Definition of a CUDR
Dealing firstly with the CUDR, Article 3(a) defines a design as follows: “’design’ means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.”
The definition is wide, for example in an item of clothing the definition would include the collar size, the pattern, embroidered features (such as button holes), and possibly the layout of the colours.
In applying the definition set out in Article 3(a) the scope of the words “appearance” and “product” must be looked at.
“Appearance” & “Product”
The word appearance under the Regulation is limited to the visual appearance.
The word “product” means: “any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs.” The Regulation does not provide a definition of the word “item” nor does it define the words “industrial” and “handicraft”. The Regulation provides a set of a number of designs which are excluded from the definition of a design under the Regulation.
Excluded designs: Under the European Regime
Before considering the requirements of a CUDR you will first look to the excluded types of designs. These exclusions are (1) designs dictated by function; (2) interfaces; (3) design contrary to public morality.
Products dictated by technical function
A CUDR does “not subsist in features of appearance of a product which are solely dictated by its technical function”. This article needs to be construed carefully, in that the article is not saying that these types of features are not designs instead a CUDR will not subsist in such features, therefore it may be possible for features dictated by technical function to be included within a design. However, note that such features should not be taken into account when assessing novelty and individual character. Recital 10 says this: “Technological innovation should not be hampered by granting design protection to features dictated solely by a technical function. It is understood that this does not entail that a design must have an aesthetic quality. Likewise, the interoperability of products of different makes should not be hindered by extending protection to the design of mechanical fittings. Consequently, those features of a design which are excluded from protection for those reasons should not be taken into consideration for the purpose of assessing whether other features of the design fulfil the requirements for protection”. (Emphasis added).
The first question is: which features of the shoe can be excluded from an assessment of novelty and individual character? One of the key words in such an assessment is the word “dictated” – how wide is it? The word dictated is preceded by the word “solely” this shows that “dictated” should be applied strictly and narrowly. It seems to me that the question is: whether the designer exercised a degree of choice in the design.
Looking at any shoe design it is clear that a shoe must have:
a circular space at the top of the shoe not only to allow the foot to enter the same but also to fit around (above or below as the case may be) the ankle of the foot. There must be a space into which the foot will go.
There would be no CUDR in the above due to them being solely dictated by technical function. As a side note I do not consider the way in which a shoe is secured to the foot to be solely dictated by technical function because slip-on shoes do not have a section which secures the shoe to the foot usually the section surrounding the foot is sufficiently tight to achieve a secure fit. Also due to there being numerous ways in which a shoe can be secured to the foot I do not consider that such securing methods are caught by article 8(1) of the Regulation.
The requirements for protection
By article 3 of the Regulation the appearance of product is protected to the extent that it is new and has individual character. Article 5(a) of the Regulation provides that “a design shall be considered to be new if no identical design has been made available to the public: (a) in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public.”
So the first question is whether an identical design has been made available to the public before the date on which the design for which protection is claimed has first been made available to the public. The word “identical” under article 5(a) is a misnomer because article 5(2) provides that “designs shall be deemed to be identical if their features differ only in material details.” So the fact that Ash’s trade name is affixed to the heel of the shoe above the wedge will be immaterial to an assessment of whether another shoe is identical to the same. Before addressing whether there are any identical shoes circulating before the date when the ASH shoe was first released to the public, one must find the date when the ASH shoe was first released.
When was the shoe first released its important to note this as a design will only be protected for three years from the date on which the design was first made available to the public.
A CUDR must have individual character. “A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such user by any design which has been made available to the public…before the date on which the design for which protection has been claimed has first been made available to the public.”
The “informed user” is not addressed in detail under the regulation. Lord Justice Jacob in The Procter & Gamble Company v Reckitt Benckiser (UK) Limited provided a short discussion of the nature of the informed user. Lord Justice Jacob said this: “He/she is clearly not quite the same sort of person as the “person skilled in the art” of patent law. The equivalent to that person in the field of design would be some sort of average designer, not a user .”
Furthermore, recital 14 of the Regulation says this: “The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.”
Commenting on recital 14 Lord Justice Jacob said this: “… a user who has experience of other similar articles will be reasonably discriminatory — able to appreciate enough detail to decide whether a design creates an overall impression which has individual character and whether an alleged infringement produces a different overall impression”.
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