Attacking a Design – Protectyourdesign.com

Protectyourdesign.com – A launch!

Lawdit has launched protectyourdesign.com which is designed to allow design protection to be maintained internally – a do it your self library – you upload your work. Its a good source to identify origin, and it cannot be copied!

The law recognises that the point of design protection must be to reward and encourage good product design by protecting the skill, creativity and labour of product designers. Compare this to the work of artists. The difference between a work of art and a work of design is that design is concerned with both form and function. However design law is not seeking to reward advances in function.  That is the sphere of patents.

Registered Designs Act 1949 (as amended) (the ‘Act).

The Act is relevant to all design cases.

Section 11ZA(1)(b) of the Act reads as follows:

“(1) The registration of a design may be declared invalid
(a) […]
(b) on the ground that it does not fulfil the requirements of sections 1B
to 1D of this Act…”

Section 1B of the Act, requires that a registered design be new and have individual character.

Section 1B reads as follows:
“(1) A design shall be protected by a right in a registered design to the extent
that the design is new and has individual character.

(2) For the purposes of subsection (1) above, a design is new if no identical
design whose features differ only in immaterial details has been made available to the public before the relevant date.

(3) For the purposes of subsection (1) above, a design has individual character
if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the relevant date.
(4) In determining the extent to which a design has individual character, the
degree of freedom of the author in creating the design shall be taken into
consideration.
(5) For the purposes of this section, a design has been made available to the
public before the relevant date if –
(a) it has been published (whether following registration or otherwise),
exhibited, used in trade or otherwise disclosed before that date; and
(b) the disclosure does not fall within subsection (6) below.
(6) A disclosure falls within this subsection if –
(a) it could not reasonably have become known before the relevant date
in the normal course of business to persons carrying on business in the
European Economic Area and specialising in the sector concerned;
(b) it was made to a person other than the designer, or any successor in
title of his, under condition of confidentiality (whether express or implied);
(c) it was made by the designer, or any successor in title of his, during
the period of 12 months immediately preceding the relevant date;
(d) it was made by a person other than the designer, or any successor
in title of his, during the period of 12 months immediately preceding the
relevant date in consequence of information provided or other action
taken by the designer or any successor in title of his; or
it was made during the 12 months immediately preceding the relevant
date as a consequence of an abuse in relation to the designer or any
successor in title of his.
(7) In subsections (2), (3), (5) and (6) above “the relevant date” means the date
on which the application for the registration of the design was made or is treated
by virtue of section 3B(2), (3) or (5) or 14(2) of this Act as having been made.
…”

Relevant Case Law

Birss J. in paragraphs 31 to 59 of his judgment in Samsung v Apple [2012] EQHC 1882 (Pat):

What is an informed user?

“The informed user.  The designs are assessed from the perspective of the informed user. The identity and attributes of the informed user have been discussed by the Court of Justice of the European Union in the followng cases

PepsiCo v Grupo Promer (C-281/10P) [2012] FSR 5 at paragraphs 53 to 59 Grupo Promer v OHIM [2010] ECDR 7, (in the General Court from which PepsiCo was an appeal) and Shenzhen Taiden v OHIM, case T-153/08, 22 June 2010.

So who is an informed user?

i) He (or she) is a user of the product in which the design is intended to
be incorporated, not a designer, technical expert, manufacturer or seller
(PepsiCo paragraph 54 referring to Grupo Promer paragraph 62;
Shenzhen paragraph 46).

ii) However, unlike the average consumer of trade mark law, he is
particularly observant;

iii) He has knowledge of the design corpus and of the design features
normally included in the designs existing in the sector concerned

iv) He is interested in the products concerned and shows a relatively high
degree of attention when he uses them (PepsiCo paragraph 59);
v) He conducts a direct comparison of the designs in issue unless there
are specific circumstances or the devices have certain characteristics
which make it impractical or uncommon to do so (PepsiCo paragraph
55). I would add that the informed user neither (a) merely perceives the designs as a whole and does not analyse the details, nor (b) observes in detail minimal differences which may exist (PepsiCo paragraph 59).”

What is Design freedom ?

In Dyson Arnold J. summarised that passage from Grupo Promer as follows:
“design freedom may be constrained by (i) the technical function of the
product or an element thereof, (ii) the need to incorporate features
common to such products and/or (iii) economic considerations (e.g. the
need for the item to be inexpensive).

The degree to which a feature is common in the design corpus is a relevant consideration. At one extreme will be a unique feature not in the prior art at all, at the other extreme will be a banal feature found in every example of the type. In between there will be features which are fairly common but not ubiquitous or quite rare but not unheard of. These considerations go to the weight to be attached to the feature, always bearing in mind that the issue is all about what the items look like and that the appearance of features falling within a given descriptive phrase may well vary.

The Relevant Date
The relevant date is the application date for the registered design.

For further information concerning Designs, and Protectyourdesign.com please contact Michael Coyle

michael.coyle@lawdit.co.uk    07976724258

 

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