Week 10 Flashcards
Designs. Enforcement possibilities. Overlaps (copyright, unfair competition).
Protection by the Unregistered Community Design Right preempts the protection of the same design by copyright.
No
Design features which are solely dictated by its technical function are protectable cumulatively under the design and patent regime.
No
After the lapse of the registered design right the protection of the same design under the copyright regime is excluded in the EU in order to protect the public domain.
No
A design having individual character is automatically capable of distinguishing goods of one undertaking from those of another.
No
In the EU protection of design under the sui generis design regime preempts copyright protection of the same design
No
What are the two different types of protections given to a design?
the formal or informal.
Which provision does explicitly envisages a potential overlap between the design regime and other IP regimes?
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.
The provisions of this Directive shall be without prejudice to any provisions of Community law or of the law of the Member State concerned relating to unregistered design rights, trade mark or other distinctive signs, patents and utility models, typefaces, civil liability or unfair competition.
What is a possible result when concurrent applications of different forms of design are filed?
The reduction of the public domain.
Can different IP rights overlap?
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.
What are the different types of appearances protected under IP?
Different forms of intellectual property protection may cover different aspects of the product’s appearance (i.e. functional features, esthetic values, distinctiveness).
________ is also fostered by phenomena and tendencies within the whole system of intellectual property protection.
Cumulation
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?
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.
Is it suitable to combine formal and informal protection? If no, what are the drawbacks?
No. The quality of notice of the registered rights and the role of the public domain.
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.
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.
Why do national laws typically treat industrial design as a separate piece of intellectual property?
Because this kind of innovation does not fit properly within the copyright systems and therefore requires separate rules.
What is the focus of definition of a product in EU Design Directive and Regulation?
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.
Define purerly artistic designs.
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.).
Define industrial designs.
Creations intended to be used for practical purposes (clothing, furniture, household implements, etc.).
What is the separatist theory of art?
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»).
What is theory of unity of art?
Some national systems take the opposite view and provide for cumulative protection (under the so-called «theory of the unity of art»).
What is the principle of unity of art
Copyright provisions and those specific to registered designs are both aimed at protecting the same creations.
In the European law, which provision regulates the relationship of sui generis design protection to copyright?
Article 17 EU Design Directive and in Article 96(2) CDR envisage cumulation of design protection with copyright
What does Article 17 of EU Design Directive deal with?
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.
What does Article 96(2) of CDR deal with?
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.
In which case did the CJEU considered the principle of cumulative designs under sui generis and copyright regime?
C-168/09 Flos SpA v Semeraro Casa e Famiglia SpA.
How will you interpret the landmark Birthday Train decision of the Federal Court on 13 November 2013 (BGH, I ZR 143/12)?
A decline of “the two-tier theory”
What are the potential outcomes of overlapping in copyright and design protection?
Conflicts, collisions and regime clashes.
What would your advise in cases of potential overlapping to avoid problems and conflicts on the ownership level?
Ensure a proper allocation of rights and entitlements in a separate agreement.
Is Cumulation of design rights and trademarks rights explicitly allowed?
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
How does EU Design Directive and Regulation define “product?”
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.
