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LPC Law Notes Commercial and IP Notes

Rights Protecting Product Designs Notes

Updated Rights Protecting Product Designs Notes

Commercial and IP Notes

Commercial and IP

Approximately 100 pages

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Rights protecting product designs (Design Right and Registered Design)

Sources

  • Rights in reg’d design are protected as monopoly rights under Registered Designs Act 1949 (‘RDA’)

  • Also EC dimension now

Types

 Go on IPO website - browse by product type

Aims

 To encourage and protect innovative designs

Registered Design

Stage 1 - Validity and Ownership Q

Registrability of designs

 Set out in s.1 to 1D

What is a design?

  • s.1(2) a design = “the appearance of the whole of a 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.”

  • Eg. ‘whole of part of a product’ - arms or back of chair

  • ‘lines, shape, contours’ - Alessi lemon juicer

  • ‘ornamentation’ - pattern on a dinner service

  • ‘pattern/texture’ - embossed wallpaper, woven textiles

What is a product?

 - s.1(3) a product may be an ‘industrial or handicraft’ item. Therefore, some items have protection of RDA (if reg’d) and CPDA automatically

Requirements for registration

 - s.1B(1) design must be new and have individual character and must not fall w/in stat exclusions

What does ‘new’ mean?

  • s.1B(2) - there must be no other identical designs (or designs whose features differ only in immaterial details) made available to public before relevant date

  • Meaning of ‘available to public’ is v wide s.1B(5), includes disc @ an exhibition or trade fair

  • Before seeking to register, app’t must:

  • Ensure that they haven’t made design available to public; and

  • Check their design isn’t exactly the same or virtually identical to someone else’s

Exceptions

  • Grace period s.1B(6)(c) and (d): the owner of design has a 12 month period during which they can put a product on the market before registering the design. They can apply for registration after this, providing the 12 month period hasn’t expired. However, the product will not be protected by registered design during grace period - the owner will have to rely in the meantime on UDR. Secondly, if a 3rd party independently discloses a ‘virtually identical’ design in that period, the design will not be new @ time of application.

  • Confidential disc s.1B(6)(b) - disc of design under conditions of confidentiality will not destroy design’s novelty

What does ‘individual character’ mean?

  • S.1B(3) states that the overall impression made by the design on the informed user must be different from overall impression of any earlier design already made available to public

  • IPO has said in guidance won’t be individual if it gives examiner sense of deja vu

Exclusions from registration

Even if design meets requirements of novelty and individual character, it might be excluded:

  • designs ‘solely dictated by product’s technical function’ s.1C(1)

  • ‘must-fit’ exception s.1C(2) any features of a product that have particular dimensions and form because they must allow connection to or placement in and around another product. Eg. A headlamp for a bicycle w/a particular clamp to fit on handlebars.

  • Designs contrary to public policy or morality s.1D

Authorship and ownership

S.2(3) person who creates it. Author will be 1st owner unless:

  • design created during course of e’ent are owned by e’er s.2(1B)

  • Commissioned designs owner by commissioner s.2(1A). Nb. Different to C where right stays w/author unless expressly decided otherwise

Duration

 - registration gives protection for an initial period of 5 yrs (s.3C(2) -s.8(1)) and can be extended under s8(2) for further periods of 5 yrs up to a maximum 25 yrs

Stage 2

Infringing act

S.7(2) provides a non-exhaustive list of activities that will constitute ‘use’:

  • making a product in which design is incorporated

  • Offering such a product or putting it on the market

  • Importing or exporting such products

  • Using such a product; or

  • Keeping stock of such products for any of those purposes

Generally, these acts will only infringe RDR if they are done for commercial purposes s.7A(2)(a)

Stage 3

Comparison of designs

Design used by D must be compared w/Cl’s design as registered. It is imp to obtain a copy of the design as it appears on IPO

Comparison is same test as individual character and informed user will again need to be a person who has knowledge re recent designs and trends w/in relevant field.

Stage 4 and 5

Stage 4 - Defences

Most imp stat defences are:

  • private acts done for non-commercial purposes s.7A(2)(a)

  • Use for experimental purposes s.7A(2)(b)

  • Use for teaching purposes (provided aknowledgement of woner of reg’d design is given and use of design is fair and does not unduly prejudice the normal exploitation of design s.7A(2)(c)

  • Use of component spare parts for repair of complex products (provision protects market in spare parts from being monopolised)

Separately, the D may argue that Cl has not made out its case or that design should never have been reg’d in first place

Stage 5 - Remedies

 Express provisions at ss.24A-D

Unregistered Design Right (‘UDR’)

Background

  • subsists like C w/o registration

  • Probs weakest IP right studied on module

Source

 Part III CDPA

Stage 1 - Subsistence and Ownership

What is a design?

S.213(2) provides that design means “the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article’

Nb. Here we are concerned with ‘article’ rather than ‘product’ (RPDA)

Doesn’t have to be appealing, can just be functional

Criteria for protection

  • originality

  • Fixation

Originality

- UDR subsists in ‘original design’ s.213(1)

  • must be original in sense that it is author’s own work and also

  • S.213(4) requirement that it is not commonplace in design field @ time of creation

  • ‘Design field in q’ = r’ably broad approach

  • ‘@ time of creation’ = time of cl’s creation, not infringement

Fixation

  • Design must be recorded in design doc or embodied in article s.213(6)

  • like C, UDR arises @ time of fixation

Exclusions
    ...

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