A more recent version of these Unit 6 – Design Rights notes – written by Cambridge And Oxilp And College Of Law students – is available here.
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Unit 6 - Consolidation IP DESIGN RIGHTS Registered Design Rights (RDR) What is protected?
What benefit is there?
How is it obtained?
How long does it last?
New designs for manufactured items Monopoly right Registration 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 (c)
- Ownership - as for (c) 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 (c) which was originally to protect creative input) RDR: UDR:
- req for individual character
- Can protect functional items
- monopoly right to use design
- Doesn't protect surface decoration
- Right to prevent copying 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 Requirement Design must be new and have individual character s.1B(1) s 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: o S.1B5-7 - the time at which novelty test must be met is when the app to reg is first filed o 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 o Different impression is sufficient and it does not need to be clearly different o Notional informed user would be taken as being fairly familiar with design issues o 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 Designer may disclose design to others without affecting its novelty or its of 12 months 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 Technical function - s.1(c) features that
- May not reg features dictated solely by the products technical function CANNOT be (rare) [e.g. dressmakers crimping shears]
protected 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 Spare parts - s.1B(8)(9) can now be
- Possibly to reg a design for a spare part, provided the part is visible during protected 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
Scope of the right
Exhaustion of rights UDRwould infringe TM's and passing off Proprietor has the exclusive right (subject to compulsory licensing by the crown under Sch1) to use the design and any design which does not produce on the informed user a different overall impression s.7(1) The effect includes the use of the design on any product 25 years maximum- s.8 Initial reg of 5 years renewable in 5 year periods First ownership of the design prima facie rests with the author (actual designer) s.2(1)
Exceptions a) if design create din course of employment then belongs to employer s.2(1) b) If design crated as a result of commission then belongs to commissioner s.21A (different to (c)
- Cannot be used to hinder parallel importing where the product has been put on the market within the EEA by reg proprietor, or with his consent
- Referred to in the CDPA 1988 as "design right"
Design - s.213(2) any aspect of the shape or configuration (whether internal or external) of the whole or part of the article
? comes into existence automatically when design drawing produced or article made to the design
? Difference to (c) - UDR is right in the concept of design not its physical rep, doesn't matter whether the design is represented in drawings or the physical article - it is the design itself that is protected Requirement Design must be original - s.213(1) - not commonplace in the design field in s question
- No right subsists unless the design is recorded in a doc or article made to the design - s.213(6)
- Must quality for protection within s.217 - depends on having qualifying connection to the UK via specified qualifying persons (designers and commissioners), qualifying countries (in which trading or legal residence established) or qualifying first marketing within UK/EU Originality - 2 aspects:
1. Should be original in the (c) sense of not itself being a copy
2. Commonplace in the design field in question - s.213(4) Commonplace:
- Farmer Build v Carrier Bulk materials Handling 1999 - putting a number of different commonplace features together can create a design that isn't commonplace
- Jo Y Jo v Matalan - flowers embroidered on vests was commonplace
- Occular Sciences v Aspects Vision care 1997 - design is commonplace if trite, common or garden or hackneyed o If design is same as all other designs which exist for products of the sort then not original`
- Dyson v Qualtex 2006 - original?
1. Look at whether whole of article is original, then
2. Unless there was a special point about a particular aspect take the view that each and every aspect of the design of that article was original o Stops people challenging designs by attempting to pick off features as piecemeal o Very good design (Dyson handle) didn't lose protection simply by becoming well known and recognised as good
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