Week 6

Question 1

Tod’s v Heyraud Case

Answer 1

Decision:

Article 12 EC, which lays down the general principle of non‑discrimination on grounds of nationality, must be interpreted as meaning that the right of an author to claim in a Member State the copyright protection afforded by the law of that State may not be subject to a distinguishing criterion based on the country of origin of the work.

Question 2

What it is preliminary ruling?

Answer 2

A preliminary ruling is a decision of the European Court of Justice (ECJ) on the interpretation of European Union law, given in response to a request from a court or tribunal of a European Union Member State. A preliminary ruling is a final determinations of EU law, with no scope for appeal.

Question 3

Who can obtain international design registration?

Answer 3

An international design registration may be obtained only by a natural person or legal entity having a connection – through establishment, domicile, nationality or, under the 1999 Act, habitual residence – with a Contracting Party to either of the two Acts.

Question 4

Where are you able to apply for international design registration?

Answer 4

The Hague Agreement allows applicants to register an industrial design by filing a single application with the International Bureau of WIPO, enabling design owners to protect their designs with minimum formalities in multiple countries or regions.

and the majority are filed using the electronic filing interface on WIPO’s website.

Question 5

1

Answer 5

International applications may include up to 100 designs, provided they all belong to the same class of the International Classification for Industrial Designs (Locarno Classification). Applicants may choose to file an application in English, French or Spanish. Internation- al applications must contain one or several reproductions of the industrial design(s) and must designate at least one Contracting Party.

Question 6

What it is the term of design protection ?

Answer 6

he term of protection is five years, renewable for at least one five-year period under the 1960 Act, or two such periods under the 1999 Act. If the legislation of a Contracting Party provides for a longer term of protection, protection of the same duration shall, on the basis of the international registration and its renewals, be granted in that Contracting Party to designs that have been the subject of an international registration.

Question 7

The Hague Agreement Background :

Answer 7

The Hague Agreement, concluded in 1925, was revised at London in 1934 and at The Hague in 1960. It was completed by an Additional Act signed at Monaco in 1961 and by a Com- plementary Act signed at Stockholm in 1967, which was amended in 1979. As noted above, a further Act was adopted at Geneva in 1999.
The Hague Agreement created a Union, which, since 1970, has had an Assembly. Every mem- ber of the Union that has adhered to the Com- plementary Act of Stockholm is a member of the Assembly. Among the most important tasks of the Assembly are the adoption of the bien- nial program and budget of the Union and the adoption and modification of the implementing regulations, including the fixing of the fees connected with the use of the Hague System.

Question 8

How many MS in The Hague Agreement ?

Answer 8

70 countries

Question 9

Where you can seek the international design registration?

Answer 9

The international registration of an industrial design may be sought with the International Bureau of WIPO, either directly or through the industrial property office of the Contracting Party of origin if the law of that Contracting Party so permits or requires.

Question 10

Who can meet the requirements to apply for registration?

Answer 10

be a national of a State party to the Hague Agreement, or have a domicile in a State party to the Hague Agreement, or have an habitual residence in a State party to the Hague Agreement, or have a real and effective industrial or commercial establishment in the territory of a State party to the Hague Agreement. A person who does not meet these requirement cannot file an international application under the Hague Agreement and must therefore file an application at the national (or regional) level, with the national (or regional) offices of the States where he desires to obtain protection.

Question 11

To which countries international design registration can be designated?

Answer 11

The international application can obviously designate only those States which are party to the Hague Agreement.

The Hague system cannot be used to protect an industrial design in a country which is not party to the Hague Agreement. Therefore, protection in countries which are not party to the Hague Agreement can be obtained only by way of national or regional applications, according to the national or regional laws which apply in every single case.

Question 12

Some Facts

Answer 12

• The entitlement to file an international application under the Hague Agreement is limited to natural persons or legal entities having a real and effective industrial or commercial establishment, or a domicile, or an habitual residence, in one of the Contracting Parties to the Hague Agreement, or being a national of one of these Contracting Parties.
• Protection may only be obtained in the countries which are party to the Hague Agreement.
• The International Bureau of WIPO carries out an examination as to the form only and does not appraise or concern itself in any way with the novelty of the design, even if a novelty examination is requested. It is up to the IP Office of each country designated by the applicant to determine whether the designs may be granted protection.

Question 13

Term of protection?

Answer 13

is five years, renewable for at least one five-year period under the 1960 Act, or two such periods under the 1999 Act. If the legislation of a Contracting Party provides for a longer term of protection, protection of the same duration shall, on the basis of the international registration and its renewals, be granted in that Contracting Party to designs which have been the subject of an international registration.

Question 14

When can be refused design protection under international registration?

Answer 14

Each Contracting Party designated by the applicant may refuse protection within six months, or possibly 12 months under the 1999 Act, from the date of the publication of the international registration. Refusal of protection can only be based on requirements of the domestic law other than the formalities and administrative acts to be accomplished under the domestic law by the office of the Contracting Party which refuses the protection.

Question 15

1

Answer 15

Under the TRIPS article 1 (2), industrial designs fall within the concept of Intellectual property therefore the member states of WTO have to apply the principles of “national treatment” and “most favoured nation” to nationals of other member States claiming protection for industrial designs on their territory.

Question 16

What it is the right of priority under art 4 PC

Answer 16

1

Question 17

What is the minimum of protection provided for by art 5quinquies PC?

Answer 17

1

Question 18

With which articles from PC MS of WTO shall comply ? (art 2 (1) TRIPS

Answer 18

member States of WTO «shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967)».

Question 19

Can other countries who are not the MS of the PC but MS of the WTO claim ?

Answer 19

Here it may be sufficient to note just one of them: the right of priority established by art. 4 PC and the minimum of protection provided for by art. 5quinquies PC can be claimed by a national of a country member of WTO in every other country participating to the same Organization, notwithstanding whether the country of origin or the target country are both members of the Paris Union. For example, Fiji, Kuwait, Maldives, Myanmar are member States of WTO without being also member States of the Paris Union.

Question 20

What are few criteria that member States must respect under TRIPS?

Answer 20

• member States are required to protect «industrial designs
• free to choose the legal mean
• «independently created industrial designs that are new or original (they must be significantly differ from known designs or combinations of known design features)
• he content and duration (minimum ten years) of the protection that has to be granted by each member State.

Question 21

Some Facts

Answer 21

• The TRIPS Agreement requires Members to give to the owner of an industrial design, as a minimum, the right to prevent third parties not having the owner’s consent from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes.
• The duration of protection available shall amount to at least 10 years.
• The TRIPS Agreement, Article 25.1, specifically allows WTO Members to exempt industrial design protection for designs that are dictated by technical or functional considerations. Such designs may be protected instead, for example, by patent law.
• Article 25.2 TRIPS recognizes that designs in the textile industry, for example patterns on fabrics, often have a short life cycle, which may be over by the time design protection is in place. The industry also has a huge volume of potential designs, only a few of which may be used but all of which must be protected in order that the chosen few will be protected. Members must adopt laws that will not unreasonably impair the ability of companies in this industry to obtain effective protection, with respect for example to cost, examination or publication; this can be done through copyright law or design-specific laws.

Question 22

What it is a unitary intellectual property right?

Answer 22

(a «Community design») which has effects on the entire territory of the European Union. The EU regulation on Community designs offers an example of a modern sui generis protection for industrial designs, which has been conceived also with TRIPS principles in mind.

Question 23

What are two different rights provides the EU regulation?

Answer 23

• registered Community design

- unregistered community design right

Question 24

What it is registered Community design?

Answer 24

can be obtained through an application addressed at the EUIPO

Question 25

What it is unregistered Community design?

Answer 25

arises automatically, as a legal consequence of the disclosure of the design to the public within the European Union.

Question 26

What it is grace period?

Answer 26

These two rights are also complementary: it is possible to file an application for a registered design which has already been disclosed to the public, if the application is made within one year from disclosure

Question 27

EU Regulation

Answer 27

It should be noted that the EU Regulation does not substitute national laws of member States that are meant to protect industrial designs.

Question 28

EU Directive

Answer 28

is such laws are there to stay and have been harmonized by the European Union Directive on the legal protection of designs

Question 29

How the owner of a new design can protect it in Europe?

Answer 29

the owner of a new design can protect it in Europe in various ways: he can rely on unregistered or registered Community designs; but he can also file an application for a national registered design in every member State where he plans to sell his products; or he can invoke copyright protection (taking into account in this case that, even if such protection is available in all member States, the conditions under which it can be obtained may vary from country to country).

Question 30

Examples how other country protect design?

Answer 30

For example, US law regulate «design patents» within the patent system, which requires registration; EU law provides a sui generis regime (i.e. a regime which is different from both patent and copyright regimes), which protects both registered and unregistered designs.

Depending on the particular national law and the kind of design, an industrial design may also be protected as a work of art under copyright law. In some countries, industrial design and copyright protection can exist concurrently. In other countries, they are mutually exclusive: once the owner chooses one kind of protection, he can no longer invoke the other or, at least, he cannot receive a broader protection under the other (this however is not accepted in the EU countries, as it would contradict the principle of cumulative protection of designs stipulated in Art. 17 of the European Union Directive on the legal protection of designs). Under certain circumstances an industrial design may also be protectable under unfair competition law, although the conditions of protection and the rights and remedies ensured can be significantly different.

Question 31

The basic instrument establishing procedures for the registration of designs at the international level is:

Answer 31

The Hague Agreement

Question 32

True or false? An applicant for the design protection in one of the EU member states is obliged to choose the design protection at one level only (either national or EU one)

Answer 32

False

Question 33

True or false? The protection of a design by an unregistered Community designs right excludes the opportunity of formal protection of this design by the Community registered design right.

Answer 33

False

Question 34

True or false? Under the Paris Convention and TRIPS a sui generis design protection is a mandatory form of design protection at the national level.

Answer 34

False

Question 35

What is “Design”?

Answer 35

Design is to design a design to produce a design

Question 36

What are the outcomes of Design?

Answer 36

1. They may relate to things.
2. They may relate to places and environments for a living, working, playing and learning.
3. They may also convey messages and enable communication and interaction.

Question 37

Which are kinds of designs protected under Intellectual Property?

Answer 37

registered, unregistered, design patent, orgamental design or model and as defined by a national law.

Question 38

Why is legal protection of Design important?

Answer 38

Legal protection of design is important to competitive economies, as it may play a reward and incentive function.

Question 39

What is the motive behind design protection?

Answer 39

When an industrial design is protected, the owner – the person or entity that has registered the design – is assured an exclusive right against unauthorized copying or imitation of the design by third parties.

Question 40

What does effective use of design contribute?

Answer 40

Effective use of design and its protection as industrial design will add value to a product and enhance the competitiveness and position of the business in the market. Many companies have successfully redefined their brand image through strong focus on product design.

Question 41

In the Samsung Case study, how is the design given importance?

Answer 41

In 1995, the company set up the Innovative Design Lab of Samsung, an in-house school where promising designers could study under experts from the Art Center College of Design in Pasadena, Calif., one of the top U.S. design schools. Samsung designers were dispatched to Egypt and India, Paris and Frankfurt, New York and Washington to tour museums, visit icons of modern architecture, and explore ruins. To make sure designers get heard, Samsung has created the post of chief design officer – something few other companies have bothered to do. And to make sure top executives attuned to the importance of the issue, CEO Yun holds quarterly design meetings where the chiefs of all the business units review new products and evaluate their designs.

Question 42

What are the sources of law for Design?

Answer 42

1. International
2. National
3. Regional

Question 43

What are the two International treaties adopted for the Design protection?

Answer 43

Paris convention of 1883 and the Berne Convention of 1886,

Question 44

When was the Hague Agreement for Design signed?

Answer 44

The Hague Agreement on the International Registration of Industrial Design - in 1925.

Question 45

What is the Role of IG of WIPO?

Answer 45

Under the IG’s of WIPO, some proposals with respect to further procedural harmonization of national design laws in a form of the design law treaty are discussed and elaborated.

Question 46

How does Paris Convention deal with Design?

Answer 46

It contains many important provisions related to design.

Question 47

What are the important provisions for the Design under the Paris Convention?

Answer 47

1. Art. 1(2) PC names «industrial designs» as a part of an industrial property
2. Art. 4.A(1) PC grants to all nationals of member States a right of priority.
3. Art. 5 PC states that «industrial designs shall be protected in all the countries of the Union.

Question 48

What are the important provisions for Design under the Berne Convention?

Answer 48

1. Art. 2(1) BC includes «works of applied art» within the broader category of «literary and artistic works» to which the Convention applies.
2. Art. 2(6) BC states that «the works mentioned in this Article shall enjoy protection in all countries of the Union»,
3. Art. 2(7) BC authorizes member States to establish freely the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected

Question 49

What is the contrary effect of art 2(7) of the Berne Convention?

Answer 49

To the contrary, if a member State denies copyright protection to industrial designs and protects them exclusively through a special regime, its own nationals may not receive copyright protection abroad (just like they don’t receive it in their homeland).

Question 50

How many times the Hague Agreement is signed?

Answer 50

The Hague Agreement Concerning the International Registration of Industrial Designs has been signed on November 6, 1925 and has been revised several times. Three Acts of the Hague Agreement are currently in force: the 1999 Act, the 1960 Act and the 1934 Act.

Question 51

Who administers the Hague Agreement?

Answer 51

The Agreement is administered by the International Bureau of WIPO, in Geneva, and so far 60 countries adhered to one of its three Acts.

Question 52

How does the Hague system work?

Answer 52

The Hague system works very much like the Madrid system for trademarks. In short, it offers the owner of an industrial design a means of obtaining protection in several countries (up to all countries which have signed the HA) by simply filing one application with the International Bureau of WIPO, in one language, with one set of fees in one currency (Swiss Francs).

Question 53

Is filing an international application under the Hague Agreement open to everyone?

Answer 53

The possibility of filing an international application under the Hague Agreement is not open to everyone. To be entitled to file such an application, an applicant must satisfy one, at least, of the following conditions: be a national of a State party to the Hague Agreement, or have a domicile in a State party to the Hague Agreement, or have an habitual residence in a State party to the Hague Agreement, or have a real and effective industrial or commercial establishment in the territory of a State party to the Hague Agreement.

Question 54

What are the options available for the applicant to file an international application under the Hague Agreement?

Answer 54

The international application must be filed in either English or French (at the applicant’s option) on an official form.

Question 55

What is the role of WIPO under the Hague Agreement?

Answer 55

It must also be stressed that WIPO does not appraise or concern itself in any way with the novelty of the design and it is therefore not entitled to reject an international application on this, or any other, substantive ground. Substantive examination falls within the exclusive competence of the Office of each designated country.

Question 56

How are photographs or other graphic representations of the designs submitted by the applicant?

Answer 56

The photographs or other graphic representations of the designs submitted by the applicant are published in the International Designs Bulletin, which is issued monthly via CD-ROMs and the internet.

Question 57

What are the terms of the refusal of protection of Design under the Hague Agreement?

Answer 57

Each Contracting Party designated by the applicant may refuse protection within six months, or possibly 12 months under the 1999 Act, from the date of the publication of the international registration.

Question 58

What is the term for protection of Design under the Hague Agreement?

Answer 58

The term of protection is five years, renewable for at least one five-year period under the 1960 Act, or two such periods under the 1999 Act. If the legislation of a Contracting Party provides for a longer term of protection, protection of the same duration shall, on the basis of the international registration and its renewals, be granted in that Contracting Party to designs which have been the subject of an international registration.

Question 59

How do industrial designs fall within the concept of intellectual property under the TRIPS Agreement?

Answer 59

Art. 1(2) TRIPS, industrial designs fall within the concept of «intellectual property» adopted by the agreement itself.

Question 60

What are the relevant provisions under TRIPs agreement for the Design Protection?

Answer 60

1. Art. 2(1) TRIPS states that member States of WTO «shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967)
2. the right of priority established by Art. 4
3. PC and the minimum of protection provided for by Art. 5

Question 61

Is the term “industrial design” defined in either PC or the TRIPS agreement?

Answer 61

Art. 5 PC says only that «industrial designs shall be protected in all the countries of the Union», without telling what an industrial design is and how it has to be protected. The TRIPS Agreement goes further and introduces a few criteria that member States must respect, while leaving them a considerable amount of residual freedom.

Question 62

How are state members required to protect for Design under TRIPs Agreement?

Answer 62

Firstly, member States are required to protect «industrial designs»; at the same time, they remain free to exclude «designs dictated essentially by technical or functional considerations» (Srt. 25(1) TRIPS)

Secondly, member States remain free to choose the legal mean to protect such industrial designs. Therefore, copyright law, design patents, or a sui generis regime are all viable alternatives.

Thirdly, member States have to protect «independently created industrial designs that are new or original.

Fourthly, Srt. 26 TRIPS describes the content and duration (minimum ten years) of the protection that has to be granted by each member State.

Lastly, art. 25(2) TRIPS contains a provision which relates only to textile designs.

Question 63

How do the Regional laws protect Design?

Answer 63

For Example- The Regulation on the European Union Trademarks (but differently from the Madrid system for trademarks and the Hague system for designs), this law establishes a unitary intellectual property right (a «Community design») which has effects on the entire territory of the European Union.

Question 64

What are the rights of Design protection as provided by EU regulation ?

Answer 64

The EU regulation provides two different rights: a «registered Community design right» and an «unregistered community design right». In both cases, a design can be protected if it is new and has an individual character.

Question 65

How can registered Community design and unregistered Community design be obtained?

Answer 65

A «registered Community design» can be obtained through an application addressed at the European Union Intellectual Property Office (EUIPO, formerly OHIM), which is based in Alicante, Spain. To the contrary, an «unregistered Community design» arises automatically, as a legal consequence of the disclosure of the design to the public within the European Union.

Question 66

What is the grace Period for a registered design?

Answer 66

It is possible to file an application for a registered design which has already been disclosed to the public, if the application is made within one year from disclosure.

Question 67

What is the duration of legal protection prescribed by the regional laws?

Answer 67

To name just a couple, the legal protection lasts longer (up to twenty-five years instead of three) and is wider (it covers not only deliberate copying, but also the independent development of a similar design).

Question 68

What are other rights available with the owner of New Design?

Answer 68

The owner of a new design can protect it in Europe in various ways: he can rely on unregistered or registered Community designs; but he can also file an application for a national registered design in every member State where he plans to sell his products; or he can invoke copyright protection (taking into account in this case that, even if such protection is available in all member States, the conditions under which it can be obtained may vary from country to country).

Question 69

How do national laws differ from the International Laws for Design Protection?

Answer 69

National laws tend to differ from one another as long as industrial design protection is concerned. This is a consequence of the lack of substantial harmonization at the international level. The Paris Convention only mandates for protection of industrial designs; while the TRIPS Agreement contains very flexible rules, which sets few limits to national legislators.

Question 70

Is registration for industrial design mandatory as per the national laws?

Answer 70

Many countries protect industrial designs as a separate object of intellectual property. In such cases, national laws dealing with industrial designs may require registration or not.

Question 71

Where is the Industrial Design protected as work of art?

Answer 71

Depending on the particular national law and the kind of design, an industrial design may also be protected as a work of art under copyright law.

Question 72

How are industrial design and copyright protection mutually exclusive?

Answer 72

In other countries, industrial design and copyright protection are mutually exclusive: once the owner chooses one kind of protection, he can no longer invoke the other or, at least, he cannot receive a broader protection under the other (this however is not accepted in the EU countries, as it would contradict the principle of cumulative protection of designs stipulated in Art. 17 of the European Union Directive on the legal protection of designs).