frkelly design law handbook 2016

Design Law Handbook

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Contents

Foreword 3Introduction 5Designs in context 8Brief overview of the design registration system 10What is protectable as a design? 12What is a product? 16Design features excluded from protection 20Validity: what designs will the court uphold? 26Registered versus unregistered designs 36Unregistered designs 38Registered designs: obtaining a registration 42What type of rights do I have? 52Infringement 54Invalidity 56International design registration 60UK unregistered design right 62Design and other intellectual property rights 64Table comparing different IP rights 68

Contents

© 2016 FRKelly

Foreword

FRKelly would like to express their thanks to Sinead O’Donnell as the lead author in relation to this Design Law handbook. Sinead’s incisiveness and enthusiasm were instrumental in bringing this publication through to fruition. We believe that this handbook will be ideal for clients and their representatives who are either new to Design law or have some knowledge but would like to learn more about the subject. The European Regulation on Industrial Designs is still at its infancy and this handbook should enable the reader to grasp the concepts. By its very nature, this handbook is not a legal treatise on Design law. For a fuller and more comprehensive advice in relation to any aspect of Design protection, you are invited to liaise with your already established contacts within FRKelly or David Brophy ([email protected]) or Shane Smyth ([email protected]) who enjoy recognised expertise in the evolving arena of Design law.

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Foreword

The significance of industrial design cannot be underestimated. An exceptional design can transform even the most mundane product into a highly sought after commodity. Take the DYSON vacuum cleaner; a regular household appliance made instantly recognisable by an attractive industrial design. Famously, kitchen utensil company ‘Alessi’ designed a lemon squeezer which was featured in the Museum of Modern Art, New York, and retails for $100. One only needs to consider the phenomenal success of APPLE products to appreciate the impact of outstanding design. APPLE did not invent the computer, the smartphone or the tablet; they created a cult product by merging function with form. The simple, streamlined design of their products is undoubtedly a major contributing factor to their persistent market dominance.

Industrial design is not only relevant for businesses producing high end, luxury products. Design is increasingly playing a key role in the competiveness of all businesses. Advances in technology and functionality alone are no longer providing products with a competitive edge. The costs of creating, distributing and advertising a product are constantly decreasing due to increased global trade and the proliferation of technology, diluting traditional competitive advantages. Forward thinking producers are recognising the significance of design and are investing accordingly. It is estimated that for every €100 spent by a business on design, turnover increases by €225.

Introduction

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Introduction

A design is undoubtedly a valuable asset for any business producing products. It can be sold, licensed or used as security for a loan. It is essential that such an asset is effectively legally protected. How best to achieve this? Traditionally businesses have relied on trademark, copyright and patent rights to protect their intellectual property. As design becomes more significant a product’s design requires robust and specific protection. As a result the European Union Design Registration system is increasingly being recognised as an effective addition or alternative to the other categories of protection. The system provides a simple and relatively inexpensive way to protect the appearance of a product and offers particular advantages over other rights in specific circumstances. This handbook will explain how the European system works, what exactly can be protected and how to obtain the most effective protection for a design.

A simple and relatively inexpensive way to protect the appearance of a product

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FRKelly Designers Handbook

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Designs in context: other intellectual property rights

Design A Design Registration can be obtained to protect the appearance of the product as a whole, or specific parts of the product. In the case of DYSON, for example, a design registration may be sought for the transparent cylinder, a unique DYSON feature.

PatentA patent is used to protect technical inventions. A patent can be obtained to protect the technology that powers the DYSON. In their case one patent would cover in particular the ‘bagless cyclone’ technology.

CopyrightCopyright protects creative works. For instance, it can protect the product blueprints, user manuals, drawings, photos, surface decoration and embedded software.

TrademarkLogos are traditionally protected by trademark rights. A logo can also be registered as a design, affording it additional and sometimes greater protection.

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FRKelly Designers Handbook Designs in context: other intellectual property rights

Brief overview of the system

The European Design system is governed by the Community Design Regulation (6/2002) and protects designs for up to 25 years at low cost across the entire EU.

The Design Regulation gives the longest and strongest protection to registered designs, which are given 25 years protection.

In recognition of the short market life of designs in certain sectors (such as the fashion industry) the Regulation also protects unregistered designs for a period of 3 years. It is possible to obtain national design protection in Ireland under the Industrial Designs Act 2001. However the European system, providing protection throughout the entire European Union, is generally more attractive. The European system will therefore be the focus of this handbook.

• The Design Registration system is administered by the European Union Intellectual Property Office (EUIPO), formerly known as OHIM.

• EUIPO is the European agency responsible for managing the registered Community design and the registered EU trademark based in Alicante, Spain.

• By registering a design with EUIPO, it is possible to obtain uniform protection across the entire European Union with a single application, paying a single application fee.

• Obtaining a design registration is straightforward and simple; a certificate can be issued within 48 hours of application.

• It is essential to note at the outset that having a design registered with EUIPO does not automatically guarantee that the courts will enforce that registration. The courts will only uphold and protect valid designs; designs that satisfy the requirements laid out in the Regulation.

• EUIPO does not assess a design registration for validity; any application that meets the definition of a design will be registered, if the application is formally in order. The upshot of this is that many designs are registered that are not in fact valid for the purposes of the Regulation and therefore not entitled to protection from the courts.

• This handbook explains how to obtain valid registration and how to obtain the broadest possible protection for a design.

Registered designs are given 25 years protection

There are a few important points to note at the outset to better understand the functioning of the European system:

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FRKelly Designers Handbook Brief overview of the system

What is protectable as a design?

Design rights protect the appearance of a product. Any feature of a design that can be visually perceived, from the shape of the product to the pattern decorating it, can be protected.

Any design feature that cannot be seen cannot be protected. The way a product is made to smell, or a sound that it emits cannot therefore be protected by a design registration.

Design rights are intended to protect the appearance of a product. According to the Regulation, a ‘design’ is any feature that contributes to the appearance of a product. A non-exhaustive list of features that are protectable as a design are listed. These are lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. Both two dimensional aspects of a product design (like a surface pattern or colour combination) and three dimensional aspects such as the shape of a product can be protected.

A ‘design’ is any feature that contributes to the appearance of a product

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FRKelly Designers Handbook What is protectable as a design?

Paul Smith’s signature rainbow stripe.

ShapeThe shape of a product is a very commonly protected feature. Shape often becomes an important identifying aspect of a product which requires robust protection. Design rights are an excellent way of obtaining such protection. Bear in mind that it can be very difficult to obtain trademark protection for the shape of a product due to the requirement that a valid trademark must be distinctive.

MaterialThe material of a product is protected to the extent that it can be seen; the physical feel of a product cannot be protected. For example in the case of the dress opposite, it is the appearance that the velvet material gives the dress that can be protected; not the use of velvet as a design feature. This means that a design which appears identical to this dress but is made from a different material may infringe its design.

Texture Similarly the texture of a product can be protected insofar as it can be visually perceived.

Colour Protecting a design made up of a combination of colours is possible. A complex pattern made up of colours is protectable. For example Paul Smith’s signature rainbow stripe design (opposite, above right) is a registered Community design that would meet the definition of a design.

What does not qualify as a design?There are certain features that fall outside the definition of a valid design. Anything that does not pertain to the visual appearance of a product is not a feature of a design. A smell or fragrance cannot be registered as a design; neither can sounds or a sensation. Some of these exceptions cause similar difficulties in other areas of intellectual property law — for example a fragrance is not registerable as a trade mark as it cannot be graphically represented. Others however can find alternative protection; a sound (usually represented by musical notation) can be the subject of a trademark registration.

Lines, contours, colours, shape and texture are features that are protectable as a design

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What is a product?

The design must pertain to a product; essentially any man-made item. A living organism such as a plant is one of the few examples of things that fall outside the definition of product.

It is important to remember that design rights pertain to the appearance of a product. A product is defined in the Regulation as any ‘industrial or handicraft item’. Essentially all man-made items are products including buildings and houses. The definition includes the packaging and ‘get-up’ of the product and interestingly also typographical typefaces and graphic symbols.

By using the term ‘get-up’ in addition to the term ‘packaging’, the Regulation implies that broader protection is intended. As a result a number of design registrations aiming to protect the appearance of shop, bank and cafe interiors have been registered under ‘get-up’. In an area where it may prove difficult to find other intellectual property protection, design rights are an excellent way to protect the quirky design of a retail or hospitality space.

The inclusion of ‘graphic symbols’ in the definition of a product provided by the Regulation may be of particular significance on two fronts. The market for smartphone apps is moving toward $25 billion per year. Apps are easy to develop (and reproduce)

and usually free or very cheap to download, making the lucrative market fickle. With endless apps performing similar functions, the design of an app and its interface are often crucial to its success. Obtaining effective protection for the ‘look and feel’ of an app is therefore of paramount importance. Registering the appearance of the app as a graphic symbol under the Regulation is an excellent way to protect its unique design. By way of example, there are thousands of weather apps on the market. Design is often the key factor in the success or failure of such an app.

A logo can also be registered as a ‘graphic symbol’. Logos are traditionally protected by trademark rights. Registering a logo also as a design provides distinct advantages. Crucially, when registered as a design the protection is not tied to particular goods or services (as it is for a trade mark registration); a logo registered as a graphic symbol will, if valid, prohibit use of a similar-looking logo on any product.

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FRKelly Designers Handbook What is a product?

Logos can be effectively protected by a design

registration in addition to trademark.

What does not qualify as a product for the purpose of the Regulation?

The definition of “product”, like design, is very broad. However items that are not man-made would not be considered products. People, animals, crops and plants fall outside the definition of a product. Bear in mind that the Regulation is intended to protect the visual appearance of a product only; although the graphic interface of computer programs and apps can have protectable elements, the underlying software will not be protectable under the design system (though it may be patentable or protected by copyright).

A hospitality space can be protected with a design registration

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Design features excluded from protection

Design rights are intended to protect the ‘look and feel’ of a product. Complex products are products capable of being disassembled and reassembled, often to replace component parts. Those component parts are not protected by design rights, unless they are visible when the product is being used.

Designs features that are dictated solely by the function of the design are excluded from protection.

Where a product feature must be a particular shape in order to interfit with another product, that feature will not be protected by design rights.

Design features not clearly discernable from the design registration are not protected.

No design rights will subsist in designs or objects that offend the accepted principles of morality.

A chocolate bar is not a “complex product”, at least in design law.


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in normal use, the end user stands behind the lawnmower and therefore sees principally the upper side. The upper side therefore determines the overall impression of the engine. Although all of the following images were registered, any design feature that is not seen while the end user is standing behind the lawnmower using it is not protected by design rights.

Dictated by Function:Design rights are intended to protect the visual appearance of a product. How a product functions is more appropriately protected under patent law.

For that reason, aspects of a product’s appearance that are dictated solely by its technical function cannot be protected by design rights. Essentially, the court will ask whether the designer, when designing a particular feature of a product, had anything in mind other than technical function. If there were no other considerations, i.e. the designer was not designing the feature to improve appearance, then that

feature is excluded from protection. If all the features of a product are excluded in this way, then the product is not protectable. It is clear from the Regulation that a product may have features of appearance and features of technical function. Only those features dictated by technical function are excluded from protection. In the vast majority of instances there will be some features of a product’s design that are not dictated by technical function that can be protected by design rights.

For example, no design rights could subsist in the features of the ‘fluid distribution apparatus’ on the next page (page 24). The design features claimed were considered to be dictated solely by their technical function (R 211/2008-3)

InterconnectionsWhere a design feature must have a particular shape in order to interfit with another product no design rights will subsist in that feature. Similar to the restriction on the protection of component parts, the aim is to

We have now established what a design is and what qualifies as a product capable of design protection. However not all design features can be protected by design rights.

Component PartsThe Regulation explicitly excludes component parts of complex products from design protection. A complex product is one that is made up of multiple components which can be replaced following disassembly and reassembly of the product.

A car is the traditional example provided as a complex product with components part that can be (and are regularly) removed and replaced.

A component part of a complex product is afforded design protection only if it can be seen during normal use of the product. Design protection is intended to protect the appearance of a product; if a part cannot be seen it is generally not protectable. The intention is that the production of invisible spare parts of a product is not monopolised by one business, and to ensure a viable and healthy aftermarket for spare parts.

The issue of component parts and visibility during use applies only to complex products. A complex product must first fit the definition of a product (‘industrial or handicraft item’) and must also be composed of parts which can be replaced following disassembly and reassembly.

To help identify a complex product, ask yourself, can the product be put back together after it has been taken apart?

A chocolate bar, for example, is not a complex product, despite the fact that it may be made up of many parts. It cannot be put back together after it’s been taken apart. It cannot be disassembled, component parts replaced, and reassembled. In the case Biscuits Poult SAS v OHIM, the applicant argued that the chocolate filling in the middle of a cookie became visible during ‘normal use’ of the product i.e. in the course of consuming the biscuit and should therefore be taken into consideration when assessing the novelty and the individual character of the design.

This argument was rejected. Whether or not a part of a product is visible during normal use is only relevant if that part of a product is a component part of a complex product. The court held that a biscuit is not a complex product because it is not composed of multiple components which can be replaced permitting disassembly and re-assembly. As a result, whether or not the chocolate filling is visible in ‘normal use’ is not relevant.

What qualifies as ‘visible during normal use’?Normal use means use by the end user. A case arose in front of the General Court concerning the engine of a lawnmower. The court found that

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FRKelly Designers Handbook Design features excluded from protection

Fluid distribution apparatus.

LEGO modular system.

prevent the use of design protection to monopolise the market in inter-operable products. This provision primarily affects complex products but does equally apply to parts that are economically independent. The classic example of a design feature excluded from protection is the part of a wing mirror that must be a particular shape in order to fit onto the car. Although design rights will subsist in the appearance of the mirror and its casing, the part which fits onto the car will be excluded. It is unlikely that the whole design of a product will be a mechanically connecting feature and so design rights will very often subsist in other features of a product that contains mechanical connecting features.

There is an exception to this rule, relating to modular products. The rule is intended to allow products to be used interchangeably where possible – if one could protect the design of the part of the wing mirror that fit onto the car a design owner could have a monopoly over wing mirrors for that model of car.

For that reason, if an interfitting feature allows multiple assembly of mutually interchangeable parts within a modular system, that interfitting feature may be protected by design rights. EUIPO gives the example of tables that are designed in such a way as to allow them to stack with other tables. Although these tables will be a certain shape in order to ‘fit’ they will not be excluded from design protection.

LEGO and DUPLO are other classic examples of a modular system. The opposite (lower right) design registrations owned by LEGO would therefore not fall foul of the ‘interconnections’ exclusion.

MoralityOffensive designs should not, according to the Regulation, be afforded design protection. An objection can arise based on the nature of the object itself or on the nature of the design such as racist or religious symbols or degrading images. EUIPO can reject a design registration for a design it deems to be obscene or offensive although such an objection is not common. A design can be in poor taste (and still be registrable) as long as it is not actually offensive or obscene.

Design rights are intended to protect the visual appearance of a product

If an interfitting feature allows multiple assembly of mutually interchangeable parts within a modular system, that interfitting feature may be protected by design rights.

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Design features excluded from protectionFRKelly Designers Handbook

Validity: which designs will the courts uphold?

The courts will uphold valid designs. A valid design is one that is ‘new’ and has ‘individual character’. Novelty is established by comparing the design in question to previously disclosed designs.

Individual character is established by proving that the design in question produces ‘a different overall impression on the ‘informed user’ than a previous design.

When a design comes before the court it is presumed valid and the opposing party will have to rebut that presumption.

A valid design must be ‘new’ and must have ‘individual character’

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FRKelly Designers Handbook Validity: which designs will the courts uphold?

The owner of a design registration will not have access to the various remedies available under the Regulation unless it is valid as defined in the Regulation. Significantly that means a design right will not be enforceable against third parties if it falls short of that definition. According to the Regulation a valid design must be ‘new’ and must have ‘individual character’. In assessing individual character the degree of freedom enjoyed in designing the product is taken into consideration. Features of a design that are dictated by their technical function are not entitled to protection. A design may also be invalid if it conflicts with an earlier intellectual property right of another type.

NoveltyA design is considered novel or new if no identical design has previously been made available to the public. The test for novelty is relatively straightforward. Designs are considered identical if their features differ only in immaterial details. The features of a design listed in the definition would not be considered immaterial details. Therefore any non-trivial difference in texture, colour, contouring, lines, shape or material would most likely render a design ‘new’. This makes the novelty requirement easier to satisfy than the ‘individual character’ requirement discussed below. The test for novelty is an objective one.

In determining whether an identical prior design exists, all designs disclosed before the filing date of the registered design in question should be examined. The novelty of an unregistered design will be determined by reference to the date it was first disclosed to the public. There is a grace period of one year within which a designer can disclose his own design before filing without destroying its novelty.

In the case of registered designs the knowledge of the designer is not taken into consideration. This means that a design registration will be considered invalid for lack of novelty even if its designer created it entirely independently and without knowledge of a previously disclosed identical design.

Individual CharacterIn addition to novelty, a design must also have ‘individual character’. According to the Regulation a design will be considered to have 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 previously been made available to the public. In addition, to determine individual character the degree of freedom the designer had in developing the design is taken into consideration.

The individual character test is an objective one; it is based on the impression the design makes on the informed user.

It does not consider the skill needed to create the design it does not examine the conduct of the designer.

The court therefore has to decide what overall impression the registered design makes on the informed user, what overall impression the accused design makes, and whether these are the same.

The Informed User The informed user test is the key area of contention in determining the overall impression made by a design and therefore both invalidity and infringement. ‘Informed user’ is not defined in the Regulation; the courts have had to delineate the character of the informed user on a case by case basis.

The other main areas of IP law, namely patents and trademarks, have long had their own fictional users, whom the court uses when judging validity and infringement. In trade mark law, the most usual question is whether the “average consumer” would be confused by two different trade marks. That average consumer is not particularly careful and may confuse two trade marks when shopping in a hurry, for example. In patent law, in contrast, the question of whether or not an invention is obvious is judged from the point of view of a “skilled person” who is deemed to know of everything that has ever been disclosed in the particular technical field.

For designs, the Courts have settled on a definition of informed user which lies somewhere in between these two concepts. The informed user is a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question. With regard to the level of attention of the ‘informed user’ the CJEU stated in Pepsi Co Inc. v Grupo Promer Mon Graphic SA that the term ‘informed’ implies that the user, without being a designer or technical expert, knows the available designs in the sector and, because of his interest in the products concerned, shows a relatively high level of attention using these products.

The General Court summarised the character of the informed user concisely in the Pepsi Co case - “Informed users are not experts, but simply individuals who are

A design is considered novel or new if no identical design has previously been made available to the public.

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particularly interested in and attentive to such goods.”

In an Irish case involving ladies’ shirts and knit tops, Karen Millen Ltd. -v- Dunnes Stores & Anor., the judge described the informed user as follows:

“In summary, the notional informed user for the designs at issue is a woman with a keen sense of fashion, a good knowledge of designs of women’s tops and shirts previously available to the public, alert to design and with a basic understanding of any functional or technical limitations on designs for women’s tops and shirts.”

Degree of Freedom:The degree of freedom enjoyed by a designer in designing features of any particular product varies greatly depending on the technical function of the product, safety requirements, other legal requirements, etc. The degree of freedom enjoyed is highly relevant to the assessment of the individual character of the design. Where the designer’s freedom is constrained, even minor differences may be sufficient to produce a different overall impression on the informed user (bear in mind that where the design of a feature is dictated entirely by its function then no design protection will subsist. Where the designer has some freedom to design however, each minor difference may be significant).

The test for design freedom is an objective test; challenges peculiar to a particular designer (budget, for example) are not relevant. The degree of freedom is assessed by reference to the hypothetical designer of such products.

In assessing individual character the court will evaluate design freedom in the context of individual character.

In Case R 2194/2010-3 the court considered the degree of freedom enjoyed in designing a rocking chair (below).

The court found that the degree of freedom was limited to the extent that such chairs must be functional; they must at least include a seat with a back rest and be constructed in a way that allows the user of the chair to rock. However in relation to the materials used and the size and shape of the seat the designer enjoys great freedom. The functional requirement is fulfilled by any structure that allows the chair to rock.

Overall the court therefore found that the degree of freedom of the designer of rocking chairs must be considered as high. The degree of difference required to create a different overall impression on the informed user was therefore also high.

In Case R 953/2011-3 the court evaluated the extent to which design freedom was restricted in designing radiators for heating.

The court acknowledged that to fulfil its primary function a radiator needs to have a set of pipes through which liquid can circulate. The court found however that the technical function does not place a significant restriction on the shape and general appearance

of the radiator and its vertical pipes in particular. The court defined the degree of freedom as relatively wide in this case – a significant difference in design features was required to produce a different overall impression on the informed user.

An example of where a designer’s freedom was considered limited can be seen in Case R 979/2011-3 (overleaf, page 33, bottom) which concerned portable traffic warning signs. United Nations Regulation No 27 prescribes a certain appearance and a number of technical characteristics for all warning triangles. Any warning triangle which does not conform to the regulation will be banned from production and sale by the national authorities. As a result of the strict requirements of the regulation, the designer’s freedom is reduced significantly.

Examples of Individual CharacterThe following are a number of examples where the court found that the allegedly infringing design did not

The court defined the degree of freedom as relatively wide in this case

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produce a different overall impression on the informed user.

In Budziewski v OHIM, the registration of the design of a leaping cat (upper image) was invalidated because of Puma’s earlier well-known trade mark (lower image). The Court held that the later design did not produce a different overall impression on the informed user.

Similarly Community design 1512 633-0003 in respect of armchairs (opposite, left) was declared invalid by the Board of Appeal on the basis of the earlier design right 52113-0001 (opposite, right).

The cushions were not considered sufficient to create a different overall impression on the informed user.In this case (Decision R 969/2011-3) the Board of Appeal overturned a

lower decision which had concluded that the three cushions on the later design were sufficient to create a different overall impression on the informed user.

The Board of Appeal noted that the only limitation for the designer was the requirement that the chair have a seat, a backrest and two arms. Armchairs can take any combination of colours, patterns, shapes and materials. Accordingly the degree of freedom in designing an armchair was considered almost unlimited and minor differences in design features would not be sufficient to product a different overall impression on the informed user.

The Board of Appeal stated that the informed user would perceive the cushions as an accessory which could not be considered a significant part of the design in fact the informed user would focus mainly on the structure of the design. The later design was therefore declared invalid for lack of individual character. In joined cases C-101/11 P and C-102/11 P, an invalidity application based on an earlier trademark (opposite above) was ultimately rejected by the court, and the registered Community design (overleaf, above) was upheld as valid.

Design 1512 633-0003 Design 52113-0001

Case R 979/2011-3

The degree of freedom enjoyed is highly relevant to the assessment of the individual character


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The General Court considered the facial expressions of the two silhouettes fundamental characteristics that are remembered by the informed user. The court stated that the facial expression of the figure will determine the overall impression made on the informed user. It was held that the facial expression of the figure in the earlier trademark coupled with his position leaning forward will cause the informed user to perceive the figure as an angry character. The contested design was considered not to be characterised by any feeling.

The contested design was held to produce a different overall impression on the informed user than the earlier trademark and was therefore upheld as valid.

The presumption of validityA design registration application is not examined by EUIPO for the essential validity requirements before registration in the same way a trademark or a patent application would be. EUIPO simply ensures the registration meets the definition of a design and ensures that the design does not offend morality. EUIPO does not examine the registration for

individual character or novelty. There is no advertisement of the proposed design registration to allow parties with potentially conflicting rights oppose the registration. The system is therefore called a deposit system; once a registration fits the definition of a design it will be registered as a design. When a design is examined by the courts to determine its scope of protection, each registered design enjoys a presumption of validity. Thus the design is initially presumed to be novel and have individual character and the onus is on any third party challenging the design right to prove that it is invalid. The presumption applies to both registered and unregistered designs. This is a very attractive feature of the Regulation; each design that is registered is considered valid and that presumption must be rebutted by the opposing party in the proceedings. Despite the ‘presumption of validity’, clearly for a design registration to be effective it must be valid.

These figures were considered to create a different overall impression the informed user.

The General Court considered the facial expressions of the two silhouettes fundamental characteristics that are remembered by the informed user

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Validity: which designs will the courts uphold?FRKelly Designers Handbook

Registered and unregistered design rights.

The type of protection you choose will depend on the product market in question

Both registered and unregistered design rights provide distinct advantages. The type of protection you choose will depend on the product market in question. A community design registration protects against intentional and unintentional infringement and can last up to 25 years.

A design registration is easy to obtain and relatively inexpensive. It is therefore generally the recommended choice. In certain situations unregistered design rights are more appropriate however. Unregistered design rights are relied on most heavily in those industries having a large number of new designs, each with a short shelf life.

The following table illustrates the differences and similarities between the two different types of rights.

Community Registered Design

Unregistered Design

What does it protect? Protects the appearance of the whole or part of a product.

Protects the appearance of the whole or part of a product.

When does protection start?

On registration (application must be made within 12 months of first being made available to the public)

Automatically when product first made available to the public within the territory of the European Union.

Does it protect against unintentional infringement?

Yes – it protects the use of third party designs created entirely independently.

No – it only protects against direct copying.

How long does protection last?

Initial 5 year term is renewable every 5 years, up to a maximum of 25 years.

Maximum of 3 years.

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FRKelly Designers Handbook Registered and unregistered design rights.

Unregistered designs. Unregistered rights are relied on in industries with a high design turnover, like the fashion industry.

Unregistered rights last for 3 years from the date they are first disclosed.

They do not protect against innocent infringement.

The Regulation acknowledges that in particular sectors large volumes of designs are constantly being produced and those designs often have a short shelf life. In such circumstances the expense involved in registering designs may outweigh the benefits of a design registration. Such designs are conveniently still covered by the design Regulation in the form of unregistered rights. Unregistered rights are relied on in particular by the fashion industry where the design turnover is high; a product may only remain on the shelves for a matter of weeks but valuable design rights may subsist in the products in question.

Validity The validity of an unregistered Community design is assessed in the same way as a registered Community design, i.e. the design must be novel and have individual character at the time it is first disclosed to the public. An unregistered design enjoys the same presumption of validity as a registered design.

Duration Unregistered community designs have some similarities with registered community designs but there are a number of important differences worth noting. Registered designs can last up to 25 years; unregistered design rights last three years and cannot be renewed.

Date protection startsAs there is no filing date, the date the unregistered design is disclosed to the public becomes highly relevant, as the three year period of protection runs from that date. Crucially the first disclosure must occur within the European Union. A design first disclosed anywhere else in the world cannot be protected by an unregistered community design right. In addition a design disclosed elsewhere in the world will mark the beginning of the grace period for registered community design rights; unless a design is registered within 12 months the registration will be invalid as the non community disclosure will destroy the novelty of the design.

Intentional infringementUnregistered Community design rights provide a narrower scope of protection – they cannot be unintentionally infringed. A design created independently of an unregistered community design will not infringe it. Unregistered design rights protect only against copying.

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FRKelly Designers Handbook Unregistered designs.

Case. The type of protection you choose will depend on the product market in question.

Unregistered rights were at issue in one of the most high profile cases concerning the Regulation to date. Karen Millen v Dunnes Stores involved an infringement by Dunnes Stores of Karen Millen’s unregistered design rights. Dunnes Stores admitted that they had copied the designs of two Karen Millen items. The main issue was therefore whether Karen Millen had created a valid design; was it novel and did it have individual character on the date it was first disclosed to the public in the community? Significantly due to the ‘presumption of validity’ it fell to Dunnes Stores to prove that Karen Millen’s design was devoid of novelty and individual character.

In arguing that Karen Millen’s design was devoid of individual character, Dunnes contended the design should be compared with ‘the design corpus’- a hypothetical amalgam of a number of prior designs. This argument was rejected outright by the courts. For both registered and unregistered designs, when considering validity a comparison is made between the design at issue and each prior design separately. The design in question is never compared to individual aspects of prior designs.

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Registered designs.

EUIPO provides a convenient electronic system for registering Community Designs.

An application for a design registration must include details of the ownership of the registration, identify a product the design will pertain to and most importantly one or more representations of the design.

Official fees must be paid to secure a design registration.

The date of your design registration is generally the day the application was filed. In certain circumstances however you may be able to avail of an earlier registration date - where you claim priority.

Provided a design complies with the definition, pertains to a product and is not offensive, it can be registered with EUIPO. A registered community design is protected for a period of five years from the date of filing the application and generally registration is very quick; a registration certificate is often sent within 48 hours. Protection for the registered community design can last up to 25 years, provided the registration is renewed. A renewal fee is paid every 5 years.

Obtaining a community design registration affords the design protection (equivalent to national protection) in all member states of the EU. A community design registration is therefore generally administratively convenient. In addition, in cases where design protection is desired in two or more EU countries, it will generally be more cost effective to file for a registered community design than individual national designs. In addition it is possible to file multiple designs in the same application for reduced fees, making it cost effective to protect several designs simultaneously.

How do I obtain a design registration?EUIPO has a convenient electronic system in place which is generally speaking the most popular method of application. It is quick (some registrations even being accepted the same day) and because EUIPO does not have to re-scan the images sent electronically, the electronic filing system also provides more control over the quality of representation registered as the community design.

What do I need to include in my application?An application for a design registration must include a request for registration, identifying information of the applicant and a representation of the design in question. It is also necessary to indicate the product the design will pertain to. When filing an application it is advisable to describe the product by reference to its Locarno classification for the speediest registration.

1. Ownership:A company applying to register a design must provide the company name and legal form, the company address and the country of incorporation. A natural person

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Figurines from ‘SKYLANDERS’ video game

applying for a registration must provide their name and surname, their nationality and their address.

2. The design and its product:When applying for a design registration it is necessary to specify the nature of the product the design will pertain to. EUIPO organises the design register by grouping designs that relate to similar products into classes using the Locarno Classification. The Locarno Classification is an international classification tool for industrial designs. Designs are classified by the products they relate to for administrative purposes only - to make it easy to search the design register.

The scope of protection afforded to a design registration is not affected by its classification. This means that a design feature of a product registered in a particular class will, if valid, protect against the use of that design feature on a product belonging to any Locarno class. Take the example used earlier of Paul Smith’s signature rainbow striped design and consider if that design was registered for fabric in Locarno Class 2 (Clothing and haberdashery). If the rainbow pattern was reproduced on wrapping paper for example, Paul Smith may have a case for infringement of a registered design, despite the fact that his design was registered for fabrics

and wrapping paper would belong to a separate class.

Multiple applicationAs mentioned above, it is possible to register multiple designs in the same application, with a reduced fee being charged for each additional design. This is a very cost effective way of obtaining a portfolio of rights and one of the most advantageous aspects of the Regulation. In the case of multiple designs each design must belong to the same Locarno class. They do not, however, need to belong to the same subclass within a Locarno class. This means that an unlimited number of separate designs can be registered in the same application at reduced fees, provided they belong to the same Locarno class.

Take for example Locarno class 16 – ‘Photographic, cinematographic and optical apparatus’. An unlimited number of designs belonging to that class can be filed in the same application. This means that a design application could contain designs relating to a photocopier, binoculars and a video camera, despite the fact that the designs will likely bear no resemblance to each other, and may be of completely different styles (e.g. binoculars with a robust, chunky styling and a video camera with a sleek, minimalist appearance).

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The figurines on Page 44 are of a number of different characters from the ‘SKYLANDER’ video game. They could not possibly be said to have a similar design but nevertheless can conveniently be filed in the same design application, each additional design costing a reduced fee. An unlimited number of designs in different styles can be filed in a multiple application provided they belong to the same Locarno class. OrnamentationThere is one exception to the

requirement that each design in a multiple application belongs to the same Locarno classification. Ornamentation, a decorative element that can be applied

to a product without affecting its contours, belongs to class 32 of the Locarno classification. Ornametnation designs can be filed as part of a multiple application with designs belonging to another class.

3. Design representation:The representation of the design is extremely important. The representa-tion of the design alone determines the scope of protection afforded to the design. It is possible to provide a description of the design in addition to the representation, but it cannot affect the scope of protection of the design registration. In defending or challenging a design in court only the representation of the design will be considered.

Multiple viewsThe representation should display the features of the design for which protection is sought. Up to seven views of each design may be filed (back, front, top view etc.) Bear in mind the distinction between multi-ple views and multiple designs. It is possible to register an unlimited number of separate designs in the same application provided they belong to the same Locarno class. Up to seven images of each separate and distinct design can be filed; multiple views of each design can be filed. Take designs for a board game and a racket ball beach game respec-tively. Both belong to Locarno class 21 (games, toys, tents and sports goods) and therefore can be filed together as a multiple application. For each design up to 7 views of the design can be filed; 7 views of the board game and 7 views of the racket ball set.

ColoursThe multiple views of a single design must be either in black or white or colour; a mixture is not permissible. According to the Regulation, colour is a feature that can be protected as a design. The significance of this is that if a design is filed in a particular colour, it will be assumed that the colour of the design is being claimed as a design feature. In many cases a design identical to a registered design but in a different colour would not infringe the registered design as it would make a different overall impression as a result of the colouring. It is therefore generally advisable to file design

representations in black and white, where colour is not essential to the design. A black and white representation should prohibit the reproduction of the design in any colour.

In certain situations it may be appropriate to submit a representation in colour however. Where design protection is sought for a particular combination of colours for example, filing colour design representation is advisable. For example Paul Smith’s rainbow pattern is represented in colour; it is the combination of those particular colours that constitute the design.

For the broadest possible protection it may be advisable to file several designs, showing the design both in colour and in black and white. See for this example this Paul Smith pen. Expert advice may be required to determine whether colour should be used in a representation.

BackgroundThe design must be clearly distinguishable from its background. The design should be displayed on a neutral background.

IdentifiersA clever and considered design representation is fundamental to

obtaining effective protection for your design. The representation must clearly indicate for which features of the product design protection is sought. It is essential that only features for which protection is sought are highlighted in the representation. Showing other, unimportant features serves to narrow the scope of protection of your design. Bear in mind that to prove infringement of a design registration you must show that the other design makes the same overall impression. If the alleged infringer can show that some detail of their design differs from yours and this leads to a different overall impression, then their may be held not to infringe.

Showing unimportant design features in the representation therefore makes it easier for a potential infringer to avoid infringement. Their design could reproduce your most prized design features but if it differs from the unimportant details you also included in your registration, it may not infringe your registration.

If the chess set in the image opposite (overleaf, above) was filed as a design representation it would be a very poor registration with a very narrow scope of protection.

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All design features are equally claimed, making it easy for a designer to reproduce important design features and change others, thus creating a different overall impression on the informed user while reproducing design features. This is why a photograph of a product incorporating multiple features is generally best avoided. It would be far better to claim the underlying support of this chess board as a first design, and to claim each character in the chess set as a separate design, to obtain the maximum scope of protection.

Particular methods can be used to obtain the broadest possible scope of protection for your design. Design features for which protection is not sought can be disclaimed by representing them with broken lines (as with the upper part of the shoe shown opposite, below). Solid lines are used for features that you do want to protect (i.e. the sole of the shoe alone, in this case). Shading and blurring can also be used to exclude certain features from protection. Separations can be used to indicate that the precise length of the design is not claimed.

One should also not forget that the design can be that of part of a product only. Clever design strategies

can involve protecting the entire product, and obtaining additional registrations for specific parts of the product design which themselves might have value, such as the design of a car’s tail light shape.

Here is an example of a good design representation affording the design in question the

broadest possible protection. Broken lines are used to disclaim unimportant features of the products design and the design features for which protection is desired are highlighted.

The scope of protection afforded to a design is determined by the representation submitted in application for design rights and varies hugely depending on the quality of the representation. It is crucial that an effective representation is submitted. The services of a skilled draughtsman working in tandem with your IP attorney will ensure the optimum methodology is utilised.

TimingYour design protection begins when EUIPO registers your design, unless you claim priority. Should you wish to keep your design confidential you

One should also not forget that the design can be that of part of a product only

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can pay to delay the publication date of your design in the community bulletin. In the event that you disclose your design to the public before you apply to register it, you can still obtain a registration provided you file within the grace period. Priority:Claiming priority means using the date of an earlier design application as the application date for the registered community design. Anyone who has filed a design application abroad can file a community design application within 6 months and use the date of the first registration as the filing date of the community registration. This means that the community design will have the advantage of having an earlier date for the purpose of assessing novelty and individual character. To claim priority the subsequent filing with EUIPO must be made within six months of the first application.

Deferred publication:Each design registration must be published in the community design bulletin and on the EUIPO website. It is possible to defer this publication for a fee. It may be important for a business to keep its design confidential while arranging for the production of the design into the final product or launching a product. An application may be deferred for up to 30 months from the date of

filing (or the priority date if claimed). It is possible to end the deferment at any time during this period by notifying EUIPO, who will then publish the design.

Grace Period:Disclosing a design to the public does not preclude a designer from filing for a community design. The grace period allows one to register a design within one year of disclosing it to the public. The grace period does not operate to change the date used to assess novelty or individual character in the way claiming priority does. The date for assessing the validity of the design will be the filing date. The grace period simply allows designers to disclose their own designs up to one year before they apply for a community design without their own disclosure ruining the novelty of their registration. An application for design rights must be submitted within one year of disclosing a design to the public. Otherwise it will become impossible to obtain a valid design registration because the disclosure of the design more than one year prior to registration destroys the novelty of that registration.

Each design registration must be published in the community design bulletin and on the EUIPO website

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What rights do I have?

A Registered Community Design is a property right that can be licenced, transferred, surrendered or offered as security.

A Community Design Registration provides the owner with a right to prevent a third party from using their design in any way.

It also provides the owner with a corresponding, but not absolute, right to use the design.

There is no requirement to use to design to be entitled to protection.

Property RightA registered community design can be given as security, or be subject to rights in rem and the register can be amended to reflect this situation.

A design may also be licensed. Interestingly, a community design may be licensed for the whole or part of the European Union. Generally a licensee may bring Community design infringement proceedings.

TransferIt is possible to transfer a registered community design, allowing it to be sold. The new owner should then record the change of ownership. An application to record the transfer must contain the registration number of the RCD and details of the new owner, and a fee must be paid to record the transfer.

Right to useA registered community design confers on the holder “the exclusive right to use the design and to prevent any third party not having his consent from using it.” Although the Regulation provides that the holder has a ‘right to use’ the design, this right is limited. This is important where two parties have conflicting registered community designs; a situation that can easily arise due

to the fact that design registrations are not reviewed by EUIPO to ensure there is no prior conflicting design. The right to use is always subject to any earlier right which may exist.

Right to prevent third party useIt is therefore clear that a registered community design does not confer an absolute right to use. It confers a right to prevent a third party from using a design that does not produce a different overall impression on the informed user, or indeed using the design itself. The restricted acts include making, offering, putting on the market, importing, exporting or using the design or stocking for any of those purposes.

Proof of useThere is no ‘use it or lose it’ requirement for registered community designs; the validity of a design registration cannot be challenged because it is not being used. This differs from the EU trademark system. An EU trademark must be put to ‘genuine use’ within the territory of the European Union within 5 years of the registration. Otherwise the trademark will be vulnerable to cancellation proceedings.

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Infringement

The test for infringement of a registered Community design is the flipside of the test for validity.

A design owner is responsible for ensuring their design is not infringed – it important to monitor the market and design databases.

It is possible to register a Community design right with the customs authorities for monitoring of potentially infringing imports.

A right holder concerned that their design is being infringed may take an action for infringement before a Community Design Court.

There are several remedies available to a design owner whose rights have been infringed including an injunction, seizure, seizure of materials and publication of the infringement.

A Community design registration provides the owner with a right to prevent third parties from using the design in any way. Whether or not a design infringes a prior design will depend on whether the later design is novel and has individual character. The test for infringement is therefore the flipside of the test for validity of a design – the individual character test equally applies to infringement.

It is up to the right holder to enforce their registered Community design. The right holder must be vigilant in searching design registers for identical or similar designs. If a design owner is unable to conduct their own searches, professional IP watching services are provided by legal professionals.

It is also essential to monitor the market for potentially infringing design by checking press, trade companies and the web. Bear in mind that a design right can be infringed by physical goods and advertising media.

It is possible to make an application to the customs authorities on an EU wide basis to detain suspected infringing goods. A Community application permits the applicant to request assistance by the customs authorities in multiple Member States. It is also possible to file an application for mon-

itoring in an individual Member State. Customs officers, when confronted with potentially infringing products, can consult databases in which all applications are centralised, allowing them to highlight potential infringe-ments and seize counterfeit goods.

Design owners concerned that their rights are being infringed should be cautious in any communication with the allegedly infringing party. National legislation in some member states, including Ireland and the UK, prohibits ‘groundless threats’. A person ‘threatened’ with infringement proceedings may have a remedy against the design owner if it is later determined that infringement had not occurred. It is permissible to simply draw attention to the existence of a design right. Any communication should be carefully drafted following professional advice to avoid legal implications.

If a design owner is concerned that their rights are being infringed, they can also take an action for infringement in front of a Community Design Court. The Court will assess the overall impression of the two designs and determine if infringement has occurred.

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Invalidity

It is possible for invalid designs to be registered as a Community design; EUIPO does not examine each design application for validity.

An invalid design will remain on the register until it is declared invalid by EUIPO or a Community design court.

Any person can file an application for invalidity of a Community design on the basis that it lacks novelty or individual character.

Invalidity is also often raised as a counterclaim in response to an allegation of infringement of Community design rights.

Invalid DesignsA valid design is defined in the Regulation as one that is new and has individual character. EUIPO does not examine design applications for validity however and as a result it is possible to register an invalid design, i.e. one lacking novelty or individual character. Such a design will remain on the register unless and until it is declared invalid by EUIPO or a Community design court following an appraisal of its novelty and individual character. All registered designs enjoy a presumption of validity – when challenged they are presumed valid until proven otherwise.

Invalidity proceedings are therefore highly relevant to owners of design rights, as well as to those liable to be accused of infringing. It may be prudent for businesses operating in

the European Union to avail of a service to monitor the register and take action against potentially invalid registered designs when they are published.

Invalidity proceedings also often arise as a counterclaim to a claim of infringement of design rights. There are a number of advantages to applying to invalidate a registered design before the design owner attempts to invoke their rights.

Independent Invalidity Proceedings Any natural or legal person can submit an application to invalidate a registered Community design. The capacity to apply to invalidate Community design rights is not dependent upon ownership of conflicting design rights, or indeed any design rights. Any person can

Any natural or legal person can submit an application to invalidate a registered Community design.

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apply to invalidate a registered Community design, subject to a number of narrow exceptions.

An application for invalidity An application for invalidity of a registered Community design may only be brought before EUIPO (with the exception of unregistered designs which must be challenged in front of a community design court). Once court proceedings for infringement are commenced, however, the proper forum for testing the validity of the design is by way of a counterclaim i.e. in front of a Community design court.

A person applying to invalidate a registered Community design for reasons of lack or novelty or individual character must provide evidence of prior designs that could form an obstacle to the novelty or individual character of the registered Community design, as well as documents proving the existence of those earlier designs.

The evidence must prove the date the prior design was first disclosed to the public. Earlier design registrations and magazine articles are generally good evidence of disclosure. A sample product in itself usually does not bear any indication of the date of disclosure of the design and is therefore not good

evidence unless accompanied by supporting documents indicating when the product was sold. It is of course also possible to rely on a prior registered Community design or even an EU trademark.

Counter claim for invalidity It is also possible to claim invalidity of a design right in response to an allegation of infringement. A manufacturer whose product is alleged to infringe another design right will often counterclaim that that other design right is in fact invalid.

Counterclaims for invalidity can be heard by a Community design court only. The design subject to the counterclaim is initially presumed valid and the onus rests on the defendant to prove invalidity. The court will then decide whether at the date of registration the design was novel and had individual character. Should the counter-claim for invalidity fail, the court will then proceed to assess the alleged infringement by applying the same test to the allegedly infringing design.

If a registered Community design is declared invalid by a Community design court in a counterclaim for invalidity, the invalidity of the design needs to be reflected on EUIPO’s register.

Counterclaims for invalidity can be heard by a Community design court only

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The Hague Agreement concerning the international deposit of industrial designs.

In addition to the Community Design Registration system, it is also possible to obtain design rights by applying to the World Intellectual Property Office (WIPO) in Geneva through the Hague Agreement Concerning the International Deposit of Industrial Designs.

In addition to national and Community design protection, it is also possible to obtain international protection for a design through the Hague Agreement Concerning the International Deposit of Industrial Designs. A design owner can obtain a registration covering any country that is party to that agreement by making a single application to the World Intellectual Property Office in Geneva.

The system is largely similar to the Madrid Agreement for the international registration of Trademarks. It is of course important to bear in mind that rights can be obtained only in countries that are members of the agreement. It is also important to note that the Hague agreement system applies only to registered designs- there is no unregistered system.

The European Union is a member of the Hague agreement. This means that for example a US based designer

can apply to WIPO in Geneva and designate the EU amongst other countries, obtaining a registered Community design and national protection in the other countries simultaneously. Many EU countries are also members of the Hague agreement in their own right. Designers can therefore also use the Hague agreement to obtain a registration in multiple countries without obtaining a registered Community design; they have a choice of which European countries to obtain protection.

Applications and renewals are handled directly by WIPO in Geneva; it is not possible to apply or to make any changes to the international register through EUIPO. International registrations designating the European Union are subject to usual Community invalidity proceedings.

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UK unregistered design right

Businesses operating in the UK (which includes many businesses in Ireland who trade either with Northern Ireland or with other parts of the UK) need to be aware that the UK has a separate system of unregistered design rights which is different to the pan-EU system of unregistered design rights. In the UK both unregistered systems operate in parallel.

Under the UK system, rights can last for up to 15 years from creation, but no longer than 10 years from the date when the design was first put on sale (compare this with three years under the EU system). During the final five years of the term of protection, any third party can obtain a licence (upon payment of a reasonable royalty) to use the design.

The grounds for invalidity are different. Most notably, there is no requirement that the design be absolutely novel in order to be protected under the UK regime, only that it is “not commonplace”.

On the other hand, the scope of the system is more limited than the EU unregistered right because no protection is available under the UK system for “surface decoration”, i.e.

only shape and configuration features are protected. Like the EU right, the UK right can only be infringed when copying has occurred.

For businesses trading into or within the UK, it is important to obtain advice on whether there might be any infringement of the UK unregistered right, even if there appears to be no issue under the EU design system.

Under the UK system, rights can last for up to 15 years from creation

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Design and other intellectual property rights

In order to obtain the broadest and most robust protection for the intellectual property rights in a product it is often advisable to seek more than one form of protection. Design rights can be used in tandem with trademark, copyright and patent rights to provide the most effective protection possible.

Design and Trademark

The shape of a product Intellectual property authorities have long been concerned about the possibility of paralysing the market by allowing a product shape to be registered as a trademark, creating a monopoly over it. As a result it is very difficult to establish that a trademark in the form of a shape has distinctive character. In addition, where the shape of a product is necessary to achieve a technical objective or results from the nature of the goods it cannot be registered as a

trademark. Similarly a shape cannot be registered as a trademark where it gives substantial value to the goods in question.

Registering the shape of product as a design is therefore highly recom-mended. A design application is not examined for distinctiveness before being registered and is presumed valid; it is a much easier route to effective protection for the shape of a product.

Logos Design protection is increasingly being used a way to enhance the protection afforded to logos. This is reflected in the amendment to the Locarno classification in 2009 which added ‘logos’ in a new Class 32 alongside graphical symbols, surface patterns and decorations.

The scope of protection of a design is any design that does not ‘produce a

different overall impression on the informed user’. There is not however any requirement to prove likelihood of confusion between designs. An infringing mark must be detrimental to the primary function of the trademark i.e. to guarantee consumers the origin of the goods. There is no equivalent requirement with logos protected by design rights.

Perhaps most significant is the fact that the scope of protection afforded by registering a logo as a design is not limited to specific products or services. This was confirmed by the decision concerning the ‘Logos Midas’ case concerning the registration of the word Midas. Essentially a design owner can therefore act against a similar design logo on any goods, not only similar goods and services.

Design and PatentA patent protects a technical

invention. As the example of the DYSON vacuum cleaner at the start of this work demonstrates, the same product may have overlapping protection under the patent and design systems. For example, patents may be applied for to protect the “cyclone” technology used to create a vacuum and separate the dust from the air stream, to protect a novel method of bonding two plastics together, or to protect the mechanism of a quick-release coupling between a hose and an attachment. Design rights could exist in parallel for the overall shape of the unit, for the shape of the ribbing of the hose, for the colour scheme applied to the different components, and for the contours of the handle. In general there is no issue arising from the overlap of these rights since the patents are directed to purely technical aspects while designs are for the non-technical aspects of appearance.

There can be significant overlap between the field of copyright and the field of designs, given that most designs start their life on the drawing board or the computerised equivalent

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Design and CopyrightThere can be significant overlap between the field of copyright (artistic works, and especially graphical works such as drawings) and the field of designs, given that most designs start their life on the drawing board or the computerised equivalent. Both the courts and the legislators have struggled with the fact that copyright in a designer’s drawing might be said to be infringed not only by a copy of the drawing itself, but also by a 3-D version of the article in question, namely the product made from the drawing.

Some countries deal with this in a very relaxed manner. In France, for example, if a design is seen to be sufficiently artistic in its own right, then the article itself can be entitled to copyright, as well as to design rights. The advantages of such systems for designers can be enormous: while a design registration expires after 25 years, copyright can last for well over a century (the lifetime of the designer plus 70 years).

Other countries, including Ireland and the UK, have struggled with this overlap because of a feeling that the very long terms provided by copyright should not be applicable

to industrial items. However, the legislators in these countries have been very reluctant to use subjective criteria such as artistic worth when deciding if a product is entitled to copyright. Instead, the preferred solution is to grant copyright to a very small number of 3D works, confined to architecture, sculpture, and “works of artistic craftsmanship” (e.g. fine jewellery or stained glass windows). For every other kind of product, the law recognises copyright in the underlying drawings, but says that this copyright is not infringed when a product is made according to those drawings. In effect, this means that the designer of any industrial product can either register the design, or rely on unregistered rights for a limited period, or accept the fact that the product design can be copied by third parties.

Some countries deal with this in a very relaxed manner. In France, for example, if a design is seen to be sufficiently artistic in its own right, then the article itself can be entitled to copyright, as well as to design rights

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Design Trademark Patent CopyrightWhat does it protect? Protects the

appearance of the whole or part of a product.

Protects the use of a word and/or a figurative device in connection with particular goods and services.

Protects an invention. Protects creative works; original literary, dramatic, musical and artistic works; film, sound recordings, broadcasts and the typographical arrangement of published editions; computer software and non-original databases; performances.

When does protection arise?

Registered- On registration

Unregistered- automatically when first made available to public

On registration On registration Automatically on creation

Unregistered system?

Yes- unregistered design protection arises for 3 years automatically

Common law protection for unregistered trademarks – the tort of ‘passing off’

No unregistered system No registration system for copyright; rights arise automatically

Duration of protection?

Registered- 25 years

Unregistered- 3 years

Indefinitely 20 years 70 years from the death of the author (generally)

How often must it be renewed?

Every 5 years Every 10 years Every year No renewal requirement

Is there a substantive examination prior to registration?

No Yes Yes No registration; automatically arises

Does it protect against unintentional infringement?

Registered- Yes; prevents intentional and unintentional infringement

Unregistered- No; protects against intentional infringement only

Yes; protects against intentional and unintentional infringement

Yes; protects against intentional and unintentional infringement

No- does not protect against independent production of highly similar works

Requirement to ‘use’ the right

No requirement to use

Requirement to use within 5 years No requirement to use No requirement to use

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