Assessing Registered Design Law

Registered design legislation governed by the Registered Designs Act 1949 has been amended by the Copyright, Designs and Patents Act 1988 and Directive 98/71/EC. To assist with the concept of permitted registrations and to highlight the legislative differences, comparisons have been made with the following types of product:

Ornaments

Under registered design law in order for ornaments to obtain registration it is required to be shown that the appearance is both new and of individual character. Therefore caution is advised against previous or very similar copies that will defeat novelty.

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Mass Produced Goods

Although a particular design may be distinct, if this was due to the functionality of the product, method or principle of construction, or by virtue of production or use, then this would result in an exclusion from registration.

S.1B(4) provides that individual character is judged in accordance with design freedom and so similar designs are permissible where differences in detail exist. In addition, technical function is unlikely to apply as an exclusion where this may prevent asserting design right in the appearance of the product. Identical products may also presume registration provided they individually display distinct ornamentation or texture, thus providing individual character. Â

The traditional approach would have been to exclude functional goods from design protection. The new law does not require eye-appeal and so registration may still be possible where the appearance is not dictated by its function.

Whilst it would have been possible to register such designs under the old law, it is submitted that such registration is made easier by virtue of s.1(3) where ‘packaging’ and ‘get-up’ is specifically included within the term ‘product’.

Whilst registration of a design will provide protection for all products there is the procedural requirement that the application is filed stating the product to enable the assessment of novelty and individual character.

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Prior Art

The two essential criteria for registration are:

1. Novelty and

2. Individual Character.

Therefore an assessment must be made of the prior art before granting the monopoly of design right.Â

 This can be split into two areas:

 * The existence of an identical / similar design that has an earlier application date than another.

For assistance, s.1 B (2) states that identical or similar designs are to be considered such even where the differences in detail are immaterial. Although the wording is slightly different between the Directive and the Regulations, it is submitted that no difference in meaning is implied. In fact there is little variance to the old law and so UK law will maintain good precedent (see Household Articles Limited’s Registered Design [1998] FSR 676). Â

* The second area under s.1(4)(b) is that of prior publication. Â

Such publication may include the following:

a) Journals, trade catalogues, patent applications, etc

b) Public libraries

c) Use of proto-types in public in the absence of any confidential relationship

d) Market testing in the absence of confidentiality

e) Exhibiting designs without advance Certification from the Secretary of State

f) This is a non-exhaustive list and the courts will retain discretion.

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The following are examples where novelty is not defeated:

i) Previously used artistic work may enjoy novelty once applied to an article.

This is straightforward when one considers that an image enjoys copyright and is not a design until applied to a product

ii) Mosaics of prior art may not be utilised, unless there can be shown a causal link

iii) Old and pre-existing images applied for the first time to a anew article

iv) Combining known elements in a unique way and generally

v) Consideration is to be given to those elements considered significant and important by the consumer

vi) A 12- month grace period is allowable for market testing to the designer prior to application.

In addition to the above it is to be noted that Articles 4 – 6 of the Directive may be used to assist in determining a wide scope of what is included within the state of the art. Although a worldwide public availability is to be considered (as opposed to UK only under the old law) this will not include remote or unreasonable publication.

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Individual Character

The second and new test required to determine registrability is that of individual character. This will also require an examination of the state of the art at the time of the application. This has been compared to that of ‘common trade variant’ examined under the previous position. Therefore anything reproduced in a similar way to that commonly used in a particular trade will be found lacking individual character and not capable of registration. Â

To assist in determining individual character Recital 13 and s.1 B (4) can be interpreted:

§ The degree of design freedom to be assessed. Therefore where there is less freedom, the smaller the differences are required compared to the prior art to allow the design to have individual character.

§ Nature of the product the design is applied to.

§ The industrial sector to which the product is associated.

In essence s.1 B (1) is subjective in approach requiring assessment to be from an individual / consumer. This then has differed from that of the old law where the ‘instructed person’ having knowledge of that industry and article use that the design was applied to assessed prior art. Â

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nfringement

Both the Directive and the Regulations have enabled wider protection for the designer with a few similar and new provisions to that of old UK design law. Under ss.7 and 7A the rights of the designer and infringing acts are disclosed.

 Overall impression – it must be determined to what extent the infringing article gives rise to an identical or similar impression. Whilst it is acknowledged such designs may be construed narrowly in respect that it is to be the entire design considered, it cannot be ignored that where separate registered design applications have been sought for individual components the overall impression need not apply.

A list of general exceptions applies in respect of:

1. Private and non-commercial use

2. Experimental use

3. Teaching or citations

4. Use, spare parts and repairs for ships or aircraft temporarily based within the UK

Protection does not extend to articles used to repair a complex product so as to restore the overall appearance of the product. This continues the UK position of spare parts and the must match exception. However this provision has not been reflected in the Directive. Article 14 has allowed Member States to continue their own legal status quo. This will unlikely change within the three year period set out by Recital 19 when the Commission is required to report on the Directive’s impact and reassesses harmonisation. This is particularly irksome where the risk of disparity between Member States is likely, together with the missed opportunity to in fact harmonise the design laws at this stage.

A new albeit somewhat common provision within other European Intellectual Property rights has been extended to design law: exhaustion of (design) rights concept. Endorsed by Article 15, s.7 A (4) allows subsequent dealings not to infringe after the initial first right to market by the proprietor. It has been noted however, that two provisions to temper this use found under trade mark exhaustion principles are not present:

i. where subsequent use ‘reflects badly upon the proprietor’ and

ii. in the circumstance where replacement of a complex part is not for appearance but for reasons of functionality.

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Conclusion

Designers and marketing practices would be ill-advised to ignore this mode of IP protection, especially where a successful application effectively results in a monopoly right in that design, which, it is submitted, will provide wider brand protection than trade marks where strict liability will apply and the absence of a class system enables broader application. Although limited to 4 renewal periods of 10 years, this is potentially a very effective IP portfolio strategy and coupled with trade mark protection will further strengthen an owner’s grip when considering enforcement and infringement issues.

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