Week 7

Question 1

What it is designs of the EU regulation on community designs?

Answer 1

Article 3 (a) of the EU regulation on community designs:
(a) “Design” means the appearance of the whole or a part of a product resulting
from the features of, in particular, the lines, contours, colors, shape, texture and/or
materials of the product itself and/or its ornamentation;

Question 2

What it is product ?

Answer 2

means any industrial or handicraft item, including inter alia parts
intended to be assembled into a complex product, packaging, get-up, graphic
symbols and typographic typefaces, but excluding computer programs;

Question 3

What it is complex product?

Answer 3

means a product which is composed of multiple components

which can be replaced permitting disassembly and re-assembly of the product.

Question 4

What kind of features that create a design can be?

Answer 4

A design is the appearance of the whole or a part of a product, resulting from its feature.

• lines
• colours
• Shapes
• textures
• Contours
• materials
• ornamentation

Question 5

Examples of designs

Answer 5

• computer screen icons,
• graphical user interfaces,
• logos as the definition of a product
• and encompasses graphic symbols
• typefaces
• ornamentation
• set of products
• packaging
• appearance of whole product
• appearance of a part of the product
• appearance of a component part of the whole complex product which remains visible during normal use of such product,

Question 6

Under article 25 (1)

Answer 6

TRIPS leaves Member States of WTO free to exclude industrial design protection for design dictated essentially by technical or functional considerations.

Question 7

art. 8(1) EU Regulation on Community designs

Answer 7

1. A Community design shall not subsist in features of appearance of a product which are solely
   dictated by its technical function.

Question 8

art. 7(1) EU Directive on the legal protection of designs

Answer 8

1. A design right shall not subsist in features of appearance of a product which are solely dictated by its technical function.

Question 9

«functional» a design which is mandatory to obtain a technical function

Answer 9

The first one considers «functional» a design which is mandatory to obtain a technical function, i.e. it is the only design that can be used to perform a given function. It is also known as the multiplicity-of-forms theory under which the “technical function” exclusion does not apply if the same result can also be obtained using another configuration.

Question 10

«functional» a design which is dictated only by technical considerations

Answer 10

the second theory deems «functional» a design which is dictated only by technical considerations (i.e. has been developed with only technical considerations in mind), notwithstanding the availability of other shapes which can perform the same technical function It is also known as the causality theory under which the exclusion applies if the product is determined solely by its technical function, irrespective of the possible existence of design alternatives.

Question 11

What it is Must match features?

Answer 11

Must match features of an article are «dependent upon the appearance of another article of which the article is intended by the designer to form an integral part» (art. 213 UK CDPA). In this case, there is no technical functionality at all. Instead, what comes into play is aesthetical functionality. A typical example of a «must match» design is the one of car body panels: the design of a bonnet or a door depends on the design of the entire car and, therefore, «must match» this latter design. As it might be expected, the problem with «must match designs» is that, if they were protected, the market of spare parts for a given product (e.g. a car) would be monopolized.

Question 12

What it is «must fit designs»?

Answer 12

«must fit designs» do not receive protection in many countries, the situation is quite the opposite in respect of «must match designs». However, some national laws allows their registration but, at the same time, do not protect them against the production and use of spare parts. Since this is still a highly disputed issue, changes in the law of several countries in the near future may not be excluded.

Question 13

Article 25 (1) of TRIPS

Answer 13

“It’s a requirement of all industrial design laws that protections through registration
shall be granted only to designs which are novel and/or original.”

• novelty
• originality

Question 14

What it is a novelty?

Answer 14

meaning that novelty is judged by reference to designs published within a limited preceding period of time; or may relate to territory, meaning that novelty is judged by reference to all designs published within the relevant jurisdiction, as opposed to anywhere in the world; or may relate to means of expression, meaning that novelty is assessed by reference to written or tangible disclosures anywhere in the world and to oral disclosures only within the relevant jurisdiction.

Question 15

What it is novelty under EU law?

Answer 15

Article 5 RCD : A design shall be considered to be new if no identical design has been made available to the
public:

Question 16

What it is disclosure accordingly to EU law?

Answer 16

article 7 RCD

1. For the purpose of applying Articles 5 and 6, a design shall be deemed to have been made
   available to the public if it has been published following registration or otherwise, or exhibited,
   used in trade or otherwise disclosed, before the date referred to in Articles 5(1)(a) and 6(1)(a) or
   in Articles 5(1)(b) and 6(1)(b), as the case may be, except 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. The design shall not, however, be deemed to
   have been made available to the public for the sole reason that it has been disclosed to a third
   person under explicit or implicit conditions of confidentiality.
2. A disclosure shall not be taken into consideration for the purpose of applying Articles 5 and 6
   and if a design for which protection is claimed under a registered Community design has been
   made available to the public:
   (a) by the designer, his successor in title, or a third person as a result of information provided or
   action taken by the designer or his successor in title; and
   (b) during the 12-month period preceding the date of filing of the application or, if a priority is
   claimed, the date of priority.
3. Paragraph 2 shall also apply if the design has been made available to the public as a
   consequence of an abuse in relation to the designer or his successor in title.

It means that the design will not be deemed to have been made available to the public if specialised circles within the EU in a given sector are unaware of the design or if only specialised circles outside the EU have knowledge of a particular design. This “safeguard clause” excludes from prior designs worldwide but obscure disclosures.

Question 17

What conditions must be met to obtain industrial design protection?

Answer 17

Depending on the applicable laws, independently created industrial designs must fulfil some or all of the following criteria: novelty/originality.

The assessment of novelty and originality varies from country to country. In general, an industrial design is considered to be new or novel if it has not previously been disclosed to the public and it may be considered original if it significantly differs from known designs or combinations of known design features.

Question 18

What it is grace period for novelty?

Answer 18

is available under the law (which may not be necessarily the case in every jurisdiction), disclosure of the design by the creator or a third person as a result of information provided or action taken by the creator of the design will not be taken into consideration as an obstacle to the registration of the design.

Where a grace period is provided, it will generally be of short duration, typically between six months and one year (e.g. the 12-month grace period provided for in art.

Question 19

What it is originality?

Answer 19

• European Union law protects only designs which have an «individual character»

Question 20

Who is informed user?

Answer 20

The informed user must be understood as lying somewhere between that of the average consumer, applicable in design matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the design in conflict, and the sectoral expert, who is an expert with detailed technical expertise. Thus, the concept of the informed user may be understood as referring, not to a user of average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question.”

Question 21

May a design of the arrangement of the interior of a hotel room be registered as a Community design?

Answer 21

Yes

Question 22

May a computer screen icon be registered as a Community design?

Answer 22

Yes

Question 23

May a work of art (e.g. a painting) be registered as a Community design?

Answer 23

Yes

Question 24

Define design.

Answer 24

A broad definition can be found in Article 3 (a) of the EU regulation on community designs:

(a) “Design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation;

Question 25

What are designs in a restrictive meaning? Explain “models” in French in brief.

Answer 25

Designs consisting of two-dimensional patterns or ornaments embossed, engraved or placed upon an article are sometimes called “designs” in a restrictive meaning (Dessins In French)

Those consisting of the shape of a product may be referred to as “models” (models in French)

Question 26

What are the subject matters of the legal protection of industrial designs?

Answer 26

The subject matter of the legal protection of industrial designs are not articles or products of certain category but rather the design which may be applied to or embodied any sort of articles or products.

Question 27

What does Article 3(b), 3(c) of the REGULATION 6/2002 (=Article 1 of the Directive 98/71) talks about ?

Answer 27

It talks about a product and a complex product.

(b) “product” means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs;
(c) “Complex product” means a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product.

Question 28

Why are functional features denied protection under the design regime?

Answer 28

Functional features are often denied protection under the design regime. Reasons for that are numerous. One of them is the desire to avoid a monopoly of technical solutions and to avoid an overlap with the subject matter of patent protection.

Question 29

Why many regional and national laws contain such limitation of industrial design protection for design dictated essentially by technical or functional considerations?

Answer 29

Many regional and national laws contain such limitation, which performs a fundamental function (e.g. Art. 8(1) EU Regulation on Community designs and Art. 7(1) EU Directive on the legal protection of designs).

Question 30

What theories have been proposed and are currently applied at national and regional levels in respect of functional designs?

Answer 30

The first one considers «functional» a design which is mandatory to obtain a technical function. It is also known as the multiplicity-of-forms theory
The second theory deems «functional» a design which is dictated only by technical considerations, also known as the causality theory.

Question 31

What is “must fit” feature of design functionality?

Answer 31

Must fit features are those which must necessarily be reproduced in their exact form and dimensions in order 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

Question 32

What is “must match” feature of design functionality?

Answer 32

Must match features of an article are «dependent upon the appearance of another article of which the article is intended by the designer to form an integral part» (art. 213 UK CDPA). In this case, there is no technical functionality at all.

Question 33

How do “Must Fit designs” differ from “Must Match Designs”?

Answer 33

While «must fit designs» do not receive protection in many countries, the situation is quite the opposite in respect of «must match designs».

Question 34

What is the requirement for protection of Design?

Answer 34

As provided in Article 25, section 1 of TRIPS:

“It’s a requirement of all industrial design laws that protections through registration shall be granted only to designs which are novel and/or original.”

Question 35

What is a qualified standard of novelty?

Answer 35

A qualified standard of novelty is sometimes required, the qualification may relate to time, meaning that novelty is judged by reference to designs published within a limited preceding period of time; or may relate to territory, meaning that novelty is judged by reference to all designs published within the relevant jurisdiction, as opposed to anywhere in the world; or may relate to means of expression, meaning that novelty is assessed by reference to written or tangible disclosures anywhere in the world and to oral disclosures only within the relevant jurisdiction.

Question 36

What are the broad policies in favor of a qualified standard of novelty?

Answer 36

The broad policy argument in favour of a qualified standard of novelty is that one purpose of design registration is to encourage new design within the relevant jurisdiction, so that a novel design registered within that jurisdiction should not be deprived of protection by the publication elsewhere of a design which its originator did not introduce into the jurisdiction to add to the designs available to industry.

Question 37

When i disclosure of a design to a third party is taken into account?

Answer 37

The disclosure of a design to a third party under a condition of confidentiality does not destroy the novelty of the design. A design is considered to have been made available to the public if it has been published (e.g. following registration), exhibited (e.g. at fairs), used in trade or in any other way disclosed (through the internet, in a catalogue or a magazine, etc.). Almost any disclosure of the design anywhere in the world and at any point in time will be taken into account.

Question 38

What is a safeguard related to community guide under Art. 7?

Answer 38

The design will not be deemed to have been made available to the public if specialised circles within the EU in a given sector are unaware of the design or if only specialised circles outside the EU have knowledge of a particular design. This “safeguard clause” excludes from prior designs worldwide but obscure disclosures.