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	Method or principle of construction s.213(3)(a) process or operation by which shape is produced as opposed to shape itself eg. Umbrella case - shape can be protected but not method of stitching ‘must-fit’ s.213(3)(b)(i) similar to must fit for RD’s, can’t just be that design because it needs to be eg. Shape of back of contact lens ‘must match’ s.213(b)(ii) excludes features of shape or configuration of article which are dependent on appearance of another article of which the article is intended by the designer to form an integral part. Nb different to must fit as concerned only w/appearance of objects and not their funtionality. Eg design of car body panels Surface decoration s.213(3)(c) of any kind, anything in 2D such as a colour or pattern or embossed design but may have RD or C
Ownership	S.215 person who creates design is designer s.214(1) Designer will usually be 1st owner of UDR s.215(1) subject to: E’ee in course of e’ent - belongs to e’er s.215(3) If commissioned, belongs to commissioner s.215(2) Nb like RD and unlike C
Duration	S.216 will last for either 15 yrs from end of calendar yr design was first recorded in a design doc or article made to design (whichever first); or If design is commercially exploited (w/consent of designer) w/in 5 yrs of creation, 10 yrs from end of yr the sales of article started

Stage 2

Infringing act

A party will be liable if they do something that is exclusive right of owner or have authorised someone to do something that is excl right of owner.
2 x infringing acts:
Marking articles to the design s.226(1)(a) and
Recording the design in a design doc s.226(1)(b)

A new design doc (eg a drawing) of design will infringe if it is made for the purpose of making a copy of article.

Stage 3

Causal link

Can be established by proving D has had

access to design; and
That there is identity or substantial similarity between the design and infringing article [objectively similar]

Stage 4 and 5

Stage 5 - Remedies

S.229(2) if cl establishes infringement then: damages, account of profits, injunction or other remedies.

Additional remedies in CPDA include: delivery up and disposal of infringing articles

Copyright vs Reg’d Design

	Copyright	Reg’d Design
Ads	automatically unreg’d right Longer protection period (70 yrs)	easy to prove infringement as reg’d Long protection period (5-25 yrs) Easier to enforce
Disads	harder to prove infringment Difficult to enforce	- needs to be reg’d

s.51 CPDA

Limits the application of dimensional shift copying in s.17(3) by essentially providing if a party copies a 2D artistic work directly into 3D form, it will only be infringement of C if 3D item that copier has produced is an artistic work in its own right.

Is 3D article an artistic work in its own right? Eg sculpture, architecture, artistic craftsmanship

No - no infringement of C in drawing

Yes - C in drawing infringed

s.52 CPDA

If an artistic work industrially exploited [ie. By making over 50 copies] by making an ‘article’ and marketed, period of protection falls to 25 yrs but only for certain infringements. These are the making of an article or copying a design...

#8610 - Rights Protecting Product Designs - Commercial and IP

Sources

Types

Aims

Registrability of designs

What is a design?

What is a product?

Requirements for registration

What does ‘new’ mean?

Exceptions

What does ‘individual character’ mean?

Exclusions from registration

Authorship and ownership

Duration

Infringing act

Comparison of designs

Stage 4 - Defences

Stage 5 - Remedies

Background

Source

What is a design?

Criteria for protection

Originality

Fixation

Exclusions

Ownership

Duration

Infringing act

Comparison

Causal link

Stage 4 - Defences

Stage 5 - Remedies

Copyright

Reg’d Design

Ads

Disads

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