The effect of the new regime is to increase protection for proprietors by enabling a wider range of designs to be registered and by granting enhanced rights of protection for those registered designs. The new regime will also mean greater certainty for a proprietor with a registered design in one Member State who is considering extending his protection by registering that design in another Member State. This multiple application method is currently the only way to obtain registered design protection in different Member States, although the position will change with the introduction of the Community Design (scheduled to be introduced sometime next year), which will offer a Europe-wide registration through a central body.
So what are the key changes, and what effect will they have? We have summarised and discussed these below:
Key Changes
Definition of "Design". A design is defined as "the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation". This definition is wider than before and will allow a greater variety of designs to be registered.
The design itself will be capable of registration. Thus, it will no longer be necessary to register the design separately for each type of product to which it is to be applied. This will allow wider protection with one registration across different product ranges and give greater powers against potential infringers. When registering, an indication must be given of the type of product to which the design will be applied, but this is only for classification purposes and is not intended to limit the protection available.
The old requirements for the design to have "eye appeal" and to be capable of industrial application have been abolished.
Categories of product have been extended to mean any industrial or handicraft item and include get up, packaging and graphic symbols.
Parts and component parts of a product will also be capable of registration as long as they are in their own right new and have individual character (see below). Note that a further requirement of registration for component parts is that they must be visible during normal use; merely seeing the component parts during servicing or repair is not good enough.
Registration. It is still necessary to show that the design is "new" (or novel), but an additional requirement has now been added, which is to show that the design has "individual character". In both cases the onus of proof is on the applicant, potentially giving rise to a greater and more costly burden.
For a design to be new, it must differ from existing designs by more than "immaterial details". Although the wording in the new rules differs from that under the old regime (that a design must be more than a variant commonly used in the trade), the effect seems to be unchanged. The more important point to note, when looking at whether you might have a new design capable of registration, is that the prior art base you will need to search has been extended from just the UK to anywhere in the world.
For a design to have individual character, it must create a different impression on an "informed user" than that created by an existing design. Unfortunately, it is not clear what sort of user could be deemed to be informed; this is likely to be the subject of considerable Court time in the future. The Patent Office guide to the new rules suggests that an "informed user" is someone who is familiar with the appearance of a product and has a certain level of design awareness but who is not a design expert.
Certain designs will be excluded from registration, and an exhaustive list of the grounds for refusal are given in the rules. These include designs based solely on technical function, mechanical interface features (except where this is a feature of the design), designs that conflict with an existing application or registration (whether or not the design has been published) and anything that offends public policy or morality.
Introduction of a Grace Period. The rules create a new right in the form of a grace period of 12 months from earliest disclosure to the public. During this period, designers will be able to publish/disclose their design and investigate whether it is economically viable or whether there is a market for the product before applying for and incurring the costs of registration.
Infringement. The definition of infringement has been broadened. As a particular registration covers a design irrespective of the product to which it is applied, a third party could potentially infringe a design registration by using that design or a similar design on any product, not just on the type of product on which the proprietor uses the design.
Stocking or exporting a product incorporating the design has now been added to the list of potentially infringing uses of a design. Private, non-commercial, experimental and reproduction for teaching purposes, importation of spare parts for repairing ships and aircraft and carrying out those repairs are, however, specifically stated to be non-infringing.
Once a product has been put on the market within the European Community by the owner (or with his/her consent), that owner cannot use his/her registered design rights to restrict the free movement of the product within the European Community.
Opposition. A third party who has existing rights in the design (e.g., trademark, copyright, passing off) may be able to request a declaration of invalidity from the Registrar but only once a design has actually been registered.
Transition
The validity of any pending or existing registrations will continue to be tested under the old law, and only applications made after 9 December 2001 are subject to the new rules. However, infringements of existing registrations will be assessed on the basis of the new rules in relation to acts of infringement that are perpetrated after 9 December 2001.
A Final Word
Companies generally should consider adding registered designs to their arsenal of protective measures. Registered designs have certain advantages over copyright and trade marks. There is no need to establish copying by a third party as there is when enforcing copyright protection. In contrast to trade marks, a registered design is protected without reference to the class of product to which it is applied and therefore may offer a broader protection in the market place. There are, of course, also disadvantages that need to be considered in the commercial context, such as, amongst other things, the scope of protection and the lifetime of a registered design.
Depending on the value of the IP to the business and possible revenue streams that might be created, it is always advisable to consider all of the different forms of IP protection that are available as well as getting the IP strategy right from a commercial and tax perspective.
Further Information
This Jones Day Commentaries is a publication of Jones, Day, Reavis & Pogue and should not be construed as legal advice on any specific facts or circumstances. The contents are intended for general informational purposes only and may not be quoted or referred to in any other publication or proceeding without the prior written consent of the Firm, to be given or withheld at its discretion. The mailing of this publication is not intended to create, and receipt of it does not constitute, an attorney-client relationship.
The Jones Day London Intellectual Property Team comprises Alison Crofts, Liz Robertson, Sarah Chapman and Penny Richardson. For further information on this or any other IP issue, readers are urged to consult their regular contacts at Jones Day or a member of the Jones Day London IP team on 0207 236 3939.