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LPC Law Notes International Intellectual Property Notes

Unit 6 – Design Rights Notes

Updated Unit 6 – Design Rights Notes

International Intellectual Property Notes

International Intellectual Property

Approximately 135 pages

A collection of the best International Intellectual Property notes the director of Oxbridge Notes (an Oxford law graduate) could find after combing through dozens of LPC samples from outstanding students with the highest results in England and carefully evaluating each on accuracy, formatting, logical structure, spelling/grammar, conciseness and "wow-factor". In short these are what we believe to be the strongest set of International Intellectual Property notes available in the UK this year. This...

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Unit 6 – Consolidation IP DESIGN RIGHTS

Registered Design Rights (RDR)
What is protected? New designs for manufactured items
What benefit is there? Monopoly right
How is it obtained? Registration
How long does it last? 25 years from registration
Unregistered Design Rights (UDR)
What is protected? 3-dimensional shapes and configurations
What benefit is there? Prevents copying
How is it obtained? Arises automatically (no registration)
How long does it last? 10 years in most cases (15 years maximum)

OUTCOME 1 – Analyse a clients design to see whether it is capable of design right protection:

Introduction – RDR v UDR

Both protect outward appearance of all or part of a product

  • not mutually exclusive, both can co-exist in the same design features, or protecting separate features in the same circle

  • RDR design must be new – UDR design must be original

  • UDR more akin to

  • Ownership – as for but designs commissioned for money or moneys worth

  • Economic right, intended to protect investment made in the design, person who pays for design should own the right (in contrast to which was originally to protect creative input)

RDR:

  • req for individual character

  • monopoly right to use design

UDR:

  • Can protect functional items

  • Doesn’t protect surface decoration

  • Right to prevent copying
RDR

Protects the visible, external appearance, during ordinary use, of all or part of a product (not always the whole of an article that will be protected)

Registered Design – s.1(2) RDA 1949 – appearance of whole/part of product resulting from features of, lines, contours, shape, texture, materials of product itself and its ornamentation

Product – s.1(3) – Any industrial or handicraft item other than a computer programme and in particular, includes packaging, get up, graphic symbols, typographic type face and parts intended to be assembled into a complex product
Requirements

Design must be new and have individual character s.1B(1)

New – s.1B(2) – If no identical design or no design whose features differ only immaterial details has been made available to the public before the relevant date

  • Test is one of whether design is available to the public:

    • S.1B5-7 – the time at which novelty test must be met is when the app to reg is first filed

    • s.1B(6)(a) – the public is likely to mean the purchasing public and the business community throughout the EEA

  • New? Depends on whether any largely identical designs already exists in the prior art in the sector concerned. Sort of designs which are already known of or in use at that date, both by B and persons carrying on business in the sector concerned s.1B(6)(b)

  • Sector concerned? Green lane products v PMS international 2007- sector in which the prior art is located rather than the particular product sector for which the new reg was applied

  • Prior art? Probably extends to almost any design, wherever in the world that is available within the EEA

Individual character – s.1B(3) – if the overall impression it produced on informed users differs from overall impression produced on such a user by any design made available to the public the relevant date

  • Question of evidence as to overall impression made upon informed user – a person familiar with the designs used in the sector in question

  • J Choo v Towerstone 2008 – real qu8estion is whether the creator of new design has taken adv of any freedom of design that is available to him to make his new design different from what is already available. If not the new design probably wont have individual character s.1B(4)

  • In many cases individual character doesn’t add much to novelty requirement

  • Looks similar to the not commonplace req in UDR but also a clear echo of the req that a RDR be new

Proctor and Gamble v Reckitt Benckiser 2007Proctor and Gamble v Reckitt Benckiser 2007 – guidance on overall different impression

  • Different impression is sufficient and it does not need to be clearly different

  • Notional informed user would be taken as being fairly familiar with design issues

  • Court should ask whether overall impression of each design was different

s.1B(6) – some existing designs ignored

- if designer published design in last 12 months before reg this wont prevent it being new or having individual character

s.1B(8) – Component parts of complex products may not have individual character
Grace period of 12 months

Designer may disclose design to others without affecting its novelty or its individual character in an app for reg at end of 12 month period s.1B(5)(6)

  • There is no right to claim infringement before the design has been granted reg – s.7A(6)

  • Still important to keep evidence of date of creation in case someone else claims during 12 month period that they created the design
Design features that CANNOT be protected

Technical function – s.1(c)

  • May not reg features dictated solely by the products technical function (rare) [e.g. dressmakers crimping shears]

Interface features – s.1(c)(2)

  • May not reg features that are compelled to be of a certain exact shape in order to be fit into (so that either or both products can perform their proper function)

  • Does not apply to features that allow for assembly or connection of mutually interchangeable products within a modular system (similar to must fit exclusion for UDR except for the above exception (therefore slightly narrower)

  • There is no equivalent to the must match exclusion for UDR
Designs that can now be protected

Spare parts – s.1B(8)(9)

  • Possibly to reg a design for a spare part, provided the part is visible during the normal use of the whole product

  • E.g. car aerial would be registrable but oil filter would not

  • A design reg cannot be used against someone supplying spare part for the repair of a complex product, so as to restore its original appearance (BUT care would have to be taken to avoid reproducing marks or logos that would infringe TM’s and passing off
Scope of the right

  • Proprietor has the exclusive...

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