect a design if it has novelty and individual character.
Define “novelty” in relation to registered designs.
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 priority date.
Define “individual character” in relation to registered designs.
A design has individual character if the overall impression it produces on the informed user differs from the overall impression produced on the informed user by any design made available to the public before the priority date.
The informed user is a user of the product (as opposed to a designer, for example) who
* is particularly observant;
* has knowledge of the design corpus (i.e., of the state of the art);
* shows a relatively high degree of attention when using the product; and
* conducts a direct comparison between the design and the particular prior art design in question when assessing individual character.
The degree of freedom of the author/designer in creating the design (at the priority date) is considered when determining whether the design has individual character. The more constrained the designer was, the more minor differences matter when judging individual character. For example, smartphones are all more or less rectangular and look similar on a first glance, so small differences between their designs will be enough to confer individual character. However, the shape of light shades vary much more, and thus small differences may not be enough. The informed user is aware of the design corpus and is thus able to make this judgement.
To what extent can the design of a component part of a complex product be deemed to be novel and have individual character?
Only to the extent that the design of the portion of the component part which is visible in normal use of the complex product has novelty and individual character. “Normal use” means use by the end user of the complex product but does not include any maintenance, servicing or repair work.
Explain the grace period rules for registered designs.
There is a 12-month grace period preceding the priority date for both abusive disclosures and disclosures originating with the designer (i.e., disclosures made by the designer or as a result of information provided by or action taken by the designer).
What is an obscure disclosure?
A prior art disclosure is not novelty destroying if it could not reasonably have become known before the priority date in the normal course of business to persons carrying on business in the UK or EEA and specialising in the sector concerned (meaning the sector of the prior art design).
For example, design A is a weight plate at the gym and design B is a dog chew toy. It just so happens that they look identical. Design B was disclosed at an international pet toy trade show in America the day before A’s priority date. In this case, A is not novel over B because business people from the EEA/UK who specialised in pet toys would have visited the trade show and thus design B would have been known to them. However, if B was a random garage inventor’s creation and he disclosed it only in a post on the HomeDefence subreddit, this would be an obscure disclosure as those same pet toy business specialists would have never heard of it, and so A would be novel over B.
What are the exclusions to design rights?
- Features dictated by their technical function.
- Features which “must fit”.
- Designs contrary to public policy or morality.
Explain the technical function exclusion.
Features of a design which are solely dictated by the product’s technical function are excluded from protection.
Explain the “must fit” design exclusion.
Features of the appearance of a product which must necessarily be reproduced in their exact form and dimension so as to permit the product to be mechanically connected to, or placed in, around or against, another product so that either product may perform its function.
NB this has the same meaning as the UDR “must fit” exlcusion. The bit about “exact form and dimensions” is necessary in this definition because the scope of protection for registered designs is broader than unregistered designs (extending to any product that has the same overall impression as the registered design, as opposed to only exact or substantial copies of the design).
NB only those features of a design which “must fit” are excluded from protection, not the whole design.
NB there is no “must match” exclusion for registered designs.
NB there is the modular exception to this exclusion, detailed on another card.
Explain the modular exception to the “must fit” exclusion.
The “must fit” exclusion does not include designs serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system, like Lego, for example.
What is a multiple application?
Multiple (possibly different and unrelated) designs included in a single registered design application. This is desirable because the fees are cheaper than filing a separate application for each design.
Who is entitled to file a registered design application?
The proprietor of the design (the first author typically, or their employer, or someone they have assigned ownership to).
NB: Technically, anyone can file a design application, but by the time it registers the design right has to be assigned to the applicant otherwise the registered design will be invalid.
If an unregistered design right also subsists in the design then the application must be filed by whoever owns this right.
What is the compliance period for registered design applications?
12 months from filing (not priority).
What are the minimum conditions for a filing date?
- The registered design(s) must be filed on form DF2A.
- The applicant must be identified.
- The application fee must be paid.
- There must be provided at least one representation or specimin (if filing by post) of each included design.
