Week 8

Question 1

What it is the entitlement to rights?

Answer 1

The right to legal protection in respect of an industrial design belongs to the creator (or author or originator) of the industrial design.

Question 2

What is the entitlement to legal protection in respect of an industrial design that has been created by an employee>

Answer 2

the law usually provides that the entitlement to legal protection of the design shall belong the employer.

The basis for this rule is that the creation of the design falls within the duties which the employee is paid to perform, so that the employee should seek the reward for his creative activity in an appropriate level of remuneration, responsibility and other conditions of employment.

Question 3

What is the entitlement to legal protection in respect of an industrial design that has been created by contractor pursuant to a commission?

Answer 3

the thing for which the contractor is being paid is the production of the design for the use of the person commissioning the design.

Much contemporary design is produced with the assistance of computers. The question arises whether it can be said that there is an author or creator who is entitled to legal protection in respect of designs generated with the assistance of a computer. One approach to this question is to treat the computer like any other tool which may be used by a designer to assist in the process of generating a design.

Question 4

What it is designer attribution?

Answer 4

article 18 CDR (right of the designer to be cited) The designer shall have the right, in the same way as the applicant for or the holder of a registered Community design, to be cited as such before the Office and in the register. If the design is the result of teamwork, the citation of the team may replace the citation of the individual designers.

Question 5

What it is the right to the Community design? (the designer doctrine)

Answer 5

article 14 CDR

1. The right to the Community design shall vest in the designer or his successor in title.
2. If two or more persons have jointly developed oped a design, the right to the Community design shall vest in them jointly.

Question 6

Designs developed by an Employee

Answer 6

article 14 CDR

3. However, where a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to the Community design shall vest in the employer, unless otherwise agreed or specified under national law.

Question 7

The holder of a registered design can stop anyone using the design, regardless of whether that use results from copying that design.

Answer 7

True

Question 8

Under the Community Design Regulation the use of a registered design for private purposes is allowed.

Answer 8

True

Question 9

The Community registered design is infringed by acts done for experimental purposes.

Answer 9

False

Question 10

A registration may be challenged on the ground that the registered proprietor is not the proprietor of the design.

Answer 10

True

Question 11

A registration may not be challenged on the ground that the design does not meet the requirement of novelty.

Answer 11

False

Question 12

Where is the identity of the designer disclosed?

Answer 12

The identity of the designer is mentioned in the design application and disclosed in the register, for example under Article 18 of the Community Design Regulation the name of a designer is to be mentioned on the register.

Question 13

Whom does the right to legal protection wrt to an industrial design belong to?

Answer 13

The right to legal protection in the respect of an industrial design belongs to the creator of the industrial design, belongs to the designer. This basic principle that the right originates in the person of the designer is common to many national legislation, Community Design Regulation adopted also this principle.

Question 14

Who is entitled to a design?

Answer 14

The ownership of designs created by employees is usually granted to employers. This rule is common in different regimes of industrial property law.

Question 15

What is the rationale behind the employer as an initial owner?

Answer 15

An Employer is an initial owner of the design right. The rationale behind the solution is that the employer bears the costs and economic risk of the design development.
Also, under the EU law the rule, design right initially vests in the designer is subject to the exceptions specified in Article 14 Section 4 of the Community Design Regulation concerning designs made by the employees in the execution of the duties or following the employer’s instructions.

Question 16

How are the designs entitled?

Answer 16

Firstly, the ownership of designs created by employees is usually granted to employers. This rule is commonplace in different regimes of industrial property law.
Secondly, designs may be also developed in persons of commission. In the case of a commission, a designer organizes the process of design development independently as a self-employed person.

Question 17

Who regulates the ownership in commissioned designs?

Answer 17

National legislations may regulate the ownership in commissioned designs differently. Under some legislation, the entitlement to legal protection of the design created by a contractor pursuant to the commission may belong to the person who has commissioned to design, a commissioner.

Question 18

Who is the default owner for commissioned designs?

Answer 18

For Commissioned designs both, registered and unregistered, the default owner is the designer and not the commissioner, as it was previously the case in the UK.

Question 19

Who is the Designer under the Copyright Design and Patents Act 1988 (UK)?

Answer 19

A provision to this effect is to be found in Section 214 of the Act which states -

1. In this Part, the “Designer” in relation to design means the person who creates it.
2. In the case of a computer-generated design, the person by whom the arrangements necessary for the creation of the design are undertaken shall be taken to be the designer.

Question 20

What are the advantages of design registration?

Answer 20

It’s because the registration system confers a number of advantages on the design owner but also it is beneficial for third parties, in particular, it’s beneficial for competitors.
First of all, registration provides some certainty as to the object of protection in terms of giving notice to third parties.
Representation of the protected subject matter sets the boundaries of intellectual property protection. It identifies the object of protection. Moreover, registration informs about the designs priority over later designs.

Question 21

When are the unregistered designs legally protected?

Answer 21

Under certain laws, rights on designs may arise by the act of creation or fixation of the design in a document, a drawing or a photo, or just by embodying the design in an article or by making the design available to the public with using it on the market.

Question 22

When a claimant invokes informal protection od design, what is he obliged to prove

Answer 22

The claimant invoking informal protection of a design is obliged to prove the date from which the design is protected and his right to design as well as the identity of the design at issue, moreover, he is obliged to prove that an alleged infringer copied the design. They need to prove coping constitutes the fundamental difference between formal and informal design protection.

Question 23

How can the registered industrial design be obtained?

Answer 23

A registered industrial design can be obtained through an application filed at the national or regional office of the state or group of states where protection is sought. The application is subject to examination by the receiving office.

Question 24

How can anyone use a registered design?

Answer 24

Any person interested in using such a design will have the opportunity either to oppose the registration of the design for which application has been made, if the relevant law provides for an opposition procedure, or of bringing proceedings for the cancellation of the concerned registration.

Question 25

What is the examination system in the context of designs?

Answer 25

The alternative system («examination system») provides for a search of past designs and an examination of the design for which registration is sought to ascertain whether it satisfies the required conditions of novelty and/or originality.

Question 26

What is the procedure for design registration?

Answer 26

The registration procedure starts with the filing of an application before the competent national or regional office. This, in turn, requires the preparation of an application form, accompanied by the reproductions of the designs for which protection is sought.
One should always bear in mind that the protection of deposited designs is visual, so that only the features shown on the reproductions will enjoy protection.

Question 27

How are the registered designs communicated?

Answer 27

Registered designs are communicated through images (photos, drawings, CAD images).

Question 28

What is multiple design application?

Answer 28

The concept of “multiple design application” means that several designs may be included in a single application.

Question 29

What is Locarno Classification?

Answer 29

The Locarno Classification is a multilateral treaty administered by WIPO which sets up an international classification for industrial designs.

Question 30

How many classes and goods are mentioned in the Locarno Classification?

Answer 30

The Locarno Classification comprises a list of 32 classes, referring to some 6,831 indications of different kinds of goods.

Question 31

How is design registration generally published?

Answer 31

A design registration is generally published following the formal and/or substantive examination carried out by the office.
In the case of designs that are registered after the formal examination only (e.g. the Community registered designs which examination refers only to the correspondence with the definition of “design” and its contradiction with public policy or to accepted principles of morality), the office publishes the registered design upon registration.

Question 32

Why do some applicants wish to defer publication?

Answer 32

The deferment of publication permits the reconciliation of two conflicting objectives, namely obtaining a date of deposit (which marks the starting point of protection and which in the normal course presupposes the disclosure of the designs by publication) on the one hand, while at the same time keeping the designs secret from competitors.

Question 33

At EU Level, for how much duration, can a design be kept confidential?

Answer 33

In case of the registration at the EU level, it is possible to keep the design confidential for up to 30 months.

Question 34

Do a potential designer owner need to pay fees for registration of his design?

Answer 34

A design application is subject to the payment of various sets of fees which may depend on the number of designs and/or reproductions (in color or in black and white) included in the application.

Question 35

Does the fee for design registrations differ in different states?

Answer 35

The fees (in EUR) for filing an application to register a single design (single design registrations) in selected European countries and in the EU:
Austria: 87 EUR
Germany: 60 EUR (electronic submission) 70 EUR (by post)
Poland: 70 EUR (300 PLN)
Italy: 50 EUR
EUIPO: 350 EUR

Question 36

Explain the right to prevent others from exploiting an industrial design?

Answer 36

Generally, the right to prevent others from exploiting an industrial design usually encompasses the exclusive right to do any of the following things for industrial or commercial purposes: make articles to which the design is applied or in which the design is embodied; import articles to which the design is applied or in which it is embodied; sell, hire or offer for sale any such articles.

Question 37

What are the kinds of exclusive rights which can be enjoyed by the owner?

Answer 37

A registered design gives its owner the exclusive right to use the design in commerce for a given period of time and on the selected territory, subject to certain limitations provided for by the applicable law. Moreover, the owner of a registered design may dispose of it as an object of property. In particular, he can transfer his rights to an assignee or license them to one or more licensee.

Question 38

As per the EU laws, how can one use the design?

Answer 38

Under the EU design regime, the scope of the right conferred by registration is very broad and confers on the proprietor the exclusive right to use the design and to prevent any third party not having his consent from using it (Article 12 (1) EU Design Directive and Article 19 (1) CDR).

Question 39

What is the term of a period for the registered industrial design?

Answer 39

The term for a registered industrial design varies from country to country. The minimum term of available design protection stipulated in Article 26(3) TRIPS is 10 years. However, the usual maximum term goes from 10 to 25 years.

Question 40

Can a registered design be declared invalid?

Answer 40

A registered design may be declared invalid. The grounds for invalidity may be various (e.g. the design fails to meet the definition of the protectable design, or it is not novel or original, or it is in conflict with a prior registered design or the registered holder is not entitled to the design). A third party can invoke the invalidity of a design.

Question 41

Is there any limitation for an exclusive rights granted by a registered design?

Answer 41

The exclusive rights granted by a registered design may be subject to limitations. For example, according to EU law (Article 20 CDR and Article 13 EU Design Directive), a registered Community design may not be exercised to prevent e.g.: «(a) acts done privately and for non-commercial purposes; (b) acts done for experimental purposes; (c) acts of reproduction for the purpose of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source».

Question 42

How can the exclusive right of the design registration be subjected to exhaustion?

Answer 42

if a product embodying a registered design has been sold by the right holder or with his consent in the country where the registration has been granted (national exhaustion) or even in other countries (regional and international exhaustion), the exclusive right cannot be invoked anymore to control the subsequent distribution or use of the product.