Navigating Design Law (2022) by CIPA Journal

NAVIGATING DESIGN LAW David Musker

2021

NAVIGATING DESIGN LAW David Musker

2021

Copyright © 2021, David Charles Musker The moral rights of the author have been asserted First edition published 2021 All rights reserved. Reproduction or use of any part of this book in any manner or form (other than in accordance with the law) without prior written permission is prohibited. Cover image: USD135,282 (Thomas C. Green).

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Foreword Design protection is important for innovative businesses in the UK, and the Chartered Institute of Patent Attorneys (CIPA) has always been interested and involved in making the nation’s design laws. David Musker, as a Fellow member of CIPA and sometime Chair of its Designs & Copyright Committee, knows his way around post-Brexit UK design law as well as anyone in the UK. His teaching experience helps make Navigating Design Law accessible to students, but this publication will also be useful to practitioners. We welcome the chance to publish this book. Alicia Instone, CIPA President, November 2021

About the author David Musker is a Chartered Patent Attorney and Trade Mark Attorney holding a Higher Courts Litigation Certificate. He has served as Chair of the CIPA Designs & Copyright Committee and President of the Design Commission of the Union of European Practitioners in Intellectual Property. He has practised for 35 years in industry and private practice, and is currently Professor of International Design Law at Queen Mary University of London and a consultant to Maucher Jenkins.

NAVIGATING DESIGN LAW Contents Table of Cases.......................................................................................... vii Table of Legislation.................................................................................xxi Abbreviations used...............................................................................xxix Part 1 – Introduction and Overview........................................................ 1 Part 2 – Registered Designs..................................................................37 Part 3 – International Designs..............................................................131 Part 4 – Supplementary Unregistered Designs and Continuing Unregistered Community Designs..................... 165 Part 5 – Copyright protection of designs.........................................185 Part 6 – UK (“National”) Unregistered Design Right...................... 211 Part 7 – Designers, Ownership, and Property................................ 247 Part 8 – Exploitation.............................................................................. 267 Part 9 – Litigation.................................................................................. 283 Part 10 – Searching...............................................................................309 ANNEXES...................................................................................................315 INDEX........................................................................................................ 377

TABLE OF CASES “*” indicates that the case is listed as a “leading case” in the commentary. Links are, in order of preference, to BAILII, RPC or other freely accessible text sources.

UK COURT CASES A. Fulton Co Ltd v Totes Isotoner (UK) Ltd [2003] EWCA Civ 1514, [2004] RPC 16..... 6.7.1, 6.3.2.4 A. Pressler & Co. Ltd v Gartside & Co (of Manchester) Ltd and Widd & Owen Ltd (1933) 50 RPC 240.................................................................................................................7.1.3, 7.1.5 A.J. and M.A. Levy’s Trade Mark (No. 2) [1999] RPC 358.............................................................2.8.2.4 Abanka DD v Abanca Corp [2017] EWHC 2428 (Ch), [2018] Bus. LR 612...................................2.8.1 Abraham Moon & Sons Ltd v Thornber [2012] EWPCC 37, [2013] FSR 17 ..................................................................................................5.5.1, 5.5.3.2, 5.5.3.3, 5.6.2, 5.6.6, 6.2.1 Accord Healthcare v Research Corporation Technologies [2017] EWHC 2711 (Pat), [2018] RPC 4 ...........................................................................................................................................................7.4.3 Action Storage Systems Ltd v G-Force Europe.Com Ltd & Anor [2016] EWHC 3151 (IPEC), [2017] FSR 18....................................................... 6.3.2.2, 6.3.2.5, 6.3.1 Al Bassam Trade Mark [1995] RPC 511............................................................................... 2.9.6.1, 7.5.2 Allen & Hanbury Ltd’s (Salbutamol) Patent [1987] RPC 327........................................................9.4.2.1 *American Cyanamid Co v Ethicon Ltd [1975] UKHL 1, [1975] RPC 513..................................9.4.1.2 *Amp Inc v Utilux Pty Ltd [1971] FSR 572, [1972] RPC 103 (HL)...1.2.2, 1.3.3.2, 2.1.4, 2.9.2, 2.9.3.2 Antec International Ltd v South Western Chicks (Warren) Ltd [1997] FSR 278................................9.5 Antiphon AB.’s Application [1984] RPC 1......................................................................................2.4.16.3 Apple Computer Inc.’s Design Applications [2002] FSR 38 (RDAT)................................ 2.1.1.4, 2.9.2.5 Apple Inc v Arcadia Trading Ltd [2017] EWHC 440 (Ch), [2017] FSR 40......................................2.8.1 Ashdown v Telegraph Group Ltd [2001] EWCA Civ 1142, [2002] RPC 5.......................................5.5.6 Autospin (Oil Seals) Ltd v Beehive Spinning [1995] RPC 683........................................................5.5.5.3 B4U Network (Europe) Ltd v Performing Right Society Ltd [2013] EWCA Civ 1236, [2014] FSR 17........................................................................................7.2.2 *Bailey v Haynes [2006] EWPCC 5, [2007] FSR 10................................................................6.2.6, 6.3.1 Bayerische Motoren Werke v Round and Metal Ltd [2012] EWHC 2099 (Pat), [2013] FSR 18 ....................................................................................................................................................7.7.2, 4.4 Bayer’s Design (1907) RPC 24................................................................................................ 2.9.3.1, 6.2.6 *BBC Worldwide Ltd v Pally Screen Printing Ltd [1998] FSR 665......................................................5.6 Best Buy v Worldwide Sales Corp [2011] EWCA Civ 618, [2011] FSR 30..........................................9.5 Beverly Hills Teddy Bear v PMS [2019] EWHC 2419 (IPEC), [2020] FSR 11.............................4.6.3.1 vii

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Billhofer Machinenfabrik GmbH v T H Dixon Ltd [1990] FSR 105..............................................2.1.1.5 Blank v Footman, Pretty & Co [1888] UKLawRpCh 135; (1888) 39 Ch.D 678...........................2.2.2.1 Bodo Sperlein Ltd v Sabichi Ltd [2015] EWHC 1242 (IPEC), [2016] ECDR 19.........................9.4.2.6 Bongrain SA’s Trade Mark Application [2004] EWCA Civ 1690, [2005] RPC 14...........................1.6.1 *British Leyland Motor Corp v Armstrong Patents Company Ltd [1986] UKHL 7, [1986] RPC 279, [1986] FSR 221........................ 1.3.3.2, 5.4.2, 5.5.1, 5.5.3, 5.5.4, 5.5.6, 5.6.1, 6.1.3, British Northrop Ltd v Texteam Blackburn Ltd [1973] FSR 241.......................................................6.4.1 British Northrop Ltd v Texteam Blackburn Ltd [1974] RPC 57 (CA)...........................................1.3.3.2 Brooker v Fisher [2008] EWCA Civ 287, [2008] FSR 26...................................................................5.5.6 C&H Engineering v F Klucznik & Sons Ltd [1992] FSR 421........................................... 6.3, 6.3.1, 6.7.5 Cala Homes (South) Ltd v Alfred McAlpine Homes East Ltd [1995] EWHC 7 (Ch), [1995] FSR 818............................................................................ 5.6.7.4, 7.1.3 Cantel Medical (UK) Ltd v ARC Medical Design Ltd [2018] EWHC 345 (Pat)....................................................................................... 2.2.4.1, 2.2.4.3, 2.3.1 Catnic Components Ltd v Hill & Smith Ltd [1978] FSR 405.............................................................5.5.6 Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183.........................................................2.1.1.5 Catnic Components v Evans [1983] FSR 401...................................................................................2.2.2.1 CBS Songs Ltd and Ors v Amstrad Consumer Electronics Plc [1988] UKHL 15, [1988] RPC 567.................................................................................................6.7.4 Coffey’s Registered Designs [1982] FSR 227 (CA)..............................................................................7.3.1 Concrete Ltd’s Design Application (1940) 57 RPC 121 (RDAT)............................... 2.9.2.5, 5.4.1, 5.6.7 Confederation of Passenger Transport UK v Humber Bridge Board [2003] EWCA Civ 842, [2004] QB 310.......................................................................................4.6.3.2 Coventry v Lawrence [2014] UKSC 13, [2014] AC 822, [2014] 2 WLR 433................................9.4.2.4 Coward v Phaestos Ltd [2013] EWHC 1292 (Ch).............................................................................7.3.1 Creation Records Ltd v News Group Newspapers Ltd [1997] EWHC Ch 370, [1997] EMLR 444.....................................................................................5.4.1 Design & Display Ltd v Ooo Abbott [2016] EWCA Civ 95, [2016] EWCA Civ 98, [2016] FSR 27................................................9.4.2.1.2 *Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] UKHL 58, [2001] FSR 11....5.4.2, 5.5.1 *Deyhle’s Design Applications [1982] RPC 526 (RDAT)..................................................... 2.4.4, 2.4.5.6 *DLP Ltd’s Patent [2007] EWHC 2669 (Pat), [2008] RPC 11.............................................................2.7 Dorling v Honnor Marine [1964] RPC 160................................................................. 1.3.3.2, 5.5.3, 6.2.2 Dover Ltd v Nürnberger Celluloidwaren Fabrik Gebruder Wolff (1910) 27 RPC 498..................2.1.1.5 Drain, R (On the Application Of) v Birmingham Crown Court [2018] EWHC 1255 (Admin), [2018] 1 WLR 4865.....................................................................9.4.4 Dyrlund Smith A/S v Turberville Smith Ltd (CA) [1998] FSR 774......................................................6.8 *Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, [2006] RPC 31......................................................................................1.1.3, 2.2.4.7, 2.9.3.3, 5.6, 6.2.1 *Dyson Ltd v Vax Ltd [2010] EWHC 1923 (Pat), [2010] FSR 39..........2.1.4.5, 2.2.4.3, 2.2.4.7, 2.9.1.1 Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206, [2012] FSR 4............................. 2.9.3.3, 2.2.4.3, 2.2.4.7 viii

TABLE OF CASES

EC Medica Group UK Ltd v Dearnley-Davison [2018] EWHC 1952 (Ch).....................................6.7.6 Edwards Lifesciences AG v Cook Biotech Inc [2009] EWHC 1304 (Pat), [2009] FSR 27 ..............7.4.3 *Energy Conversion Devices Inc’s Applications [1983] RPC 231 (HL)...........................................2.4.16 Essex Electric (Pte) Ltd v IPC Computers [1991] FSR 690...................................................................9.5 Evalve Inc v Edwards Lifesciences Ltd [2020] EWHC 513 (Pat)....................................................9.4.1.1 *Farmers Build v Carier Bulk Materials [1998] EWCA Civ 1900, [1999] RPC 461..........................6.3 FBT v Let Them Eat Vinyl [2019] EWHC 829 (IPEC), [2019] ECDR 10........................................5.5.2 Figorski (John) Ltd v Smith Seymour Ltd (1939) 56 RPC 135.............................................................9.3 Flashing Badge Co v Groves [2007] EWHC 1372 (Ch), [2007] FSR 36.................... 5.6.2, 5.6.5, 6.7.11 Ford Motor Co Ltd’s Design Applications [1994] UKHL 10, [1995] RPC 167 (HL).......................5.6.4 Forse v Secarma Ltd [2019] EWCA Civ 215, [2019] IRLR 587........................................................9.4.1 Freddy SPA v Hugz Clothing Ltd [2020] EWHC 3032 (IPEC), [2021] ECDR 8.............................5.6.2 Fujifilm Kyowa Kirin Biologics Co, Ltd v Abbvie Biotechnology Ltd [2017] EWCA Civ 1, [2017] RPC 9................................................................................................9.4.8 Fylde Microsystems Ltd v Key Radio Systems Ltd [1998] FSR 449...................................................7.1.5 Gadd v Mayor of Manchester (1892) 9 RPC 516.............................................................................2.2.2.1 Game Balls Co Ltd’s Application (1928) 45 RPC 26...........................................................................2.8.1 *General Tire Co v Firestone Tyre Co. Ltd (No. 2) [1976] RPC 197, [1975] FSR 273 (HL)......................................................................... 9.4.2, 9.4.2.1.3 George Hensher v Restawhile Upholstery (Lancs) Ltd [1975] RPC 31, [1976] AC 64 (HL)........5.6.7.2 *Gerber Garment Technology Inc v Lectra Systems Ltd [1997] RPC 443......................................9.4.1.2 Gimex International Groupe Import Export v The Chill Bag Company Ltd [2012] EWPCC 31, [2012] ECDR 25..........................................................................................2.2.4.4 Green Lane Products Ltd v PMS International Group Ltd [2007] EWHC 1712 (Pat), [2008] FSR 1.....................................................................................2.4.3.2 *Green Lane Products Ltd v PMS International Group Plc [2008] EWCA Civ 358, [2008] FSR 28.......................................................................2.2.2, 2.2.2.2, 2.2.2.3, 2.2.3, 2.3.2, 2.4.2.3 Greenaway v Parrish [2021] EWHC 1506 (QB)................................................................................1.4.8 Griggs v Evans [2005] EWCA Civ 11, [2005] FSR 31...........................................................................8.1 Guild v Eskandar Ltd [2001] FSR 38................................................................................................5.6.7.2 *Hadley Industries v Sloggett [2003] EWHC 2361 (Pat)................................................................2.4.2.2 Hecla Foundry Co v Walker, Hunter & Co (1889) 6 RPC 554 (HL)..............................................2.9.2.3 Heinrichs’ Design (1892) 9 RPC 73......................................................................................................7.1.3 *Henderson v All Around the World Recordings [2014] EWHC 3087 (IPEC).............................................................................. 9.4.1.2, 9.4.2.2, 9.4.2.3 Hi Tech Autoparts Ltd v Towergate Two Ltd (No. 2) [2002] FSR 15, [2002] FSR 16...................5.6.7.3 Hodgkinson & Corby Ltd v Wards Mobility Services Ltd [1995] FSR 169 ......................................1.6.2 Holdsworth v M’Crea (1867) L.R. 2 H.L. 380....................................................... 2.1.1.3, 2.4.2.1, 2.4.5.3 Hollister Incorporated v Medik Ostomy Supplies Ltd [2012] EWCA Civ 1419, [2013] FSR 24........................................................................................9.4.3 Household Articles Ltd’s Registered Design [1998] FSR 676..............................................................2.2.3 ix

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HTC Corporation v Nokia Corporation [2013] EWHC 3778 (Pat), [2014] RPC 30...................9.4.1.1 Ibcos v Barclays Mercantile [1994] FSR 275.............................................................................5.4.2, 7.4.2 Idenix Pharmaceuticals v Gilead Sciences [2016] EWCA Civ 1089.................................................7.4.3 *Ifejika v Ifejika [2010] EWCA Civ 563, [2010] FSR 29........................2.9.6.1, 7.3.1, 7.4.2, 7.5.2, 7.6.1 Ifejika v Ifejika [2011] EWPCC 31, [2012] FSR 6................................................................ 2.9.6.1, 7.3.2 In the Matter of Frederick Pearson’s Registered Designs (1906) 23 RPC 738...................................7.1.3 Inco Europe Ltd & Ors v First Choice Distribution (A Firm) & Ors [2000] WLR 586, [2000] 2 All ER 109, [2000] UKHL 15........................................................................................4.6.3.2 Industry-Wide Coal Staff Superannuation Scheme Co-Ordinator Ltd v Industry-Wide Coal Staff Superannuation Scheme Trustees Ltd [2012] EWHC 3712 (Ch), [2013] WLR(D) 6.............4.6.3.2 *Interlego v Tyco Industries [1988] UKPC 3, [1988] RPC 343.................................................................2.1.4.4, 2.9.3.2, 5.5.3.1, 5.5.3.2, 5.6.1, 6.3.1 *IPCOM v Vodafone Holdings [2021] EWCA Civ 205......................................................................8.4.1 J & S Davis (Holdings) v Wright Health Group [1988] RPC 403...................................................5.5.3.2 Jaguar Land Rover Ltd v Ineos Industries Holdings Ltd [2020] EWHC 2130 (Ch).....................1.6.1.1 Jaybeam Ltd v Abru Aluminium Ltd [1975] FSR 334...........................................................................9.5 JCM Seating Solutions Ltd v James Leckey Designs Ltd [2002] EWHC 3218 (Ch) (unrep., 2002 WL 32173180)...........................................................6.2.6.1 John Kaldor Fabricmaker v Lee Ann Fashions [2014] EWHC 3779 (IPEC), [2015] ECDR 2..........4.3 *Juul Labs, Inc v MFP Enterprises Ltd (t/a ‘Smoke Nation’) [2020] EWHC 3380 (Pat).................9.4.8 KCI Licensing v Smith & Nephew [2010] EWHC 1487 (Pat), [2010] FSR 31.................................7.2.2 Kestos v Kempat (1934) 53 RPC 139............................................................................ 2.9.2.2, 5.6.2,6.2.1 King Features Syndicate Inc v O&M Kleeman Ltd [1940] Ch. 806, (1941) 58 RPC 57 (CA).....5.5.3.1 King Features Syndicate Inc v O&M Kleeman Ltd [1941] AC 417, (1941) 58 RPC 207 (HL)...................................................... 1.3.3.2, 5.2, 5.5.3.1, 6.6, King Features Syndicate Inc v O&M Kleeman Ltd [1940] Ch. 523 (Ch D)...................... 2.1.1.2, 5.5.3, Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46, [2005] RPC 9............................9.1 *Kogan v Martin [2019] EWCA Civ 1645, [2020] FSR 3........................................................7.1.3, 7.1.5 *Kohler Mira Ltd v Bristan Group Ltd [2013] EWPCC 2, [2014] FSR 1......................................2.4.2.1 Kohler Mira Ltd v Bristan Group Ltd [2014] EWHC 1931 (IPEC), [2015] FSR 9....................................................................................................... 9.4.1.2, 9.4.2.2, 9.4.2.5 L Woolley Jewellers Ltd v A & A Jewellery Ltd & Anor [2002] EWCA Civ 1119, [2003] FSR 15...................................................................................................................................6.7.5 *LA Gear v Hi-Tech Sports [1992] FSR 121..............................................................................5.5.2, 6.7.7 Ladbroke v William Hill [1964] 1 WLR 273.......................................................................................5.5.1 Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd [2003] EWHC 1204 (Ch), [2003] RPC 41..................................................................................5.5.3.2 *Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd [2004] EWCA Civ 886, [2005] RPC 6 ................................................................ 5.6.3, 5.6.4, 5.6.5, 6.2.1, 6.2.5, 6.2.7, 6.2.7.1, 6.3.2.2, 6.3.2.3 Lamson Industries Application [1978] RPC 1 (RDAT)..................................................................2.9.2.5

TABLE OF CASES

*Landor & Hawa International Ltd v Azure Designs Ltd [2006] EWCA Civ 1285, [2007] FSR 9............................................................... 2.1.4.1, 2.1.4.5, 6.2.6 Lazarus v Charles (1873) Law J Rep Chanc 507, LR 16 Eq. 117......................................................7.1.5 *LB (Plastics) Ltd v Swish Products Ltd [1979] RPC 551, [1979] FSR 145 (HL)..................................................................................... 1.3.3.2, 5.4.2, 5.5.1, 5.5.4 LG Electronics v NCR Financial Solutions Group Ltd [2003] FSR 24..............................................7.6.2 Lipton v BA City Flyer Ltd [2021] EWCA Civ 454............................................................................1.4.8 Littlewoods Pools’ Application, Re (1949) 66 RPC 309 (RDAT)....................................................2.9.2.5 Livewest Homes v Bamber [2019] EWCA Civ 1174, [2020] 2 All ER 181....................................4.6.3.2 L’Oréal v RN Ventures [2018] EWHC 173 (Pat), [2018] FSR 20...................................................2.2.4.1 L’Oréal v Johnson & Johnson [2000] EWHC Ch 129, [2000] FSR 686................................................9.5 Louver-Lite Ltd v Harris Parts Ltd (t/a Harris Engineering) [2012] EWPCC 53........................2.2.4.2 Lucasfilm Ltd v Ainsworth [2008] EWHC 1878 (Ch), [2009] FSR 2 ............................................................................................................2.9.2.7, 5.6.5, 5.6.7.1, 5.6.7.2, 6.6 Lucasfilm Ltd v Ainsworth [2009] EWCA Civ 1328, [2010] FSR 10..................... 2.9.2.7, 5.6.5, 5.6.7.1 *Lucasfilm Ltd v Ainsworth [2011] UKSC 39, [2011] FSR 41....................... 2.9.2.7, 5.6, 5.6.5, 5.6.7.1, Mackie Designs Inc v Behringer Specialised studio equipment (UK) Ltd & Ors [1999] EWHC Ch 252, [1999] RPC 717...................................................................... 5.6.1, 6.2.1, 6.4 Magmatic Ltd v PMS International Group Plc [2013] EWHC 1925 (Pat), [2014] RPC 23.......................................................................................... 2.2.4.4, 2.2.4.7, 2.3.1, 6.2.6.1 Magmatic Ltd v PMS International Group Plc [2014] EWCA Civ 181, [2014] RPC 24...................9.1 Magmatic Ltd v PMS International Group Plc [2016] UKSC 12, [2016] RPC 11........................................................................... 9.1, 2.4.2.1, 2.4.5.4, Mainetti (UK) Ltd v Hangerlogic UK Ltd [2012] EWPCC 42.......................................................2.2.4.5 Mark Wilkinson Furniture Ltd v Woodcraft Designs [1998] FSR 63.............................................6.2.7.1 Master Data Center, Inc. v The Comptroller General of Patents [2020] EWHC 572 (Pat)........2.4.16.4 *Masterman’s Design Application [1991] RPC 89 (RDAT).......................................... 2.1.5, 2.2, 2.9.6.2 *Matsushita Electric Industrial Company Ltd’s Patent [2008] EWHC 2071 (Pat), [2008] RPC 35..................................................................................2.4.15 Mattel Inc v Woolbro (Distributors) [2003] EWHC 2412 (Ch), [2004] FSR 217..................1.3.4.3, 4.3 Mayne Pharma Pty Ltd & Anor v Pharmacia Italia SPA [2005] EWCA Civ 294, [2005] 3 WLUK 340................................................................................9.4.4 MEI Fields Designs Ltd v Saffron Cards And Gifts Ltd [2018] EWHC 1332 (IPEC), [2018] FSR 33..................................................................................7.1.5 Merck Canada Inc & Anor v Sigma Pharmaceuticals Plc [2013] EWCA Civ 326, [2013] RPC 35..........................................................................................9.4.4 Merlet v Mothercare Plc [1986] RPC 15...........................................................................................5.6.7.2 *Messier-Dowty Ltd & Anor v Sabena SA & Ors [2000] EWCA Civ 48, [2001] 1 All ER 27, [2001] 1 WLR 2040.................................................9.4.8 Meters Ltd v Metropolitan Gas Meters Ltd (1911) 28 RPC 157..................................................9.4.2.1.3 Metix (UK) Ltd v G H Maughan (Plastics) Ltd [1997] FSR 718....................................................5.6.7.1 xi

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MGN v Grisbrook [2010] EWCA Civ 1399, [2011] ECDR 4...............................................................8.1 Mod-Tap W Corporation (Delaware) v BI Communications plc [1999] RPC 333.......................2.9.5.2 *Moody v Tree (1892) 9 RPC 333 (note: not “233” as printed)................................ 1.3.3.1, 2.9.3.1, 9.3 Morris-Garner v One Step (Support) [2018] UKSC 20, [2019] AC 649....................................9.4.2.1.3 My Kinda Town Ltd v Soll & Anr [1982] FSR 147, [1983] RPC 15..................................................9.4.3 Navitaire v EasyJet [2004] EWHC 1725 (Ch), [2006] RPC 111....................................................5.5.3.2 Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 (Pat), [2018] FSR 3...............................6.2.1, 6.2.4, 6.2.6, 6.2.7.1, 6.3.1, 6.3.2.5 Neurim Pharmaceuticals (1991) Ltd v Generics UK Ltd (t/a Mylan) [2020] EWHC 1362 (Pat).............................................................................................................9.4.1.2 Nichols Advanced Vehicle Systems Inc. v Rees [1979] RPC 127.....................................................9.4.2.3 Nokia Corp v InterDigital Corp [2006] EWHC 802 (Pat).................................................................9.4.8 Nokia Corp v InterDigital Corp [2006] EWCA Civ 1618, [2007] FSR 23........................................9.4.8 Noone, R (on the application of) v Governor of HMP Drake Hall & Anor [2010] 1 WLR 1743, [2010] 4 All ER 463, [2010] WLR 1743, [2010] UKSC 30....................4.6.3.2 Norowzian v Arks Ltd [1999] EWCA Civ 3018, [2000] FSR 363.....................................................5.4.1 *Nova Productions v Mazooma Games [2006] EWHC 24 (Ch), [2006] RPC 14...........................7.1.4 Nova Productions v Mazooma Games [2007] EWCA Civ 219, [2007] ECDR 6..........................5.5.3.2 Numatic International Ltd v Qualtex UK Ltd [2010] RPC 25, [2010] EWHC 1237 (Ch).............1.6.2 *Oakley Inc v Animal Ltd [2005] EWCA Civ 1191, [2006] RPC 9..................................................2.9.1 Oakley Inc v Animal Ltd [2005] EWHC 210 (Ch), [2005] RPC 30.................................................1.1.3 Ocular Sciences Ltd v Aspect Vision Care Ltd (No.2) [1996] EWHC (Pat), [1997] RPC 289....................................................... 6.2.8, 6.3.2.2, 6.3.2.5, 6.7.1 OOO Abbott v Design & Display Ltd [2014] EWHC 2924 (IPEC)...............................................9.4.2.5 *Optis Cellular Technology LLC v Apple Retail UK Ltd [2020] EWHC 3248 (Pat).................6.8, 9.4.7 Oren v Red Box Toy Factory Ltd [1999] EWHC Patents 255, [1999] FSR 785..................................9.2 Original Beauty Technology v G4K Fashion [2021] EWHC 294 (Ch)............................ 2.2.4.1, 9.4.2.3 *Patchett’s Patent (No.2) [1967] FSR 249, [1967] RPC 237.......................... 8.4.1, 8.4.2, 8.4.5, 9.4.2.1.3 Payne’s Application [1985] RPC 193..............................................................................................2.4.16.3 Cow (PB) & Co Ltd v Cannon Rubber Manufacturers (No.1) [1959] RPC 947 (CA).....................1.6.4 Pearce v Ove Arup Partnership Ltd [2001] EWHC Ch 455, [2001] EWHC Ch 481...................5.6.7.4 Pensher Security Door Co. Ltd v Sunderland City Council [2000] RPC 249...................................5.6.4 Performing Right Society Ltd v B4u Network (Europe) Ltd [2012] EWHC 3010 (Ch), [2013] FSR 19......................................................................................7.2.2 *Performing Right Society Ltd v B4u Network (Europe) Ltd [2013] EWCA Civ 1236, [2014] FSR 17........................................................................................7.2.2 Pfizer Corporation v Ministry of Health (1965) AC 512, [1965] 82 RPC 261.......................8.4.1, 8.4.2 Pharmedica Gmbh’s Trade Mark Application [2000] RPC 536.....................................................2.8.2.5 Phillips v Harbro Rubber Co (1920) (1920) 37 RPC 233 (HL).........................................................1.6.4 Phonographic Performance Ltd v Ellis [2018] EWCA Civ 2812....................................................9.4.2.3 Phonographic Performance Ltd v Hagan [2016] EWHC 3076 (IPEC), [2017] FSR 24...............9.4.2.3 xii

TABLE OF CASES

Procter & Gamble Co v Reckitt Benckiser (UK) Ltd 2006] EWHC 3154 (Ch), [2007] FSR 13....................................................................................2.4.5.8 *Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936, [2008] FSR 8.................................2.2.4, 2.2.4.1, 2.2.4.2, 2.2.4.6, 2.3.1, 2.3.1 Pugh v Riley Cycle Co [1912] 1 Ch. 613 (1912) 29 RPC 196.........................................................2.1.1.2 *R v Johnstone [2003] UKHL 28, [2003] FSR 42..................................................................................9.7 *R v Registered Designs Appeal Tribunal Ex p. Ford Motor Co Ltd [1994] RPC 545 (Div Ct)...................................................................................... 2.9.3.3, 2.4.5.3, 6.2.9 R v Registered Designs Appeal Tribunal, ex p Ford Motor Co Ltd [1994] UKHL 10, [1995] RPC 167......................................................... 2.1.1.3, 2.4.5.3, 2.9.2.5, 5.6.5 R. H. Collier & Co. Ltd’s Application (1937) 54 RPC 253 (Registry)............................................2.9.2.5 Raft Ltd v Freestyle of Newhaven Ltd [2016] EWHC 1711...............................................................6.3.1 Re Bayer’s Design (1907) 24 RPC 65.................................................................................. 2.9.3.1, 6.2.6.1 Reckitt & Colman Products Ltd v Borden Inc [1990] UKHL 12, [1990] RPC 341..........................1.6.2 Red Spider Technology v Omega Completions Technology [2010] EWHC 59 (Ch)..............6.2.6, 6.7.6 Reed Executive Plc v Reed Business Information Ltd [2004] EWCA Civ 159, [2004] RPC 40.9.4.2.1.3 Response Clothing v Edinburgh Woollen Mill [2020] EWHC 148 (IPEC), [2020] FSR 25...................................................................... 5.4.1, 5.6.7.2 Robin Ray v Classic FM Plc [1998] FSR 622.......................................................................................7.3.2 Rolawn Ltd v Turfmech Machinery Ltd [2008] EWHC 989 (Pat), [2008] RPC 27.6.2.4, 6.2.6.1, 6.7.6 Sackett and Barnes v Clozenberg (1910) 27 RPC 104.....................................................................2.4.5.1 Sales v Stromberg [2005] EWHC 1624, [2006] FSR 7....................................................................6.3.2.6 *Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat), [2013] ECDR 1.................................2.2.4.1, 2.2.4.2, 2.2.4.5, 2.3.1, 9.4.8 Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339, [2013] FSR 9.................................................. 2.1.4.5, 2.2.4.2, 2.4.2.1, 9.4.8 *Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1430, [2013] FSR 10....................9.4.5 SAS Institute v World Programming [2013] EWCA Civ 1482, [2014] RPC 8..............................5.5.3.2 Satco Plastics Ltd v Super Pack Ltd [2013] EWPCC 29....................................................................6.7.2 Saunders v Wiel (1893) 10 RPC 29 (CA).........................................................................................2.9.2.5 Scholes Windows Ltd v Magnet Ltd [1999] EWCA Civ 532, [2002] FSR 172 (CA)....................6.3.2.3 *Schütz (UK) Ltd v Werit (UK) Ltd [2013] UKSC 16, [2013] RPC 16..................................6.7.2, 7.6.2 Sealed Air Ltd v Sharp Interpack Ltd [2013] EWPCC 23....................................................................9.1 *Sebel & Co Ltd’s Application No. 1 [1959] RPC 12........................................................................2.9.5.4 Shelfer v City of London Electric Lighting Co (No. 2) [1895] 2 Ch 388.........................................9.4.2.4 Sifam Electrical Instrument Co. Ltd v Sangamo Weston Ltd [1973] RPC 899.................. 2.9.2.5, 5.6.4 Signature Realty Ltd v Fortis Developments Ltd [2016] EWHC 3583 (Ch).................................9.4.2.3 Simmons v Mathieson (1911) 28 RPC 486.......................................................................................2.1.1.2 Smith & Nephew Plc v Convatec Technologies Inc [2013] EWHC 3955 (Pat), [2014] RPC 22...................................................................... 7.2.2, 9.4.1.2 *SmithKline Beecham Plc v Apotex Europe Ltd (No.2) [2004] EWCA Civ 1703, [2005] FSR 24..9.4.7 xiii

NAVIGATING DESIGN LAW

Societa Esplosivi Industriali SpA v Ordnance Technologies (UK) Ltd [2007] EWHC 2875 (Ch), [2008] RPC 12..............................................................................6.6, 6.7.3 Société des Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358, [2017] FSR 34 ........1.6.1.1 Solar Thomson Engineering Co Ltd v Barton [1977] RPC 537 (CA)............................................1.3.3.2 *Sony Computer Entertainment v Pacific Game Technology (Holding) Ltd [2006] EWHC 2509 (Pat)................................................................................................................2.3.4 Sony Computer Entertainment Inc v Ball [2004] EWHC 1738 (Ch), [2005] FSR 9.......................5.6.4 Sprint Electric Ltd v Buyer’s Dream Ltd [2018] EWHC 1924 (Ch)..................................................7.2.1 Steers v Rogers (1893) 10 RPC 245......................................................................................................7.3.2 *Stenor Ltd v Whitesides (Clitheroe) Ltd (1948) 65 RPC 1 (HL)............................................2.9.4, 2.2.3 Subsea Intervention Ltd v Comptroller General of Patents [2015] EWHC 3482 (Ch)..................2.4.15 *Thaler v Comptroller-General of Patents, Designs And Trade Marks [2020] EWHC 2412 (Pat), [2020] Bus. L.R. 2146.........................................................................7.1.4 The London Taxi Corporation Ltd v Frazer-Nash Research Ltd [2017] EWCA Civ 1729, [2018] ETMR 7........................................................................ 1.6.1.1, 1.6.2 TuneIn Inc v Warner Music UK Ltd & Anor [2021] EWCA Civ 441.....................................1.4.8, 6.7.5 Twentieth Century Fox Film Corp v Newzbin Ltd [2010] EWHC 608 (Ch), [2010] FSR 21.........6.7.4 Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd [2004] EWHC 1785 (Pat), [2005] RPC 7.............6.3.1 Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd [2005] EWCA Civ 761, [2005] RPC 36.............6.3.2.2 Ultraframe UK Ltd v Fielding [2002] EWHC 1964 (Ch), [2003] RPC 23, [2003] RPC 435..........6.2.8, 6.2.9 Ultraframe UK Ltd v Fielding [2003] EWCA Civ 1805, [2004] RPC 24................................6.2.8, 6.2.9 Unilever v Procter & Gamble [1999] EWCA Civ 3027, [2000] FSR 344............................................9.5 *United Wire Ltd v Screen Repair Services (Scotland) Ltd [2000] UKHL 42, [2001] RPC 24.......6.7.2 *Utopia Tableware v BBP Marketing [2013] EWPCC 15...............................................................9.4.1.2 *Uwug Ltd v Ball (t/a Red) [2013] EWPCC 35..................................................................................7.1.3 Valeo Vision SA v Flexible Lamps Ltd [1995] RPC 205.................................................... 2.9.1.1, 2.9.3.3 Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group Ltd [2009] EWHC 26 (Pat), [2009] ECDR 11...........................................................................1.6.4, 6.7.6 Vitof Ltd v Altoft [2006] EWHC 1678 (Ch)........................................................................................7.3.1 Warner v Gestetner [1987] Lexis Citation 1040, [1988] EIPR D-89................................................7.4.2 Werner Motors v Gamage (1904) 21 RPC 621 (CA)..........................................................................1.6.4 Wham-O Manufacturing Co v Lincoln Industries Ltd [1985] RPC 127........................................5.6.7.3 Whitby Specialist Vehicles v Yorkshire Specialist Vehicles [2014] EWHC 4242 (Pat), [2016] FSR 5......................................................................... 2.2.4.1, 6.3.1, Wildash v Klein [2004] NTSC 17, (2004) 61 IPR 324....................................................................5.6.7.2 Woodhouse UK PLC v Architectural Lighting Systems [2005] ECPCC 25, [2006] RPC 1........................................................................ 2.9.1.1, 2.9.6.1, 7.5.2 Yeda v Rhone-Poulenc Rorer [2007] UKHL 43, [2008] RPC 1......................................................2.2.2.1

xiv

TABLE OF CASES

UK INTELLECTUAL PROPERTY OFFICE & APPOINTED PERSON *Bissell AG’s Design [1964] RPC 125...............................................................................................2.9.5.3 *Bampal Materials Handling Ltd’s Design [1981] RPC 44............................................................2.9.5.3 O/283/99 Spice Girls Ltd’s Application for Cancellation of Registered Designs [2000] ECDR 148.........................................................................................................................2.9.2.5 O/379/00 Andreas Stihl AG & Co’s Trade Mark Application [2001] RPC 12............................2.4.16.4 O/363/01 ROYAL ENFIELD [2002] RPC 24...........................................................................2.6.1, 2.8.1 O/533/02 Cyril Sloggett v Hadley Industries plc (Design) [2002] UKIntelP o53302..................2.9.6.2 *O/017/04 Elizabeth Emanuel Trade Mark [2004] UKIntelP o1704, [2004] RPC 15................2.8.2.4 O/026/04 NIC Instruments Ltd’s Licence of Right (Design Right) Application [2005] RPC 1..........6.8 O/126/05 Justwise Group v Magis [2005] UKIntelP o12605..............................................................6.9 O/333/05 m.d.e.m [2005] UKIntelP o33305.....................................................................2.8.2.5, 2.8.2.6 O/065/09 PARKAIR [2009] UKIntelP o06509...............................................................................2.8.2.4 O/124/11 KALTUN MADRAN [2011] UKIntelP o12411.............................................................2.8.2.5 O/075/12 MMAX [2012] UKIntelP o07512...................................................................................2.8.2.7 O/076/12 CUCINA [2012] UKIntelP o07612................................................................................2.8.2.6 O/380/12 CHINGGIS KHAN [2012] UKIntelP o38012................................................................2.6.1.5 O/116/13 ALLORO [2013] UKIntelP o11613................................................................................2.8.2.7 O/203/13 AD [2013] UKIntelP o20313..........................................................................................2.8.2.5 O/285/13 WAPPLE.NET [2013] UKIntelP o28513.......................................................................2.8.2.7 O/295/14 EDGE [2014] UKIntelP o29514.....................................................................................2.8.2.7 O/169/16 ALTI [2016] UKIntelP o16916..........................................................................................2.8.1 O/017/17 TALK FOR LEARNING, TT Education Ltd v Pie Corbett Consultancy Ltd, [2017] RPC 17 .............................................................................................................................................2.8.1, 2.8.2.5 O/197/17 BERKSHIRE EYE CLINIC [2017] UKIntelP o19717...................................................2.8.2.5 O/253/17 Javaid v Erol [2017] UKIntelP o25317, [2018] RPC 3.......................................2.8.2, 2.8.2.5 O/636/17 Dexil v Bamboo Tools [2017] UKIntelP o63617...........................................................2.1.1.1 O/262/18 BREXIT [2018] UKIntelP o26218...................................................................................2.8.2.2 O/322/18 PULSE MINDSET [2018] UKIntelP o32218.................................................................2.6.1.4 O/577/18 AE [2018] UKIntelP o57718..............................................................................................2.8.1 O/600/18 airblue [2018] UKIntelP o60018....................................................................................2.8.2.3 O/209/19 System Products UK Ltd v Truscott Terrace Holdings LLC [2019] UKIntelP o20919, [2019] RPC 15..................................................................................2.6.1.5 O/126/20 Kailijumei Ltd v Sipavicius............................................................................................2.8.2.7 O/129/20 Frankland v Lambretta Club.............................................................................2.1.1.1, 2.4.5.6 O/217/20 H&S Alliance Ltd v GBL UK Trading Ltd ........................................................2.1.1.4, 2.4.12 O/374/21 H&S Alliance Ltd v GBL UK Trading Ltd .......................................................2.8.2.4, 2.1.1.4

NAVIGATING DESIGN LAW

EU COURT OF JUSTICE Case C-299/99 Koninklijk Philips Electronics v Remington Consumer Products (AGO) [2001] RPC 38, [2001] ETMR 48.................................................................................. 2.1.4.1, 2.1.4.2 Case C-28/04 Tod’s v Heyraud [2005] ECR I-5781, [2005] ECDR 32, [2005] EUECJ C-28/04..... 5.1 *Case C-5/08 Infopaq International A/S v Danske Dagblades Forening [2009] ECR I-6569, [2010] FSR 20, [2009] EUECJ C-5/08.......................................................................................... 5.5.1, 1.3.4.5 *Case C-32/08 FEIA [2010] RPC 13, [2009] EUECJ C-32/08.....................................7.1.3, 7.2.1, 7.2.3 *Case C-168/09 Flos SpA v Semeraro Casa e Famiglia SpA [2011] RPC 10, [2011] EUECJ C-168/09........................................................................................ 5.3 Case C-393/09 Bezpečnostní softwarová asociace (“BSA”) [2011] FSR 18, [2010] EUECJ C-393/09................................................................................... 2.1.1.4 *Case C-281/10 P PepsiCo Inc v Grupo Promer Mon-Graphic SA (Metal Rappers) [2012] FSR 5, [2011] EUECJ C-281/10..................................................................... 2.2, 2.2.4, 2.2.4.1, 2.2.4.2, 2.2.5 Case C-281/10 P PepsiCo Inc v Grupo Promer Mon-Graphic SA, Opinion of Advocate-General Mengozzi.................................................................................. 2.2.4.3 Case C-479/12 H. Gautzsch Großhandel GmbH & Co. KG v Münchener Boulevard Möbel Joseph Duna GmbH [2014] RPC 28, [2014] EUECJ C-479/12................................2.2.2.2, 4.1, 4.3, 4.6.3.1 Case C-205/13 Hauck v Stokke [2014] ETMR 60.......................................................................... 1.6.1.1 *Case C-345/13 Karen Millen Fashions v Dunnes [2016] ECDR 13, [2014] EUECJ C-345/13.................................................................2.2.4.1, 4.1, 4.5 *Case C-500/14 Ford v Wheeltrims [2016] ECDR 14.......................................................................... 4.4 *Joined Cases C-361/15 P & C-405/15 P Easy Sanitary Solutions BV v EUIPO/Group Nivelles NV (Shower Drains) [2017] EUECJ C-361/15, [2018] ECDR 4 .............................................................................................. 2.2.1, 2.2.2.2, 2.2.3, 2.3.2, 2.4.2.3, 2.5.2.1 *Joined Cases C-24/16 & C-25/16 Nintendo v BigBen [2018] ECDR 3, [2017] EUECJ C-24/16............................................................................ 2.3.2, 2.3.3 *Case C-395/16 DOCERAM v CeramTec GmbH [2018] ECDR 13, [2018] EUECJ C-395/16..................................................................... 2.1.4, 2.1.4.6 Case C-395/16 DOCERAM v Ceramtech, Opinion of Advocate-General Henrik Saugmandsgaard Øe .................................................... 2.1.4 Joined Cases C-397/16 & C-435/16 Acacia [2017] EUECJ C-397/16, [2017] ECDR 18....... 4.4, 2.3.5 *Joined Cases C-397/16 & C-435/16 Acacia, Opinion of Advocate General Saugmandsgaard Øe...................................................................... 4.4 Case C-217/17 Mast-Jägermeister v EUIPO [2018] ECDR 20....................................................... 2.4.12 Case C-310/17 Levola [2019] ECDR 2, [2018] EUECJ C-310/17............................................ 5.3, 5.4.1 Case C-538/17 P Murphy v EUIPO [2018] ECDR 12...................................................... 2.2.4.1, 2.5.2.1 *Case C-683/17 Cofemel [2020] ECDR 9............................................................5.3, 5.4.1, 5.6.7, 5.6.7.2 Case C833/18 Brompton Bicycle [2020] FSR 36, [2020] EUECJ C-833/18..............................................1.5.6, 2.1.4.6, 5.3, 5.4.1, 5.4.2 Case C237/19 Gömböc [2020] FSR 34............................................................................................ 1.6.1.1 xvi

TABLE OF CASES

P Bergslagernas Järnvaruaktiebolag v EUIPO [2020] ECJ C-284/20 P; Case C284/20...............2.2.4.1 Case C-728/19 Beverly Hills Teddy Bear referral ......................................................................... 4.6.3.3 Case C284/20 Bergslagernas Järnvaruaktiebolag v EUIPO [2020] EUECJ C-284/20P_CO ..... 2.2.4.1

EU GENERAL COURT/COURT OF FIRST INSTANCE Case T-128/01 DaimlerChrysler v OHIM [2003] E.C.R. II-701, [2003] ETMR 87, [2003] EUECJ T-128/01..................................................................................... 4.4 Case T-460/05 Bang & Olufsen v EUIPO [2007] ECR II-4207, [2008] ETMR 46...................... 1.6.1.1 Case T-9/07 PepsiCo Inc v Grupo Promer Mon Graphic SA (Metal Rappers) [2010] ECR II-981, [2010] ECDR 7, [2010] EUECJ T-9/07....................................... 2.2.4.3, 2.2.4.5 *Joined Cases T-10/08 & T-11/08 Kwang Yang v EUIPO/Honda (Internal Combustion Engine) [2011] EUECJ T-10/08, [2012] ECDR 2.......................................................................... 2.1.2, 2.2.4.3 *Case T148/08 Beifa (Instrument for Writing) [2010] ECDR 9........................................ 2.2.7, 2.2.7.1 Case T-153/08 Shenzhen Taiden v EUIPO/Bosch (Communications equipment) [2010] ECR II-2517, [2010] EUECJ T-153/08................................................2.2.4.2, 2.2.4.3, 2.2.4.8 Case T-68/10 Sphere Time v EUIPO/Punch (Watch attached to a lanyard) [2011] ECDR 20.......................................................................................2.2.1, 2.2.2.3, 2.2.4.2, 2.5.2.1 Case T-80/10 Bell & Ross v EUIPO/Kin (Watches)....................................................................... 2.2.4.3 Case T-231/10 Merlin v EUIPO (Toy game)..................................................................... 2.1.1.4, 2.2.4.1 Case T-246/10 Ivars v EUIPO/Motive (Mechanical speed reducer) [2011] EUECJ T-246/10.............................................................................................................. 2.1.4.1 *Case T68/11 Kastenholz v EUIPO/Qwatchme (Watch Dials) [2011] ECDR 15....................................................................................................2.1.1.2, 2.2.7, 2.2.7.2 Joined Cases T-83/11 & T-84/11 Antrax It v EUIPO/THC (Radiators)......................... 2.2.4.3, 2.2.4.6 *Case T-566/11 Viejo Valle SA v OHIM (Crockery) [2013] EUECJ T-566/11, [2013] 10 WLUK 710............................................................. 2.2.7, 2.2.7.2 *Case T-608/11 Beifa (Instrument for Writing) [2013] ECDR 17..................................... 2.2.7, 2.2.7.1 Case T-666/11 Budziewska v EUIPO/Puma (Form of a Domestic Cat) .............2.2.4, 2.2.4.2, 2.2.4.6 *Case T-55/12 Chen v EUIPO (Cleaning devices) [2014] ECDR 2................................... 2.2.7, 2.2.7.1 Case T-315/12 Tubes Radiatori v OHIM /Antrax It (Radiator) .................................................. 2.2.4.6 Case T-337/12 El Hogar v EUIPO /Wenf (Corkscrews) [2014] ECDR 1.................................... 2.2.4.8 Case T-357/12 Sachi v EUIPO/Gandia Blasco (Armchair) ............................................ 2.2.4.3, 2.2.4.8 Case T-494/12 Biscuits Poult v EUIPO/Banketbakkerij Merba (Biscuits) [2014] EUECJ T-494/12.................................................................................................... 2.1.1.1, 2.1.2 Joined Cases T-22/13 & T-23/13 Senz Technologies v EUIPO/Impliva (Umbrella) [2015] ECDR 19. 2.1.1.1, 2.1.1.5, 2.2.2.2, 2.2.4.1, 2.2.4.8, 2.3.1 Case T-39/13 Cezar v EUIPO/Poli Eco (Skirting Board) [2014] EUECJ T-39/13...................... 2.1.1.1 Case T-525/13 H&M Hennes & Mauritz v OHIM/Yves Saint Laurent (Hand bags).................... 2.3.1 Joined Cases T-615/13 [2015] EUECJ T-615/13, T-616/13 [2015] EUECJ T-616/13, T-617/13 [2015] EUECJ T-617/13 Aic v EUIPO/ACV Manufacturing (Heat Exchangers)..................... 2.1.2 xvii

NAVIGATING DESIGN LAW

Case T-334/14 Roca Sanitario v OHIM (Single-acting valve) [2015] EUECJ T-334/14............ 2.2.4.1 Case T-527/14 Rosenich v EUIPO [2017] EUECJ T-527/14......................................................... 4.6.2.1 Joined Cases T-828/14 & T-829/14 Antrax It Srl v EUIPO/Vasco Group (Radiators) [2017] EUECJ T-828/14, [2018] ECDR 7.................................................................................. 2.2.4.6 Case T-9/15 Ball Beverage Packaging Europe Ltd v EUIPO/Crown Hellas Can SA (Cans) [2018] ECDR 8................................................................................................................ 2.1.1.4, 2.5.2.1 Case T-98/15 Tubes Radiatori v EUIPO/Antrax It (Radiators for Heating) [2017] EUECJ T-98/15................................................................................................................ 2.2.4.6 Case T57/16 Chanel SAS v EUIPO (Ornament) [2018] ECDR 10.............................................. 2.2.4.1 Case T-90/16 Thomas Murphy v EUIPO/Nike Innovate (Electronic Watch Bracelet) [2018] ECDR 9................................................................ 2.2.4.1, 2.5.2.1 Case T306/16 Gamet v EUIPO (Handles) [2017] EUECJ T-306/16............................................ 2.2.4.1 Case T651/16 Crocs Inc v EUIPO/Gifi Diffusion (Clogs) [2018] EUECJ T-651/16.......... 2.2.1, 2.2.2.2 Case T209/18 Porsche v EUIPO (motor vehicle) [2019] EUECJ T-209/18................................. 2.4.5.3 Case T-515/19 Lego v EUIPO/Delta Sport Handelskontor [2021] EUECJ T-515/19........... 2.1.3, 2.1.4 Case T-579/19 The KaiKai Company Jaeger Wichmann v EUIPO [2021] EUECJ T-579/19..... 2.5.2.1

EUIPO INVALIDATION AND APPEAL BOARD ICD 420 Sunstar Suisse v Dentaid ................................................................................................. 2.2.2.2 ICD 990 Honda v Kwang Yang ...................................................................................................... 2.2.2.2 R 1009/2006–3 Sabine Decoodt (Cakes)......................................................................................... 2.1.1.5 R 1482/2009–3 Termo Organika v Austrotherm GmbH (Insulation Blocks).............................. 2.2.2.2 R 196/2008–3 Imperial International v Handl Cookware (Saucepan Handles)............................. 2.2.3 R 2081/2011–3 ASSTEC Assembly v Blech (Palettes) [2016] ECDR 7......................................... 2.1.4.2 *R 595/2012–3 A.C.J Ammerlaan (Vegetables and fruit) .................................................. 2.1.1, 2.1.1.4 R 609/2006–3 Zellweger Analytics Ltd’s Community Design (MIDAS logo) [2006] ECDR 17........................................................................................................................... 2.2.7.1 R 690/2007–3 Lindner Recyclingtech GmbH v Franssons Verkstäder AB (Chaff cutters) [2010] ECDR 1................................................................................................................ 2.1.4.5, 2.1.4.6 R 978/2010–3 Procter & Gamble v SCA Hygiene Products AB (Part of Sanitary Napkin)........ 2.4.5.8

AUSTRALASIAN CASES Bonz Group (Pty) Ltd v Cooke [1994] 3 NZLR 216....................................................................... 5.6.7.2 Burge v Swarbrick [2007] HCA 17, (2007) 234 ALR 204; 81 ALJR 950...................................... 5.6.7.2 Cuisenaire v Reed [1963] VR 719.................................................................................................... 5.5.3.2 Glass Block Constructions (Aust) Pty Ltd v Armourglass Australia Pty Ltd [2005] ADO 1......... 7.1.5 Henrick v Taplin & Henrick [2009] ADO 1....................................................................................... 7.1.5 LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941..................................................... 7.1.3

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US CASES Altera Corp.v Clear Logic, Inc 424 F. 3d 1079 (9th Cir. 2005)..........................................................6.10 Brooktree Corp.v Advanced Micro Devices 977 F.2d 1555 (Fed. Cir. 1993).....................................6.10 Curver Luxembourg SARL v Home Expressions Inc 938 F.3d 1334, 1334–43 (Fed. Cir. 2019)................................................................................3.2.2.1.3 Nichols v Universal Pictures Corp 45 F.2d 119 (2d Cir. 1930).............................................2.4.5.8, 5.4.2 Pacific Coast Marine Windshields Ltd v Malibu Boats, LLC et al 739 F.3d 694 (Fed. Cir. 2014).........................................................................................................3.3.3 Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017)....................................................5.2

OTHER Case I ZR 23/12, Bolerojäckchen (Bolero Jacket) BGH 13 December 2012, case comment at IIC 2014, 45(2), 239–243...................................................................................7.2.5 Case I ZR 126/06 Gebäckpresse II (Pastry Press II) BGH 9 October 2008..................................4.6.3.1 Case 3/12 O 5/04 Thane International Group’s Application (Ab Swing Hometrainer) [2006] ECDR 8..............................................................................................................................4.6.3.1 Case T 0844/18 CRISPR-Cas/BROAD INSTITUTE [2021] EPOR 9 (EPO TBA)............ 2.4.4.3, 7.4.3 Apple v Samsung ‘s-Gravenhage, 24 August 2011 ECLI:NL:RBSGR:2011:BR5755..........................5.1 Cuisenaire v South West Imports 1968 CanLII 122, [1969] SCR 208 (SCC)................................5.5.3.2

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TABLE OF LEGISLATION Links are to the text on https://www.legislation.gov.uk/ where available. Note that this site may not be fully up to date. The IPO maintains relatively up-to-date consolidated versions of the Registered Designs Act and Rules on its website – https://www.gov.uk/government/publications/registered-designs-act-and-rules.

UK LEGISLATION REGISTERED DESIGNS ACT 1949 (C. 88) s. 1.................................... 2.1.1, 2.4.7, 2.1.2, 2.3.5 s. 1B....................... 2.1.2, 2.2.1, 2.2.2, 2.2.3, 2.2.4, 2.1.1, 2.2.5, 2.3.1, 2.4.4, 2.4.6 s. 1C................................. 2.1.3, 2.1.4, 1.4.8, 6.2.8 s. 1D................................................................2.1.5 s. 2................................................. 7.1.3, 7.1.4, 7.2 s. 3............................................ 2.4.7, 2.4.10, 7.5.2 s. 3A....................... 2.4.9, 7.6.1, 2.2.6, 2.2.7, 2.8.1 s. 3B.......................... 2.4.3.2, 2.4.11, 2.4.12, 2.8.1 s. 3C..............................................................2.4.12 s. 3D................................................................2.8.1 s. 5...................................................................2.4.8 s. 7..........2.3.1, 2.3.2, 2.3.3, 9.4.4.1, 1.4.8, 2.4.3.2 s. 7A............................................2.3.2, 2.3.3, 2.3.4, 2.3.5, 4.3, 1.4.8, 2.1.1, 6.7.9 s. 7B................................................................2.3.6 s. 8.......................................................2.4.15, 1.4.8 s. 8A..............................................................2.4.15 s. 8B..............................................................2.4.15 s. 11.................................................................2.8.1 s. 11ZA.................. 2.2.5, 2.2.6, 2.2.7, 7.6.1, 2.8.1 s. 11ZB....................................... 2.6.1, 7.6.1, 2.8.1 s. 11ZC.................................................2.6.1, 2.8.1 s. 11ZD....................... 2.6.1, 2.4.3.2, 2.4.11, 2.8.1 s. 11ZE..................................................2.6.1, 2.8.1 s. 11ZF............................................................2.8.1 s. 11A.......................................................2.8.1, 8.3

s. 11AB..............................................................8.3 s. 12.......................................................8.4.1, 8.4.2 s. 12A......................................... 2.5.2, 2.5.4, 1.4.8 s. 12B......................................... 2.5.3, 2.5.4, 1.4.8 s. 13..............................................................2.4.4.2 s. 14........................ 2.4.4, 7.6.1, 2.2.5, 2.4.7, 2.4.8 s. 15ZA...........................................................3.3.1 s. 15A..............................................................7.3.1 s. 15B......................................... 7.4.1, 7.4.2, 7.6.2 s. 15C.................................................................8.2 s. 17................................................ 2.4.2.1, 2.4.2.2 s. 18...............................................................2.4.13 s. 19.......................................................7.5.2, 7.6.2 s. 20.................................................................7.6.1 s. 21.................................................. 2.4.16, 2.4.11 s. 22.................................... 2.4.2.1, 2.4.2.2, 2.4.16 s. 23.................................................................2.4.6 s. 24A.......................................................7.6.2, 9.4 s. 24B.................................................................9.4 s. 24C.................................................................9.4 s. 24D.................................................................9.4 s. 24E..........................................................9.3, 9.4 s. 24F...........................................................9.2, 9.4 s. 24G.................................................................9.4 s. 25.................................................................9.4.7 s. 26....................................................................9.5 s. 26A.................................................................9.5

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s. 26B.................................................................9.5 s. 26C.................................................................9.5 s. 26D.................................................................9.5 s. 26E.................................................................9.5 s. 26F..................................................................9.5 s. 27............................................... 2.8.3, 9.3, 2.8.2 s. 27A.................................. 2.8.2, 2.8.3, 6.9, 2.8.1 s. 27B..............................................................2.8.2 s. 28A.......................................................2.7, 2.8.1 s. 29.......................................................2.6.1, 2.8.2 s. 30.................................................................2.6.1 s. 31.................................................................2.6.1

s. 35..............................................................9.4.2.8 s. 35ZA....................................................9.7, 9.8.2 s. 35ZB............................................................9.8.2 s. 35ZC........................................................9.4.4.1 s. 35ZD..............................................................9.7 s. 36..................................... 2.4.2.3, 2.4.14, 2.4.15 s. 44............................................ 7.1.3, 7.2.1, 7.3.2 SCHEDULE A1 ............................................2.2.7 FIRST SCHEDULE.............................8.4.1, 8.4.2 SCHEDULE 1A.............. 2.5.2, 2.5.4, 1.4.8, 2.8.1 SCHEDULE 1B........................ 2.5.3, 2.5.4, 1.4.8

REGISTERED DESIGNS ACT (1989 VERSION) (1988 C. 48 SCHEDULE 4) s. 1.................................... 2.9.2, 2.9.6, 6.2.1, 6.2.9 s. 3.........................................................7.6.1, 2.9.6 s. 4.................................................. 2.9.5.4, 1.3.3.2 s. 6................................................................2.9.5.1

s. 7................................................................9.4.4.1 s. 10..........................................................1.4.4, 8.3 s. 11.................................................................2.9.6 s. 44..............................................................2.9.2.5

COPYRIGHT DESIGNS & PATENTS ACT 1988 (C. 48) s. 1.......................................... 5.4, 7.3.1, 6.2, 6.3.1 s. 2...................................................................6.7.2 s. 3......................................................................6.2 s. 4........................................................5.4, 5.3, 5.6 s. 9.........................................................7.1.3, 7.1.4 s. 10.................................................................7.1.5 s. 10A..............................................................7.1.5 s. 11....................................................................7.2 s. 12..........................................................1.5.3, 5.3 s. 16..................................... 5.5.1, 5.3, 6.7.2, 6.7.4 s. 17..........................................................5.5.1, 5.3 s. 18.......................................................5.5.1, 2.3.4 s. 18A.......................................................5.2, 5.4.1 s. 22.......................................................5.5.2, 6.7.7 s. 23.......................................................5.5.2, 6.7.7 s. 24....................................................5.5.2, 9.4.4.1 s. 27.......................................................5.5.2, 6.7.7 s. 29.................................................................5.5.6 s. 30.................................................................5.5.6 s. 30A..............................................................5.5.6 s. 31.................................................................5.5.6

s. 32............................................ 5.5.6, 2.3.3, 6.7.7 s. 36.................................................................6.7.7 s. 48.................................................................8.4.6 s. 51........................................ 5.6, 2.9.2, 6.2, 7.5.4 s. 53.................................................................7.5.3 s. 62..........................................................5.2, 5.4.1 s. 77............................................... 5.2, 5.4.1, 7.1.2 s. 79....................................................................5.6 s. 80............................................... 5.2, 5.4.1, 7.1.2 s. 88.................................................................7.1.5 s. 90.......................................................7.4.1, 7.4.2 s. 91.................................................................7.2.2 s. 92....................................................................8.2 s. 96....................................................................9.4 s. 97....................................................................9.4 s. 97A.................................................................9.4 s. 98....................................................................9.4 s. 99....................................................................9.4 s. 100..................................................................9.4 s. 101...........................................................9.2, 9.4 s. 101A........................................................9.2, 9.4 xxii

TABLE OF LEGISLATION

s. 102........................................................9.2, 9.4.3 s. 107..................................................9.4.4.1, 9.8.2 s. 108............................................................9.4.4.1 s. 113..................................................................9.4 s. 114..................................................................9.4 s. 114A.........................................................9.4.4.1 s. 114B.........................................................9.4.4.1 s. 115..................................................................9.3 s. 154...............................................................7.2.4 s. 171...............................................................5.5.6 s. 173...............................................................7.3.2 s. 175........................................................5.2, 5.4.1 s. 176...............................................................7.4.2 s. 178.......................................... 7.1.4, 7.1.5, 7.2.1 s. 213..............6.2, 6.3, 6.4, 7.3.1, 2.1.3, 2.9.2, 5.6 s. 214.....................................................7.1.3, 7.1.4 s. 215..................................................................7.2 s. 216..................................................................6.5 s. 217..................................................................6.4 s. 218........................................................6.4, 7.2.4 s. 219..................................................................6.4 s. 220..................................................................6.4 s. 221..................................................................6.4 s. 222.....................................................7.4.1, 7.4.2 s. 223...............................................................7.2.2 s. 224...............................................................7.5.2 s. 225..................................................................8.2 s. 226.......................................... 6.7.2, 5.5.1, 5.5.3 s. 227.....................................................6.7.7, 5.5.2 s. 228.....................................................6.7.7, 5.5.2 s. 229..................................................................9.4 s. 230..................................................................9.4 s. 231..................................................................9.4 s. 232...........................................................9.3, 9.4 s. 233..................................................................9.4 s. 234...........................................................9.2, 9.4 s. 235...........................................................9.2, 9.4 s. 236............................... 6.7.10, 6.7.11, 5.6, 7.5.4 s. 237...........................................................6.8, 6.9 s. 238...........................................................6.9, 8.3 s. 239........................................................6.8, 9.4.3

s. 240.....................................................8.4.2, 8.4.1 s. 241.....................................................8.4.2, 8.4.1 s. 242.....................................................8.4.2, 8.4.1 s. 243.....................................................8.4.2, 8.4.1 s. 244.....................................................8.4.2, 8.4.1 s. 244A..................................................6.7.9, 2.3.3 s. 244B............................................................6.7.9 s. 246..................................................................6.9 s. 247..................................................................6.9 s. 248..................................................................6.9 s. 249........................................................6.9, 2.8.2 s. 249A........................................................6.9, 2.7 s. 250..................................................................6.9 s. 251...........................................................6.9, 9.4 s. 252...........................................................6.9, 9.3 s. 253..................................................................9.5 s. 253A...............................................................9.5 s. 253B...............................................................9.5 s. 253C...............................................................9.5 s. 253D...............................................................9.5 s. 253E...............................................................9.5 s. 255....................................... 6.3.2.4, 6.4.1, 6.4.3 s. 256..................................................6.3.2.4, 6.4.3 s. 258...............................................................7.3.2 s. 259...............................................................7.1.5 s. 260.....................................................6.2.2, 6.7.3 s. 261...............................................................7.4.2 s. 263............................................. 5.6, 7.1.4, 7.2.1 s. 280..................................................................9.6

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OTHER STATUTES Companies Act 2006 (c. 46).................................................................................................................7.4.2 Competition Act 1998 (c.41)...................................................................................................................8.2 Consumer Protection Act 2015 (c. 15)................................................................................................9.8.2 County Courts Act 1984 (c. 28).................................................................................................9.3, 9.4.1.1 Crown Proceedings Act 1947 (c. 44)......................................................................................................8.4 Defence Contracts Act 1958 (c. 38).....................................................................................................8.4.6 European Union (Future Relationship) Act 2020 (c. 29)...................................................................1.4.8 European Union (Withdrawal Agreement) Act 2020 (c. 1)...............................................................1.4.8 European Union (Withdrawal) Act 2018 (c. 16).................................................................................1.4.8 Law of Property (Miscellaneous Provisions) Act 1994 (c. 36)...........................................................7.4.4 Law of Property Act 1925 (c. 20).........................................................................................................7.3.1 Legal Services Act 2007 (c. 29)................................................................................................................9.6 Patents Act 1977 (c. 37)..........................................................................................Throughout, esp. 1.6.4 Senior Courts Act 1981 (c. 54)................................................................................................................9.4 Trade Marks Act 1994 (c. 26)...................................................................... Throughout, esp. 1.6.1, 1.6.3

REGISTERED DESIGNS RULES 2006, SI 1006/1975 r. 2B.......................................................2.5.2, 2.5.3 r. 4................................ 2.4.2, 2.4.7, 2.4.12, 2.4.14 r. 5.........................................................2.4.2, 2.4.7 r. 6........................................ 2.3.1, 2.4.3.2, 2.4.5.7 r. 7...................................................................2.4.4 r. 8.........................................................2.4.9, 2.8.2 r. 9............................. 2.4.2.1, 2.4.9, 2.4.11, 2.4.14 r. 10...............................................................2.4.10 r. 11...............................................................2.4.14 r. 12...............................................................2.4.15 r. 13.......................................... 2.4.15, 2.5.2, 2.5.3 r. 14.................................................................2.6.1 r. 15.......................................................2.6.1, 2.8.2 r. 15A....................................................2.5.2, 2.6.1 r. 16.................................................................2.6.1 r. 17.................................................................2.6.1 r. 18.................................................................2.6.1 r. 19.................................................................2.6.1 r. 20.................................................................2.6.1 r. 21.................................................................2.6.1 r. 22.................................................................2.6.1 r. 23.................................................................2.6.1 r. 24.................................................................2.6.1

r. 25.................................................................2.6.1 r. 26.......................................................2.5.2, 2.5.3 r. 27.................................. 2.5.2, 2.5.3, 2.5.4, 7.6.2 r. 28........................................................2.4.13, 3.4 r. 29...............................................................2.4.13 r. 30...............................................................2.4.13 r. 31................................................. 2.4.6.2, 2.4.13 r. 32...............................................................2.4.13 r. 33.................................................................2.5.2 r. 34.................................................................7.6.2 r. 36....................................................2.4.3.3, 2.6.1 r. 37.................................................................2.6.1 r. 38...............................................................2.4.16 r. 39...............................................................2.4.16 r. 40...............................................................2.4.16 r. 41...............................................................2.4.16 r. 42.................................. 2.4.2, 2.5.2, 2.5.4, 2.6.1 r. 43....................................................2.4.2.4, 2.6.1 r. 44...............................................................2.4.14

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REGISTERED DESIGNS RULES 1995, SI 1995/2912 r. 14....................................................2.9.2.5, 2.9.6 r. 15....................................................2.9.1.1, 2.9.6 r. 16..............................................................2.9.5.4 r. 24..............................................................2.9.3.4

r. 25..............................................................2.9.3.5 r. 26................................................ 2.9.2.7, 2.9.5.4 r. 35..............................................................2.9.5.4

APPOINTED PERSON (DESIGNS) RULES 2015, SI 2015/169 r. 3................................................................2.8.2.2 r. 4................................................................2.6.1.5 r. 5.................................................. 2.8.2.2, 2.8.2.3

r. 6................................................................2.8.2.4 r. 7................................................................2.8.2.5

DESIGN RIGHT (PROCEEDINGS BEFORE COMPTROLLER) RULES 1989, SI 1989/1130 r. 3......................................................................6.9 r. 4......................................................................6.9 r. 5......................................................................6.9 r. 6......................................................................6.9 r. 7......................................................................6.9 r. 8......................................................................6.9 r. 9......................................................................6.9

r. 10....................................................................6.9 r. 11....................................................................6.9 r. 12....................................................................6.9 r. 13....................................................................6.9 r. 14....................................................................6.9 r. 15....................................................................6.9 r. 16....................................................................6.9

COMMUNITY DESIGN REGULATIONS 2005, SI 2005/2339 reg. 1....................................................................... reg. 1A............... 9.4, 9.4.1.1, 9.4.2, 9.4.2.5, 9.4.3, reg. 1B............................................................9.4.4 reg. 1C............................................................9.4.4 reg. 1D...............................................................9.4 reg. 2..................................................................9.5 reg. 2A...............................................................9.5 reg. 2B...............................................................9.5

reg. 2C...............................................................9.5 reg. 2D...............................................................9.5 reg. 2E................................................................9.5 reg. 2F................................................................9.5 reg. 4..................................................................9.6 reg. 5...............................................................8.4.4 Sched............................... 7.3.2, 8.4.1, 8.4.2, 8.4.4

INTELLECTUAL PROPERTY (ENFORCEMENT, ETC.) REGULATIONS 2006, SI 2006/1028 Generally...........................................................9.4

reg. 3...............................................................9.4.2

CIVIL PROCEDURE RULES 1998 Part 27 (& PDs).............................................9.4.6 Part 40 (& PDs).............................................9.4.8 Part 44 (& PDs)................................................9.3 Part 45 (& PDs)......................................9.3, 9.4.6

Part 52 (& PDs)..................... 2.8.1, 2.8.2.5, 2.8.3 Part 63 (& PDs)...................................................... 2.3.7, 2.4.2.4, 2.6.1.2, 2.8.2.4, 2.8.3, 9, 9.3, 9.4.6 Part 66 (& PDs)................................................8.4

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OTHER SECONDARY LEGISLATION Copyright (Industrial Process and Excluded Articles)(No. 2) Order 1989, SI 1989/1070 ......................................................................................................................................... 1.3.3.2, 2.9.2.7 Design Right (Reciprocal Protection) (No. 2) Order 1989, SI 1989/1294................ 6.1.2, 6.3.2.4, 6.4.3 Design Right (Semiconductor Topographies) Regulations 1989, SI 1989/1100 ......................................................................................................................... 1.3.4.1, 1.5.5, 6.7.9, 6.10, Designs (Convention Countries) Order 2007, SI 2007/277............................................................2.4.4.2 Designs (International Registration of Industrial Designs) Order 2018, SI 2018/23.. 1.5.2, 3.3.1, 7.6.4 Visiting Forces and International Headquarters (Application of Law) Order 1999, SI 1999/1736.8.4.7

EUROPEAN LEGISLATION REGULATION 6/2002 ON THE COMMUNITY DESIGN Art. 3...............................................................2.1.1 Art. 4...............................................................2.1.2 Art. 5...............................................................2.2.3 Art. 6...............................................................2.2.4 Art. 7.....................................................2.2.1, 2.2.2 Art. 8.....................................................2.1.3, 2.1.4 Art. 9...............................................................2.1.5 Art. 10............................................................2.3.1 Art. 11...............................................................4.6 Art. 12..........................................................2.4.15 Art. 14.....................................................7.2, 7.2.1 Art. 19............................................................2.3.2 Art. 20............................................................2.3.3 Art. 21...............................................................4.1 Art. 22............................................................2.3.6 Art. 23............................................................8.4.1 Art. 25....................................... 2.2.5, 2.2.6, 2.2.7 Art. 32...............................................................9.2 Art. 35............................................................2.4.7

Art. 36..................................................2.4.2, 2.4.7 Art. 41............................................................3.4.4 Art. 42............................................................3.4.4 Art. 43............................................................3.4.4 Art. 45............................................................2.4.9 Art. 46............................................................2.4.9 Art. 47............................................................2.4.9 Art. 81...............................................................9.3 Art. 89................................. 9.4.1.1, 9.4.2.3, 9.4.4 Art. 90.........................................................9.4.1.2 Art. 96.......................................... 1.6.1, 5.1, 6.1.2 Art. 106a.........................................................3.3.2 Art. 106b...........................................................3.2 Art. 106c.........................................................3.3.2 Art. 106d........................................................3.3.2 Art. 106e.........................................................3.3.2 Art. 106f.........................................................3.3.2 Art. 110...................................................4.4, 2.3.5 Art. 110a............................................................4.6

REGULATION 2245/2002 IMPLEMENTING COUNCIL REGULATION (EC) NO 6/2002 ON COMMUNITY DESIGNS Art. 1..................................................2.4.2, 2.5.2.1 Art. 3.............................................. 2.4.2.3, 2.5.2.1 Art. 4.............................................. 2.4.2.1, 2.5.2.1

Art. 11a.................................................3.3.2, 3.3.3 Art. 71............................................................3.4.2

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TABLE OF LEGISLATION

DIRECTIVE 98/71 ON THE LEGAL PROTECTION OF DESIGNS Art. 1...............................................................2.1.1 Art. 2...............................................................6.1.2 Art. 3...............................................................2.1.2 Art. 4...............................................................2.2.3 Art. 5...............................................................2.2.4 Art. 6.....................................................2.2.1, 2.2.2 Art. 7.....................................................2.1.3, 2.1.4 Art. 8...............................................................2.1.5 Art. 9...............................................................2.3.1

Art. 10..........................................................2.4.15 Art. 11..................................................2.4.2.1, 2.9 Art. 12............................. 2.2.5, 2.2.6, 2.2.7, 2.3.2 Art. 13............................................................2.3.3 Art. 14............................................................2.3.5 Art. 15............................................................2.3.4 Art. 16.....................................................1.5, 6.1.2 Art. 17........................................................5.2, 5.3 Art. 18............................................................2.3.5

DIRECTIVE 2004/48/EC ON THE ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS Art. 3..................................................................9.4 Art. 4..................................................................9.2 Art. 5..................................................................9.4 Art. 6..................................................................9.4 Art. 7..................................................................9.4 Art. 8..................................................................9.4 Art. 9.....................................................9.4.1.2, 9.4

Art. 10.....................................................9.4.4, 9.4 Art. 11..................................................9.4.1.1, 9.4 Art. 12..................................................9.4.2.4, 9.4 Art. 13.....................................................9.4.2, 9.4 Art. 14.....................................................9.4.6, 9.4 Art. 15.....................................................9.4.5, 9.4

TREATIES AND AGREEMENTS Agreement on the Withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community, TS No. 3/2020 Agreement on Trade-Related Aspects of Intellectual Property Rights (1994), Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, TS No. 10/1996 Berne Convention for the Protection of Literary and Artistic Works, 1161 U.N.T.S. 3, TS No. 63/1990 Geneva Act of The Hague Agreement concerning the international registration of industrial designs, 2279 U.N.T.S. 3, TS No. 13/2018 Locarno Agreement Establishing an International Classification for Industrial Designs (1968), 828 UNTS 437 (No. 11853), TS No. 4/2004 Paris Convention for the Protection of Industrial Property, 828 U.N.T.S. 305, TS No. 61/1970 Singapore Treaty on the Law of Trademarks (2006), 2633 U.N.T.S. 3, TS No. 32/2012 Trade and Cooperation Agreement between the United Kingdom of Great Britain and Northern Ireland, of the one part, and the European Union and the European Atomic Energy Community of the other part, TS No. 8/2021 Trademark Law Treaty (1994), 2037 U.N.T.S. 35, TS No. 76/1996 Universal Copyright Convention, 943 U.N.T.S. 178, TS No. 9/1975 Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (1973), 1863 U.N.T.S. 317, TS No. 5/2015 Washington Treaty on Intellectual Property in Respect of Integrated Circuits (1989), 28 I.L.M. 1483 xxvii

ABBREVIATIONS USED ©

Administrative Instructions

Administrative Instructions for the Application of the Hague Agreement

All ER

All England Law Reports

APDR

Appointed Person (Designs) Rules 2015

Art.

Article

BER

EU Block Exemption Regulation

CDIR

EU Community Design Implementing Regulation (EC) No 2245/2002

CDPA

CDR

Community Design Regulation (EC) No 6/2002

CDR05

Community Design Regulations 2005

CJEU

Court of Justice of the European Union

CFI

Court of First Instance of the European Union—now General Court

Court of Justice (senior part of the Court of Justice of the European Union)

CMA

Competition and Markets Authority

CMC

Case Management Conference

Common Regulations

WIPO Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement

CPR

Civil Procedure Rules

CUCD

Continuing Unregistered Community Design

DAS

WIPO Document Access System

Design Directive (Directive 98/71)

DPN

UK IPO Design Practice Notice

ECDR

European Copyright and Design Reports

EEA

European Economic Area

European Union

EWCA Civ

England and Wales Court of Appeal (Civil Division)

EWHC

England and Wales High Court

xxix

NAVIGATING DESIGN LAW

FSR

Fleet Street Reports

FTO

Freedom to Operate

FWE

File Wrapper Estoppel

General Court (junior part of the Court of Justice of the European Union)

Guide

UK IPO Registered Designs Examination Practice Guide

Guidelines

EUIPO Design Guidelines

Hague Agreement

Hague Agreement Concerning the International Registration of Industrial Designs, Geneva Act (1999)

IDB

International Designs Bulletin

IDS

Information Disclosure Statement

IPEC

Intellectual Property Enterprise Court

IPIC

Treaty on Intellectual Property in respect of Integrated Circuits

IPO

UK Intellectual Property Office

IR Order

The Designs (International Registration of Industrial Designs) Order 2018

MPEP

US PTO Manual of Patent Examining Practice

OHIM

Office for Harmonisation in the Internal Market (now EUIPO)

OSR

Draft Opinion Service Rules

Patents Act 1977

Paris Convention

Rule

RDA

Registered Designs Act 1949

RDEPG

UK IPO Registered Designs Examination Practice Guide

RDR

Registered Designs Rules 2006

RPC

Reports of Patent Cases

Section

SUD

Supplementary Unregistered Design

TCA

UK/EU Trade and Cooperation Agreement

TFEU

Treaty on the Functioning of the European Union

TMA

Trade Marks Act 1994

TMDN

Trade Marks and Designs Network

TPN

UK IPO Tribunal Practice Notice

TRIPS

Agreement on Trade-Related Aspects of Intellectual Property Rights

TTBER

Technology Transfer Block Exemption Regulation (EU) No 316/2014

UCD

Unregistered Community Design

xxx

ABBREVIATIONS USED

UKHL

UK House of Lords

UKSC

UK Supreme Court

UKUDR

UK Unregistered Design Right

USPTO

United States Patent and Trade Mark Office

VBER

Vertical Agreement Block Exemption Regulation (EU) No 330/2010

WIPO

World Intellectual Property Office

WLR

Weekly Law Reports

xxxi

PART 1 INTRODUCTION AND OVERVIEW “Trying to navigate by the chart provided by this crude statute is a risky business.”1

1.1 INTRODUCTION – LEARNING DESIGN LAW............................................................. 2 1.2

DESIGNS IN THE ECONOMY.................................................................................... 4

1.3

UK DESIGN PROTECTION – A BRIEF HISTORY........................................................15

1.4

DESIGN PROTECTION – THE INTERNATIONAL NORMS......................................... 23

1.5

UK DESIGN PROTECTION – THE CURRENT SITUATION IN OVERVIEW..................29

1.6

PROTECTION OF DESIGNS BY OTHER RIGHTS..................................................... 33

Jacob LJ, Dyson v Qualtex [2006] EWCA Civ 166, [2006] RPC 31 at [126].

NAVIGATING DESIGN LAW

1.1

INTRODUCTION – LEARNING DESIGN LAW

1.1.1

THE PURPOSE OF THIS BOOK

My experience is that even gifted IP students and practitioners often do not “get” design law. The aim of this book is to help them do so. It is in some senses an expanded successor to Foundation Level Registered Design Law & Practice Notes, written in 1997 by Edward Lyndon-Stanford and updated by both of us in 2003 when the UK joined the European design system. As we have now left it again, a further update is due. In the introduction to the 2003 edition, I said that “At the time of writing, we are in a country without maps.” The ground is now well-enough explored to be route-mapped, even if we cannot always mark the exact spot with an X. This book aims to explore the highways, without dallying too long in the picturesque byways, of design law. But first, a word or two on what the learning problems might be.

1.1.2

THE OVERLAP PROBLEM

As the Intellectual Property Office (“IPO”) website says, “The laws that make up designs legislation in the United Kingdom are complex” – even within the field of intellectual property. The complexity arises not because each type of design protection is complicated. Individually, they are probably simpler than patent or trade mark law. It results from the overlaps and interactions between several different design rights, the existence of each of which can only be understood from their histories. Creating a design protection regime from scratch would have given a much cleaner result, but the last reform which attempted to tackle design rights systematically was in 1988, and time has moved on since. At present, then, a design might be protected by a UK design registration or an International Registration designating the UK; by UK unregistered design right or copyright (but rarely both); and by either a Continuing Unregistered Community Design or a Supplementary Unregistered Design (but not both), and under some circumstances by a UK or International trade mark registration or by passing off. Where common provisions between the different rights exist, I have aimed to cross-reference them, and to highlight the differences.

1.1.3

THE DRAFTING PROBLEM

Judges often criticise the drafting of UK statutes (they have mostly come to regard EU legal drafting as a lost cause), but judicial criticisms of UK design laws stand out. Peter Prescott QC commented2 that the amendments to the Registered Designs Act were “an extraordinarily untidy, confusing and risky way of going about things.” The unfortunate Registered Designs Act has been under the knife at least four times since, with predictable consequences. Shortly afterwards, Sir Robin Jacob LJ3 turned his attention to UK unregistered design right: 2 3

In Oakley v Animal [2005] EWHC 210 (Ch) at [39]. In Dyson v Qualtex [2006] EWCA Civ 166, [2006] RPC 31.

PART 1 – INTRODUCTION AND OVERVIEW

“… It is not just a question of drafting… The problem is deeper: neither the language used nor the context of the legislation give any clear idea what was intended. Time and time again one struggles but fails to ascertain a precise meaning, a meaning which men of business can reasonably use to guide their conduct. The amount of textbook writing and conjecture as to the meaning is a testament to its obscurity.” The difficulty is compounded by the fact that the drafting style of each statute is different. The same terms (e.g. “design”) are used in different (though related) senses, and similar concepts are addressed in different terms, in different statutes. Students and practitioners who find these laws difficult to read or understand need not blame themselves – they are in the best possible company. Where the legislative intention can be guessed at I have aimed to explain “what was intended”.

1.1.4

THE CULTURAL PROBLEM

Intellectual property lawyers and judges, patent and trade mark attorneys in the UK are generally not instinctive fashion followers or commodity fetishists. Those who specialise in patents are trained to get straight to the technology, and treat design as the icing on the cake rather than the meat in the sandwich. Those in the copyright camp are inclined to see design as the poor relation of “pure” art, lacking high seriousness and pandering to the popular tastes of the mob. Designers themselves are not usually much help. They are better at expressing themselves through their work than at dissecting it, as lawyers sometimes have to. The first part of this book is an attempt to explain to legal practitioners why and how design, and design protection, matters.

NAVIGATING DESIGN LAW

1.2

DESIGNS IN THE ECONOMY

Design products now occupy an important place in the economy.4 Design is a collaboration between three essential participants: designers, makers, and users.5 The current UK registered design law represents an attempt “to strike a reasonable balance between the various interest groups: designers, industry, consumers”.6

Figure 1: Designers, makers and consumers

4 5 6

Green Paper on the Legal Protection of Industrial Design. Working document of the services of the Commission. III/F/5131/91-EN, June 1991, Introduction at p2 downloaded on 8 June 2021 from http://aei.pitt.edu/1785/. See for example Designer Maker User, A Newsom, E Suggett and D Sudjic, the Design Museum, Phaidon Press, 2016 at p6. As the EU Commission noted in their Green Paper on the Legal Protection of Industrial Design. Working document of the services of the Commission. III/F/5131/91-EN, June 1991 downloaded on 8 June 2021 from http://aei.pitt.edu/1785/ at p42 para 3.3.3.

PART 1 – INTRODUCTION AND OVERVIEW

1.2.1

WHY DO COMPANIES USE DESIGN?

“Only one company can be the cheapest. All the others must use design.”7 1.2.1.1 Product Differentiation The following quotes from business people indicate that companies use design to help their products compete without pricing themselves through the floor. • • •

•

“Design is potentially the number one product or service differentiator in a crowded marketplace.” Tom Peters, management consultant.8 “Design is a matter of survival. In the cacophony of the High Street, you need to set yourself apart to survive.” Anita Roddick, Chief Executive, The Body Shop.9 “At Sony, we assume all products of our competitors will have basically the same technology, price, performance and features. Design is the only thing that differentiates one product from another in the market place.” Nono Ohga, Chairman and CEO, Sony.10 “It is virtually impossible to detect quality differences between the products of major financial service companies, or petrol retailers or the various chemical companies, for instance. This means that companies and their brands have increasingly to compete with each other on emotional rather than rational grounds. The company with the strongest, most consistent, most attractive, best implemented and manifested identity will emerge on top in this race.” Wally Olins, co-founder, Wolff Olins advertising agency.11

The EU Commission’s 1990 Green Paper,12 which underlies the current EU and UK design laws, reflects this theme: “Industrial design has developed into one of the most powerful instruments for the marketing of industrial products. Its importance is steadily growing, even in “high-tech” consumer products. Competition between manufacturers of some consumer electronic products is based on the purity or elegance of the design just as much as on the technical performance of the product in question, which tends not to vary greatly between competitors due to the high level of technical quality generally reached in the industry, concentration of production of technical elements and standardisation.”13 7 8 9 10 11 12 13

Rodney Fitch, retail design entrepreneur, in Design Council Brochure, quoted in Design in Britain 1997-98 Facts, figures and quotable quotes, Design Council. Design Management Journal, Winter 1995, quoted in Design in Britain 1997-98 Facts, figures and quotable quotes, Design Council. Design Journal, 1996, quoted in Design in Britain 1997-98 Facts, figures and quotable quotes, Design Council The Value of Design Factfinder report, Design Council 2007. The Wolff Olins guide to Corporate Identity, Cower Books and the Design Council, 1990, quoted in Design in Britain 1997-98 Facts, figures and quotable quotes, Design Council. Green Paper on the Legal Protection of Industrial Design. Working document of the services of the Commission. III/F/5131/91-EN, June 1991 downloaded on 8 June 2021 from http://aei.pitt.edu/1785/. Ibid. p57 para 5.4.1.

NAVIGATING DESIGN LAW

Consistent with these industry opinions, research by the IPO14 found that “There was a very strong feeling amongst all respondents that the design of the product does help to differentiate against competitors. So, design registrations can affect commercial success”. A 2015 EU-wide review15 reported that “all sectors rated the need to differentiate products from competitors as the most important reason for design.” Thus, companies use good design to help their products and services, and their corporate brand, stand out in the market-place. Consumers benefit from being able better to distinguish between buying choices. 1.2.1.2 Product Innovation According to the Design Council,16 there is a link between good design and product innovation: “Businesses where design is integral to operations are twice as likely to have developed new products and services” as the average (around 80% more likely to have done so in the previous year, as against a UK average of 40%). According to a 2015 study for the EU Commission,17 “The most often cited reasons why design is seen as an important part of business strategy are that it improves the image of the company (63% of those surveyed); that it increases sales (40.5%); and that it can help with the development of new products and services (38%).” Some of these new products and services are commercialisations of research and new technology: “Design is one of the most powerful tools we have… for smoothing the journey from research insight to practical, marketable applications. It provides structure and focus to the innovation journey by helping to find practical applications for research insights and mapping the route from idea to market proposition.”18 1.2.1.3 General Company Performance More generally, spending on design is correlated with good economic performance. The Design Council found that between 1994 and 2004, “design intensive firms outperformed their peers by 200% through bull and bear markets”.19 There is evidence of a productivity effect: research published by the IPO shows a significant positive correlation between UK companies owning UK registered designs and higher sales per employee.20 14 Dr James Moultrie & Finbarr Livesey, Design Right Case Studies, Chapter 3 of The economics of design rights, 2011, IPO website. 15 The Economic Review of Industrial Design in Europe — Final Report, MARKT/2013/064//D2/ST/OP, Europe Economics for DG Internal Market & Services, January 2015, published 6 June 2016, EU Commission website. 16 The Value of Design Factfinder report, Design Council 2007, Design Council website. 17 The Economic Review of Industrial Design in Europe — Final Report, MARKT/2013/064//D2/ST/OP, Europe Economics for DG Internal Market & Services, January 2015, published 6 June 2016, EU Commission website. 18 Innovation by design: How design enables science and technology research to achieve greater impact, Design Council 2014, Design Council website. 19 Design for Innovation: Facts, figures and practical plans for growth, A Design Council paper published to coincide with the Government’s Innovation and Research Strategy for Growth, December 2011, Design Council website. 20 Elif Bascavusoglu-Moreau & Bruce S. Tether, Registered designs and business performance – exploring the link, Chapter 2 of The economics of design rights, 2011, IPO website.

PART 1 – INTRODUCTION AND OVERVIEW

New products and new businesses do not have the luxury of an established reputation and associated goodwill to attract repeat purchases. Good design helps these businesses, in particular, break into established markets. As the EU Commission’s Green Paper noted, “much innovation has been made possible by industrial designs developed within small- and medium-sized enterprises”.21 As a result, design investment is correlated with company growth. Rapidly growing businesses spend more on design, and value design more highly, than average.22 1.2.1.4 Export Performance Design spending is found to be correlated with export performance.23 A study for the EU Commission24 noted that design had been estimated to contribute 53% of the value of EU exports, 35% of the value of UK exports and 25% of the value of Danish exports. EPO/EUIPO research indicates that the net exports of EU design-intensive industries are many times higher than those of patent-intensive or trade mark-intensive industries.25 1.2.1.5 Investment in Design Good design requires investment. The design process itself involves commitments in time not only by designers but also by others involved in developing and marketing new products, and remaining innovative requires changes to the production line which can be expensive. As the EU Green Paper noted: “Superior design is an important instrument for European industries in their competition with industries from third countries with lower production costs. It is the design, which in many cases, is decisive for the commercial success of products thus allowing European enterprises, investing heavily in development of designs to prosper.”26 And the level of investment by UK industry in design is therefore indeed high. A 200827 survey found that the UK companies surveyed spent 2.1% of their turnover on design – a significant proportion. Within this, around 1.98% of turnover was spent on “technical design” – using engineering techniques to solve technical issues. The expenditure on “user design” – including ergonomics and aesthetics – was around 0.35% of turnover on average, with the biggest 21 Green Paper on the Legal Protection of Industrial Design. Working document of the services of the Commission. III/F/5131/91-EN, June 1991 downloaded on 8 June 2021 from http://aei.pitt.edu/1785/, at p31 para 3.3.3. 22 The Value of Design Factfinder report, Design Council 2007, Design Council website. 23 Design delivers for business: A summary of evidence from the Design Council’s Design Leadership Programme, Design Council September 2012, Design Council website, and UK design as a global industry: International trade and intellectual property, The Big Innovation Centre, 2012, IPO website. 24 The Economic Review of Industrial Design in Europe — Final Report, MARKT/2013/064//D2/ST/OP, Europe Economics for DG Internal Market & Services, January 2015, published 6 June 2016, EU Commission website. 25 Intellectual Property Rights Intensive Industries: Contribution to Economic Performance and Employment in the European Union. Industry-Level Analysis Report, Table 5: EU external trade in IPR-intensive industries, EPO/the EUIPO October 2016, EPO website. 26 Ibid. Introduction p2. 27 F Livesey & J Moultrie, Company spending on design: Exploratory survey of UK firms 2008, Design Council website.

NAVIGATING DESIGN LAW

companies spending the least. Companies spent 1.27% of turnover on “promotional design” and 0.36% on “identity design”. Extrapolating from these results they estimated the total UK annual expenditure on designs at around £60bn. Apparently, it is money well spent. Of firms which had recently increased their turnovers, “The most important impact of design… was felt to be improvements in improving brand image and the firm’s reputation (around three quarters of respondents) and more than half also felt it improved customers satisfaction, communication with customers, turnover, profits, employee motivation, business productivity and allowed firms to access new markets.”28 1.2.1.6 Legal Protection of Design Investment Companies investing in design need, and expect, to be able to recoup their investment through sales. The IPO found29 that according to data from one survey of companies, “The average length of return from design investment is about 3.86 years, with a minimum period of less than two months and a maximum of more than 25 years. The values reported at the tenth percentile and the 90th percentile of the design length distribution are respectively fewer than six months and more than seven years.” According to data from another IPO study, “we found average benefit lives of 3.7 years in services and 4.6 years in production.” The extent to which innovative companies can recoup their investment depends on their profits from sales. Inevitably, not every new product is a success, and the profits from the successful product designs need to cover the investment lost on the unsuccessful. Profits from sales depend on the success of the design (i.e. the total volume demand for it); the lifetime of that success (designs in many fields go out of fashion in months or years); the margin which the innovator company can charge; and the share of sales of the market for that design which the company can retain. Imitators have two advantages over innovators; firstly, they avoid the cost of new design, and secondly, by imitating only successful products, they avoid the failures which are an integral part of being an innovative company. Imitative competition has several effects on innovative companies. Firstly, as the imitator’s costs are lower, it takes market share away from the innovator, and/or erodes the innovator’s profit margin by driving prices down to compete. Secondly, it erodes the distinctiveness of a new design, and obscures the association between a new design and its designer and the innovative company which makes it. Thirdly, it can hasten the demise of the design, as lower pricing can 28 Ibid. 29 Jonathan Haskel & Annarosa Pesole, Design services, design rights and design life lengths in the UK, Chapter 1 of The economics of design rights, 2011, IPO website.

PART 1 – INTRODUCTION AND OVERVIEW

accelerate the decline into unfashionableness. All of these factors reduce the ability of innovative companies to recoup their investment in product design and innovation, and their ability to acquire a reputation for innovation.

1.2.2

WHY DO CONSUMERS BUY WELL-DESIGNED PRODUCTS?

“Those who wish to purchase an article for use are often influenced in their choice not only by practical efficiency but by appearance. Common experience shews that not all are influenced in the same way. Some look for artistic merit. Some are attracted by a design which is strange or bizarre. Many simply choose the article which catches their eye.”30 Companies use design to persuade consumers to spend more on a given type of consumer product than they need to – to pay, in other words, for something additional to the basic functionality of a product in the form of its design. Not every product is a consumer product and not every buyer is an end consumer. Intermediate buyers buy containers or packaging to sell on with their own products. However, in selecting products they are guided by what they think the end consumer will want to buy, so the ultimate eye is that of the end consumer. Most products have some kind of use which gives them a “use-value” or utility, which may bear no relation to its price. A dishwashing machine, for example, has a value to the user equivalent to the labour it saves. “Homo Economicus”, the neoclassical rational consumer, buys in a way that maximises utility within the available budget. However, even if utility in the broad sense can be measured at all, it has long been clear that real people do not usually buy entirely “rationally” – they often pay more for a chosen product than the price of its cheapest substitute. Where the price of a product greatly exceeds that of a substitute with the same basic functionality, it may be seen as a “luxury” product. But all welldesigned products have a hint of “luxury” about them. Why should a consumer wish to pay more? Economists, sociologists, psychologists and marketers have charted some of the other common factors affecting buying choices. For Marx, products fell into three categories: capital goods (bought for the purposes of further production); necessities of life; and articles of luxury.31 Under capitalism, articles of luxury were the exclusive realm of the capitalist class, the “rich man, which was clothed in purple and fine linen”.32 As competition drove down prices, the wages of the working class would tend to sink to the subsistence level, with the result that workers could usually afford only necessities and 30 Amp v Utilux, per Lord Reid p107. 31 Karl Marx & Friedrich Engels, Capital Volume II 1885, Chapter 20 v Exchange within Department II – Necessities of Life and Articles of Luxury. 32 King James Bible, Luke 16:19.

NAVIGATING DESIGN LAW

not luxuries.33 Although in the cyclical boom times “[t]he working-class… enjoys momentarily articles of luxury ordinarily beyond its reach”, price rises would soon follow, and the inevitable cyclical crash would, until the coming of the revolution, restore the working class to its position of bare subsistence. Some consumers buy for reasons unconnected with utility. No doubt, some have what might loosely be called purely “aesthetic” motivations – appreciation of the artistry, the craft, or the materials making up the product, rather than their use-value or rarity-value. Some consumers are conservative, and simply repeat-purchase, 34 or buy on the repute of the seller, or the strength of their advertising.35 Recent studies36 highlight “hedonic consumers”, who purchase to satisfy, and sometimes to express, their own thoughts and feelings. Much advertising of luxury products is not directly concerned with the nature of the product but is intended to link the product with dreams, aspirations, lifestyles and moods. Such consumers buy what seem to be utility articles for reasons unconnected with their use-value or beauty – an off-road vehicle to drive the children to school, for example, or a pair of lumberjack boots to walk to the shops – because these products signal something to them about freedom, a simple lifestyle, or some other value or ideal. Veblen, 37 in The Theory of the Leisure Class, 38 suggested that “conspicuous consumption” and display of luxury goods is used to signal elite social status – specifically, membership of the nonworking or “leisure” class. Both the fact that luxury goods are not solely functional and the high price paid for them are intended to signal that the owner is no mere wage slave. For the Veblen consumer, a visibly higher price is an important part (indeed, the most important part) of the buying decision. The Veblen consumer thus takes into account the views of others in making a buying choice to select something few others could afford to have, as other types of consumer do in different ways. Others buy products because many of their peers do – sometimes adopting a fashion, sometimes 33 The force of his argument is weakened at this point by his admission that the working class treat some luxuries – tobacco is his example – as necessities. He developed this point further in his essay The Poverty of Philosophy (Misère de la philosophie) Progress Publishers, 1847, in which the working class are seen as buying not the most useful, but the cheapest products in the marketplace: “in a society founded on poverty the poorest products have the fatal prerogative of being used by the greatest number.” 34 Swann refers to these as “Routine consumers”, see G.M. Peter Swann, The Economics of Innovation: An Introduction at p191. 35 Swann refers to these as “Galbraith consumers”, see G.M. Peter Swann, The Economics of Innovation: An Introduction at p191. 36 Hirschman, Elizabeth C., and Morris B. Holbrook. Hedonic Consumption: Emerging Concepts, Methods and Propositions, Journal of Marketing 46, no. 3 (1982): 92-101. Accessed June 8, 2021. doi:10.2307/1251707. 37 For whom Veblen goods – positional goods for which the demand rises with price – were named. 38 The Theory of the Leisure Class: An Economic Study of Institutions, Thorstein Veblen, (1899).

PART 1 – INTRODUCTION AND OVERVIEW

wearing an unofficial uniform that signals membership of a group.39 Leibenstein refers to this as the “bandwagon effect”.40 The bandwagon consumer will pay a higher price for products because they are more fashionable or popular. Maslow suggested that human motivations are ordered into a hierarchical sequence, according to which people satisfy their physiological and safety needs, then their needs for acceptance, then for esteem, and finally (in some cases), are able to realise their full individual potential. The behaviour of individual consumers will therefore change over their lives with their circumstances.

SelfActualisation Esteem Love/Belonging Safety Physiological Figure 2: Maslow’s Hierarchy of Needs 41

He later added to this model “aesthetic needs” (in a broad sense which includes appreciation of beauty, symmetry, simplicity, completion, and order), positioned between esteem and selfactualisation.42

39 Swann refers to these as “Douglas consumers”, see G.M. Peter Swann, The Economics of Innovation: An Introduction at p191. 40 H. Leibenstein, Bandwagon, Snob, and Veblen Effects in the Theory of Consumers’ Demand, The Quarterly Journal of Economics, Volume 64, Issue 2, May 1950, Pages 183–207, https://doi.org/10.2307/1882692. 41 Abraham Maslow, A Theory of Human Motivation, 1943. 42 Abraham Maslow, Motivation and personality Harper & Row 1970 pp 2, 6, 51, 235-236.

NAVIGATING DESIGN LAW

1.2.3

WHAT IS THE ROLE OF DESIGNERS?

“You have to concentrate hard on customer values and taste but you also have to be able to predict what customers are going to like that they don’t yet know about.”43 Not everyone who creates a design has “designer” in their job title – some may be described as engineers, programmers, artists or architects – but UK schools and colleges of design have existed since the mid19th century, and designers are trained and organised as an independent profession with encouragement of creative and independent thought. Professional designers are not simply motivated by the desire to please end-consumers. Innovative companies – those whose investment the legal systems are there to protect – expect designers to predict and create, as much as follow, consumer trends. Personal recognition and reputation with peers bring in business, but are also important in their own right for some designers. Leading modern fashion or product designers44 are better known and appreciated by consumers than most modern artists. Designers45 are driven by Maslow’s “aesthetic needs”. Many also inherit the pride in workmanship from the craftsmen who were their predecessors. As a result, they may spend time on detail (choice of a precise shade of white, for instance) that seems unnecessary or even imperceptible to manufacturers and consumers. From the beginnings of mass production, good design has been seen by many designers as a positive force for social improvement. Though the benefits may be hard to quantify, it is plausibly claimed by designers46 that the design of, for example, public spaces can moderate undesirable behaviours and improve quality of life. Designers also increasingly take environmental issues such as sustainability into account. On these issues, the interests of designers reach through their clients to the ultimate consumer. Thus, although the interests of professional designers are broadly aligned with those of their clients who manufacture products, there are also latent conflicts between a designer’s interest in designing for sustainability and a manufacturer’s interest in “induced obsolescence”; between the designing for appearance and designing for functional performance;47 between the reputation of the company and that of the individual designer,48 and so on. 43 John Towers, Chief Executive, Concentric (formerly Chief Executive of the Rover Group), Design Journal, 1995, quoted in Design in Britain 1997-98 Facts, figures and quotable quotes, Design Council website. 44 Sir Jony Ive lately of Apple Inc., for example. 45 Like the scientists, and mathematicians discussed by Maslow in Motivation and personality Harper & Row 1970 pp 2, 6. 46 For example, Creating safe places to live through design, Design Council report 2014, Design Council website. 47 The Apple™ iPhone™ 4 antenna, for example. 48 Compare, for example, LG’s use of Prada to design their first smartphone with Apple’s efforts to associate Steve Jobs rather than Jony Ives with the iPhone™, which followed so soon after LG.

PART 1 – INTRODUCTION AND OVERVIEW

1.2.4

WHAT IS THE ROLE OF COPYISTS?

“We let others come out, stand back and watch, and then see what it takes to take the category over.”49 New product designs, and other innovations, do not sell at a constant rate. Some (perhaps the majority) fail ever to take off. The rest start small, with a few early adopters. Eventually, when a new design has reached the entire market who want it, sales will fall to a steady-state replacement rate. Rogers proposed50 a model of diffusion of innovations (often used to describe adoption of fashion51) by dividing the market, by standard deviations from the mean time of adoption, into classes of adopters.

Figure 3: Rogers’ Diffusion Cycle52

In order to recoup design investment, innovative companies normally need to maintain their market share of goods to the design as it is adopted by the majority. However, “fast-seconds” – 49 Coca Cola™ executive interviewed in in Coke’s Big Marketing Blitz, Business Week 30 May 1983 p60, quoted in Steven P. Schnaars, Managing Imitation Strategies, Free Press 2002. 50 Everett Rogers Diffusion of innovations, Free Press, London, NY, USA 1962. 51 See for example Stuart Oldham, Design and Design Management in the UK Footwear Industry, Design Council 1982. 52 Everett Rogers, based on Rogers (1962) Diffusion of innovations supra, published in the public domain on Wikipedia.

NAVIGATING DESIGN LAW

competitors who are quick to copy successful products – will in many sectors seek to take part of that market share. If copying is widespread, then companies that spend on design are directly disadvantaged compared to “fast-seconds”, in three respects. Firstly, the copyist avoids the design spend itself. Secondly, the copyist avoids the marketing costs of acquainting the market with a new design. Thirdly, the copyist copies only successes, and avoids the cost of the inevitable failures produced by any innovator from time to time. Against these advantages, it is hard for innovative companies to match the pricing adopted by copyists. Either their market share will fall or their prices will be forced to do so, reducing the likelihood of a return on their investment and therefore reducing the likelihood of future investments in innovation. All other things being equal, a small innovator faced with determined competition from a large, established competitor rarely wins out. Some consumers are well-served by the arrival of cheaper competition; in particular those for whom price is the main buying criterion. However, cheaper pricing and take-up by the majority dissuade Veblen consumers, innovators and early adopters – a phenomenon known as “induced obsolescence”.53 Luxury goods companies which specialise in high-priced sales to these high-net-worth types of consumer therefore lose their market for a design when the arrival of lower-priced competition brings it to the masses. They can follow the competition down-market, and in the process lose their reputation for elite goods, or move on to new designs sooner than they would have done in the absence of competition. Raustiala & Sprigman54 argue that this reduction in the lifetime of a design in the early adopter segment of the market drives a higher rate of design innovation. Others have criticised this thesis, even in relation to the fashion sector on which it was based.55 Whilst induced obsolescence by way of piracy may in some markets generate a higher rate of change of design, it is not clear that more rapid changes retain the same level of investment in design. More generally, even if induced obsolescence benefits companies, consumers (and society in general) do not necessarily welcome, or benefit from, being induced to dispose of functioning goods before their time merely to keep pace with fashion, 56 and many designers share that view. 53 See Kal Raustiala & Chris Sprigman, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, Virginia Law Review Vol. 92, No. 8 (Dec., 2006), pp. 1687-1777, and The Knockoff Economy: How Imitation Sparks Innovation, OUP 2015. 54 See Kal Raustiala & Chris Sprigman, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, Virginia Law Review Vol. 92, No. 8 (Dec., 2006), pp. 1687-1777, and The Knockoff Economy: How Imitation Sparks Innovation, OUP 2015. 55 C. Scott Hemphill & Jeannie Suk Gersen, The Law, Culture, and Economics of Fashion, Stanford Law Review, Vol. 61, March 2009. 56 The prescient consumerist vision of J.G. Ballard (whose first job was in advertising) can be appreciated if not enjoyed in The Subliminal Man (1963), in The Complete Short Stories, vols 1 & 2 (2006).

PART 1 – INTRODUCTION AND OVERVIEW

Thus, copying may affect the originator not only by directly lost sales but also in ways which are hard to quantify; lower-priced competition erodes not only profit but also status of a design.

1.3

UK DESIGN PROTECTION – A BRIEF HISTORY

1.3.1

UNREGISTERED TEXTILE PROTECTION

Legal protection of industrial designs came properly into being in the early 19th century, in England and France. The stimulus, in each case, was the textile industry. Both countries had acquired trade networks, which were transforming into empires. Textiles were an important export, and much energy had been devoted to developing domestic export substitutes for popular Indian fabrics, much in demand in colonial markets and, likewise, to substitutes for Chinese ceramics and tea which were popular at home. Automatic spinning and weaving machinery, rapidly rolled out in the last decades of the 18th century, made textiles the first fruits of mechanised industrial mass-production. Advances in printing made it possible to cheaply produce (and to copy) printed fabrics, and their manufacturers were granted short-term57 protection in the UK by the Calico Printers’ Act 1787, the Designing and Printing of Linens Act 1789 and the Calico Printers’ Act 1794, for “any new and original pattern or patterns for printing linens, cottons, calicos or muslins”. Shortly thereafter, similar protection was granted under the Sculptures Copyright Act 1798 for busts of the human and animal form.

1.3.2

THE BIRTH OF UK DESIGN REGISTRATION

In the aftermath of the Napoleonic Wars, although the general blockades of French exports from and British imports to the Continent ceased, imports of luxury goods into Britain remained heavily taxed and imported silks remained banned altogether until 1820. In the three decades thereafter, the Free Trade campaign led to reductions in, and ultimately abolition of, most import duties. Without these shields, the British luxury goods industries found their French opponents as formidable in commerce as they had been in war. British consumers, long-accustomed to desiring French luxuries as forbidden fruit, were now able to acquire them cheaply and legally. As an example, the silk trade in the UK had been protected from competition by heavy tariffs and (for ribbons, stockings and gloves) outright prohibitions. When tariffs were lowered to 30%, a level matching the cost of smuggling, the resulting rise in imports from France took significant business from the UK weavers. Imports were not the only threat. Hand-loom weavers were also under threat from the rise of technology, in the form of power looms. They attempted to stop the tide by destruction of looms, 57 Two months, extended to three by later Acts.

NAVIGATING DESIGN LAW

and to defend their wages by wage-fixing, but mechanisation could not be resisted. The invention, in 1805, of the Jacquard loom which was reprogrammable using punched cards, made things much worse for the hand-weavers; it allowed power loom weavers to change styles rapidly without down-time, and de-skilled the setup processes required to do so. By the 1830s, textile exports from Lyon included whole new ranges of fashionable patterns every season, which the British (who had been happy to copy smuggled French designs during the prohibition era) could not match. British industry, led by the textile makers, now wanted more protection from Parliament which was however moving away from tariffs and price controls and towards free trade. A Select Committee on the silk trade was appointed. In its 1832 Report58 it was unable to make recommendations, but the evidence it collected shows that it was primarily the superiority of French design which was putting the UK weavers out of business. Lyon had long had an official monopoly on silk production, locally controlled by guilds. Various earlier legal controls there gave way in 1787 to a six-year local registration system59 for textile and furniture designs, replaced in 1806 by a more ambitious system involving registration and enforcement before local trades councils,60 and the Courts subsequently extended the scope of that law to all industries and regions of France. Separately, the Revolutionary government passed a copyright statute in 1793 which was also broad enough to cover many industrial designs.61 In 1830s Britain, intellectual property protection existed only for a scattered group of arts: books,62 engravings,63 sculptures of the human and animal forms,64 dramatic performances,65 and designs printed on certain types of cloths.66 Each form of protection had been granted on the basis of industry special pleading, and the result lacked consistency as to form or objectives, and was difficult to enforce. One of the witnesses before the 1832 Silk Trade Committee was John Bowring MP who had visited and studied the institutions at Lyon. Bowring’s evidence to the Select Committee in 1832,67 and an 1835 speech,68 show that he thought the UK weavers were doomed – they could not be 58 Report from Select Committee on the Silk Trade, 2 August 1832, Parliamentary Session: 1831-32, Paper Number: 678. 59 The second city of France, soon to become the home of the Jacquard Loom, the first programmable manufacturing machine. 60 The Conseil des Prud’hommes. 61 At least arguably, though the position of three-dimensional works was unclear for some years. 62 The Copyright Act, 1709. 63 The Engraving Copyright Acts 1734 & 1767. 64 The Sculpture Copyright Acts 1797 & 1814. 65 The Dramatic Copyright Act 1833. 66 The Designing and Printing of Linens Act 1787 and the Linens, etc. Act 1794. 67 Report from Select Committee on the Silk Trade, 2 August 1832, Parliamentary Session: 1831-32, Paper Number: 678. 68 HC Deb 28 July 1835 vol 29 cc1164-77.

PART 1 – INTRODUCTION AND OVERVIEW

protected from competition, only stimulated to meet it. The school of design at Lyons; the French protection regime by which designs of all kinds were protected by a sealed deposit; and the trade tribunal69 which cheaply and quickly gave an expert determination in all kinds of intellectual property and other trade disputes; helped give French textile design its competitive edge, and should be copied. By 1835, design protection issues had acquired a sufficient head of steam for Robert Peel,70 the son of a textile manufacturer but a keen free trader, to recommend a Select Committee on Arts and their Connexion with Manufactures. Its remit was: “to inquire into the best means of extending a knowledge of the ARTS and of the PRINCIPLES of DESIGN among the People (especially the Manufacturing Population) of the Country; also to inquire into the Constitution, Management and Effects of Institutions connected with the Arts.” The evidence told them that British professional designers existed in some numbers, and were not behind the French in skill. However, the message, from all branches of trade,71 was that the lack of effective recourse against piracy was one of the reasons why British manufacturers did not invest in design. The Report made several chief recommendations, including that there should be “a system of registration” of designs and “a cheap and accessible tribunal”. Thus in 1839, the two Copyright of Designs Acts72 extended design protection, first for textile designs and then for a wide range of products, by way of registration.

1.3.3

THE DEVELOPMENT OF DESIGN PROTECTION IN THE UK

1.3.3.1 Registered Designs The drafting of the 1839 Act was poor, and it was swiftly replaced by two parallel successors – the Copyright of Designs Act, 184273 (which protected “ornamental” designs) and the ‘Useful’ Designs Act of 184374 (which did likewise for “functional” designs75). Each of these protected “new and original” designs. The original complex lists of allowable types of product were replaced by generic wording referring to “any Article of Manufacture”. The 1842 Act protected designs “for the ornamenting

69 70 71 72 73 74 75

The Conseil de Prud’hommes in Lyons, empowered to act in design matters in 1806 by Napoleon. The Tory leader, who would become the next Tory Prime Minister in 1841. Except for the highest-end gold- and silverware where piracy was uneconomical. 2 & 3 Vict c. 17. 5 & 6 Vict. c.100. 6 & 7 Vict. c. 65. And for which, see The United Kingdom’s forgotten utility model: the Utility Designs Act 1843, Lionel Bently and Brad Sherman, I.P.Q. 1997, 3, 265-278.

NAVIGATING DESIGN LAW

of” such an article, or “any Substance, artificial or natural”, “whether applicable for the pattern, or the shape and configuration, or for the ornament thereof”. The 1843 Act protected designs for an such an article “having reference to some purpose of Utility, so far as such design shall be for the Shape or Configuration of such Article”. At the same time, the former unregistered protection for textile designs was repealed. Under these Acts, applicants filed pictures or samples at the Designs Registry, which very promptly76 registered them. The lifetime was three years.77 Marking of the corresponding sold articles with the design number and class was mandatory, or the benefit of registration was lost. There was no prior art search or examination. However, the Registrar would refuse designs that did not meet the formal requirements, and had a discretionary power to refuse those which were apparently for packing or labels rather than the article of manufacture they contained, or which were contrary to public order or morality. He could also order an application for an ornamental design to be converted into a useful design application and vice versa. There was no publication. Useful designs could be inspected in the presence of the Registrar, but ornamental designs were kept secret until after expiry, to avoid registration becoming an aid to copyists. Enforcement was primarily before the police Magistrates,78 although actions before the common law Courts and the Courts of Equity were also possible (and necessary if the design was to be revoked). The English justice system underwent sweeping changes in the later part of the 19th century, creating the High Court from the fusion of the courts of common law and equity, and parallel changes affected the design registration system. In 1858,79 the County Courts were given jurisdiction to hear design infringement cases. The Patent Office absorbed the Registrar of Designs in 1875,80 and the Patents and Designs Act of 188381 simplified the design system by fusing the two parallel design registration systems into one, setting a harmonised term of five years for all types of design, making all designs secret until expiry, and giving the Registrar an unfettered discretion to refuse.82 It also abolished the jurisdiction of the Magistrates. 76 Compared to the patent system of the time. 77 With shorter terms (a year or less) for various classes of textile designs. Considerably less than the copyright terms available to sculptures and engravings. 78 See Design crime: back to the future or forwards to the past?, David Musker, JIPLP 2014 9 (12): 976-985 doi: 10.1093/jiplp/jpu163. 79 An act to… consolidate and amend the laws relating to the copyright of designs for ornamenting articles of manufacture, 21 & 22 Vict c. 70. 80 By the Copyright of Designs Act 1875, 25 & 26 Vict. c. 68. 81 The Patents, Designs, and Trade Marks Act, 1883 (46 & 47 Vict. c. 57). 82 At that stage, the lifetimes had varied between one and five years, depending on the class concerned.

PART 1 – INTRODUCTION AND OVERVIEW

It appeared at the time that the fusion of the two design systems was not intended to change what could be registered.83 However, the definition of what could be protected was based on that for ornamental designs, and the Courts came to exclude mechanical devices and methods or principles of construction84 from protection. This exclusion, the ancestor of the present “dictated by function” exclusion, became statutory in the 1919 Act.85 Applicants could cover more than one class in an application, and validity and infringement rights were limited by the classes chosen. Designs could be revoked if the proprietor failed to mark products in the required form, or if they were manufactured abroad but not in the UK within six months of registration. The 1883 Act laid down common provisions for patents, trade marks and designs on discretion to refuse; refusal of immoral subject matter; use of the Royal arms or State emblems; hearings; evidence; filing and notification; registration of transactions; claiming priority; correction of errors; false marking, and so on, which remain largely parallel today even though the Acts governing the separate rights have been diverging for over a century. In 1907, the lifetime of design registrations was extended to add two further five-year terms, a total of 15 years. This was to remain the term for the next 82 years, until increased to 25 years by the Copyright, Designs & Patents Act 1988 (the “CDPA”). 1.3.3.2 Copyright The UK system of copyright protection began with books, and extended to other works in a piecemeal fashion. In 1839, when design registration began, there were already separate copyright regimes protecting engravings and sculptures, but nothing for paintings or drawings – protection for these did not arrive until 1862. After 1842, most copyright works had to be registered at Stationers Hall before they could be enforced.86 Registration ceased to be mandatory in 1912,87 and became impossible in 2000. The registered design laws at first excluded engravings and sculptures, then for a while in the nineteenth century protected them in parallel with copyright, then excluded them once more88 until, in 2001, EU harmonisation swept the old scheme away.

83 Crawford-Munro, for example, wrote that “it is immaterial whether the design be useful or ornamental” – The Patents, Designs, and Trade Marks Act, 1883, J E Crawford Munro, Stevens & Sons, 1884, p.85. 84 For the latter, see Moody v Tree (1892) 9 RPC 333. 85 The Patents and Designs Act 1919, 9 & 10 Geo V c. 80. 86 As is still the case in the US, for US proprietors. 87 By virtue of the Copyright Act 1911 which reflected UK ratification of the then-current version of the Berne Convention. 88 By RDA Former s. 4 and RDR 1995 (and predecessors) r. 26.

NAVIGATING DESIGN LAW

In turn, the Copyright Act 1911 excluded89 anything which could have been registered as a design and which was mass-produced or intended to be so, and the Copyright Act 1956 replaced90 the “intention” test with a quantitative one: the exclusion bit once 50 articles were made and one sold. There was a corollary: until 50 had been made and one sold in the UK, the prior uses of the design whilst protected by copyright did not take away novelty 91 so that the design could still be validly registered – a form of lengthy grace period. This bright-line division was then progressively eroded. The Design Copyright Act 1968 allowed parallel copyright protection of a design which was registrable and had been registered. The result of the 1971 House of Lords Amp v Utilux judgment92 was that many fairly functional designs that had previously been deemed registrable (and had been registered) were in fact unregistrable, and so unaffected by the exclusion of registrable designs. Separately, in its 1941 King Features judgment93 the House of Lords made it clear that the copyright in a two-dimensional drawing (a Popeye cartoon) could be infringed by making a three-dimensional article (a doll) to the drawing. The Copyright Act 1956 contained a “lay recognition” defence94 which prevented a three-dimensional article from infringing a drawing if “the object would not appear, to persons who are not experts in relation to objects of that description, to be a reproduction of the artistic work”, which the Gregory Committee thought “desirable in the protection to be given to a drawing by reason of its reproduction as a building, machine or utilitarian article; otherwise the scope of the Copyright Act would again be extended into fields far beyond its main or original intent and properly to be covered by other forms of protection if at all.”95 However, this ill-thought-out defence was emasculated in a series of cases,96 approved by the House of Lords in their 1979 LB Plastics v Swish judgment.97 The result was that, for several decades, registrable designs were protected by copyright for only 15 years whereas those too functional to be registered were protected for the full term expiring 50 years after the death of the draftsman of the engineering drawings from which they were constructed. The House of Lords criticised this state of affairs in British Leyland v Armstrong,98 following 89 90 91 92 93 94 95 96

s. 22. s. 10. RDA Former s. 6(4), inserted by the Copyright Act 1956. Amp Inc v Utilux Pty Ltd [1972] RPC 103 (HL). King Features Syndicate Inc v O&M Kleeman Ltd (1941) 58 RPC 207 (HL). At s. 9(8). Report of the Copyright Committee, 1951 Cmnd. 8662 at para 258 p95. Notably Dorling v Honnor [1964] RPC 160, British Northrop Ltd v Texteam Blackburn Ltd [1974] RPC 57 (CA) & Solar Thomson Engineering Co Ltd v Barton [1977] RPC 537 (CA). 97 [1979] RPC 551 (HL). 98 [1986] RPC 279 (HL).

PART 1 – INTRODUCTION AND OVERVIEW

shortly after which Parliament enacted the CDPA. This Act provided a more successful defence99 having the effect of excluding copyright protection of drawings from being infringed by all but artistic three dimensional or “shape” designs of articles. For surface decoration designs, however, copyright remains. Where a protectable copyright work was industrially exploited, the term during which it could be used to prevent three-dimensional articles being made was limited to 25 years from the point where 50 were made and one sold (though this term limitation did not apply to sculptures and certain other products which were excluded from design protection).100 This limitation was removed in 2014 (though this is currently under Government review).101 1.3.3.3 Unregistered Design Right In place of copyright, a new UK “unregistered design right” (“UKUDR”) was created by Part III of the CDPA, giving protection against copying, without any formalities, for the shorter of 15 years from design or ten years from first marketing, to designs other than for spare parts (with licences available as of right in the last five years). This right is, however, only available to UK residents, nationals or companies, or those of a few other qualifying territories (for example New Zealand).

1.3.4

THE ARRIVAL OF EUROPEAN HARMONISATION

1.3.4.1 Topography Right UDR assimilated the protection given to Semiconductor Topographies in the UK, although there the nationality requirements are much more liberal and make protection available to, amongst others, US and Japanese nationals. The amendments to the CDPA which apply in the case of topographies are specified in the Design Right (Semiconductor Topographies) Regulations 1989102 which enact the EU Semiconductor Topography Directive.103 1.3.4.2 Design Harmonisation – Amendments to the Registered Designs Act 1949 (“RDA”) The EU Design Directive104 took effect in the UK on 8 December 2001, resulting in massive amendment of all substantive law parts of the RDA and the Registered Designs Rules.105 However, the validity of existing designs (or designs resulting from existing applications) continued to be governed by the previous law. 99 100 101 102 103 104

s. 51. s. 52 and The Copyright (Industrial Process and Excluded Articles)(No. 2) Order 1989. By the Enterprise and Regulatory Reform Act 2013 (c. 24). SI 1989/1100. Directive 87/54 on the legal protection of topographies of semiconductor products, OJ L 24, 27 January 1987. Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs, OJ L289, 28 October 1998, pp. 28–35. 105 Effected by The Registered Designs Regulations 2001, SI 2001/3949 and The Registered Designs (Amendment) Rules 2001, SI 2001 No. 3950.

NAVIGATING DESIGN LAW

1.3.4.3 EU Unregistered Community Design right (“UCD”) With the passage in May 2002 of the EU Community Design Regulation (the “CDR”),106 the three-year EU unregistered Community Design right joined the existing design rights available in the UK, and litigation began immediately.107 1.3.4.4 EU Registered Community Designs (“RCD”) The EU Intellectual Property Office (“EUIPO”) (at that time called the “Office for Harmonisation in the Internal Market” or, colloquially, OHIM) accepted applications for Registered Community Designs from 1 January 2003, with a first filing date of 1 April 2003. There was an immediate effect on the number of UK registered design filings, as most non-UK applicants switched to the RCD system. 1.3.4.5 EU Copyright Harmonisation Although copyright remains a creature of national law, the EU Information Society (“InfoSoc”) Directive108 harmonised infringement and defences.109 The terms of protection for copyright works were harmonised by the Copyright Term Directive.110 The CJ took a broad view of the effect of these Directives, using them as a springboard to harmonise other aspects of copyright law including the thresholds for protection.111 1.3.4.6 International Designs In 1999, WIPO brought the negotiations of the Geneva Act, an improved version of the Hague Agreement allowing international registration of designs, to a conclusion. It allowed the accession and designation of intergovernmental bodies such as EUIPO, and permitted countries which perform novelty examination to subject International Design applications to the same level of scrutiny. The EU acceded with effect from 1 January 2008, and quickly became the most popular designation. The UK joined in its own right as from 13 June 2018. At this point, the types of design protection available in the UK consisted of: 1. 2. 3. 4. 5.

Registered Designs; UK UDR, or Copyright; UCDs; RCDs;

106 Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs OJ L003, 5 January 2002, p.1. 107 With Mattel Inc v Woolbro (Distributors) [2003] EWHC 2412 (Ch), [2004] FSR 217, also concerning UK UDR and copyright. The case settled with an agreed pan-EU injunction, damages and costs. 108 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, OJ L 167, 22 June 2001 pp10-19. 109 In line with the WIPO Copyright Treaty. 110 Council Directive 93/98/EEC of 29 October 1993 harmonising the term of protection of copyright. 111 Starting with C-5/08 Infopaq International A/S v Danske Dagblades Forening [2010] FSR 20.

PART 1 – INTRODUCTION AND OVERVIEW

6. International Designs (EU); and 7. International Designs (UK). 1.3.4.6 UK Withdrawal from the European Union (“Brexit”) The UK withdrew from the EU on 30 January 2020, but was treated as remaining until the end of the implementation period – i.e. 11pm on 31 December 2020. The following day, all existing RCDs and International Designs (EU) ceased to have effect in the UK, but were replaced by equivalent UK registered designs. UCDs were likewise replaced by UK national versions.

1.4

DESIGN PROTECTION – THE INTERNATIONAL NORMS

“… differences clearly exist in several fields relating to the law and practice of industrial designs…”112

1.4.1

INTRODUCTION

The last quarter of the twentieth century saw great progress towards harmonisation of patent and trade mark protection systems around the world, driven by the globalisation of trade and the adoption in 1989 of the TRIPs Agreement as part of the World Trade Organisation regime, and also by the rise of regional systems such as the European Patent Convention and the Community Trade Mark system, and global protection systems such as the Patent Cooperation Treaty and the Madrid Protocol which were acceptable to common law and examining countries as well as civil law countries. Although the ultimate goal of substantive patent and trade mark law harmonisation has so far proved unreachable, the negotiations and draft treaties have themselves had a harmonising effect; and their offspring, WIPO’s Patent Law Treaty, Trademark Law Treaty and Singapore Treaty on the Law of Trademarks, have at least brought the world’s systems closer together. Sadly, the same is not true of design protection. The efforts to develop a WIPO Design Law Treaty seem so far to have failed. Without it, the international provisions relating to design protection are basic, and design protection has evolved into widely differing forms in different countries or regions.

1.4.2

THE PARIS CONVENTION

“All that was inserted in the Convention was the mere obligation for member States to protect industrial designs. Nothing is said about the means of providing such protection.”113 Although the Paris Convention (“PC”) has always recognised that some States provide protection for “industrial designs” (i.e. the appearance of mass-produced articles), this was 112 WIPO SCT/19/6, Industrial Design Law and Practice – Analysis Of The Returns To WIPO Questionnaires, 13 May, 2008 at p11 para 58, available at http://www.wipo.int. 113 G Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property, BIRPI 1969, p86, available at http://www.wipo.int.

NAVIGATING DESIGN LAW

made compulsory114 only in the 1958 revision. The PC only requires protection; it need not be by registration or specific laws relating to unregistered designs but could also be by copyright or even unfair competition law.115 The PC has a few further requirements relating to designs: •

•

There are detailed provisions for claiming priority in design applications.116 Briefly, the period for claiming priority is six months from the “first” filing, and priority may be claimed from (or to) a utility model; Designs may not be forfeited (i.e. revoked) for non-use in, or importation into, the country concerned.117

In addition, the general requirements of the PC apply to designs, namely: • • • •

National Treatment and industrial establishments;118 A grace period of at least six months for renewal fee payments;119 Product marking not to be a pre-requisite for protection;120 Temporary protection for designs shown at International Exhibitions (“Expos”).121

Beyond this, some further features of UK Registered Design law are mentioned in the PC, but in relation to patents and trade marks rather than designs, namely: • • • •

Independence from the fate of foreign equivalents;122 Restoration after lapse;123 Prohibition on registration of State Emblems etc;124 Customs seizure.125

These have mostly made their way into UK law via the EU Directive 98/71 on Legal Protection of Designs and other EU provisions, the drafting of which drew on patent and trade mark precedents.126 114 PC Art. 5quinquies. 115 See Guide to the Application of the Paris Convention for the Protection of Industrial Property, G Bodenhausen, BIRPI 1969, p86, available at http://www.wipo.in. 116 PC Art. 4. 117 PC Art. 5B. 118 PC Art. s 2 & 3. 119 PC Art. 5bis(1). 120 PC Art. 5D. 121 PC Art. 11. 122 PC Art. 4bis for patents and 6 for trade marks. Until 2001, the lifetime of designs was calculated from the priority date – that changed to conform to the Directive. 123 PC Art. 5bis(2) for patents. 124 PC Art. 6ter for trade marks. 125 PC Art. 9 for trade marks 126 See, generally, Community Design Law: Principles & Practice, D Musker, Sweet & Maxwell, London 2001.

PART 1 – INTRODUCTION AND OVERVIEW

1.4.3

THE BERNE & UNIVERSAL COPYRIGHT CONVENTIONS

These are discussed in greater detail in Part 5. Briefly, after a period of contention in the early part of the 20th century, “works of applied art” are now required to be protected in all countries which are parties to the Berne Convention. However, protection may either be by copyright or by registration and, in the latter case, protection by copyright may be severely curtailed. The Universal Copyright Convention similarly allows curtailment of copyright protection where “works of applied art” are protected by copyright. This flexibility resulted in widely different treatments of 3D designs protected by copyright, from the wholly cumulative (France, the Netherlands) to the almost non-existent (the UK, Italy), with many variants in between.

1.4.4

TRIPS

The World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”), has slightly more specific requirements for design protection.127 Again, however, it does not specify the form of protection, permitting either registration or copyrightstyle protection. The term must be at least ten years.128 Parties can apply either a novelty standard or an originality standard in granting protection, and are permitted (but not required) to reject designs dictated by function.129 Proprietors are guaranteed minimum infringement rights (against “making, selling or importing articles” with the same or a similar design, for “commercial purposes”).130 Exceptions to the rights conferred by design protection are allowed only131 if they: • • • •

are limited; do not unreasonably conflict with the normal exploitation of protected industrial designs; and do not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the legitimate interests of third parties.

These restrictions mirror those for patents. However, unlike patents, there is no provision permitting compulsory licensing of designs. The existing UK compulsory licensing provision132 (never used) was repealed in 2001.

1.4.5

THE WIPO DRAFT DESIGN LAW TREATY (“DLT”)

WIPO undertook a decade-long project to develop a treaty harmonising design law. Initially ambitious, it shrank to a set of procedural points which, whilst useful, did not go far enough. 127 128 129 130 131 132

TRIPS Art. s 25 & 26. TRIPS Art. 26(3). TRIPS Art. 25(1). TRIPS Art. 26(1). TRIPS Art. 26(2). RDA Former s. 10.

NAVIGATING DESIGN LAW

Many of these were taken from the Singapore Trade Mark Law Treaty, and all were uncontentious. However, unfortunately, the DLT became enmired in the general North-South standoff which has weakened WIPO in recent years. At the time of writing, a decade after the first attempt to get the DLT to a WIPO General Assembly, it remains blocked by demands which have nothing much to do with the substance of the DLT itself.

1.4.6

DE FACTO HARMONISATION

The oldest design protections, those of Britain and France, formed the prototypes for most of the national design registration systems of the 20th Century. The British model (patent-style “monopoly” protection, with a novelty requirement and some examination) was adopted with variants across the common-law world, and also in Japan (via which its influence spread to some other Asian countries). The French model (featuring a copyright-style deposit and no examination) was adopted across the Francophonie, and formed the original basis of the Hague Agreement system for International Registration of designs. In the common-law world, generally, copyright protection was curtailed in favour of design registration. In the civil law world, dual or cumulative protection was much more common.133

1.4.7

EU HARMONISATION

The harmonised European Union (“EU”) design system set out in Directive 98/71 on the Legal Protection of Designs (the “Design Directive” or “DD”) and Regulation 6/2002 on the Community Design has been influential well beyond the borders of Europe. The other European Economic Area (“EEA”) countries have similar design systems, and the Australian design system is deeply influenced by the EU system. More recently, free trade agreements with other countries and regions often include “TRIPSPlus” provisions that incorporate elements of the EU design scheme.

1.4.8

REMAINING EU INFLUENCES IN UK DESIGN LAW

The combined effect of the European Union (Withdrawal) Act 2018134 (the “Withdrawal Act”) and the European Union (Withdrawal Agreement) Act 2020135 (the “Withdrawal Agreement Act”) were to maintain the effect of the state of the law as it stood at the end of the Implementation Period for UK withdrawal from the EU,136 with the Withdrawal Act as basis in place of the European Communities Act 1972 (repealed by the Withdrawal Act), such changes as were necessary to translate it into UK domestic law being made by Statutory Instruments. The Design Directive, like other Directives, is not itself brought into domestic law, but as it stands behind many parts of the RDA (which is “EU-derived domestic legislation”) it will continue 133 134 135 136

Though not universal: Italy was a notable exception. 2018 c. 16. 2020 c. 1. IP Completion Day, 31 December 2020.

PART 1 – INTRODUCTION AND OVERVIEW

to be consulted when interpreting those parts. The CDR is gone as regards registered designs, but remains in force as retained “direct EU legislation” in two parallel but alternative amended versions applicable to types of unregistered design right.137 The English language version is authoritative, but other languages may still be consulted in interpreting the legislation.138 The CDR and the harmonised parts of the RDA constitute “retained EU law”, and pre-IP Completion Day judgments of the EU Court of Justice139 (“retained EU case law”) and of the UK courts (“retained domestic case law”) on these remain of the highest authority. Although the Supreme Court and the Court of Appeal can depart from retained EU case law, it is clear from Warner v TuneIn140 that this power will only be “exercised with great caution”. Post-withdrawal EU judgments will continue to have potential persuasive status.141 Title IV of the UK/EU Withdrawal Agreement142 contains transitional provisions143 which require the UK to continue the effect of pre-withdrawal accrued rights held by anyone (whether UK, EU, or other nationality, domicile or residence), implemented by various Statutory Instruments made under the Withdrawal Act and Withdrawal Agreement Act and discussed in detail below. As a fail-safe, the Withdrawal Agreement itself is required to have direct effect in the UK,144 and is given that effect by s. 7A of the Withdrawal Act as amended by the Withdrawal Agreement Act.

Table 1: Provisions of UK and EU Design Law within the Withdrawal Agreement UK-EU WA

Subject

UK Legislation

Art. 54

Continued RCD Protection

RDA s. 12A, Sched. 1A

Art. 56

Continued IR/EU Protection

RDA s. 12B, Sched. 1B

Art. 57

Continuing UCDs (“CUCDs”)

Reg 6/2002 as amended for CUCD

Art. 59(1)

Pending RCD applications

RDA s. 12A, Sched. 1A

Art. 61

Exhaustion

RDA s. 7A(4)

Art. s 67-68

Ongoing Litigation

RDA Sched. 1A, 9-10; Sched. 1B, 9-10; Reg 6/2002 as amended for CUCD Art. s 82-82

137 138 139 140 141 142

Namely Continuing Community Unregistered Designs and Supplementary Unregistered Designs. Apparently this may even apply to Directives, see Greenaway v Parrish & Ors [2021] EWHC 1506 (QB). Including the General Court. [2021] EWCA Civ 441 in particular at [75]-[83] (Arnold LJ) & [196]-[202] (Voss MR). 2018 Act s. 6 as amended, and see Warner v TuneIn supra, Rose LJ at [182]-[183]. Agreement on the Withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community, Treaty Series No. 3 (2020), CP 219; EU OJ 2019/C 384 I/01. 143 Ibid. Title IV especially Art. s 54, 56, 57 & 59. 144 Ibid. Art. 4, see also Art. s 5-7.

NAVIGATING DESIGN LAW

The post-withdrawal UK/EU Trade and Cooperation Agreement145 (the “TCA”) also contains IP provisions146 which effectively require UK law to “lock in” parts but not all of the EU design system as it stood on IP Completion Day as set out below. Also included are enforcement provisions similar to those of the EU Enforcement Directive.147 Going forward, UK law is to be read so as to implement the UK’s obligations under the TCA by virtue of s. 29 of the European Union (Future Relationship) Act 2020148 (the “Future Relationship Act”), see Lipton v BA City Flyer.149

Table 2: Provisions of UK and EU Design Law within the UK/EU Free Trade Agreement TCA Art.

Subject

UK Legislation

DD Art.

CDR Art.

223

Exhaustion

RDA s. 7A(4)

245(1)

RD Protection

3(1)

1(2)

245(2)

Rights conferred

RDA s. 7(2)

12(1)

19(1)

245(3), (4)

Non visible parts

RDA s. 1B(8), (9)

3(3), (4)

4(2), (3)

246

Duration

RDA s. 8

247(1)

UCD/SUD protection

SUD/CUCD Art. 11(1)

11(1)

247(2)

UCD/SUD duration

SUD/CUCD Art. 11(2)

11(2)

248(1)

Exceptions and exclusions

RDA s. 7A(1)-(3), (5); 12

13-14

20, 21, 22, 23

248(2)

Functional, must-fit designs

RDA s. 1C(1), (2)

7(1), (2)

8(1), (2)

248(3)

Modular Products

RDA s. 1C(3)

7(3)

8(3)

249

Relationship to copyright

96(2)

145 Trade and Cooperation Agreement between the European Union and the European Atomic Energy Community, of the one part, and the United Kingdom of Great Britain and Northern Ireland, of the other part, Treaty Series No.8 (2021), CP 426; EU OJ 2020/L 149/10. Note that this was republished with renumbering of the Articles concerned. 146 Ibid. Title V Chapter 2 Section 3, Art. s 245–249 (formerly IP.27 – IP.31 in the first version of the Agreement). There are relatively few detailed provisions on invalidity and registrability. 147 At Title V Chapter 3. 148 2020 c. 29. 149 [2021] EWCA Civ 454 at [82].

PART 1 – INTRODUCTION AND OVERVIEW

1.5 UK DESIGN PROTECTION – THE CURRENT SITUATION IN OVERVIEW The following rights potentially protect designs in the UK: • • • • • • •

UK Registered Designs (“UK RDs”); International Designs designating the UK (“IR/GBs”); Copyright or UK Unregistered Design Right (UKUDR); Topography Right; and Continuing Unregistered Community Designs (CUCD) or Supplementary Unregistered Design (SUD).

Figure 4: Overlaps of protection for designs

There is also some limited scope for protection via the UK trade mark and patent systems (see 1.6).

1.5.1

UK REGISTERED DESIGNS (BASIS: REGISTERED DESIGNS ACT)

The Registered Designs Act 1949 (the “RDA”) provides a registration scheme giving up to 25 years of “monopoly” protection (i.e. it is unnecessary to prove copying), for two-dimensional (“surface”) or three-dimensional (“shape”) product designs. The registration process is cheap (a few hundred pounds), quick (between two and three months) and simple (the Registry do not search prior designs). When the UK left the EU, additional subclasses of UK registered designs were created, namely: (a) Re-registered EU Community designs, 29

NAVIGATING DESIGN LAW

(b) Re-registered International designs which had designated the EU; and (c) Registered designs resulting from pending applications for either of these. These are now treated in almost all respects like any other UK registered design. The substantive law of validity and infringement of UK registered designs was, and currently remains, harmonised with that of the EU.150 For more detail, see Part 2.

1.5.2 INTERNATIONAL DESIGN/UK (BASIS: HAGUE AGREEMENT; DESIGNS (INTERNATIONAL REGISTRATION OF INDUSTRIAL DESIGNS) ORDER; RDA) The Hague Agreement is an international treaty which provides a system for registration of designs internationally, administered by WIPO in Geneva. The effect in each territory is the same as that of a local design, so that an International Registration can be obtained which has the same substantive effects and lifetime (i.e. 25 years) as a national Registered Design. The UK is a party to the Geneva Act of the Hague Agreement, as are the EU/EEA, the US, Japan, and South Korea (amongst many others). Applicants from one contracting party can file an International design application designating any or all others. Thus, UK applicants can use the system to obtain protection abroad, and those from for example the US can use the system to obtain protection in the UK. The effects in the UK are governed by the Registered Designs Act as amended by The Designs (International Registration of Industrial Designs) Order 2018.151 For more detail, see Part 3.

1.5.3

Under the former Copyright Act 1956 as amended, most types of industrial design (including those with no novelty or artistic merit) were protected against copying until fifty years after the author’s death. When Parliament passed the Copyright, Designs & Patents Act 1988 (“CDPA”), it noted the trenchant criticism of this by the House of Lords and although under Part 1 of the CDPA surface decoration designs and other classes of artistic work retained copyright protection for seventy years after the author’s death,152 “shape and configuration” (i.e. essentially three dimensional) product designs other than sculptures or “works of artistic craftsmanship” lost protection against being reproduced as products by virtue of s. 51. For more detail, see Part 5. 150 By Directive 98/71 on the Legal Protection of Designs, the “Design Directive” or “DD” hereafter. 151 SI 2018/23. 152 CDPA s. 12.

PART 1 – INTRODUCTION AND OVERVIEW

1.5.4

UNREGISTERED DESIGN RIGHT (BASIS: CDPA PART 3)

To fill the gap left by copyright, a shorter-lived UK unregistered design right (“UKUDR” hereafter) was created by Part 3 of the Copyright, Designs & Patents Act 1988 for certain “shape and configuration” designs, including purely functional designs. An amalgam of copyright and Registered Design provisions, it gives protection against copying, without any formalities, for the shorter of: 15 years from year of creation of the design, or ten from year of first marketing,153 of which licences are available of right in the last five, to functional and non-functional shape designs. This right is, however, only available to UK companies, nationals or residents or those of a few other countries (including Hong Kong and New Zealand) which provide copyright protection for designs; or to those who first market a product in the UK. For more detail, see Part 6.

1.5.5 TOPOGRAPHY RIGHT (BASIS: DESIGN RIGHT (SEMICONDUCTOR TOPOGRAPHIES) REGULATIONS 1989; CDPA PART 3) The layouts of layers of semiconductor chips are protected in the UK by a version of UKUDR produced through amendments to the CDPA effected by the Design Right (Semiconductor Topographies) Regulations 1989.154 Again, the lifetime is the shorter of: 15 years from year of creation of the design, or ten years from year of first marketing. The qualification requirements are much more liberal than those for standard UKUDR, making protection available to (amongst others) EU, US and Japanese companies.155

1.5.6 SUPPLEMENTARY UNREGISTERED DESIGN & CONTINUING UNREGISTERED COMMUNITY DESIGN (BASIS: CDR; COMMUNITY DESIGN REGULATIONS 2005, BOTH AS AMENDED) Designs may be protected for a period of three years from first making available to the relevant public in the EU by an unregistered Community Design right (“UCD”), created by the EU Community Design Regulation 6/2002.156 Unregistered Community Design right comes into being automatically on such first disclosure, subject to the design fulfilling the same criteria for validity as a Registered Design. The acts of infringement are the same as those for Registered Designs, except that there is only infringement where the infringing design results from copying. The CDR was selfexecuting, but certain details were implemented in UK law by the Community Design Regulations 2005.157 When the UK left the EU, all Unregistered Community Designs which already existed were 153 To the end of the calendar year in each case. 154 SI 1989/1100. 155 The list of countries is in the Schedule to the Design Right (Semiconductor Topographies) Regulations 1989 as amended over the years. 156 Regulation 6/2002 (EU) on the Community Design. 157 SI 2005/2339.

National

SC Topog

SUD, CUCD

National

UDR

UK RD, IR/ UK

Right

Substantive Basis of law

Registered?

Copying required?

Table 3: Comparative Summary of design rights in UK

Both

Topography (layers)

Both

2D or 3D

3 years

10-15 years (from end of year)

Life + 70 years

25 years

Lifetime

Y (but not “principle of construction”)

No, Case C-833/18 Brompton Bicycle

Purely Functional Design Protected?

Must-fit allowed?

Mustmatch allowed?

NAVIGATING DESIGN LAW

PART 1 – INTRODUCTION AND OVERVIEW

given continuing effect in the UK for the balance of their terms, as UK national rights called Continuing Unregistered Community Designs (“CUCDs”). Additionally, for designs first disclosed after the end of the Implementation Period (i.e. on or after 1 January 2021) a new three-year right called “Supplementary Unregistered Design” (“SUD”) was created. SUDs are in almost all respects the equivalent of EU UCDs. As CUCD comes into existence for disclosures prior to Brexit and SUD for disclosures afterwards, a given design may be protected by one or the other of these but cannot benefit from both. The governing law for both CUCDs and SUDs is in each case a respective amended version of the CDR and a respective amended version of the UK Community Design Regulations 2005 (at Annexes 6 & 5 respectively, maintained in force by the Withdrawal Act. For more detail, see Part 4.

1.6

PROTECTION OF DESIGNS BY OTHER RIGHTS

The EU harmonisation of design law was expressly stated to be “without prejudice to any provisions… relating to… trade marks or other distinctive signs, patents and utility models, typefaces, civil liability or unfair competition”,158 and these do offer the potential for protection of some designs under some conditions.

1.6.1

LOGOS AND PRODUCT SHAPES – TRADE MARK PROTECTION

“… if it can be shown that, following such use, the average consumer has come to say: ‘by this shape I know I can rely upon getting goods from the same maker as before’, then the design of goods will also have become a trade mark.”159 Registration of word and single colour trade marks – the commonest types – as designs is not possible (see 2.1.1.1). Logos may however be registered as designs (see 2.4.5.6) and so, of course, may the shapes of products or their packaging. The reverse – registration of designs as trade marks – is possible, in principle at any rate, and where available offers significant advantages. For example, the term of protection is potentially unlimited, and there are no novelty or originality requirements (at least, not explicit ones). Under the Trade Marks Act 1994,160 a trade mark “may, in particular, consist of… designs… colours… or the shape of goods or their packaging”.

158 DD Art. 16, CDR Art. 96(1). 159 Jacob LJ, with whom Potter and Longmore LJJ agreed, in Bongrain SA’s Trade Mark Application [2004] EWCA Civ 1690, [2005] RPC 14 at [27]. 160 TMA s. 1(1), equivalent to TMD Art. 3 and EUTMR Art. 4.

NAVIGATING DESIGN LAW

1.6.1.1 Secondary Meaning and Distinctiveness However, to be protectable, these must be acting as “signs” and must be “distinctive”, i.e. “capable… of distinguishing goods or services of one undertaking from those of other undertakings”.161 There is a judicial perception that consumers do not see most product shapes (and some product decoration) as “signs”, in particular signs which distinguish goods by origin. Highly unusual or “fancy” shapes may have a better chance of being seen as trade marks, but even for these success is not automatic. To register a design (particularly one which does not depart “significantly from the norms and customs of the sector”) as a trade mark it is therefore necessary to supply evidence that the shape has acquired “a distinctive character as a result of the use made of it”.162 However, “it is not sufficient for the trade mark owner to show that a significant proportion of the relevant class of persons recognise and associate the mark with the trade mark owner’s goods. He must show that they perceive that the goods designated by the mark originate with a particular undertaking and no other.”163 Such evidence is hard to come by. Even product designs as well known as the classic London black taxi,164 the Land Rover Defender 90™ and Land Rover Defender 110™165 may not cross the threshold, unless the proprietor’s branding and advertising has taught the consumer to regard the product design as his/her unique indication of origin. 1.6.1.2 Absolute Grounds – Exclusion of Characteristics that Add Substantial Value Further, marks that consist of the shape, or another characteristic: • • •

of the goods themselves; that are essential to function of the goods; or that add substantial value to the goods,

are excluded from registration,166 and these “absolute” exclusions cannot be overcome by evidence of use. Examples of good designs refused trade mark protection on these “absolute” grounds include the TRIPP TRAPP™ children’s high chair167 and the Beovision™ loudspeaker.168 However, dual protection by design and trade mark registration is not always ruled out.169 161 TMA s. 1(1)(b), equivalent to TMD Art. 3(b) and EUTMR Art. 4(b). 162 The London Taxi Corporation Ltd v Frazer-Nash Research Ltd [2017] EWCA Civ 1729, [2018] ETMR 7 Floyd LJ (with whom Kitchin LJ agreed) at [53]. 163 Société des Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358, [2017] FSR 34 at [105]. 164 The London Taxi Corporation Ltd v Frazer-Nash Research Ltd [2017] EWCA Civ 1729, [2018] ETMR 7. 165 Jaguar Land Rover Ltd v Ineos Industries Holdings Ltd [2020] EWHC 2130 (Ch). 166 TMA s. 3(2), equivalent to TMD Art. 4(1)(e) and EUTMR Art. 7(1)(e). 167 Refused by EUIPO; equivalent Benelux trade mark discussed by the CJ in Case C-205/13 Hauck v Stokke. 168 Case T-460/05 Bang & Olufsen v EUIPO. 169 Case C‑237/19 Gömböc.

PART 1 – INTRODUCTION AND OVERVIEW

1.6.2

PASSING OFF

“It is, I think, precisely because the difficulties of proof are so great that successful cases of passing off based on the shape of the goods are so rare.”170 Protection for product packaging, get-up and design by the common law tort of “passing off” (the most useful UK form of “unfair competition”) is possible though rare. The key elements of the tort to be proved are: (1) “goodwill” (i.e. “the attractive force which brings in custom”) owned by the claimant; (2) misrepresentation (whether intentional or not) by the defendant; and (3) consequent damage. Successful examples are the HENRY™ vacuum cleaner case171 and the JIF™ Lemon case;172 an unsuccessful example is the London Taxi case.173 Protection is more difficult for product shapes than for packaging and get-up, particularly for products having elements of functionality as in the ROHO™ cushion case.174

1.6.3

LINKAGES BETWEEN DESIGN AND TRADE MARK PROTECTION

A prior registered design is available as the basis of a prior right attack on a trade mark registration in invalidity or opposition proceedings.175 A prior registered trade mark may also form the basis of an attack on a registered design (for which see 2.2.7.1).

1.6.4

PATENT PROTECTION AND DESIGNS

“A registered design is not in any way a minor type of patent. It is something that is protected in respect of its appearance or form alone. It is for this reason that all attempts to make registered designs cover modes of manufacture have rightly failed, and that the Courts have so invariably insisted on the principle that designs must be judged by the eye alone.”176 “The two rights being not necessarily the same may exist together, though, no doubt, to a certain extent they may overlap and interfere.”177

170 171 172 173 174 175 176 177

Jacob J, Hodgkinson & Corby Ltd v Wards Mobility Services Ltd [1995] FSR 169 at p178. Numatic International Ltd v Qualtex UK Ltd [2010] RPC 25, [2010] EWHC 1237 (Ch). Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341, [1990] UKHL 12, [1990] 1 WLR 491. The London Taxi Corporation Ltd v Frazer-Nash Research Ltd [2016] EWHC 52 (Ch), and on appeal [2018] ETMR 7, [2017] EWCA Civ 1729. Hodgkinson & Corby Ltd v Wards Mobility Services Ltd [1995] FSR 169. TMA s. 5(4)(b). Lord Moulton, Phillips v Harbro Rubber Co (1920) 37 RPC 233 (HL) at p239. Romer LJ, Werner Motors v Gamage (1904) 21 RPC 621 at p630 (CA).

NAVIGATING DESIGN LAW

Registered design and patent protection reflect the same balance between public and private interest, implemented by the combination of time-limited protection with a novelty standard. The same is true of SUD. There is thus no real risk that one can be misused to perpetuate the protection granted by the other. Whilst both involve a combination of text and drawings, in a patent the text has supremacy and the drawings are merely for explanation and illustration, and in a design the reverse is true. As a consequence, their scopes are very different – “Design right does not therefore protect ideas. Ideas are protected by patent law.”178 However, a design can embody a patented invention, and fall within the scope of a patent, and the same drawings may be included in both. The scope for overlap in practice is regulated by exclusions:179 • For registered designs (and SUD), the exclusion of features which are solely dictated by the product’s technical function (see 2.1.4); • For UKUDR, the exclusion of methods and principles of construction (see 6.2.6); and • For patents, the exclusion of those which relate to “artistic work[s] or any other aesthetic creation whatsoever”180 as such. Products with both technical and aesthetic features are therefore capable of protection by patent and design in parallel, though the rights are based on different features of the product. Where a single feature has both functional and aesthetic benefits (e.g. the pattern of ribs in Cow v Cannon181), it ought also to be protectable by both systems – at least, if it does not provide the only way of achieving that function, and if the aesthetic appeal is deliberate. A purely functional feature involving no aesthetic considerations can be protected by patent and by UKUDR, though with very different scopes.

178 Lewison J in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group [2009] EWHC 26 (Pat), [2009] ECDR 11 at [25] (in relation to UKUDR). 179 See, generally, David Musker, The Overlap between Patent and Design Protection, Chapter 2 in Overlapping Intellectual Property Rights, eds Neil Wilkof and Shamnad Basheer, OUP 2012. 180 PA s. 1(2)(b). 181 Cow (PB) & Co Ltd v Cannon Rubber Manufacturers (No.1) [1959] RPC 947 (CA).

PART 2 REGISTERED DESIGNS “So many, so detailed are the amendments that it is like a sculptor crafting a cat out of a dog.”1

2.1 SUBSISTENCE...................................................................................................... 39 2.2 VALIDITY – POST-2001 DESIGNS...........................................................................51 2.3 INFRINGEMENT.................................................................................................... 65 2.4

REGISTERED DESIGNS – PROCEDURE AND PRACTICE........................................ 74

2.5 UK EFFECT OF REGISTERED AND PENDING COMMUNITY AND INTERNATIONAL DESIGNS................................................................................. 102 2.6

INVALIDATION & CANCELLATION........................................................................107

2.7

IPO OPINIONS....................................................................................................... 111

2.8

APPEALS............................................................................................................................... 112

2.9

VALIDITY – PRE-2001 (“EXISTING”) DESIGNS...................................................... 119

Peter Prescott QC, Oakley v Animal [2005] EWHC 210 (Ch) at [39].

NAVIGATING DESIGN LAW

The primary legislation governing registered designs is the Registered Designs Act 1949 (“RDA”), which has been heavily amended by, amongst others, • • • • • • • • • • •

The Copyright, Designs and Patents Act 1988 (“CDPA”); The Registered Designs Regulations 2001;2 The Registered Designs Regulations 2003;3 The Community Design Regulations 2005 (“CDR05”);4 The Regulatory Reform (Registered Designs) Order 2006;5 The Intellectual Property (Enforcement etc) Regulations 2006;6 The Designs (International Registrations Designating the European Community) Regulations 2007;7 The Intellectual Property Act 2014;8 The Designs (International Registration of Industrial Designs) Order 2018;9 The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019;10 The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020.11

Further parts of the RDA (for IPO Design Opinions) are yet to come into effect. The Act was harmonised by the EU Design Directive (“DD”) 98/71, “in the customary unhelpful way of ‘re-write’ rather than ‘copy-out’.”12 The DD provisions on scope and infringement apply to all UK registered designs, and the DD provisions on validity apply to all applied for since 2001. A concordance mapping the provisions of the Act to those of the DD and the CDR is at Annex 2. For earlier designs, the previous UK law (i.e. the RDA as amended by the CDPA, reproduced in the CDPA as Schedule 4 thereto and the RDR 199513) applies. The most relevant parts are reproduced at Annex 3 and Annex 4. The UK Courts have looked to the terms of the Directive, including its Recitals, in interpreting the Act and will no doubt continue to do so. The CDR never applied directly to UK Registered Designs. However, several provisions of the RDA on issues missing from the Directive were modelled on those of the Regulation.

2 3 4 5 6 7 8 9 10 11 12 13

SI 2001/3949. SI 2003/550. SI 2005/2339. SI 2006/1974. SI 2006/1028. SI 2007/3378. 2014 c. 18. SI 2018/23. SI 2019/638. SI 2020/1050. Apple Computer Inc.’s Design Applications, [2002] FSR 38 (RDAT) Jacob J. at [3]. SI 1995/2912.

PART 2 – REGISTERED DESIGNS

Much of the detail of Patent Office procedure is contained within secondary legislation: • The Registered Designs Rules 200614 (“RDR”); • The Appointed Person (Designs) Rules 201515 (“APDR”); • The Draft Opinion Service Rules16 (“OSR”). The Registry procedure is detailed in the RDR, as amended (together with some points of substantive law), and the procedure on appeal from the Registry in the APDR. We are also expecting at some point to see Design Opinions Service Regulations which will govern IPO Opinions on designs, the enabling legislation for which was passed in 2014.

2.1

SUBSISTENCE

2.1.1

PROTECTABLE DESIGNS

RDA Sections

1(2), (3)

Design Directive Basis (Art.)

Design Directive Recitals

–

SUD, RCD Equivalent (Art.)

UK/EU TCA (Art IP)

–

Leading Cases

R 595/2012-3 Vegetables and fruit

Related RDA Sections

1B(8), 7A(5)

Related UK Rules

–

IPO Practice

RDEPG Part B Chapter 2

Section 1 Registration of designs (2) In this Act “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 or materials of the product or its ornamentation. (3) In this Act— “complex product” means a product which is composed of at least two replaceable component parts permitting disassembly and reassembly of the product; and “product” means any industrial or handicraft item other than a computer program; and, in particular, includes packaging, get-up, graphic symbols, typographic typefaces and parts intended to be assembled into a complex product. 14 SI 2006/1975. 15 SI 2015/169. 16 A draft appears in the 2015 consultation document (DPS/1269/Mar-15) online here: https://www.gov.uk/government/consultations/designs-opinions-service-regulations.

NAVIGATING DESIGN LAW

2.1.1.1

Definition of “Design”

The definition of “design” is a wide one. “Appearance” here is limited to visual appearance.17 Thus, parts of a product which are never visible do not constitute part of its design. However, visibility at any stage is relevant, including the point of purchase as well as the point of use.18 There is no requirement for aesthetic or ornamental quality. Plain text alone19 (or marginally stylised text 20) is likely to be refused as not being a protectable design, and likewise a single colour. 21 However, these things are equally likely to lack novelty or individual character, and be refused or invalidated on that basis.22 2.1.1.2 “Design” distinguished from “concept” or “idea” “the Patents and Designs Acts afford protection not for an abstraction but for features of shape, configuration, and so on, ... so that in each case it is the concrete form, not the abstract idea, which is protected.”23 “Unfortunately …, this appeal is not concerned with an idea or an invention, but with a design.”24 As is the case with copyright, “concepts” or “ideas” per se are not designs.25 Instead “there must be a mental conception expressed in a physical form”26 (emphasis added). The EU Commission’s Green Paper27 which preceded the current EU (and UK) design law indicated that “… the protection of design should be achieved not by instruments which protect a ‘concept’ or an ‘idea’, but by instruments which protect features of appearance.” Their reason was that “… designers need to be given the freedom to develop new designs on the basis of already established technical concepts. 17 Case T-494/12 Biscuits Poult v EUIPO/Banketbakkerij Merba (Biscuit) [2014] EUECJ T-494/12, Case T-39/13 Cezar v EUIPO/Poli Eco (Skirting Board) [2014] EUECJ T-39/13. 18 Joined Cases T-22/13 and T-23/13 Senz Technologies v EUIPO/Impliva (Umbrella) [2015] ECDR 19. 19 RDEPG 2.17, though it is there indicated that the refusal will arise through lack of a “product”. 20 See the doubts expressed in O/129/20 Frankland v Lambretta Club Martin Howe QC at [15]. 21 RDEPG 2.04. 22 See for example O/636/17 Dexil v Bamboo Tools. 23 King Features Syndicate Inc v O&M Kleeman Ltd [1940] Ch. 523 per Simonds J. at p534. 24 Magmatic Ltd v PMS International Group Plc [2016] UKSC 12 [2016] RPC 11 per Lord Neuberger at [57]. 25 See, for Community Designs, Case T‑68/11, Kastenholz v EUIPO/Qwatchme (Watch Dials) [2011] ECDR 15. 26 Simmons v Mathieson (1911) 28 RPC 486 per Buckley LJ at p491. See also Pugh v Riley Cycle Co [1912] 1 Ch. 613 at p619. 27 Green Paper on the Legal Protection of Industrial Design. Working document of the services of the Commission. III/F/5131/91-EN, June 1991 5.4.3.3 – 5.4.3.4 at p59.

PART 2 – REGISTERED DESIGNS

Provided it takes place through independent intellectual effort, the uninterrupted, unimpeded enhancement of existing concepts should not be considered a restricted act under any legislation.” 2.1.1.3 Design of part of a product: “partial” design “Now, if he is content with putting that design, constituted of these several parts, upon the register without limitation and without explanation, he claims simply to be the inventor of the entire thing…”28 The definition includes the design of part of a product (often referred to as a “partial design”). This is not limited to a part which is made and/or sold separately (the term “component part” is used in the legislation for separate parts). This represented a significant change from the former law, under which parts (even discretely manufactured parts) were not registrable.29 A registration protects the design depicted: if the whole product is shown, the protected design is of the whole and not of parts of the product in isolation. It is therefore desirable when preparing a design application to consider which parts of a new product are most likely to be copied, which could not be readily substituted or omitted, and which are most likely to be novel, and then to register the design of those alone, either instead of or in addition to registering the design of the whole product. 2.1.1.4

Definition of “Product”

Section 1 Registration of designs (3) In this Act— “product” means any industrial or handicraft item other than a computer program; and, in particular, includes packaging, get-up, graphic symbols, typographic typefaces and parts intended to be assembled into a complex product.

Anything artificially produced is a “product”, though naturally-occurring items such as plants are not.30 The definition includes some non-traditional “products”. For example, a “typeface” and a “graphic symbol” are not solid products which can be grasped in the hand. “Computer programs” are excluded from protection. However, this does not exclude protection for screen displays, which do not form part of the “computer program”.31 User interfaces and screen displays were (obiter) held to be registrable in the Apple icon case.32

28 29 30 31 32

Holdsworth v M’Crea (1867) L.R. 2 H.L. 380 per Lord Westbury at p388. R v Registered Designs Appeal Tribunal, ex p Ford Motor Co Ltd [1994] UKHL 10, [1995] RPC 167. EUIPO Appeal Board Case R 595/2012-3 (Vegetables and fruit). See also RDEPG, 2.09. Case C-393/09 Bezpečnostní softwarová asociace (“BSA”) [2011] FSR 18. See also RDEPG, 2.11-2.13. Apple Computer Inc v Design Registry [2002] ECDR 19 [2002] FSR 38.

NAVIGATING DESIGN LAW

A set of articles (cutlery, or chess pieces for example) may be regarded as a single design of a single product and registered in one design.33 However, the design may not be infringed by reproduction of a subset of the articles concerned – the design is of the whole.34 The test in the UK involves consideration of whether the articles would be “sold and used as a unitary product”. It may also be relevant that they have “aesthetic and functional complementarity”.35 Where a design shows more than one article and the articles cannot be considered to be a single “product”, it is invalid as not complying with the statutory definition of “design”.36 2.1.1.5

“Design” distinguished from “product”

“The statute does not mention any article of manufacture being a design, but considers the design to be protected as ‘applicable to the ornamenting of any article of manufacture’. The ‘design’ is always considered different from the article of manufacture or the substance to which it is to be applied.”37 “It is a conception, suggestion, or idea, and not an article, which is the thing capable of being registered. ... It is a suggestion of form or ornament to be applied to a physical body.”38 A “product” is generally defined by what it does – its utility, or technical function. It is substitutable for other instances of the same kind of product. Protecting the appearance of a product does not amount to creating a market monopoly – i.e. excluding all other instances which perform the same function. The General Court described an argument that “the first design protected precludes, for the duration of its protection, any future design concerning the same type of product” as “completely untenable.”39 It is fairly easy to mentally separate a surface pattern design from the product on which it appears. It represents the “ornamentation” referred to in the definition of “design”.40 It is harder to perform the same exercise in relation to the shape of the product – the comparison is between the actual shape of one instance of the product, and “a kind of Platonic form of a [product] which could be abstracted from the actual forms”,41 sometimes called the “fundamental form” – but the statute requires the Case T-231/10 Merlin v EUIPO (Toy game). See also RDEPG 2.14-2.16. See the interim decision in H&S Alliance Ltd v GBL UK Trading Ltd O/217/20, Martin Howe QC at [33]-[34]. See the final decision in H&S Alliance Ltd v GBL UK Trading Ltd O/374/21, Martin Howe QC at [44]. Case T-9/15 Ball Beverage Packaging Europe Ltd v EUIPO, [2018] ECDR 8. Norton v Nicholls (1859) 1 Ellis and Ellis 761 120 E.R. 1095 Lord Campbell CJ at p1097. Dover Ltd v Nürnberger Celluloidwaren Fabrik Gebruder Wolff (1910) 27 RPC 498 per Buckley LJ at p503. Joined Cases T-22/13 and T-23/13 Senz Technologies v EUIPO/Impliva (Umbrella) [2015] ECDR 19 at [95]. EUIPO Appeal Case R 1009/2006-3 Sabine Decoodt, and the EUIPO’s Notice on Art 37(1) in OHIM Newsletter 5-2005. 41 Billhofer Machinenfabrik GmbH v T H Dixon Ltd [1990] FSR 105 Hoffman J. at p12, commenting on the box girder lintel of Catnic v Hill & Smith [1982] RPC 183.

33 34 35 36 37 38 39 40

PART 2 – REGISTERED DESIGNS

separation to be made, and the separated or “dematerialised” design is what must be novel, and what cannot be reproduced, irrespective of the particular product to which it is applied. 2.1.1.6

Definition of “Complex Product”

Section 1 Registration of designs (3) In this Act— “complex product” means a product which is composed of at least two replaceable component parts permitting disassembly and reassembly of the product;

A “complex product” is one comprising plural replaceable “component parts”. Thus, “component parts” of such a “complex product” (are parts which are combined together to make a product, and which can be removed and replaced for repair. Design rights in spare parts of a product are given special treatment in the legislation, to limit control by manufacturers of the “after-sales” markets in repairs and spares supplies. The term “complex product” is accordingly used in Sections 1B(8) (visible parts) and 7A(5) (repair defence), discussed below.

2.1.2

VISIBILITY EXCLUSION

RDA Sections

1B(8), (9)

Design Directive Basis (Art.)

Design Directive Recitals

SUD, RCD Equivalent (Art.)

UK/EU TCA (Art.)

245(3), (4) (ex IP.27)

Leading Cases

T-10/08 & T-11/08 Kwang Yang

Related RDA Sections

1(3)

Related UK Rules

–

IPO Practice

RDEPG Part B Chapter 4, 3.09-3.10, DPN 1/03

Section 1B Requirement of novelty and individual character (8) For the purposes of this section, a design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character— (a) If the component part, once it has been incorporated into the complex product, remains visible during normal use of the complex product; and (b) To the extent that those visible features of the component part are in themselves new and have individual character.

NAVIGATING DESIGN LAW

(9) In subsection (8) above “normal use” means use by the end user; but does not include any maintenance, servicing or repair work in relation to the product.

“Internal” component parts which are not visible in normal use have no protection. Although visibility in general is relevant to many other aspects of design law, this provision applies only to component parts.42 Visibility at the point of sale is irrelevant here.43 Almost every part could also be seen when it is being repaired, so the test person is not the repairman but the “end user” of the whole product (for a car, the driver). Also, “normal use” excludes servicing, maintenance and repair, whoever carries out the work, even if it is the “end user” himself. Beyond automobile parts, it may be less clear who is the “end user” and what is “normal use”. For example, in the case of a photocopier, is it “normal use” to change the toner, or is it “servicing, maintenance or repair”?44 Where only part of a component is visible in normal use, that part is ignored when comparing with the prior art. For example, the General Court held45 that for an engine intended for use in a lawn mower, only the top and sides were relevant, as the underside was not visible whilst mowing.

2.1.3

INTERCONNECTION EXCLUSION

RDA Sections

1C(2)

Design Directive Basis (Art.)

7(2) & (3)

Design Directive Recitals

14 & 15

SUD, RCD Equivalent (Art.)

8(2) & (3)

UK/EU TCA (Art.)

248(2) (ex IP.30)

Related RDA Sections

–

Related UK Rules

–

IPO Practice

RDEPG Part B Chapter 4, 4.07-4.13

Other Analogues

UKUDR: CDPA, s. 213(3)b)(i)

42 Case T-494/12 Biscuits Poult v EUIPO/Banketbakkerij Merba (Biscuits) [2014] EUECJ T-494/12. 43 Cases T-615/13 [2015] EUECJ T-615/13, T-616/13 [2015] EUECJ T-616/13, T-617/13 [2015] EUECJ T-617/13 Aic v EUIPO/ACV Manufacturing (Heat Exchangers). 44 The Registry position as set out in DPN 1/03 Component part of complex product visible in normal use is that the toner cartridge is not excluded. 45 Cases T-10/08 & T-11/08 Kwang Yang v EUIPO/Honda (Internal Combustion Engine) [2011] EUECJ T-10/08, [2012] ECDR 2.

PART 2 – REGISTERED DESIGNS

Section 1C Designs dictated by their technical function (2) A right in a registered design shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions so as to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to, or placed in, around or against, another product so that either product may perform its function. (3) Subsection (2) above does not prevent a right in a registered design subsisting in a design serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system.

This exclusion precludes protection for mechanical interface features, such as the positioning of the terminals of a plug or the hinges of a car door, but does not deny protection to the whole product. It was based closely on the corresponding UKUDR provision, but has more limited scope. The Directive Recital indicates that its purpose is to ensure that “the interoperability of products of different makes should not be hindered by extending protection to the design of mechanical fittings”. The “must-fit” exclusion considered alone would take away protection for the interfitting parts of construction toys, such as Lego bricks. However, the exclusion of “must fit features” does not apply to “modular products”46 because “the mechanical fittings of modular products may nevertheless constitute an important element of the innovative characteristics of modular products and present a major marketing asset and therefore should be eligible for protection”.47 In the case of modular toys, interconnection is the main purpose of the product, not ancillary to fulfilling some other function, and it is therefore likely that they are not excluded as “must-fit”. The General Court compared the scopes of the “technical function” and “must-fit” exclusions,48 and concluded that they could both apply (where no consideration other than function had gone into the interconnection) but did not always do so – each could apply where the other did not. Thus, even an attractive interconnection, designed with appearance in mind, can be excluded, unless on a “modular product”.

46 RDA s. 1C(3). 47 DD Recital 15. 48 In T-515/19 – Lego v EUIPO/Delta Sport Handelskontor – decided after IP Completion Day and so not binding authority.

NAVIGATING DESIGN LAW

2.1.4

TECHNICAL FUNCTION EXCLUSION

“The key question is where the formal constraints connected with the product’s technical function stop and where its designer’s freedom of choice starts.”49 RDA Sections

1C(1)

Design Directive Basis (Art.)

7(1)

Design Directive Recitals

SUD, RCD Equivalent (Art.)

8(1)

UK/EU TCA (Art.)

248(2) (ex IP.30)

Leading Cases

C-395/16 Doceram

Related RDA Sections

–

Related UK Rules

–

Practice Guide

RDEPG Part B Chapter 4, 4.01-4.06; DPN 5/03

Section 1C Designs dictated by their technical function (1) A right in a registered design shall not subsist in features of appearance of a product which are solely dictated by the product’s technical function.

Although functional designs fall within the definition of “design” above, some features of such designs may be excluded from protection. It will be rare for all features to be excluded so that the design as a whole is invalid, but merely copying the excluded features will not constitute infringement. Where a highly functional design qualifies for protection, the limited freedom available to the designer (and, usually, to the competitor) will narrow the scope of protection as discussed in greater detail below. There is some controversy over the correct test or tests for functionality. There are several principal rivals, and although the broad outlines of the issue were decided by the CJ in DOCERAM, 50 much detail remains unclear. The principal tests used prior to DOCERAM were: 2.1.4.1 The “Multiplicity of Forms” test. On this approach, the exclusion would bite only on designs which can be made in only one shape; in other words, the design is protectable if it can be made in different shapes. Advocate General

49 Advocate-General Henrik Saugmandsgaard Øe, Opinion in Case C-395/16 DOCERAM at [29]. 50 In DOCERAM GmbH & CeramTec GmbH, Case C-395/16.

PART 2 – REGISTERED DESIGNS

Ruiz-Jarabo Colomer explained in Philips v Remington51 that the test for designs differs from that for trade marks: “The wording used in the Designs Directive for expressing that ground for refusal does not entirely coincide with that used in the Trade Marks Directive. That discrepancy is not capricious. Whereas the former refuses to recognise external features which are solely dictated by its technical function, the latter excludes from its protection signs which consist exclusively of the shape of goods which is necessary to obtain a technical result. In other words, the level of functionality must be greater in order to be able to assess the ground for refusal in the context of designs; the feature concerned must not only be necessary but essential in order to achieve a particular technical result: form follows function. This means that a functional design may, none the less, be eligible for protection if it can be shown that the same technical function could be achieved by another different form. … It is logical that the bar for assessing whether a ground for excluding a functional form applies is set higher for designs than for trade marks: the nature and scope of their protection are completely different from one another.” This A-G Opinion was followed in the UK by the Court of Appeal in Landor & Hawa v Azure Designs.52 The General Court appears on occasion to have applied the same test.53 2.1.4.2 The “Zero Design Freedom” test. A somewhat similar approach was adopted by OHIM’s Third Board of Appeals, 54 but couched in terms of the design freedom available to the designer. This is the test favoured in the IPO RDEPG (at 2.10), where it is equated with the A-G Opinion in Philips. 2.1.4.3 The “Designer’s Intention” test. Under the previous UK law (which had a similar but not identically-worded provision), in Amp v Utilux55 the House of Lords rejected the “multiplicity of forms” test. The majority held that designs were “dictated” by function if their shape was “attributable to or caused or prompted by” functional reasons, regardless of whether they could also be made in other shapes. The designer had frankly admitted on cross-examination that this was the case. 2.1.4.4 The “Purchaser’s Impression” test. Whilst reaching the same conclusion, Lord Reid (Lord Donovan concurring) also held that “it 51 Case C-299/99 Koninklijk Philips Electronics v Remington Consumer Products, Case C-299/99 (AGO) [2001] RPC 38, [2001] ETMR 48, the three-headed shaver trademark case. 52 Landor & Hawa International Ltd v Azure Designs Ltd [2006] EWCA Civ 1285, [2007] FSR 9. 53 Case T-246/10 Ivars v EUIPO/Motive (Mechanical speed reducer) [2011] EUECJ T-246/10 at [22]. 54 R2081/2011-3, ASSTEC Assembly v Blech (Palettes) [2016] ECDR 7. 55 [1971] FSR 572, [1972] RPC 103 (HL).

NAVIGATING DESIGN LAW

could well be that a designer who only thought of practical efficiency in fact has produced a design which does appeal to the eye. He would not be denied protection because that was not his object when he composed the design.”56 That appears to refer the question to the effect on the purchaser, as Lord Reid had earlier stated that “Those who wish to purchase an article for use are often influenced in their choice not only by practical efficiency but by appearance.” 2.1.4.5 The “Reasonable Observer” test. In Lindner Recycling,57 the “chaff cutters” case, the EUIPO’s Third Board of Appeal rejected the “multiplicity of forms” test. They essentially agreed with the Amp v Utilux approach, holding that “when aesthetics are totally irrelevant, in the sense that no one cares whether the product looks good, bad, ugly or pretty, and all that matters is that the product functions well, there is nothing to protect under the law of designs”. However, although they considered that the designer’s intention was the relevant issue, they were faced with a sworn declaration from the actual designer, which they clearly did not believe, that he had indeed considered aesthetic as well as functional issues. Thus, they held that “These matters must be assessed objectively: it is not necessary to determine what actually went on in the designer’s mind when the design was being developed; the matter must be assessed from the standpoint of a reasonable observer who looks at the design and asks himself whether anything other than purely functional considerations could have been relevant when a specific feature was chosen.” In Dyson v Vax58 the Patent Court held that the Court of Appeal’s judgment in Landor & Hawa was obiter on this point, and instead followed Lindner Recycling. The Court of Appeal agreed, in Samsung v Apple.59 2.1.4.6 The DOCERAM APPROACH The CJ in DOCERAM decided that: •

• • • •

“… appearance is the decisive factor for a design”, so that in “a case in which the need to fulfil a technical function of the product concerned is the only factor determining the choice by the designer of a feature of appearance of that product, while considerations of another nature, in particular those related to its visual aspect, have not played a role in the choice of that feature”, the feature is excluded from protection. The “multiplicity of forms” test is “not decisive” of the question; It is not necessary to refer to an “objective observer” (as in the Lindner case); The question is an objective one; The national court must “take account of all the objective circumstances relevant to each individual case.”

56 The Privy Council criticised this as being “expressed with less than his customary clarity”, in Interlego v Tyco Industries [1988] UKPC 3, [1988] RPC 343, but did so simply to disguise their disagreement. 57 R 690/2007-3 Lindner Recyclingtech GmbH v Franssons Verkstäder AB (Chaff cutters) [2010] ECDR 1. 58 Dyson Ltd v Vax Ltd [2010] EWHC 1923 (Pat), [2010] FSR 39. 59 Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339, [2013] FSR 9.

PART 2 – REGISTERED DESIGNS

Beyond this, they left a good deal of latitude to national Courts. The judgment supports the Opinion of the Advocate-General that the Court should take account of: • • •

the objective circumstances indicative of the reasons which dictated the choice of features of appearance of the product concerned; or information on its use; or the existence of alternative designs which fulfil the same technical function;

provided these are supported by reliable evidence. The DOCERAM A-G Opinion mentions the permissible evidence as including: • • •

the subjective intention of the designer (which the A-G says is not decisive alone); the existence of alternative forms; and independent expert Reports.

The Opinion also records that the following additional factors, not commented on by the A-G or the Court, were suggested by the parties and intervenors: • • • • • • •

the perception of the design by the average consumer; the artistic value of the design; dissimilarity from other shapes in common use; a substantial price difference in relation to similar products; a promotion strategy which focuses on aesthetic characteristics of the product; the specific objective of the manufacturer at the time of design; any distinction or particular reputation of the design among the relevant public.

The later Brompton Bicycle copyright judgment60 deals with the effect of the existence of a parallel patent which, according to the Court, “should be taken into account only in so far as those factors make it possible to reveal what was taken into consideration in choosing the shape of the product concerned”. It appears that a patent should therefore be treated in design cases as an objective circumstance indicative of the reasons for the choice of a feature.

60 Case C‑833/18 Brompton Bicycle [2020] FSR 36.

NAVIGATING DESIGN LAW

2.1.5

MORALITY EXCLUSION

RDA Sections

Design Directive Basis (Art.)

Design Directive Recitals

SUD, RCD Equivalent (Art.)

UK/EU TCA (Art.)

248(1) (ex IP.30)

Leading Cases

Masterman’s Design (RDAT)

Related RDA Sections

–

Related UK Rules

–

IPO Practice

RDEPG Part B Chapter 5

Other Analogues

TRIPS Article 27(2); TMA s. 3(3)(a); PA s. 1(3)

Section 1D Designs contrary to public policy or morality A right in a registered design shall not subsist in a design which is contrary to public policy or to accepted principles of morality.

This section excludes designs which are “contrary to public policy or to accepted principles of morality”. The leading design case on immorality under the previous UK law was Masterman’s Design.61 As an example of a public order objection, the IPO considers that use of Red Cross62 symbols is excluded.

61 [1991] RPC 89. 62 Protected under the Geneva Convention.

PART 2 – REGISTERED DESIGNS

2.2

VALIDITY – POST-2001 DESIGNS

The RDA sets out an exhaustive63 list of grounds of invalidity. The discretion64 to invalidate previously available to the IPO no longer exists.

2.2.1

AVAILABILITY TO THE PUBLIC

“… the good monopoly or patent is one which serves to give the public, through its incentive, something which it has not had before and would not be likely to get without the incentive-at least not so soon as with it. The bad monopoly is one which takes from the public that which it already has or could readily have without the added incentive of the patent right.”65 RDA Sections

1B(1), (5), (7)

Design Directive Basis (Art.)

6(1)

Design Directive Recitals

–

SUD, RCD Equivalent (Art.)

Leading Cases

C-361/15 Easy Sanitary Solutions

Related RDA Sections

–

Related UK Rules

–

Other Analogues

TRIPS Art. 25, PA s. 1(1), 2(2)

Section 1B Requirement of novelty and individual character (1) A design shall be protected by a right in a registered design to the extent that the design is new and has individual character. (5) For the purposes of this section, a design has been made available to the public before the relevant date if— (a) It has been published (whether following registration or otherwise), exhibited, used in trade or otherwise disclosed before that date; and. (b) The disclosure does not fall within subsection (6) below. (7) In subsections (2), (3), (5) and (6) above “the relevant date” means the date on which the application for the registration of the design was made or is treated by virtue of section 3B(2), (3) or (5) or 14(2) of this Act as having been made.

Subsection 5 introduces a definition of the phrase “made available to the public” in relation to prior disclosures. The state of the art for assessing novelty and individual character is to be the same. 63 DD Recital 21, C-281/10 PepsiCo [2012] FSR 5. 64 Masterman’s Design [1991] RPC 89. 65 Judge Giles Rich, Escaping the tyranny of words... is evolution in legal thinking impossible? JPOS Vol. 60(5), (1978) 271 at p 288.

NAVIGATING DESIGN LAW

Essentially, the starting position is the patent concept of “absolute novelty”. As for patents, citable prior art is not generally limited by geography, time or mode of disclosure. However, there are three exceptions, two of which are not present in patent law. In each case, where a disclosure has been proved, the burden of showing that the exception applies to exclude it falls on the proprietor.66

2.2.2 EXCEPTIONS TO THE AVAILABILITY RULE RDA Sections

1B(6)

Design Directive Basis (Art.)

Design Directive Recitals

–

SUD, RCD Equivalent (Art.)

Leading Cases

C-479/12 Gautzsch Großhandel, Green Lane v PMS (CA)

Related RDA Sections

–

Related UK Rules

–

Other Analogues

PA s. 2(4)

Section 1B Requirement of novelty and individual character (6) A disclosure falls within this subsection if— (a) It could not reasonably have become known before the relevant date in the normal course of business to persons carrying on business in the geographical area comprising the United Kingdom and the European Economic Area and specialising in the sector concerned; (b) It was made to a person other than the designer, or any successor in title of his, under conditions of confidentiality (whether express or implied); (c) It was made by the designer, or any successor in title of his, during the period of 12 months immediately preceding the relevant date; (d) It was made by a person other than the designer, or any successor in title of his, during the period of 12 months immediately preceding the relevant date in consequence of information provided or other action taken by the designer or any successor in title of his; or (e) It was made during the period of 12 months immediately preceding the relevant date as a consequence of an abuse in relation to the designer or any successor in title of his.

66 For confidentiality, see the EUIPO Guidelines for Examination of Design Invalidity Applications, 5.5.1.6. For the “safeguard clause”, see Case T‑651/16 Crocs, Inc. v EUIPO (Clogs) at [47]. For the grace period, see Case T-68/10 Sphere Time v EUIPO/Punch (Watch attached to a lanyard) [2011] ECDR 20 at [26].

PART 2 – REGISTERED DESIGNS

Disclosure

Before priority?

Yes Yes Confidential? No Yes Stemmed from Designer?

Could have become known to circles?

Yes Less than one year before?

Yes Not Available

Available Figure 5: Availability to the public – Registered Design

2.2.2.1 Confidentiality As with patents, disclosures “made to a person other than the designer, or any successor in title of his, under conditions of confidentiality (whether express or implied)” are not part of the state of the art. Implicit conditions of confidentiality have been recognised in UK law for many years;67 they exist where a designer has to consult others (e.g. a commission agent,68 a patent agent,69 a peer-reviewer,70 or a potential manufacturer71) at an early stage. 67 68 69 70 71

See Blank v Footman, Pretty & Co [1888] UKLawRpCh 135; (1888) 39 ChD 678. Ibid. E.g. Gadd v Mayor of Manchester (1892) 9 RPC 516. E.g. Yeda v Rhone-Poulenc Rorer [2007] UKHL 43, [2008] RPC 1, Lord Walker of Gestingthorpe at [62]. E.g. Catnic Components v Evans [1983] FSR 401.

NAVIGATING DESIGN LAW

2.2.2.2 “Safeguard Clause” A “common-sense” limitation was introduced to soften the harshness of absolute novelty, in the form of the “safeguard clause”.72 Disclosures which “could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the United Kingdom and the European Economic Area” are excluded. The sector is (or includes) that of the disclosed prior art, and is not limited to that of the design: Green Lane Products v PMS,73 C-361/15 P Easy Sanitary Solutions. It is important to note that this involves a limitation on the location of the circles specialised in the sector concerned, not a limitation on the place of disclosure. Prior to IP Completion Day the geographical limitation had the same extent, so there is no change to the validity of registered designs. The geographical limitation is different to that for Continuing Unregistered Community Designs (where the limitation is to the EU, not the EEA) and Supplementary Unregistered Designs (where the limitation is to the UK and other qualifying countries and territories – none known at the time of writing). The effects of small-scale disclosures, and those outside Europe (specifically, a Chinese trade fair), were considered by the CJ.74 The Court held that: 1. The “circles” include traders as well as creative designers, so that disclosure only to traders is enough to anticipate; 2. A disclosure may not count if has been made available to only one undertaking in that sector or has been presented only in the showrooms of an undertaking outside the European Union, depending on the circumstances. Design, trade mark and patent publications are all normally considered to come to the attention of the circles specialised (to whom they are in fact directed), even those registered outside the EU.75 The question is one of fact, specifically “whether, on the basis of the facts, which must be adduced by the party challenging the disclosure, it is appropriate to consider that it was not actually possible for those circles to be aware of the events constituting disclosure, whilst bearing in mind what can reasonably be required of those circles in terms of being aware of prior art.”76 Thus, it is not sufficient to show that the disclosure did not actually reach the circles concerned.

72 EUIPO Appeal Board case R-1482/2009-3. 73 Green Lane Products Ltd v PMS International Group Ltd [2008] EWCA Civ 358, [2008] FSR 28. 74 In Case C-479/12, H. Gautzsch Großhandel GmbH & Co. KG v Münchener Boulevard Möbel Joseph Duna GmbH [2014] RPC 28. 75 Cases T‑22/13 & T‑23/13 Senz Technologies v OHIM/Impliva (Umbrellas). (See also numerous EUIPO decisions including Honda v Kwang Yang, ICD 990 and Sunstar Suisse v Dentaid ICD 420). 76 Ibid. at [29].

PART 2 – REGISTERED DESIGNS

On the other hand, even if a chance disclosure did in fact reach the circles concerned, that is insufficient: “a design cannot be deemed to be known in the normal course of business if the circles specialised in the sector concerned can become aware of it only by chance.”77 Relevant facts are: “the composition of the specialised circles, their qualifications, customs and behaviour, the scope of their activities, their presence at events where designs are presented, the characteristics of the design at issue, such as their interdependency with other products or sectors, and the characteristics of the products into which the design at issue has been integrated, including the degree of technicality of the product concerned”.78 2.2.2.3 Grace Period “If the designer markets his design and within a year thereafter applies to register it, his earlier disclosure of the design does not count as prior art. This has the benefit that he can see how his design is initially received by the market – if well he can go on to register it, if not he need not bother.” 79 UK design law provides a 12-month grace period prior to the priority or filing date – something which has been a feature of the patent and design law of many countries80 for many years. Disclosures by the designer, his/her successor in title (e.g. employer or assignee), or in consequence of a disclosure or other action taken by them, are not part of the state of the art.

2.2.3 NOVELTY RDA Sections

1B(2)

Design Directive Basis (Art.)

Design Directive Recitals

–

SUD, RCD Equivalent (Art.)

Related RDA Sections

11ZA(1A)

Related UK Rules

–

Other Analogues

PA s. 2(1)

Section 1B Requirement of novelty [and individual character] (2) For the purposes of subsection (1) above, a design is new if no identical design or no design whose features differ only in immaterial details has been made available to the public before the relevant date.

The IPO, like WIPO and the EUIPO, does not perform novelty searches or examine novelty 77 78 79 80

Ibid. Ibid. Jacob LJ., Green Lane Products v PMS International [2008] FSR 28, [2008] EWCA Civ 358 at [30]. The US, for example. It is also a feature of the Comprehensive and Permissive Trans-Pacific Partnership (CPTPP).

NAVIGATING DESIGN LAW

during the registration process examination.81 This requirement, like many other grounds of invalidity, can therefore only be raised after registration. The design has to differ from any preceding design. This goes further than meaning any design of the same product.82 Thus the design of, for example, a crankshaft could be anticipated by that of an electrical fuse.83 The comparison must be conducted on a one-for-one basis; it is not legitimate to combine references to make a novelty attack (or, to put the same approach differently, to break down the design into parts and attack each with a different reference).84 The former text of the RDA contained a similar reference to “immaterial details”, which was held to mean “features which make no significant visual impact on the design”.85 This is also the approach of EUIPO’s Board of Appeal under the current design law.86

2.2.4 INDIVIDUAL CHARACTER RDA Sections

1B(3), (4)

Design Directive Basis (Art.)

Design Directive Recitals

SUD, RCD Equivalent (Art.)

Leading Cases

C-281/10 PepsiCo, Procter & Gamble v Reckitt Benckiser (CA)

Related RDA Sections

s. 11ZA(1A) & 7

Related UK Rules

–

Section 1B Requirement of [novelty and] individual character (3) For the purposes of subsection (1) above, a design has individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the relevant date. (4) In determining the extent to which a design has individual character, the degree of freedom of the author in creating the design shall be taken into consideration.

81 Designs Practice Notice, DPN 1/06: Ending novelty examination, 20 Nov 07, Replaces DPN 1/03 and DPN 4/03. 82 See Green Lane Products Ltd v PMS International Group Ltd, [2008] EWCA Civ 358, [2008] FSR 28; Gimex International Groupe Import Export v The Chill Bag Company Ltd [2012] EWPCC 31, [2012] ECDR 25. 83 Stenor v Whitesides (Clitheroe) Ltd (1948), 65 RPC 1 under the previous law. 84 Joined Cases C-361/15 P and C-405/15 P, Easy Sanitary Solutions BV v EUIPO/Group Nivelles NV, [2017] EUECJ C-361/15, [2018] ECDR 4. 85 Laddie J, Household Articles Ltd’s Registered Design [1998] FSR 676 at [25] p685. 86 See R 196/2008-3 Imperial International v Handl Cookware, Saucepan Handles at [15].

PART 2 – REGISTERED DESIGNS

2.2.4.1 The ‘Overall Impression’ test The individual character test is of “overall” impression. “Although it is proper to consider both similarities and differences between the respective designs, what matters is the overall impression produced on the informed user by each design having regard to the design corpus and the degree of freedom of the designer. As Jacob LJ has emphasised repeatedly, the most important thing about each of (i) the registered design, (ii) the accused design and (iii) the prior art is what they look like…”87 The design in suit is compared not with ‘a combination of features taken in isolation and drawn from a number of earlier designs’, but with ‘one or more earlier designs, taken individually.’88 According to the General Court, “a comparison of the overall impressions produced by the designs must be synthetic and cannot be limited to the analytical comparison of an enumeration of similarities and differences.”89 Their recent case law describes the test in terms of “déjà vu”90 (though the UK view is that this is “unhelpful, and should be abandoned”).91 Issues such as “imperfect recollection” may thus play a part in deciding on the “overall impression”, although to a lesser extent than for trade marks – the products concerned should be compared side-by-side where this is practical for a user.92 Although the word ‘overall’ indicates that all features of the design are to be taken into account in performing the comparison, designs are inevitably analysed into a number of features for the purposes of detailing the comparison. As HHJ Hacon said in Cantel:93 “Some design elements are thus more equal than others. An informed user may discriminate between elements of an RCD when comparing each with the corresponding element of an accused design. Greater or lesser significance may be attached to similarities or differences, as the case may be, depending on the practical significance of the relevant part of the product or on other reasons affecting the degree to which their appearance would matter to the informed user.” 87 Whitby Specialist Vehicles v Yorkshire Specialist Vehicles [2014] EWHC 4242 (Pat), [2016] FSR 5 at [30], followed by Carr J. in L’Oréal SA v RN Ventures [2018] EWHC 173 (Pat), [2018] FSR 20. 88 Case C-345/13 Karen Millen at para [35] & answer 1. 89 Case T-334/14 Roca Sanitario v OHIM (Single-acting valve), Case T‑57/16, Chanel SAS v EUIPO (Ornament) [2018] ECDR 10. 90 E.g. Case T-90/16, Thomas Murphy v EUIPO/Nike Innovate (Electronic Watch Bracelet) [2018] ECDR 9, Case T‑306/16, Gamet v EUIPO (Handles) [2017] Appealable EUECJ T-306/16, Case T-334/14 Roca Sanitario v OHIM (Single-acting valve) [2015] EUECJ T-334/14, Case T‑57/16, Chanel SAS v EUIPO (Ornament) [2018] ECDR 10. Note that the CJ has declined to rule on the meaning of this term, see e.g. Case C‑284/20 P Bergslagernas Järnvaruaktiebolag v EUIPO [2020] EUECJ C-284/20 P. 91 Original Beauty Technology v G4K Fashion [2021] EWHC 294 (Ch), [2021] FSR 20; David Stone at [127]. 92 Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936, [2008] FSR 8 at, Case C-281/10 Pepsico v Grupo Promer Mon (“Metal Rappers”). 93 Cantel Medical (UK) Ltd v ARC Medical Design Ltd [2018] EWHC 345 (Pat).

NAVIGATING DESIGN LAW

Some features may be more striking than others, but it is unlikely that a design could resolve to a single feature, no matter how unusual.94 Features of product shape are generally (at least) as important as ornamentation.95 The “overall impression” of a design is a matter for the informed user, who may see it differently than the consumer, lawyer or judge as a result of his greater knowledge or attention. Accordingly, the initial impression can be overridden by the weight given to each feature as it would be perceived by the informed user, as in Samsung v Apple:96 “When I first saw the Samsung products in this case I was struck by how similar they look to the Apple design when they are resting on a table. They look similar because they both have the same front screen. It stands out. However to the informed user (which at that stage I was not) these screens do not stand out to anything like the same extent. The front view of the Apple design takes its place amongst its kindred prior art. There is a clear family resemblance between the front of the Apple design and other members of that family ...” 2.2.4.2 The “Informed User” The test person (both for individual character and for infringement) is an “informed user”, rather than a designer. According to the Court of Appeal in Proctor & Gamble v Reckitt Benckiser97 the informed user: • • • • •

is aware of the “existing design corpus” (but does not have an “archival mind” like the skilled person of the patent world); “has experience of other similar articles” and is therefore “reasonably discriminatory”; is “alert to design issues”; has more extensive knowledge and is more discriminating than the “average consumer” used as a test person in trade mark cases; is less liable to “imperfect recollection” than the “average consumer” of trade marks.

These observations seem to be in line with the CJEU case law. The current UK tests are based on those of the CJ in Case C-281/10 Pepsico98 and are set out by Judge Birss in Samsung v Apple99 in a passage which was accepted by the Court of Appeal100: “i) He (or she) is a user of the product in which the design is intended to be incorporated, 94 95 96 97 98 99 100

Joined Cases T-22/13 and T-23/13 Senz Technologies v EUIPO/Impliva (Umbrella) [2015] ECDR 19. Case T-231/10 Merlin v EUIPO (Toy game). Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat), [2013] ECDR 1 at [189]. Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936, [2008] FSR 8 at [17], [23], [25], [28]. Case C-281/10 P PepsiCo Inc v Grupo Promer Mon-Graphic SA (Metal Rappers) [2012] FSR 5. Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat), [2013] ECDR 1. Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339, [2013] FSR 9.

PART 2 – REGISTERED DESIGNS

not a designer, technical expert, manufacturer or seller (PepsiCo paragraph 54 referring to Grupo Promer paragraph 62; Shenzhen paragraph 46). ii) However, unlike the average consumer of trade mark law, he is particularly observant (PepsiCo paragraph 53); iii) He has knowledge of the design corpus and of the design features normally included in the designs existing in the sector concerned (PepsiCo paragraph 59 and also paragraph 54 referring to Grupo Promer paragraph 62); iv) He is interested in the products concerned and shows a relatively high degree of attention when he uses them (PepsiCo paragraph 59); v) He conducts a direct comparison of the designs in issue unless there are specific circumstances or the devices have certain characteristics which make it impractical or uncommon to do so (PepsiCo paragraph 55). 35. I would add that the informed user neither (a) merely perceives the designs as a whole and does not analyse details, nor (b) observes in detail minimal differences which may exist (PepsiCo paragraph 59).” The effect of the choice of informed user is that “... a low level of awareness of and a low level of attention to designs approximate the informed user to the average consumer and away from the skilled person, and reinforce the conclusion that the designs do not differ and produce the same overall impression on the informed user ... A high degree of knowledge and a high level of attention of the informed user reinforce the opposite conclusion.”101 The informed user is not necessarily an end user, but could be an intermediate trade user: “Generally it seems to me it is safe to start from the premise that a user of a product is likely to be a person who is involved in buying or selecting it as well as in operating it.” (HHJ Birss as he then was, Louver-Lite Ltd v Harris,102 architect rather than end-user was relevant “informed user” for window blinds). Where the product is a component of another, larger product then the informed user is the end user of the latter.103 Where there is more than one possible informed user then it is enough if the design would create the same overall impression on any of them.104

101 Case T-666/11 Budziewska v EUIPO/Puma (Form of a Domestic Cat). 102 Louver-Lite Ltd v Harris Parts Ltd (t/a Harris Engineering) [2012] EWPCC 53 at [27]-[30]. 103 Cases T-10/08, T-11/08 Kwang Yang Motor v EUIPO/Honda (Internal Combustion Engine) [2011] EUECJ T-10/08, [2012] ECDR 2. 104 Case T-68/10 Sphere Time v EUIPO/Punch (Watch attached to a lanyard) [2011] ECDR 20.

NAVIGATING DESIGN LAW

2.2.4.3 Design Freedom – RDA s. 1B(4) “The test of ‘design freedom’ has the effect that the greater the freedom of the designer in developing a design, the less minor differences between the designs or conflicting models are sufficient to produce a different overall impression on the informed user. Conversely, the more the designer’s freedom in developing a design is restricted, the more minor differences between the designs or conflicting models are sufficient to produce a different overall impression on the informed user.”105 Again, the same test is used in judging infringement, so that a design which is valid by virtue of small differences over the prior art in a field where design freedom is constrained has a correspondingly narrow scope of protection. “Design Freedom” is an objective test, determined by external constraints which would apply to all designers, and can be limited by the nature of the product, by health and safety requirements, or by the rules of some organisation regulating the field, but not internal commercial constraints specific to the particular designer in question, such as the need to use existing tooling.106 According to the General Court, cost, available materials, applicable technical, statutory or other standards, and safety may all limit the freedom of the designer.107 General design trends are, however, not limits on design freedom: Cantel.108 The current UK view is that design freedom may be constrained by: (i) the technical function of the product or an element thereof, (ii) the need to incorporate features common to such products, and/or (iii) economic considerations (Dyson v Vax109). An argument that a particular design feature is “optimal” is unlikely to be enough: “Such matters are not properly regarded as limits on design freedom, particularly where there exists evidence of alternative configurations.” Floyd LJ, Pulseon v Garmin.110

105 Case T-80/10, Bell & Ross v EUIPO/KIN (Watches), see also Cases T-10/08, T-11/08 Kwang Yang Motor v EUIPO/Honda (Internal Combustion Engine)) [2011] EUECJ T-10/08, [2012] ECDR 2. 106 Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936, [2008] FSR 8 at [31]. 107 Case T-9/07, Grupo Promer Mon Graphic v OHIM- PepsiCo (Metal Rappers), [2010] ECDR 7. 108 Cantel Medical (UK) Ltd v ARC Medical Design Ltd [2018] EWHC 345 (Pat), following General Court Cases T-153/08, T‑83/11 and T‑84/11, and T-357/12, see also Advocate-General Mengozzi’s Opinion in Case C-281/10. 109 Dyson Ltd v Vax Ltd [2010] EWHC 1923 (Pat), [2010] FSR 39 at [32]-[37], upheld by the Court of Appeal [2011] EWCA Civ 1206, [2012] FSR 4 at [18]-[20], see Magmatic Ltd v PMS International Ltd [2013] EWHC 1925 (Pat), [2014] RPC 23. However, this seems at odds with the view of Advocate-General Mengozzi in Case C-281/10 110 Pulseon OY v Garmin (Europe) Ltd [2019] EWCA Civ 138 at [56].

PART 2 – REGISTERED DESIGNS

2.2.4.4 Effect of the product and sector “Recital 14 of the Regulation111 makes it clear that the overall impression produced on the informed user depends on “the existing design corpus”, taking into consideration the nature of the product to which the design is applied, and the industrial sector to which it belongs.” (Magmatic v PMS112). The Directive contains an equivalent Recital, so the same would appear to apply to UK national designs. The effect of the product and sector on individual character were considered in Gimex v Chill Bag Co113 in which Gimex had adapted their earlier wine bottle carrier bag (the “Transline”) into a wine cooler bag with space for ice, having a similar appearance but different function. HHJ Birss (as he was) defined the “sector” by reference to the function of the product – i.e. chilling wine bottles – so that the prior art was in a different sector. “It seems to me that the fact that the Transline product can be seen as just a bag and not a bottle chiller, means that to the informed user, the visual differences which exist between it and the Ice Bag design are much more significant than they might be if the two designs were both for bottle bags.” 2.2.4.5 Banality of features Features of a design which are banal are given little weight by the informed user114. Thus, each feature of a design should be weighted according to how banal it is – on a “spectrum of banality” (Mainetti v Hangerlogic115 explaining Samsung v Apple116). It is likely that only those prior designs common enough to be known to the informed user are taken into account in this way as secondary references within the “design corpus”.117 2.2.4.6 Prior art “density”: the “crowded field” test In Procter & Gamble v Reckitt Benckiser118 Jacob LJ held that “… if a new design is markedly different from anything that has gone before, it is likely to have a greater overall visual impact than if it is ‘surrounded by kindred prior art’ ([…]).” General Court case law refers to this as “density” of prior art, with a high “density” of similar cases resulting in “saturation”. Commonplace features are less likely to strike the informed user as significant, so that in a ‘crowded field’ which is “saturated” with many similar designs, the eye of the informed user will be sensitised to regard relatively small differences as creating a different

111 112 113 114 115 116 117 118

And equivalent Recital 13 of the Directive. Magmatic Ltd v PMS International Ltd [2013] EWHC 1925 (Pat), [2014] RPC 23 at [44]. Gimex International Groupe Import Export v The Chill Bag Company Ltd [2012] EWPCC 31, [2012] ECDR 25. Case T-9/07 PepsiCo Inc v Grupo Promer Mon-Graphic SA “Metal Rappers” [2010] ECR II-981, [2010] ECDR 7. Mainetti (UK) Ltd v Hangerlogic UK Ltd [2012] EWPCC 42 at [23]. [2012] EWHC 1882, [2013] ECDR 1 (approved by the Court of Appeal). Mainetti (UK) Ltd v Hangerlogic Ltd at [2012] EWPCC 42 at [46]. Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936, [2008] FSR 8 at [35(iii)].

NAVIGATING DESIGN LAW

‘overall impression’.119 The EUIPO Guidelines120 and case law place a fairly high evidential burden on parties who seek to rely on “saturation”. 2.2.4.7 Effect of functionality of features and design freedom Even where a design is markedly different from the prior art, this does not signify “where the striking elements of the design were ones where there was little design freedom, in particular because of technical requirements”: Dyson v Qualtex,121 applied in Magmatic v PMS.122 2.2.4.8 Effect of visibility of features in intended use The informed user “uses the product covered by the design in accordance with the purpose for which that product is intended”.123 Those parts of the product which are more visible in normal use are therefore more significant than those which are less visible. However, visibility at other stages may also be relevant, including the point of purchase.124 Removable elements (e.g. accessories) such as cushions of an armchair, are less significant than fixed ones.125

2.2.5 PRIOR DESIGN RDA Sections

11ZA(1A)

Design Directive Basis (Art.)

11(1)(d)

Design Directive Recitals

–

SUD, RCD Equivalent (Art.)

25(1)(d)

Related RDA Sections

1B, 14

Related UK Rules

–

Other Analogues

PA s. 2(3)

Section 11ZA Grounds for invalidity of registration (1A) The registration of a design (“the later design”) may be declared invalid if it is not new or does not have individual character when compared to a design which— (a) Has been made available to the public on or after the relevant date; but 119 See for example Cases T-83/11 and T-84/11 Antrax It v EUIPO/THC (Radiators for Heating) [2018] ECDR 7; Cases T-315/12, T-828/14 & T-829/14, T-98/15 (Radiators for Heating); Case T-666/11 Budziewska v EUIPO/ Puma (Form of a Domestic Cat). 120 Correctly, it is submitted. See Guidelines for Examination of design invalidity applications, 5.7.2.2 under heading “The overall impression”, and the cases cited therein. 121 Dyson Ltd v Vax Ltd [2010] EWHC 1923 (Pat), [2010] FSR 39. 122 Magmatic Ltd v PMS International Ltd [2013] EWHC 1925 (Pat), [2014] RPC 23. 123 Case T-153/08 Shenzhen Taiden v EUIPO/Bosch (Communications equipment) [2010] ECR II-2517, [2010] EUECJ T-153/08 at [46], Case T-337/12 El Hogar v EUIPO /Wenf (Corkscrews) [2014] ECDR 1 at [23]. 124 Joined Cases T-22/13 and T-23/13 Senz Technologies v EUIPO/Impliva (Umbrella) [2015] ECDR 19. 125 Case T-357/12, Sachi v EUIPO/Gandia Blasco, Armchair.

PART 2 – REGISTERED DESIGNS

(b) Is protected as from a date prior to the relevant date by virtue of registration under this Act or an application for such registration. (1B) In subsection (1A) “the relevant date” means the date on which the application for the registration of the later design was made or is treated by virtue of section 3B(2), (3) or (5) or 14(2) of this Act as having been made.

A prior design registration which is not yet published or made available to the public at the date of filing or priority of the design in suit is deemed to form part of the state of the art for novelty and individual character, but this ground of invalidity can be used as a challenge only by the proprietor of the prior design.126 It follows that where the prior design is in the same hands as the design in suit, it cannot be relied on as prior art by anyone else. This ground is only relevant where the earlier design has not been published before the filing or priority date of the later. Otherwise the later would lack novelty or individual character. Most designs are published quickly after they are filed, but this is not necessarily always the case. It should be noted that the RDA implements this ground by treating prior-filed designs as if they were prior-published, unlike the corresponding Community Design provisions which treat priorfiled designs as prior rights127 – an easier basis for attack.

2.2.6 LACK OF ENTITLEMENT RDA Sections

11ZA(2)

Design Directive Basis (Art.)

11(1)(c)

Design Directive Recitals

–

SUD, RCD Equivalent (Art.)

25(1)(c)

Related RDA Sections

Related UK Rules

–

Other Analogues

PA s. 72(1)(b)

Section 11ZA Grounds for invalidity of registration (2) The registration of a design may be declared invalid on the ground of the registered proprietor not being the proprietor of the design and the proprietor of the design objecting.

The true proprietor can attack a design on this basis (but would probably usually prefer to acquire ownership instead). For proprietorship in general, see below. The rights of a co-owner are unclear. 126 RDA s. 11ZB(3) & (4). 127 See T-9/07 (Metal rappers); Case C-281/10 P PepsiCo v Grupo Promer Mon Graphic SA.

NAVIGATING DESIGN LAW

2.2.7 PRIOR RIGHTS “… the only interpretation capable of ensuring… effective protection of the rights of the proprietor of an earlier mark… against any encroachment on that mark through its use in a subsequent Community design…”128 RDA Sections

11ZA(1), (3), (4)

Design Directive Basis (Art.)

11(1)(e)-(g)

Design Directive Recitals

–

SUD, RCD Equivalent (Art.)

25(1)(e)-(g)

Leading Cases

Prior Sign: T 148/08, T-608/11 Beifa; T-55/12 Chen; Prior ©: T-68/11 Kastenholz, T-566/11 Viejo Valle

Related RDA Sections

s. 3A(4), Sched. A1

Related UK Rules

–

IPO Practice

RDEPG Part B Chapter 6

Other Analogues

TMA s. 5, s. 47(2)

Section 11ZA Grounds for invalidity of registration (1) The registration of a design may be declared invalid — (c) Where any ground of refusal mentioned in Schedule A1 to this Act applies. (3) The registration of a design involving the use of an earlier distinctive sign may be declared invalid on the ground of an objection by the holder of rights to the sign which include the right to prohibit in the United Kingdom such use of the sign. (4) The registration of a design constituting an unauthorised use of a work protected by the law of copyright in the United Kingdom may be declared invalid on the ground of an objection by the owner of the copyright.

2.2.7.1 Prior Sign (trade mark) If a design uses (i.e. includes) a protected trade mark, the trade mark proprietor can invalidate the design.129 The design may be invalidated whether it is identical or merely similar to the earlier sign, and the comparison is carried out in the same manner as for trade mark infringement.130 The situation where the indication of product of the attacked design does not fall within the goods for which the earlier sign could be enforced is unclear, given the rather weak effects of such indications, but designs registered with indications such as “logo” or “label” certainly cannot distinguish on this basis. 128 Case T‑148/08 Beifa (Instrument for Writing), [2010] ECDR 9, at [53]. 129 See, for example, EUIPO Appeal Decision R 609/2006-3 Zellweger Analytics Ltd’s Community Design [2006] ECDR 17 (MIDAS logo). 130 Case T‑148/08 Beifa (Instrument for Writing) [2010] ECDR 9, Case T-608/11 Beifa (Instrument for Writing), [2013] ECDR 17, Case T-55/12 (Cleaning devices).

PART 2 – REGISTERED DESIGNS

2.2.7.2 Prior Copyright Work Similarly, use of a copyright work (usually a graphic work due to s. 51 of the CDPA) may be a bar to registration.131 2.2.7.3 Prior Protected Symbol A design cannot re-use certain symbols, specified in Schedule A1 to the RDA. For example, national flags, Royal arms, private coats of arms, and the Olympic symbol are protected. The Design Registry or the relevant public authority can raise this ground, which is also examined before registration.

2.3

INFRINGEMENT

2.3.1

SCOPE OF PROTECTION

“This test is inherently rather imprecise: an article may reasonably seem to one man [not] to create ‘a different overall impression’ and yet to another to do so. It is always so with the scope of rights in a visual work.”132 RDA Sections

Design Directive Basis (Art.)

Design Directive Recitals

11, 13, 14

SUD, RCD Equivalent (Art.)

Leading Cases

Procter & Gamble v Reckitt Benckiser (CA), Samsung v Apple (HC)

Related RDA Sections

1B(3) & (4)

Related UK Rules

Section 7 Right given by registration (1) The registration of a design under this Act gives the registered proprietor the exclusive right to use the design and any design which does not produce on the informed user a different overall impression. (3) In determining for the purposes of subsection (1) above whether a design produces a different overall impression on the informed user, the degree of freedom of the author in creating his design shall be taken into consideration. 131 Registered Community Design examples are General Court Case T-68/11 (Watch dials) where the design was held only to share the same idea as the earlier copyright work; attacks on this ground succeeded however in Case T-566/11 (Crockery). 132 Procter & Gamble v Reckitt Benckiser [2007] EWCA Civ 936, [2008] FSR 8, per Jacob LJ at [34].

NAVIGATING DESIGN LAW

(4) The right conferred by subsection (1) above is subject to any limitation attaching to the registration in question (including, in particular, any partial disclaimer or any declaration by the registrar or a court of partial invalidity).

The scope of protection around a design (i.e. the statutory test for infringing similarity) is the same as that for individual character. The factors mentioned for individual character in Recital 13 of the Directive (Recital 14 of the Regulation) – the “design corpus”, the “nature of the product” and the “industrial sector” concerned – have also been applied by the Courts in infringement proceedings.133 The scope of the penumbra surrounding a given design is defined only in an infringement action. Except for counterfeits (where the intention is to look identical), there are inevitably differences between the infringement and the registration. Focussing on the similarities tends to lead to a finding of infringement; focussing on differences tends to lead to non-infringement. Even where designs are similar at first blush, the similarity may not be actionable. Some similarities may be inevitable (if they are common to the “fundamental form” of an article, in other words are dictated by some functional consideration), and others may be visually trivial. As when considering individual character, the assessment of infringing similarity is also affected by the subtest of design freedom. Where both designs are of products in the same sector in which there is only a small degree of freedom, the later design may appear similar to the earlier to the untrained eye, but where the similarities are due to a lack of design freedom then the differences will count more strongly against infringement. On the other hand, in a field with considerable design freedom, similarities are less likely to be inevitable and the scope of protection of the earlier design will be wide. As the test person is the “informed user”, who has some knowledge of other designs and design trends (see above), pioneering or ground-breaking features may stand out and be seen as more significant. A pioneering design has broader scope, all other things being equal.134 However, its scope will never be broad enough to control the entire market for a product.135 Conversely, as when assessing individual character, banal features will tend to be ignored, and designs which are in a “dense” or “crowded” art, surrounded by close prior art, will tend to be given a narrow scope, with more attention paid to differences. There is an interplay between valid scope and distance from the prior art. If the design in suit is more similar to the prior art than to the infringement, it cannot validly cover the infringement without being invalid. A borderline case was the Trunki suitcase of Magmatic v PMS at first instance,136 where the designer’s own prior art (the “Rodeo”) was the only relevant prior art: 133 134 135 136

For instance Samsung v Apple, [2012] EWHC 1882 (Pat), [2013] ECDR 1 at [30] & [42]. Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936, [2008] FSR 8 at [35(iii)]. T-22/13 & T-23/13, Senz Technologies v OHIM/Impliva (Umbrellas) at [95]. Magmatic Ltd v PMS International Ltd [2013] EWHC 1925 (Pat), [2014] RPC 23

PART 2 – REGISTERED DESIGNS

“If it were not for the Rodeo, I would have little hesitation in saying that the Kiddee Case produced the same overall impression on the informed user having regard to the broad scope of protection to which the CRD would otherwise be entitled. I am rather more doubtful as to whether it can be said the overall impression produced by the Kiddee Case is the same as the CRD and yet the overall impression produced by the Rodeo is different. Nevertheless, I have come to the conclusion that that is the correct assessment.” (Arnold J. – overturned on appeal but no criticism of this approach.) However, even where the infringement is closer to the design than is the prior art, there may still be no infringement.137 Where a design is partly dictated by function, or subject to heavy constraints on design freedom, it may be valid and also similar to the infringement, but if the similarities lie only in features dictated by function, there may nonetheless be no infringement. Any features which are solely dictated by the product’s technical function “… are to be ignored in the assessment of overall impression under art. 10(1).” But if a feature is not solely dictated by function, “assessment is not binary, but more flexible, with greater or lesser weight being attached to similarities or differences in appearance, as may be appropriate”.138 A design which is partly functional and partly conventional may have a scope too limited to be infringed where these reasons are combined: “I think the fallacy in Sealed Air’s reasoning in relation to the registered design aspect of this case is to argue that once the designs are recognised as valid despite their numerous functional features (because aesthetic considerations do play a part) it therefore follows that one can pray in aid many of the visual similarities between the Sealed Air and Sharpak designs, ignoring the fact that these similarities derive from functional and/ or conventional elements.… These designs have an aesthetic element but in truth their appearance is very largely driven by functional considerations and to an important degree the elements which are not constrained by function are conventional.” HHJ Birss (as he was), Sealed Air v Sharp at [78]. Comparison with alleged infringement As noted above, the comparison between the design and the alleged infringement is essentially the same as that conducted for validity purposes between the design and the elements of the prior design corpus. In Cantel, HHJ Hacon adopted the following approach,139 which may serve as a useful checklist:

137 Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936, [2008] FSR 8 at [35(iv)]. 138 Cantel Medical (UK) v ARC Medical Design [2018] EWHC 345 at (Pat) [168]. 139 Based on that of the General Court in Case T-525/13 H&M Hennes & Mauritz v OHIM/Yves Saint Laurent (Hand bags).

NAVIGATING DESIGN LAW

(1) Decide the sector to which the products in which the designs are intended to be incorporated or to which they are intended to be applied belong; (2) Identify the informed user and having done so decide (a) the degree of the informed user’s awareness of the prior art and (b) the level of attention paid by the informed user in the comparison, direct if possible, of the designs; (3) Decide the designer’s degree of freedom in developing his design; (4) Assess the outcome of the comparison between the RCD and the contested design, taking into account (a) the sector in question, (b) the designer’s degree of freedom, and (c) the overall impressions produced by the designs on the informed user, who will have in mind any earlier design which has been made available to the public. (5) Features of the designs which are solely dictated by technical function are to be ignored in the comparison. (6) The informed user may in some cases discriminate between elements of the respective designs, attaching different degrees of importance to similarities or differences. This can depend on the practical significance of the relevant part of the product, the extent to which it would be seen in use, or on other matters.

2.3.2 INFRINGING ACTS RDA Sections

7(1)-(2), 7A(1)

Design Directive Basis (Art.)

12(1)

Design Directive Recitals

–

SUD, RCD Equivalent (Art.)

19(1)

UK/EU TCA (Art.)

245(2) (ex IP.27)

Leading Cases

C-361/15 Easy Sanitary Solutions, Green Lane v PMS(CA)

Related RDA Sections

–

Related UK Rules

–

Other Analogues

PA, s. 60(1)

Section 7 Right given by registration (1) The registration of a design under this Act gives the registered proprietor the exclusive right to use the design and any design which does not produce on the informed user a different overall impression. (2) For the purposes of subsection (1) above and section 7A of this Act any reference to the use of a design includes a reference to— (a) The making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied; or (b) Stocking such a product for those purposes.

PART 2 – REGISTERED DESIGNS

Section 7A Infringements of rights in registered designs (1) Subject as follows, the right in a registered design is infringed by a person who, without the consent of the registered proprietor, does anything which by virtue of section 7 of this Act is the exclusive right of the registered proprietor.

Any “use” of a registered design is an infringement. There is no need to prove copying. A nonexhaustive list of infringing acts is given in RDA s. 7(2). The examples are much like the acts of primary or direct patent infringement. “Use” of the design is thus inclusive of but broader than “use” of (or any act in relation to) the product to which it is applied, though the exact ambit of the term is unclear.140 There is no provision for “secondary” or “contributory” infringement,141 and so it may be difficult to sue suppliers of parts for assembly into a whole by an end user, as end users themselves will often be exempt if the use is private and non-commercial. The rights apparently extend to any product incorporating the design; not necessarily that which the designer intended, or that represented (if any) in the application for registration (see Green Lane Products v PMS (CA)). Thus, a registration of, say, a car is infringed by making toy cars in the same shape. The CJ so held in Case C-361/15 Easy Sanitary Solutions v EUIPO/Groupe Nivelles. The rights are expressly subject to any limitations or disclaimers on the register (s. 7(4)).

2.3.3 NON-INFRINGING ACTS RDA Sections

7A(2)-(3)

Design Directive Basis (Art.)

Design Directive Recitals

–

SUD, RCD Equivalent (Art.)

Leading Cases

C-24/16 Nintendo

Related RDA Sections

–

Related UK Rules

–

Other Analogues

UKUDR: CDPA s. 244A PA, s. 60(5). ©: CDPA s. 32

140 In Cases C-24/16 and C-25/16 (Nintendo v BigBen), the CJ seem to have proceeded on the assumption that a two-dimensional depiction of a three-dimensional design (of a computer game accessory) would infringe. 141 Probably deliberately, so as not to interfere with the elaborate provisions as to parts and repair.

NAVIGATING DESIGN LAW

Section 7A Infringements of rights in registered designs (2) The right in a registered design is not infringed by— (a) An act which is done privately and for purposes which are not commercial; (b) An act which is done for experimental purposes; (c) An act of reproduction for teaching purposes or for the purpose of making citations provided that the conditions mentioned in subsection (3) below are satisfied; (d) The use of equipment on ships or aircraft which are registered in another country but which are temporarily in the United Kingdom; (e) The importation into the United Kingdom of spare parts or accessories for the purpose of repairing such ships or aircraft; or. (f) The carrying out of repairs on such ships or aircraft. (3) The conditions mentioned in this subsection are— (a) The act of reproduction is compatible with fair trade practice and does not unduly prejudice the normal exploitation of the design; and. (b) Mention is made of the source.

There are some specific exclusions from infringement in RDA s. 7A, namely: UK RD Defence

RDA s.

UKUDR CDPA s.

PA s.

Private, non-commercial acts

7A(2)(a)

244A(a)

60(5)(a)

Experimental Purposes

7A(2)(b)

244A(b)

60(5)(b)

Reproduction for teaching purposes

7A(2)(c)

244A(c)

–

Reproduction for purpose of making citations

7A(2)(c)

244A(c)

–

Use on foreign ships & aircraft

7A(2)(d)

244B(a)

60(5)(e,f)

Import & use of spares to repair same

7A(2)(e,f)

244B(b,c)

60(5)(f)

These are EU-law derived, and mostly based ultimately on the equivalent patent law defences.142 The “teaching” defence, however, has a precursor in Art. 5(3) of the Semiconductor Topography Directive.143 There are equivalents for UKUDR (see 6.7.9). The act of “citation” was considered in Cases C-24/16 and C-25/16 (Nintendo v BigBen) and, in line with the broader meaning of the French equivalent term “illustration”, found to apply to a depiction on the defendant’s product packaging used to market accessories to work with the depicted design.144 142 See David Musker, Community Design Law: Principles & Practice, pp68-70, Sweet & Maxwell, 2002. 143 Council Directive 87/54/EEC of 16 December 1986 on the legal protection of topographies of semiconductor products. 144 Possibly incorrectly – see David Stone, Design law misplayed in Nintendo AG Opinion JIPLP Volume 12, Issue 7, July 2017, Pages 558–564, https://doi.org/10.1093/jiplp/jpx101 & David Musker ‘Making citations’ – mystery or mistranslation? The Opinion of Advocate General Bot in Nintendo v BigBen JIPLP Volume 12, Issue 10, October

PART 2 – REGISTERED DESIGNS

2.3.4 EXHAUSTION OF RIGHTS RDA Sections

7A(4)

Design Directive Basis (Art.)

Design Directive Recitals

SUD Equivalent (Art.)

CUCD Equivalent (Art.)

UK/EU TCA (Art.)

223 (ex IP.5)

Leading Cases

Sony v Pacific Game Technology

Other Analogues

TMA s. 12(1), ©: CDPA s. 18(2)

Section 7A Infringements of rights in registered designs (4) The right in a registered design is not infringed by an act which relates to a product in which any design protected by the registration is incorporated or to which it is applied if the product has been put on the market in the United Kingdom or the European Economic Area by the registered proprietor or with his consent.

Whilst the UK was part of the EU, rights in a design were exhausted only on first sale within the EEA (i.e. “regional exhaustion”). When creating the “no deal” legislation in readiness for leaving the EU,145 the UK had to choose between adopting “international exhaustion” (and thereby permitting grey-market parallel imports), “national exhaustion”, and something resembling the status quo. It chose the last of these, presumably to minimise the short-term impact of departure from the EU. As this was a unilateral decision, the EU/EEA is not obliged to apply the same. It remains to be seen how long the UK will keep the present regime.

2017, Pages 834–836, https://doi.org/10.1093/jiplp/jpx151 145 Specifically, the Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019, SI 2019/265.

NAVIGATING DESIGN LAW

2.3.5 REPAIR DEFENCE “it is precisely in order to limit the creation of captive markets in spare parts that the ‘repair’ clause… provides that there is no protection… for a Community design which constitutes a component part of a complex product that is used for the purpose of the repair of a complex product so as to restore its original appearance”146 RDA Sections

7A(5)

Design Directive Basis (Art.)

Design Directive Recitals

–

SUD Equivalent (Art.)

110(1)

CUCD Equivalent (Art.)

110(1)

Leading Cases

C-397/16 & C435/16 Acacia

Related RDA Sections

Section 7A Infringements of rights in registered designs (5) The right in a registered design of a component part which may be used for the purpose of the repair of a complex product so as to restore its original appearance is not infringed by the use for that purpose of any design protected by the registration.

For external component parts, such as car body panels, the EU Council found it almost impossible to reach a political agreement between car-producing countries such as France and Germany and consumerist countries such as the UK. The Directive147 therefore leaves the treatment of these parts to the existing national laws of the EU Member States. However, when the Community Design Regulation was created, a last-minute interim compromise position was defined in CDR Art. 110 of Regulation 6/2002, which makes acts for repair purposes non-infringements. When implementing the Directive – not the Regulation – the UK chose to adopt a similar amendment. The Court of Justice case law under Art. 110 CDR (discussed at 4.4 in relation to Supplementary and Unregistered Community Designs) is therefore not directly applicable to the UK RDA provision, though it may be persuasive.

146 C-397/16, C-433/16 Acacia [2017] ECDR 18 at [51]. 147 DD Art.s 14 & 18.

PART 2 – REGISTERED DESIGNS

2.3.6 PRIOR USE DEFENCE RDA Sections

Design Directive Basis (Art.)

–

Design Directive Recitals

–

RCD Equivalent (Art.)

Other Analogues

PA, s. 64

Section 7B Right of Prior use (1) A person, who, before the application date, used a registered design in good faith or made serious and effective preparations to do so may continue to use the design for the purposes for which, before that date, the person had used it or made the preparations to use it. (2) In subsection (1), the “application date”, in relation to a registered design, means – (a) The date on which an application for the registration was made under section 3, or (b) Where an application for the registration was treated as having been made by virtue of section 14(2), the date on which it was treated as having been so made. (3) Subsection (1) does not apply if the design which the person used, or made preparations to use, was copied from the design which was subsequently registered. (4) The right conferred on a person by subsection (1) does not include a right to licence another person to use the design. (5) Nor may the person on whom the right under subsection (1) is conferred assign the right, or transmit it on death (or in the case of a body corporate on its dissolution), unless – (a) The design was used, or the preparations for its use were made, in the course of a business, (b) The right is assigned or transmitted with the part of the business in which the design was used or the preparations for its use were made.

The prior use defence allows a party who has begun, or made effective and serious preparations to begin, infringing acts before the priority date to continue with them. The right is a personal right, which allows the prior user to continue use but cannot be licensed, and is transferable only with the business. It was absent from the Directive but present in the CDR for Registered Community Designs. The UK provision is based on that of the CDR,148 and similar to that applicable to patents. It was introduced on 1 October 2014, and applies to UK designs registered after that date.

148 Intellectual Property Act 2014, inserting RDA s. 7B.

NAVIGATING DESIGN LAW

2.3.7

INVALIDITY

In the UK, an invalid right cannot be infringed. Invalidity is therefore generally a defence. In the past, difficulties arose when infringement actions were brought before inferior courts,149 as these did not have jurisdiction to cancel invalid designs and were not considered to have jurisdiction to entertain an invalidity defence either. Currently, the UK courts with jurisdiction to hear an infringement action150 can also entertain an invalidity defence and a counterclaim to rectify the Register by expunging a registered design.

2.4

REGISTERED DESIGNS – PROCEDURE AND PRACTICE

2.4.1

INTRODUCTION

Much of the detail of Patent Office procedure is contained within secondary legislation. The Registry procedure is detailed in the RDR (although the RDR also contain some substantive law provisions), and the procedure on appeal from the Registry in the Appointed Person (Designs) Rules 2015.151 We are also expecting at some point to see Design Opinions Service Regulations which will govern IPO opinions on designs.152 Changes to forms are issued in “Directions” published on the IPO website; accordingly, the online forms (which are up to date) should be used instead of those published with the RDR. The IPO issues guidance in the form of Design Practice Notices (“DPNs”) and Tribunal Practice Notices (“TPNs”), and a public Registered Designs Examination Practice Guide (“the Guide”153). The parts of the Guide which deal with the representations (i.e. the images in the application) are harmonised with the pan-European Common Practices154 agreed by the Trade Marks and Designs Network (“TMDN”) of which the IPO is a member (as is the EUIPO). The IPO also maintains information pages on its website.155 Current (or partially current) DPNs procedure are as follows: • •

DPN 1/16: Guidance on use of representations when filing Registered Design applications DPN 1/09: New procedure relating to convention country priority claims in design applications

149 150 151 152

Specifically, County Courts. For which see CPR Part 63. SI 2015/169. A draft appears in the Consultation document online here: https://www.gov.uk/government/consultations/designs-opinions-service-regulations. 153 https://www.gov.uk/guidance/designs-examination-practice. 154 Convergence on graphic representations of designs – Common Communication 15 May 2018, https://www.tmdn.org/network/graphical-representations. 155 Currently at https://www.gov.uk/topic/intellectual-property/designs.

PART 2 – REGISTERED DESIGNS

• • • • • • • • • • • •

DPN 6/06: Colour in design applications DPN 5/06: Changes to the registered designs rules to coincide with the modernisation of primary legislation DPN 4/06: Facilitating the restoration of lapsed design registrations DPN 3/06: Ending the withdrawal of some registered designs from public inspection DPN 2/06: Allowing multiple applications DPN 1/06: Ending novelty examination DPN 2/04: US priority documents in support of UK design applications DPN 1/04: Filing requirements for design applications DPN 5/03: Designs dictated by their technical function DPN 3/03: Divide-outs DPN 2/03: Applying to register part of a product DPN 1/03: Component part of complex product visible in normal use

In areas where no specific design guidance exists, the Trade Mark and Patent manuals of practice are sometimes helpful. Currently, communications with the IPO are almost entirely electronic. Design applications can be filed through the online application service (no account is required for this) and forms can be filed, together with supporting documents (all in pdf format), at the ‘forms@ipo.gov.uk’ email address. The IPO recommends a particular subject-line format including the form number, the IP right number and a reference, for example: TM16-UK00003245678-G4321DCM. General enquiries should however be sent to ‘information@ipo.gov.uk’.

2.4.2 MANDATORY CONTENT OF REGISTERED DESIGN APPLICATIONS RDA Sections

–

RCD Equivalent (Art.)

36(1) & (2), CDIR Art. 1(1)

Related RDA Sections

–

Related UK Rules

4(1), 5(1) & (2), 42(1)(a)

Other Analogues

Hague Art. 5(1), r. 7(3) & (4)

Rule 4. Applications (1) An application for the registration of a design or designs shall be made on Form DF2A and— (a) shall include the identity of the person making the application; and (b) in relation to each design, shall either— (i) include a representation of the design; or (ii) be accompanied by a specimen of the design, and it shall be accompanied by the prescribed fee.

NAVIGATING DESIGN LAW

2.4.2.1

Representations

“And it is the policy of the Act of Parliament that the drawing shall speak for itself, where it is competent to speak for itself, and does not require the aid of any limitation or explanation.”156 RDA Sections

–

Design Directive Recitals

RCD Equivalent (Art.)

Art 36(1)(c), CDIR Art. 4

Related RDA Sections

17(10)(b), 22(1)(a)

Related UK Rules

4(1)(b)(i), 9

IPO Practice

RDEPG Part C Chapter 11

Other Analogues

Hague Art. 5(1)(iii), r. 9, r. 14(2)(a)(iv)

The representations are the most important part of a design application. They must be “suitable for reproduction”, given their function in notifying the public of the rights granted. Nowadays the representations are made available to the public electronically, but the authentic copies are those held at the IPO. If the design is filed online, there is a maximum of 12 images per design. The commonly used and accepted conventions (of the type referred to by the Supreme Court in Magmatic) are explained in the IPO Registered Designs Examination Practice Guide. However, it remains possible that the addressee would conclude that the design did not use these conventions. Thus, dashed lines were given different interpretations in Samsung v Apple157 and Kohler Mira v Bristan.158 2.4.2.2 Specimen RDA Sections

–

RCD Equivalent (Art.)

36(1)(c)

Leading Cases

Hadley v Sloggett (RDAT)

Related RDA Sections

17(10)(b), 22(1)(a)

Related UK Rules

4(1)(b)(ii), 4(6), 5(3)

IPO Practice

RDEPG Part C Chapter 7, 7.08-7.09

Other Analogues

Hague Art. 5(1)(iii), r. 10, r. 14(2)(a)(iv)

156 Holdsworth v M’Crea (1867) L.R. 2 H.L. 380, per Lord Westbury p388. 157 Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339, [2013] FSR 9. 158 [2013] EWPCC 2, [2014] FSR 1.

PART 2 – REGISTERED DESIGNS

For relatively flat, non-perishable designs it is possible to file a sample or “specimen” in place of representations. The IPO requires that the sample is supplemented before publication by representations suitable for publication. It can however be inspected. 2.4.2.3 Indication of Product RDA Sections

36(1A)(ab)(i)

RCD Equivalent (Art.)

36(2) & (6), CDIR Art 3(3)

Leading Cases

Green Lane v PMS (CA), C-361/15 Easy Sanitary Solutions

Related RDA Sections

–

Related UK Rules

4(5)

IPO Practice

RDEPG Part C Chapter 7, 7.04-7.06

Other Analogues

Hague Art. 5(1)(iv), r. 7(3)(iv)

Section 36 General power of Secretary of State to make rules, etc (1) Subject to the provisions of this Act, the Secretary of State may make such rules as he thinks expedient for regulating the business of the Patent Office in relation to designs and for regulating all matters by this Act placed under the direction or control of the registrar or the Secretary of State. (1A) Rules may, in particular, make provision— (ab) requiring applications for registration of designs to specify— (i) the products to which the designs are intended to be applied or in which they are intended to be incorporated; Rule 5. Formal requirements (1) An application for the registration of a design shall comply with the first and second requirement. (2) The first requirement is that the applicant has specified the product to which the design is intended to be applied or in which it is intended to be incorporated. (5) Nothing done to comply with the first requirement shall be taken to affect the scope of the protection conferred by the registration of a design.

The applicant is required to file an indication of the product(s) to which he intends to apply the design. This has “no effect on the scope of protection as such”. For Registered Community Designs, the indication of product was held by the CJ159 not to limit the design for purposes of validity and infringement. The UK Court of Appeal had previously held the same (in relation to a Registered Community Design).160 The reasoning of both courts seems equally applicable to UK national registered designs. 159 Case C-361/15 Easy Sanitary Solutions v EUIPO/Groupe Nivelles (Shower Drains) [2017] EUECJ C-361/15, [2018] ECDR 4. 160 Green Lane Products Ltd v PMS International Group Plc [2008] EWCA Civ 358, [2008] FSR 28.

NAVIGATING DESIGN LAW

2.4.2.4 Address for Service RDA Sections

–

UK Rules

42-43

Other Analogues

TM r. 11; Patent r. 103

Rule 42. Address for service (1) For the purposes of any proceedings under the Act, an address for service shall be furnished by — (a) an applicant for the registration of a design;

Where an applicant is not based in the UK, the Registry (and third parties) may have difficulty in serving papers on them. Applicants are therefore required to give an address for service in the UK. Failure to file an address for service can result in deemed withdrawal of an application for registration or invalidation.161 This address can also be used to serve a claim form on the applicant in UK civil design litigation.162 To ensure that such papers will be appropriately handled it is wise to use the address of a professional agent in the UK, but this is not mandatory. While the UK was within the EU, the address for service could be anywhere within the EEA and it was in fact possible to serve documents anywhere in the EEA.163 Since Brexit, the address for service must be in the UK, Gibraltar or the Channel Islands.164

2.4.3 OPTIONAL CONTENT OF REGISTERED DESIGN APPLICATIONS 2.4.3.1

Description

RDA Sections

–

RCD Equivalent (Art.)

36(3)(a)

Related RDA Sections

–

Related UK Rules

4(5)

IPO Practice

RDEPG Part C Chapter 7, 7.07

Other Analogues

Hague Art. 5.2(b)(ii)

161 RDR r. 43 162 CPR 63.14. 163 By virtue of the Lugano Convention, the Brussels Convention, and most recently Regulation (EU) 1215/2012 of the European Parliament and of the Council on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast). 164 RDR r. 42(4).

PART 2 – REGISTERED DESIGNS

Design registrations may optionally be accompanied by a brief description, which usually explains conventions used in the representations. It is not published, but can be inspected or copied from the file held at the IPO. The practice of the IPO is to object to anything like a patent claim. Under the previous RDR, the description was stated to have no effect on the scope of protection.165 The removal of this provision was not explained at the time, and is probably accidental. The description, however, may form part of the “context” for interpretation of the representations and so may indirectly affect the scope and validity of the design. The IPO will usually object if the description refers to matter not shown in the representations, or if it contains what should properly be a disclaimer. 2.4.3.2 Disclaimer RDA Sections

3B(6)

Leading Cases

Green Lane v PMS (CA)

Related RDA Sections

7(4), 11ZD(4)

Related UK Rules

IPO Practice

RDEPG Part C Chapter 12

Other Analogues

TMA s. 13

There may also be a disclaimer on file. This does, by definition, affect the scope of protection. Disclaimers may be “visual”, using a recognised convention to concentrate attention on certain parts or aspects of a design, and/or “verbal” (in writing on the form). They may not disclaim products, only features of a design.166 2.4.3.3 Appointment of Agent RDA Sections

–

RCD Equivalent (Art.)

36(1) & (2)

Related RDA Sections

–

Related UK Rules

IPO Practice Other Analogues

Hague Art. 5(1), r. 7(3) & (4)

165 RDR 1995 r. 17A. 166 Green Lane Products Ltd v PMS International Group Ltd [2007] EWHC 1712 (Pat), [2008] FSR 1 at [31]-[32].

NAVIGATING DESIGN LAW

Rule 36. Agents (1) Any act required or authorised by the Act to be done by or to any person in connection with the registration of a design, or any procedure relating to a registered design, may be done by or to an agent authorised by that person orally or in writing. (2) But an agent shall only be treated as authorised under paragraph (1) where— (a) he was nominated by the applicant at the time of— (i) making his application for registration;

There is no requirement to appoint an agent.167 However, if appointed an agent will be recognised by the Registry. An agent can be nominated in the application form, or can notify the Registry later using Form DF1A. Agency has never been reserved to any particular class of person. There is a distinction between authorising an agent – a transaction between the client and the agent – and nominating or appointing the agent – a transaction between the client or agent and the Registry. The agent should ensure that they have some evidence that they are authorised to act – for example, a retainer letter, or a specific Power of Attorney from the client – setting out the limits of their appointment. 2.4.3.4 Priority Claim See 2.4.4.

2.4.4 PRIORITY CLAIMS “… the legislature and the Convention do not intend that a narrow view should be taken as to what is requisite, under the foreign law, to found a right of priority which can be exercised in this country. Indeed, we think the general intention of the Convention is that, in his own country, the applicant need only do what is requisite in his own country: if he does that, he should get priority in the other countries.”168 RDA Sections

RCD Equivalent (Art.)

41, 42, 43

Leading Cases

Deyhle’s Design Applications (RDAT)

Related RDA Sections

Related UK Rules

Form

DC1

IPO Practice

RDEPG Part C Chapter 10

Other Analogues

Paris Convention: Art 4

167 Though an address for service is necessary, see 2.5.2.4. 168 Deyhle’s Design Applications, [1982] RPC 526, Graham J. & S. Gratwick, Q.C. at p546.

PART 2 – REGISTERED DESIGNS

Section 14 Registration of design where application for protection in convention country has been made (1) An application for registration of a design or designs in respect of which protection has been applied for in a convention country may be made in accordance with the provisions of this Act by the person by whom the application for protection was made or his personal representative or assignee: Provided that no application shall be made by virtue of this section after the expiration of six months from the date of the application for protection in a convention country or, where more than one such application for protection has been made, from the date of the first application. (2) Where an application for registration of a design or designs is made by virtue of this section, the application shall be treated, for the purpose of determining whether (and to what extent) that or any other design is new or has individual character, as made on the date of the application for protection in the convention country or, if more than one such application was made, on the date of the first such application. (3) Subsection (2) shall not be construed as excluding the power to give directions under section 3B(2) or (3) of this Act in relation to an application made by virtue of this section. (4) Where a person has applied for protection for a design by an application which— (a) In accordance with the terms of a treaty subsisting between two or more convention countries, is equivalent to an application duly made in any one of those convention countries; or (b) In accordance with the law of any convention country, is equivalent to an application duly made in that convention country, he shall be deemed for the purposes of this section to have applied in that convention country.

2.4.4.1 Priority – General Priority can be claimed from a foreign design application filed within the six months before the UK filing date.169 The existence of a 12-month grace period has somewhat reduced the importance of claiming priority, but it is still important where (a) the design has been prior-disclosed by the designer or successor in title between 12 and 18 months before the UK filing date (i.e. within the grace period calculated from the priority application but outwith that calculated from the UK filing date), or (b) there is an intervening disclosure between the priority and filing dates by a third party that cannot be shown to be saved by the grace period. 2.4.4.2 Priority Claim– from what Priority can be claimed from an earlier design filing in a “Convention Country”. The adequacy of the priority application is judged under the rules applicable where it is filed, rather than under the UK provisions. These are listed in an Order170 made under RDA s. 13. All Paris Convention and WTO countries, and some others with which the UK has bilateral relationships, are Convention Countries. International applications which designate a Convention Country are treated as applications in that country,171 and hence also give rise to a priority right. The UK is not itself a 169 RDA s. 14. 170 Currently The Designs (Convention Countries) Order 2007, SI 2007/277, as amended by The Designs (Convention Countries) (Amendment) Order 2009, SI 2009/2747 and The Designs (Convention Countries) (Amendment) Order 2013, SI 2013/539. 171 By the combined effects of Hague Art. 6(2) and Paris Convention Art. 4A(2).

NAVIGATING DESIGN LAW

Convention Country, so “internal” or “domestic” priority claims from an earlier UK design are not possible. The earlier application must be for protection of the same design. Although the Paris Convention permits cross-priority claims from “utility models” (a kind of “petty patent” provided in many countries) the UK does not explicitly do so, and does not provide for claims from a patent application (though a US or Chinese “Design Patent” which is for the protection of a design rather than an invention can be used as the basis of a claim). The position is different for re-registered UK designs and applications converted from transitional Community or International applications, as discussed below, since the EU priority rules are more lenient in several ways than those of the RDA. 2.4.4.3 Priority Claim – by who Only the applicant for the priority application, their personal representative or assignee can file a UK application claiming priority.172 If the UK applicant (or, if there is more than one, all the UK applicants173) does not satisfy this requirement the consequence can be loss of priority, or refusal.174 For assignment of priority rights, see 7.4.3. Form DF2B, but not Form DF2A, includes a box allowing an applicant to indicate that there has been an assignment between the filing and priority dates, to forestall an objection. 2.4.4.4 Priority Claim – how The first stage in making a priority claim is to include the date and state of the first filing in the application form.175 The second stage is to file a copy of the priority application. Participating Intellectual Property Offices worldwide have created electronic arrangements for the secure exchange of documents, including priority applications, directly between themselves.176 Unfortunately, at the time of writing the UK is not one of them, at least for designs. Until that changes, the applicant must use one of two routes to substantiate a claim to priority within three months of the filing date: (a) File Form DC1, if it can be said that the “designs(s) in the earlier convention application(s) ... are identical to the corresponding design(s) in my UK design application”,177 or; (b) File a certified copy of the priority application.178 172 173 174 175 176 177 178

RDA s. 14(1). However, other forms of succession such as inheritance are accepted in practice. EPO Technical Board of Appeal Case T 0844/18 (CRISPR-Cas/BROAD INSTITUTE) [2021] EPOR 9. RDA s. 3A(3). RDR r. 7(2), Paris Convention Art. 4D(1). DF2A Box 11, DF2B Box H. The WIPO Digital Access Service (DAS). RDEPG Part C, 10.03 – 10.04. RDR r. 7(3).

PART 2 – REGISTERED DESIGNS

If a certified copy is filed, the Examiner will examine for identity of design and applicant. However if Form DC1 is used, “examiners will assume good faith”,179 and the obligation is therefore on the applicant to be sure that there is indeed an entitlement to priority. Problems may arise where the priority application has been abandoned without ever being published – third parties (and the Registry) will then find it impossible to determine whether the claimed priority is valid. Where the priority application is not in English, the Examiner may request a verified translation (though this may not be necessary if the applicant’s name and the relevant dates are understandable). If so, the Examiner will set a three-month term for filing the translation.

2.4.5 PREPARATION OF REGISTERED DESIGNS 2.4.5.1

Analysis prior to filing

“It appears to me that if it is desired to protect a particular feature in the general design of a [product] it must… be registered or claimed separately.”180 “It is, of course, up to an applicant as to what features he includes in his design application. He can make an application based on all or any of ‘the lines, contours, colours, shape, texture… materials… and/or… ornamentation’ of ‘the product’ in question.”181 “… an applicant for a design right is entitled, within very broad limits, to submit any images which he chooses. Further, in the light of article 36(6), an applicant should appreciate that it will almost always be those images which exclusively identify the nature and extent of the monopoly which he is claiming. As Dr Martin Schlötelburg, the co-ordinator of OHIM’s Designs Department, has written, ‘the selection of the means for representing a design is equivalent to the drafting of the claims in a patent: including features means claiming them’.”182 Although the protection given by a design registration extends to other designs creating the same overall impression, it is based on the design which has been registered, nothing more and nothing less. If crucial features are not shown in the registration, they cannot be relied on for novelty, or for infringement. If trivial features have unnecessarily been included, they cannot simply be wished away. The Registry does not know what the applicant wants, and is therefore not able to ensure that he gets it. So some level of thought and planning, akin to that involved in drafting a patent application, is important in reducing the chances of failure in litigation. The key issues include:

179 180 181 182

RDEPG Part C, 10.03. Sackett and Barnes v Clozenberg (1910) 27 RPC 104, Neville J. at p108. Magmatic v PMS [2016] UKSC 12, [2016] RPC 11 at [30]. Ibid at [31].

NAVIGATING DESIGN LAW

1. Choosing whether to register the designs of one or more parts of a new product, in addition to or instead of the whole; 2. Choosing whether to include features of surface detail (“two dimensional” features, in a broad sense); 3. Choosing whether to omit minor or unhelpful features from the representations. 2.4.5.2 Use of Multiple Design Applications “… he can make a large number of different applications…”183 The IPO’s fee structure makes it cheap to file several designs for different aspects of the same product. Concerns are occasionally voiced that each might somehow “disclaim” the others, or admit that they are invalid.184 However, there is no legal basis for such concerns under the current law, and the IPO advises the use of multiple designs for “applicants seeking absolute assurance that different aspects of their design are protected”.185 2.4.5.3 Designs of Parts of a Product “The only thing which it is here necessary to point out, as well for warning to inventors as for the protection of the public, is this, that if a design… is filed and registered… without any farther limitation or description than that which is given by the design itself, it protects the entire thing and the entire thing only; and the protection cannot, at pleasure, be made applicable one day to the entirety, and another day to the separate integral parts or elements of the entire design. It must be considered that the protection of the statute is invoked for the entire thing that appears upon the register, and is applicable to nothing but the exact copy of the thing so registered.”186 Until 2001, only the design of an entire product could be registered. Even spare parts sold separately were usually not registrable.187 It is now possible to selectively protect the design of those parts which are most striking, or most likely to be copied. For example, where a design has been updated but remains similar in general outline,188 protecting only the updated parts is more likely to result in a valid design. Sometimes it is nonetheless valuable to include one or more drawings showing the protected part in situ within the rest of the design. The Registry has published advice on acceptable visual conventions for indicating which part of what is shown is the protected design and which is not.189

183 Ibid at [30]. 184 Based perhaps on cases under the pre-2001 law in which a “statement of novelty” was sometimes perversely interpreted in that way – if that was true under the law as it was, which is doubted, it is no longer so. 185 DPN 1/16 para 16. 186 Holdsworth v M’Crea (1867) L.R. 2 H.L. 380, Lord Westbury at p388-389. 187 R. v Registered Designs Appeal Tribunal Ex p. Ford Motor Co Ltd (HL) [1995] RPC 167. 188 As in Case T‑209/18 Porsche v EUIPO (motor vehicle) [2019] EUECJ T-209/18. 189 DPN 2/03: Applying to register part of a product; RDEPG Part C, 12.05-12.14.

PART 2 – REGISTERED DESIGNS

2.4.5.4 Product-Shape-Only Designs “… evidence indicates that line drawings are the preferred means for representing (and therefore capturing) shape alone.”190 In Magmatic, the Supreme Court indicated that applicants can obtain protection for shape-only designs. In DPN 1/16, the Registry indicated that line drawings, whilst not the only way, are the best way of doing so. Professional patent draftsmen are of enormous assistance in preparing suitable drawings for filing, in the UK or elsewhere. The Registry suggest including “a written disclaimer or limitation such as, for example, ‘protection is sought for the shape and contours alone’”191 There is an online Guidance “Preparing your illustrations: to disclaim or limit a part of your design”.192 If a disclaimer in a strict sense is used (e.g. “No claim is made for …”), it might be advisable to add the words “in this design”, to avoid any reflection on any other design in which the disclaimed feature might be protected. 2.4.5.5 Pattern- and Surface-Only Designs Although there are many cases in which a product’s shape is the more commercially important aspect of its design,193 design protection has from the outset been important to the wallpaper and textile industries, and is now also available to the appearances of printed publications and screen display elements. Where the design is a repeating surface pattern, this can be indicated by the acronym “RSP” on Forms DF2A194 and DF2B.195 Sufficient repeat units to make the pattern clear should be included in the representations. 2.4.5.6 Designs of Logos and Icons “It appears to me that the logo registered in the present case can only fall within the statutory definition of ‘design’ if it counts as ‘ornamentation’ of the surface of a product, or if it is to be regarded as within the extended definition of ‘product’ in s. 1(3) as a ‘graphic symbol’.”196 Under the law prior to 2001, there was a necessary connection between a “design” and a single “article” to which it was applied, and the Registry therefore required representations showing any 190 DPN 1/16 para 6. 191 DPN 1/16 para 15. 192 https://www.gov.uk/government/publications/preparing-your-illustrations-to-disclaim-or-limit-a-part-of-yourdesign 193 Church et al note that only 8.2% of design litigation cases they studied related to 2D designs. See Church, O., Derclaye, E. & Stupfler, G. An Empirical Analysis of the Design Case Law of the EU Member States. IIC 50, 685–719 (2019). https://doi.org/10.1007/s40319-019-00813-0, at Note 38. 194 Box 9. 195 Box D. 196 O/129/20 Frankland v Lambretta Club Martin Howe QC at [15].

NAVIGATING DESIGN LAW

ornamental elements actually on a product.197 This connection is now largely broken. It is still possible to show an ornamentation design on a product, which should ideally be shown in dashed lines and/or the shape disclaimed. However, it is also possible to register a decorative element such as a logo or icon in isolation, at least if the product is indicated as “graphic symbol”, “icon” or the like, in Class 32, which may make it clearer what is and is not sought to be protected. 2.4.5.7 Colours, shades and tones A single colour is unlikely to be novel, and users in many sectors expect products to be available in a range of colours, so it is unlikely that a change of colour will avoid either invalidity or infringement. However, the use of colour schemes and shades is sometimes an important aspect of ornamentation. DPN 6/06 indicates that “If an application is filed in colour, and the applicant does not intend for colour to constitute a part of the design, then Rule 6A [sic198] may be used to indicate on the representations that colour does not form any part of the design.” Whilst this is good advice, using monochrome representations, or even line drawings, may give broader protection. 2.4.5.8 The level of detail “Upon any work... a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out.”199 “… [t]he registration holder is entitled to choose the level of generality at which his design is to be considered. If he chooses too general a level, his design may be invalidated by prior art. If he chooses too specific a level he may not be protected against similar designs.”200 Sometimes detail is an important part of a design, and sometimes it isn’t. Electrical equipment, for example, may have different types of plugs in different markets; packaging may carry different text at different times and places; screen displays are not always visible. Such details (unless they are in fact the only new or striking features) are best omitted. Beyond this, some care is required. If too much is omitted, the result may be a design which lacks novelty.201

See for example Deyhle’s Design Applications [1982] RPC 526 (RDAT). Probably intended to refer to r. 6(a) (disclaimers). Judge Learned Hand, Nichols v Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930) at p121. Lewison J, Procter & Gamble v Reckitt Benckiser [2006] EWHC 3154 (Ch), [2007] FSR 13 at [48], approved in Magmatic v PMS [2016] UKSC 12, [2016] RPC 11 at [30]. 201 See for example R 978/2010-3 (Part of Sanitary Napkin). 197 198 199 200

PART 2 – REGISTERED DESIGNS

2.4.6 PRE-FILING SEARCHES 2.4.6.1 Pre-Filing Searches generally As the costs of filing UK designs are at a historic low, few now conduct pre-filing searches – it is cheaper to file than to search. 2.4.6.2 The statutory search RDA Sections

RCD Equivalent (Art.)

–

Related RDA Sections

Related UK Rules

Form

DF21

Section 23 Information as to existence of right in registered design On the request of a person furnishing such information as may enable the registrar to identify the design, and on payment of the prescribed fee, the registrar shall inform him— (a) whether the design is registered, and (b) whether any extension of the period of the right in the registered design has been granted, and shall state the date of registration and the name and address of the registered proprietor. Rule 31. Information about rights in registered designs (1) A request for information under section 23 shall be made on Form DF21 and be accompanied by the prescribed fee. (2) The request shall— (a) where the registration number is known by the person making the request, include that number; or (b) in any other case, be accompanied by a representation or specimen of the product— (i) in which the design has been incorporated; or (ii) to which the design has been applied.

Until 1997, designs were not published. In fact, in the earliest Acts, only lapsed designs were open to inspection by others. The equivalent of s. 23202 did however permit a person to show the Registrar a design and receive, in return, bibliographic information as to any corresponding registration. In its current form, a request on Form 21 accompanied by an illustration or specimen will obtain from the IPO a search for any close UK registered design.203 Using this often-overlooked but modestly-priced service is the very minimum clearance search a prudent person should conduct. 202 The 1842 Act, s. 17. 203 International designs are not covered.

NAVIGATING DESIGN LAW

2.4.7 FILING THE APPLICATION RDA Sections

1(1), 3(1)

RCD Equivalent (Art.)

35-36

Related RDA Sections

Related UK Rules

4-5

Form

DF2A

Rule 4. Applications (1) An application for the registration of a design or designs shall be made on Form DF2A …

The application form DF2A (and its online equivalent) collects data generic to all designs in the application (i.e. the proprietor and agent details) on the first page of Form DF2A, and data specific to each design in the application (the representations, indication of product, and priority data, description and/or disclaimer if required) on the or each “second” page of Form DF2A (replicated for each design). If filing online, there is a maximum of 50 designs in one application. Although filing on paper is possible, most registered design applications are now filed online, partly for convenience and partly because the fees are considerably lower than for paper filings. It appears that the IPO’s online web interface is treated as being “Form DF2A”;204 at any rate, it collects the equivalent information. Normally it is possible to hand-file at the IPO in Newport, or in its London branch. Post or courier services are a less preferred option as the date of filing is uncertain.

2.4.8 SECRET DESIGNS RDA Sections

RCD Equivalent (Art.)

–

Related RDA Sections

Related UK Rules

–

Form IPO Practice

RDEPG Part C Chapter 9

Other Analogues

PA, ss. 22-23

204 See Directions under 37A of the Registered Design Act given in relation to use of electronic communications, 25 May 2016.

PART 2 – REGISTERED DESIGNS

Section 5 contains provisions allowing the IPO to keep designs secret where they fall into a class “relevant for defence purposes”, and to order the applicant to do likewise. These are closely similar to those of the Patents Act. Merely being related to military purposes will not usually be enough to warrant a secrecy order, as the external appearance of military products is often no secret. The IPO may also prescribe classes of design which must first be filed in the UK, and may not be filed abroad for six weeks thereafter. At the time of writing no such classes are currently defined, so there is no bar on filing designs abroad.205

2.4.9 EXAMINATION OF THE APPLICATION “… the legal certainty which the system was conceived to achieve is largely illusory.”206 RDA Sections

RCD Equivalent (Art.)

45, 46, 47

Related RDA Sections

–

Related UK Rules

8, 9

IPO Practice

RDEPG Part D

Section 3A Determination of applications for registration (1) Subject as follows, the registrar shall not refuse to register a design included in an application under this Act. (2) If it appears to the registrar that an application for the registration of a design or designs has not been made in accordance with any rules made under this Act, he may refuse to register any design included in it. (3) If it appears to the registrar that the applicant is not under section 3[(2) or] (3) or 14 entitled to apply for the registration of a design included in the application, he shall refuse to register that design. (4) If it appears to the registrar that the application for registration includes— (a) Something which does not fulfil the requirements of section 1(2) of this Act; (b) A design that does not fulfil the requirements of section 1C or 1D of this Act; or (c) A design to which a ground of refusal mentioned in Schedule A1 to this Act applies, he shall refuse to register that thing or that design.

There is no examination of designs for novelty or individual character, but the Registry do examine for, and can refuse; 205 See Notice published in the Official Journal 5450, 26th October 1994; RDEPG Part C Chapter 9. 206 Green Paper, 2.3.4 p17

NAVIGATING DESIGN LAW

• •

Under RDA Section 3A(3) if the applicant does not appear to be entitled to apply to register under RDA Sections 3(2)207 or (3) or 14; or Under RDA Section 3A(4) on the following substantive grounds: o Design does not meet the statutory definition under RDA Section 1(2); o Design consists only of features dictated by technical function under RDA Section 1C(1); o Design consists only of features which must be exactly reproduced to allow interconnection under RDA Section 1C(2); o Design is contrary to morality or public policy under RDA Section 1D o Design involves a protected national or international symbol listed in RDA Schedule A1;

If there are no objections, the application will be registered typically within around a month. If objections are raised, a time limit is set for response – normally two months, 208 but three months209 if new representations (e.g. drawings) must be prepared. For extensions of time, see 2.4.16.2. The applicant can request a Hearing before a “Hearing Officer”, a senior Registry official. The examiner handling the case may also be present. An oral decision will be issued at the conclusion of the hearing, followed by a ‘Hearing Report’. If the applicant is considering appealing, a written statement of reasons should be requested within one month of the date any decision, on Form DF5.

2.4.10 ACCEPTANCE PERIOD RDA Sections

3(5)

RCD Equivalent (Art.)

–

Related RDA Sections

–

Related UK Rules

10(1)

IPO Practice

RDEPG Part D Chapter 13, 13.03

Other Analogues

PA s. 20

Section 3 Applications for registration. (5) An application for the registration of a design which, owing to any default or neglect on the part of the applicant, has not been completed so as to enable registration to be effected within such time as may be prescribed shall be deemed to be abandoned. Rule 10 Time limits under section 3(5) and section 3B (1) The time prescribed for the purposes of section 3(5) shall be 12 months beginning immediately

207 Apparently an error since this subsection was repealed in 2014. 208 Under r. 8(3). 209 Under r. 9(2).

PART 2 – REGISTERED DESIGNS

after the date on which the application for registration of the design was made or treated as made (disregarding section 14).

The application must be in order for allowance within an acceptance period of 12 months, or it will be deemed abandoned. The same period is used for deferring publication, where immediate publication is not requested. The period cannot be extended under r. 39, but could be extended in an appropriate case under r. 38. The practice under the corresponding patent provision was that it was possible to request a Hearing to argue that, despite the objections, the design was in fact in order by the end of the acceptance period and thence to appeal if necessary. Presumably the same is possible for designs.

2.4.11 AMENDMENT RDA Sections

3(B)(1) & (2)

RCD Equivalent (Art.)

–

Related RDA Sections

11ZD, 21

Related UK Rules

IPO Practice

RDEPG Part C Chapter 8

Other Analogues

–

Section 3B Modification of applications for registration (1) The registrar may, at any time before an application for the registration of a design or designs is determined, permit the applicant to make such modifications of the application as the registrar thinks fit. (2) Where an application for the registration of a design or designs has been modified before it has been determined in such a way that any design included in the application has been altered significantly, the registrar may, for the purpose of deciding whether and to what extent the design is new or has individual character, direct that the application so far as relating to that design shall be treated as having been made on the date on which it was so modified. (4) Where the registration of a design has been refused on any ground mentioned in section 3A(4)(b) or (c) of this Act, the application for the design may be modified by the applicant if it appears to the registrar that— (a) The identity of the design is retained; and (b) The modifications have been made in accordance with any rules made under this Act. (5) An application modified under subsection (4) above shall be treated as the original application and, in particular, as made on the date on which the original application was made or is treated as having been made. (6) Any modification under this section may, in particular, be effected by making a partial disclaimer in relation to the application.

NAVIGATING DESIGN LAW

2.4.11.1 Amendments – General Applicants have no general right to amend; amendment is at the discretion of the Registry, so amendments are usually for the purpose of conforming to the Act and Rules (usually in response to objections). One type of amendment specifically mentioned in the Act is amendment in response to a lack of unity objection, to exclude additional designs from an application (see 2.4.12). Other than this, there is no constraint on the amendments which can be made, except where the amendments relate to the design. There is also the possibility of correction of clerical errors (see 2.4.16.3). 2.4.11.2 Amendments to the design It was a fairly common practice at one time to file a design application containing “provisional” representations, in the interests of speed and initial cost, replacing these later with drawings which met the requirements of the Act and Rules. That remains possible, but as registration is now faster, and standards are lower, applicants run a risk that whatever is initially filed will be accepted and registered leaving little or no chance to file replacement representations. On the other hand, where no representations are filed, or where the representations (or a specimen) are objected to, the applicant can file replacements within three months. However, there are risks if these make significant changes to the design. Firstly, if a design “has been altered significantly”, the application is liable to be post-dated for the purposes of assessing validity against prior art.210 Secondly, any major change might result in a loss of priority from an earlier design, with possible consequences on novelty and individual character. Thirdly, where the amendment is in response to objections that the design is: 1. Dictated by function/must fit, 2. Immoral/contrary to public order, or 3. Using prohibited signs or symbols, the amendments must be such as to retain “the identity of the design” or they will not be permitted. In a “first-to-file” system novelty, priority and amendment requirements are organically linked, so it would be desirable if the same test applied to all.211 Accordingly, it is submitted, the novelty standard of being “identical” or with features that “differ only in immaterial details” ought to be 210 RDA s. 3B(1)(2). 211 See for example The significance of the “novelty test” for priority and amendments to patent applications and patents, Paul K.J. Van Den Berg, IIC 1993, 24(6), 696-729.

PART 2 – REGISTERED DESIGNS

the same as the requirement that the design not be “altered significantly” and should retain its identity on amendment, and the requirement that the design should be the same as that of the convention (priority) application.

2.4.12 UNITY AND DIVISION RDA Sections

3B(3) & 3C

RCD Equivalent (Art.)

–

Related RDA Sections

–

Related UK Rules

4(2)

Form

DF2B

IPO Practice

RDEPG Part C Chapter 8, 8.04 – 8.06; DPN 3/03

Other Analogues

PA s. 15(9); TMA s. 41; PC Art. 4G; TLT Art. 7

Section 3B Modification of applications for registration (3) Where— (a) An application for the registration of more than one design has been modified before it has been determined to exclude one or more designs from the application; and (b) A subsequent application for the registration of a design so excluded has, within such period (if any) as has been prescribed for such applications, been made by the person who made the earlier application or his successor in title, The registrar may, for the purpose of deciding whether and to what extent the design is new or has individual character, direct that the subsequent application shall be treated as having been made on the date on which the earlier application was, or is treated as having been, made. Section 3C Date of registration of designs. (3) A design, when registered, shall be registered as of— (b) In the case of an application which is treated as having been made on a particular date by virtue of the operation of section 3B(3) of this Act by reference to section 14(2) of this Act, the date on which the earlier application was made;

The Paris Convention requires Member States to provide for division of a patent application containing more than one invention whilst retaining the original filing date, 212 and the Singapore Treaty (the “TLT”) provides the same for trade marks.213 There is no such treaty requirement for designs, but the UK (and many other countries) have long provided the same system.

212 PC Art. 4G. 213 Singapore Treaty on the Law of Trademarks, Art. 7.

NAVIGATING DESIGN LAW

Before 2006, a UK design application could not contain more than one design. It can now do so, on payment of the necessary fees. However, if one of the “designs” formally identified and paid for within the application in fact contains more than one design (typically, one or more of the images depicts a different product than the rest, or depicts two discrete products) the Registry will object, and will: (a) require the applicant to amend the existing application to excise the objected design(s); and (b) permit the applicant to file a new design application on Form DF2B containing the objected design(s) if so required, keeping the filing and priority date of the parent but having a new application number. Occasionally, it may be possible to persuade the Registry to accept that the multiple products shown form a single composite article (a chess set for instance). However, there are limits on what can be regarded in this way.214 It may be dangerous to raise uncertainty about what the design is, as the consequence may be loss of a filing date.215 The safer course is to pay and divide.

2.4.13 REGISTRATION When a design is registered, the Registrar sends a registration certificate216 to which is attached the representations of the design. It is also available online via the registry website.217 Shortly afterwards, the IPO also makes the details available via the Trade Marks and Designs Network (“TMDN”) Designview database.218 The IPO correspondence file for the design is also open to inspection and issue of copies.219

2.4.14 PUBLICATION AND DEFERMENT RDA Sections

36(1A)(e)

RCD Equivalent (Art.)

–

Related RDA Sections

–

Related UK Rules

4(3), 9(3), 11

Form

DF2C

IPO Practice

DPN 3/06

214 215 216 217 218 219

See the interim decision in O/217/20 (Martin Howe QC). As in Case C-217/17 Mast-Jägermeister v EUIPO. RDA s. 18. At https://www.registered-design.service.gov.uk/find/. At https://www.tmdn.org/tmdsview-web/#/. With the usual exclusion of internal working papers. See rr. 28-33.

PART 2 – REGISTERED DESIGNS

Section 36 General power of Secretary of State to make rules, etc (1A) Rules may, in particular, make provision— (e) authorising the publication and sale of copies of representations of designs and other documents in the Patent Office; Rule 11. Publication (1) When a design has been registered, the registrar shall publish a representation of that design in the journal as soon as possible after the certificate of registration is granted. (2) When the registrar publishes the representation, he may also publish any other information he thinks is relevant to that design. (3) The representation published under paragraph (1) shall be the representation filed under rule 4(1) (b)(i) or 9(2) or as mentioned in rule 5(4).

Originally under the RDA, registration of a design was followed by publication of the bibliographic details, but not of the representations (though these could be inspected on request and were therefore available to the public though “unpublished”). Between 1997 and 1 April 2008, the IPO published the “Designs in View” journal, which contained an illustration for each design, and since that period it has “published” an online-only “Electronic Designs Journal”.220 This is the journal referred to in r. 44. Generally, publication takes place as soon as possible after registration.221 However, it is always necessary for an applicant to consent to publication.222 It is therefore possible either to request publication immediately on grant, or defer registration (and hence publication) in section 5 of Form DF2A or section 3 of Form DF2B by up to the end of the acceptance period (i.e. 12 months from filing). If this is done, publication must subsequently be requested on Form DF2C, and the publication fee paid, within the acceptance period failing which the design will be deemed abandoned.

220 At https://www.registered-design.service.gov.uk/view/ 221 At present, the journal appears to publish bibliographic information (but not the representations) very shortly after filing, indicating them wrongly as “registered”. This practice has no basis in the Act or Rules and, it is submitted, is unhelpful. 222 RDR r. 4(3), r. 9(3)-(4).

NAVIGATING DESIGN LAW

2.4.15 TERM AND RENEWAL RDA Sections

Design Directive Basis (Art.)

Design Directive Recitals

–

SUD, RCD Equivalent (Art.)

UK/EU TCA (Art.)

246 (ex IP.28)

Leading Cases

Matsushita Electric Industrial Co Ltd’s Patent (HC)

Related RDA Sections

8A, 8B

Related UK Rules

12-13

Other Analogues

PA s. 25, s. 28-28A; TMA s. 42-43; PC Art. 5bis

Form

DF9, DF29

IPO Practice

DPN 4/06

Section 8 Duration of right in registered design (1) The right in a registered design subsists in the first instance for a period of five years from the date of the registration of the design. (2) The period for which the right subsists may be extended for a second, third, fourth and fifth period of five years, by applying to the registrar for an extension and paying the prescribed renewal fee. (3) If the first, second, third or fourth period expires without such application and payment being made, the right shall cease to have effect; the registrar shall, in accordance with rules made by the Secretary of State, notify the proprietor of that fact. (4) If during the period of six months immediately following the end of that period an application for extension is made and the prescribed renewal fee and any prescribed additional fee is paid, the right shall be treated as if it had never expired, with the result that – (a) anything done under or in relation to the right during that further period shall be treated as valid, (b) an act which would have constituted an infringement of the right if it had not expired shall be treated as an infringement, and (c) an act which would have constituted use of the design for the services of the Crown if the right had not expired shall be treated as such use. Section 8A Restoration of lapsed right in design (1) Where the right in a registered design has expired by reason of a failure to extend, in accordance with section 8(2) or (4), the period for which the right subsists, an application for the restoration of the right in the design may be made to the registrar within the prescribed period. … (4) If the registrar is satisfied that the failure of the proprietor to see that the period for which the

PART 2 – REGISTERED DESIGNS

right subsisted was extended in accordance with section 8(2) or (4) was unintentional, he shall, on payment of any unpaid renewal fee and any prescribed additional fee, order the restoration of the right in the design. …

2.4.15.1 Renewal and Grace Period After registration, a design lasts five years from the filing (not priority) date, at which point it can be renewed by filing Form DF9A223 and paying the relevant renewal fee, 224 and likewise for each subsequent interval of five years up to a total of 25.225 The design can be renewed up to six months before every 5th anniversary of the filing date (the “renewal date”). The Registry will send a reminder around three months before the renewal date, but reliance should not be placed upon this. If the renewal is not paid by the renewal date, the Registry will send a lapse notice six weeks after the renewal date. However, in accordance with the Paris Convention, 226 payment can still be made up to six months after the renewal date, provided late payment fees (currently £24 per month after the due date) are also paid. If this is done, then the lapse is without any effect whatsoever. Whenever the renewal fee is paid, the Registry will send a confirmation notification. 2.4.15.2 Restoration of lapsed design Outside the six-month grace period, it is still possible within a further six months (i.e. up to one year after the anniversary of the filing date) to restore the design registration and late-pay the renewal fee. The Paris Convention has long required a mechanism for restoration, but only for patents.227 Restoration of lapsed designs only became possible in the UK in 1989. It is necessary to show that the lapse was unintentional. The standard was changed from “reasonable care” to “unintentional” in 2006, reflecting the same change in the Patents228 and Trade Marks229 Acts. The application to restore is made on Form DF29 and must be accompanied by a statement indicating the circumstances; and (usually) supporting evidence; and payment of the restoration fee. If restoration is allowed, the proprietor is then invited to pay the renewal fee and file Form 223 RDR r. 12(1). 224 The fees rise progressively with each successive renewal. 225 Quinquennial renewal payments are also a feature of the EU and International design systems, and of many (but not all) other national design registration systems. 226 Art. 5bis (1). 227 Art. 5bis (2). 228 In line with Patent Law Treaty 2000, Art. 12(1)(iv). In fact, this amounted to reverting to the standard which had previously applied to patents under the Patents Act 1949. 229 Under the TMR r. 37(1)(b).

NAVIGATING DESIGN LAW

DF9A. If this is not done within the time set, the decision to restore the design will be revoked230 and the design will eventually irrevocably lapse.231 If restoration is allowed, the IPO will publish a notice to that effect in the Journal. However, any third parties who have in good faith started to infringe (or Crown Use) or made effective and serious preparations to do so acquire an ongoing right of use.232 The Registrar can also impose additional conditions if it appears necessary.233 2.4.15.3 Evidence required for restoration At present it is unclear how much evidence is required to support an application for restoration. The change was made by an Order234 under the Regulatory Reform Act 2001235 (an “RRO”). The purpose of that Act was to enable legislative amendments which reduce burdens on business. Accordingly the IPO Consultation Document 236 indicated that: “an application for restoration should be granted where the proprietor is able to state that the failure to pay the renewal fee was unintentional. The law would therefore show greater flexibility where a registration lapses due to administrative error. The change would remove the burden from the proprietor of providing evidence that he or his employees took reasonable care in the matter and provide him with a greater prospect of securing a belated renewal of his design registration.” The Explanatory Memorandum to the correspondingly amended Rules237 included an Impact Assessment which explained that: “One organisation questioned why evidence needs to be filed in support of restoration when the guidance note on the Form DF29 suggests that the applicant only need say that failure to pay for renewal was unintentional. Form DF29 has now been modified slightly, further it is confirmed that a signature with an brief explanation of the failure will often be sufficient evidence, although the registrar may request further evidence in certain cases.” The change to the form was presumably to insert the words “(if any”) in relation to attached evidence. And DPN 4/06 indicated that

230 231 232 233 234 235 236 237

RDA s. 8A(5). Subsea Intervention Ltd v Comptroller General of Patents, [2015] EWHC 3482 (Ch). RDA s. 8B(4)-(6). RDA s. 8A(5). The Regulatory Reform (Registered Designs) Order 2006, SI 2006/1974. 2001 c. 6, now repealed. Consultation on the Modernisation of the UK System of Registration of Designs, IPO 2005, 3.26-3.27. RDR 2006.

PART 2 – REGISTERED DESIGNS

The new system will show greater flexibility where a registration lapse is due to an administrative error. If the applicant for restoration is able to state on the application form that the failure to pay the renewal fee on time was unintentional then he is unlikely to be asked to show any evidence to support his case. On the other hand, the Patents Court has held, 238 in relation to the equivalent patent provisions (also made by RRO), that an applicant has to provide sufficient evidence to satisfy the Comptroller, and indicated, obiter, that “If it is the case—and I do not know… that it is—that the Patent Office accepts mere assertions in the case of registered designs, then it may be—and I do not rule formally on this—that it is wrong to do so.” It would therefore be wise to file evidence if available, though there is a balance to strike between filing swiftly (to put third parties on notice) and putting together full and convincing evidence.

2.4.16 EXTENSIONS, CORRECTIONS, AND OTHER RECOVERY OPTIONS RDA Sections

21, 36

Leading Cases

Energy Conversion Devices Inc’s Applications (HL)

Related RDA Sections

Related UK Rules

38, 39, 40, 41

Other Analogues

Patents Rules 105-111; Trade Mark Rules 74-77

Section 21 Power to correct clerical errors (1) The registrar may, in accordance with the provisions of this section, correct any error in an application for the registration or in the representation of a design, or any error in the register of designs. (2) A correction may be made in pursuance of this section either upon a request in writing made by any person interested and accompanied by the prescribed fee, or without such a request. (3) Where the registrar proposes to make any such correction as aforesaid otherwise than in pursuance of a request made under this section, he shall give notice of the proposal to the registered proprietor or the applicant for registration of the design, as the case may be, and to any other person who appears to him to be concerned, and shall give them an opportunity to be heard before making the correction. Section 36 General power of Secretary of State to make rules, etc (1) Subject to the provisions of this Act, the Secretary of State may make such rules as he thinks expedient for regulating the business of the Patent Office in relation to designs and for regulating all matters by this Act placed under the direction or control of the registrar or the Secretary of State. 238 Matsushita Electric Industrial Company Ltd’s Patent [2008] EWHC 2071 (Pat), [2008] RPC 35, Mann J. at [33].

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(1A) Rules may, in particular, make provision— (b) regulating the procedure to be followed in connection with any application or request to the registrar or in connection with any proceeding before him, and authorising the rectification of irregularities of procedure; Rule 38. Correction of irregularities Where the registrar thinks fit, he may rectify any irregularity of procedure— (a) after giving the parties such notice, and (b) subject to such conditions, as he may direct. Rule 39. Extension of times or periods prescribed by rules (1) The registrar may, if he thinks fit, extend (or further extend) any time or period prescribed by these Rules, except the periods prescribed by— (a) rule 10(1) (period prescribed for the purposes of section 3(5)); and (b) rule 13(2) (period for making an application for restoration), (but those periods may be extended under rules 38, 40 and 41). (2) Any extension under paragraph (1) shall be made— (a) after giving the parties such notice, and (b) subject to such conditions, as the registrar may direct. (3) An extension may be granted under paragraph (1) notwithstanding that the time or period prescribed by the relevant rule has expired.

2.4.16.1 Calculation of Time Limits Time limits ending on an “excluded day” (one on which the Office is not open for business) extend to the next working day by r. 46. The same is true of time limits ending on an “interrupted day” (when operations of the Patent Office or the postal service are disrupted by an event, details of which are published by the Registry) by r. 41. A general postal interruption extends time limits even for parties who do not use the postal service but file by email. 2.4.16.2 Extensions of time A failure to meet a time limit (or to do anything else) wholly or partly due to a “delay in, or failure of, a communication service” (including email as well as postal services) can be cured by an extension of time under r. 41. If proved, the Registry has no discretion to refuse such an extension. Almost all time periods (except those for restoration and completion) can be extended, in the Registry’s discretion, on a request made under r. 3. Although retroactive extensions are possible, it is always desirable to request an extension before expiry if possible so that third parties are on notice that the application should not be assumed to have lapsed. Reasons should normally be given, but in the case of a first extension of reasonable length these need not be lengthy. However, 100

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“multiple requests will be refused unless accompanied by persuasive and substantive reasons as to why further time is required”239 (emphasis added). 2.4.16.3 Correction of errors in documents Under s. 21, the Registry can correct “any error in an application for the registration or in the representation of a design, or any error in the register of designs”. The title of the section refers to “clerical errors”, but the wording does not seem limited in this way. However the error must be “in” one of the documents listed. In a patent case, 240 it was held that an equivalent general provision could not be used to overcome a clear and specific mandatory requirement elsewhere. In that case, correction to add an omitted drawing was refused as being in conflict with mandatory statutory re-dating of the patent application. As the equivalent provision in s. 3B(2) is discretionary, it is likely but not certain that the same applies to design applications. 2.4.16.4 Correction of other irregularities The Registry has an overarching general power under r. 38 to put right any irregularity in procedure. “An irregularity in procedure is simply a failure to observe procedural rules, whatever the cause of the failure may be.”241 Thus, extensions of missed time limits and corrections of errors in documents, discussed above, all potentially fall within the scope of r. 38. However, where other specific provisions exist, general powers of this kind cannot be used to overcome, or “circumvent”, them.242 Equivalent powers for design, trade mark and patent applications have existed at least as far back as the respective Rules of 1883, and as there is relatively little case law under the design and trade mark provisions, equivalent cases under the patent rules should be referred to.243 In their early form, the provisions only allowed correction where the irregularity “may be obviated without detriment to the interests of any person”, and the interests of third parties are still a factor which the Registry should take account of in the exercise of its discretion. Beyond this, “the reason for [the failure] may be of the utmost relevance to the way in which that discretion should be exercised”.244 In particular, an error or omission by the Registry, or a circumstance beyond the knowledge or control of the party concerned are factors which favour granting discretion. A change of heart or mind by the party concerned is not.

239 240 241 242 243 244

RDEPG Part D, 13.04. Antiphon AB.’s Application [1984] RPC 1. See also Payne’s Application [1985] RPC 193. Energy Conversion Devices Inc’s Applications [1983] RPC 231, Lord Diplock at p250. Master Data Center, Inc. v The Comptroller General of Patents [2020] EWHC 572 (Pat) at [59]. Andreas Stihl AG & Co’s Trade Mark Application [2001] RPC 12 at [33]. Energy Conversion Devices Inc’s Applications [1983] RPC 231, Lord Diplock at p250.

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2.5 UK EFFECT OF REGISTERED & PENDING COMMUNITY & INTERNATIONAL DESIGNS Section 12A Application of the Act to certain registered Community designs Schedule 1A makes provision— (a) for registered Community designs (including certain designs whose registration has expired or which have been removed from the register) to be treated as registered under this Act with effect from IP completion day, and (b) about certain applications for registered Community designs made before IP completion day. Section 12B Application of the Act to certain international designs Schedule 1B makes provision— (a) for certain designs which are registered in the international register maintained by the International Bureau of the World Intellectual Property Organization in respect of which the European Union is designated (including certain designs whose registration has expired) to be treated as registered under this Act with effect from IP completion day, and (b) about certain applications made before IP completion day to register in the international register maintained by the International Bureau of the World Intellectual Property Organization a design in respect of which the European Union is designated.

2.5.1

GENERAL

After IP Completion Day, in accordance with the Withdrawal Agreement between the UK and the EU, “re-registered designs” were automatically created, free of charge, to continue the effect of Registered Community Designs in the UK. Licences and assignments of an RCD also continue to have effect in the UK.245 Re-registered designs are UK Registered Designs, governed in all respects by the RDA but taking their filing and priority dates as well as their content from the corresponding Registered Community Design on which they are based. Because of this, some knowledge of the rules governing the content of Registered Community Designs as they were before IP Completion Day will therefore still be important in the future. Presumably the IPO and the UK Courts will interpret re-registered designs in the context of the rules applying to RCDs at the application date. Where an application for an RCD was pending at IP Completion Day, or a Community Design was registered but unpublished, the applicant could, during a transitional period, apply in the UK for a UK registered design taking the same filing and priority date. These provisions preserving the effects of EU rights and applications are very similar to those applicable to trade marks, likewise, International Designs/EU and applications therefor.

245 RDA Sched. 1A paras 5-8.

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2.5.2 RE-REGISTERED COMMUNITY DESIGNS RDA Sections

12A, Sched. 1A Parts 1, 4, 5

Withdrawal Agreement Art. s

54-55

Related RDA Sections

12B

Related UK Rules

2B, 13(2)-(2A), 15A, 26(4), 27(1)(e), 33(3), 42(1)(d).

Other Analogues

TMA s. 52A, Sched. 2A Parts 1-2, 4

Form

Request to remove a re-registered design from the UK register

2.5.2.1 Differences in content from conventional UK registered designs The major differences in content between RCDs and UK registered designs were: 1. There was a maximum of seven (as opposed to 12) representations per registration.246 2. The regulations did not allow the use of textual explanations or symbols within the representations.247 3. Written disclaimers could not be included on filing, 248 but drawing conventions could be used to create a “visual disclaimer”.249 4. A brief written description could be filed, 250 but this had no effect on the scope of protection, 251 and perhaps no effect on interpretation at all.252 5. The Locarno class had “no effect on the scope of protection as such”253 and was for “exclusively administrative purposes”.254 As for UK designs, the indication of product was held by the CJ255 and the Court of Appeal256 not to limit the design for purposes of validity and infringement. 6. Designs could be kept unpublished for up to 30 months from filing or priority (as opposed to 12 from filing). 7. Priority could be claimed from a utility model or an International Exhibition, as well as from a design filing. A post-Brexit General Court judgment257 has held that priority can 246 247 248 249 250 251 252 253 254 255 256 257

CDIR Art. 4(2). CDIR Art. 4(1)(c). CDR Art. 25(6) did allow them after invalidation procedures. Case T-68/10 Sphere Time v EUIPO (Watch attached to a lanyard) [2011] ECDR 20. CDR Art. 36 (3)(a), CDIR 1(2)(a). CDR Art. 36 (6). Case T-90/16 Thomas Murphy v EUIPO/Nike Innovate (Electronic Watch Bracelet) [2018] ECDR 9 upheld by the CJ by Order in Case C-538/17 P; Case T-9/15 Ball Beverage Packaging Europe Ltd v EUIPO/Crown Hellas Can SA (Cans) [2018] ECDR 8. CDR Art. 36(6). CDIR Art. 3(2). Case C-361/15 Easy Sanitary Solutions v EUIPO/Groupe Nivelles (Shower Drains) [2017] EUECJ C-361/15, [2018] ECDR 4. Green Lane Products Ltd v PMS International Group Plc [2008] EWCA Civ 358, [2008] FSR 28. Case T-579/19 The KaiKai Company Jaeger Wichmann v EUIPO (gymnastic or sporting articles). Probably

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be claimed in an RCD application from a PCT (International) patent application, in which case the priority period is 12 months rather than 6. Although it is unclear from the UK legislation that such priority dates are applicable to the re-registered UK designs based on such RCDs, 258 this is clearly required by the Withdrawal Agreement 259 which is intended to have direct effect in the UK, 260 and is given such effect by s. 7A of the Withdrawal Act as amended. 2.5.2.2 Removal (“Opt-Out”) Re-registrations occurred without intervention from the proprietor. If proprietors do not want a UK registration they can therefore at any time “opt out”261 by filing the Request form at the IPO. If any other person is recorded on the Register as having an interest (an assignee, licensee or lender for example) then they must either consent or be given three months’ notice before the Registry will remove the re-registered design. Removal has effect as of IP Completion Day, as opposed to surrender (which has effect as of the date of surrender), failure to renew (as of the relevant anniversary of the filing date) or invalidation (as of the date of filing). 2.5.2.3 Transitional provisions – renewal Any renewals due within six months after IP Completion Day fell due instead at the end of that six months.262 Any unpaid renewals which had been due within six months before IP Completion Day, and for which the renewal fee and late payment fee are paid thereafter at the EUIPO, are automatically treated by the IPO as paid in respect of the re-registered design also. 263 Where a lapsed RCD is restored before the EUIPO, 264 however, the proprietor must apply to the Registry in order that the re-registered design is also restored.265 2.5.2.4 Transitional provisions – invalidity If the RCD is the subject of invalidation proceedings or litigation started before IP Completion Day, and is subsequently found invalid, the re-registered design is cancelled by the Registry when informed by the EUIPO, the Court, the proprietor or another party (on an “Invalidation Notice”), or otherwise becomes aware of the finding, unless the ground of invalidity would not have applied to a conventional registered design.266 That would normally be the case if invalidity were based on a foreign national right (e.g. a prior copyright, design or trade mark right). The proprietor is given the right to respond by a “Derogation Notice” indicating that the invalidity would not have

258 259 260 261 262 263 264 265 266

wrongly decided. Sched. 1A para 4 does not clearly cover them. Withdrawal Agreement Art. 54(6)(b). Ibid. Art 4(1) & (2). RDA Sched. 1A Part 1 para 3. RDA Sched. 1A Part 4 para 15. RDA Sched. 1A Part 4 para 16. Under CDR Art. 67. RDA Sched. 1A Part 4 para 17. RDA Sched. 1A Part 4 paras 9-9A.

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applied in the UK. Decisions against a finding of invalidity on this basis can be appealed.267 As the process of invalidation and appeal at the EUIPO take some years to exhaust themselves, this provision will remain relevant for some time.

2.5.3 RE-REGISTERED DESIGNS – INTERNATIONAL DESIGNS (EU) RDA Sections

12B, Schedule 1B Parts 1-2

Withdrawal Agreement

Related RDA Sections

12A

Related UK Rules

2B, 13(2)-(2A), 26(4), 33(3)

Other Analogues

TMA s. 52A, Sched. 2B Parts 1-2

Form

Request to remove a re-registered design (International Registration) from the UK register (“opt-out”)

An International Design (EU) was treated as an EU design in almost all respects.268 It could also be invalidated in the same way and before the same tribunals as an RCD. 269 Thus, re-registered designs based on International Designs (EU) are procedurally treated in the same way as reregistered designs based on RCDs, for which see 2.5.2. Detailed information on the arrangements for exiting the EU was made available by WIPO270 and the IPO.271 International designs vary in format from conventional registered designs (for example there is no limit on the number of representations). For these differences, see Part 3.

267 268 269 270

RDR r. 15A. CDR Art. 106d, Hague Art. 14. CDR Art. 106f. Agreement on the Withdrawal of the United Kingdom from the European Union: implications for International Registrations under the Hague System, WIPO Notice HAGUE/2020/2, Jan 30, 2020; United Kingdom: Implications of the End of the Transition Period for International Applications and Registrations under the Hague System, WIPO Notice HAGUE/2020/31, Jul 28, 2020; United Kingdom: Additional Notice Concerning the End of the Transition Period, WIPO Notice HAGUE/2020/42, Dec 28, 2020. 271 Guidance: International EU protected designs – Changes for businesses and holders of international EU protected designs, IPO, 24 February 2021. https://www.gov.uk/guidance/international-eu-protected-designs

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2.5.4 CONVERTED APPLICATIONS – RCD & INTERNATIONAL (EU) RDA Sections

12A, 12B, Sched. 1A Parts 2-3; Sched. 1B Part 2

Withdrawal Agreement

Related RDA Sections

–

Related UK Rules

27(1)(e), 42(1)(d).

Other Analogues

TMA s. 52A, Sched. 2A Part 3, Sched 2B Part 3

There are three classes of designs covering the EU for which it is necessary to file an application at the IPO in order to secure continuing protection. These are: 1. RCD applications awarded a filing date and not granted or finally refused on IP Completion Day; 2. RCDs registered but unpublished (because publication was deferred) on IP Completion Day; and 3. International applications designating the EU which have been neither refused nor granted by the EUIPO and for which the period for refusal by the EUIPO (i.e. six months after publication by WIPO) has not expired. In each case, the applicant could, within nine months of IP Completion Day, file a UK design application on Form DF2A, indicating in Boxes 10 and 12 or 13 the filing and priority details of the RCD or International application claimed as basis. In other respects, the registered design application should be in the usual form. The filing date (and date of registration) awarded are those of the corresponding RCD or International application. As for re-registered designs, it appears that the Withdrawal Agreement obliges the UK to recognise a priority claim that was valid under Regulation 6/2002, even if it would not have been valid under the RDA.272

272 By Withdrawal Agreement Art. 59(1), required to have direct effect by Art. 4 of that Agreement, and given it by s. 7A of the 2018 Act as amended.

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2.6

INVALIDATION & CANCELLATION

2.6.1

INVALIDATION

“… in opposition, invalidity or revocation proceedings… the Registry acts purely in a quasijudicial capacity… The proceedings are conducted in a manner akin to litigation (pleadings, evidence in writing with provision for cross-examination, disclosure if necessary, an oral hearing and so forth)…”273 RDA Sections

11ZB, 11ZC, 11ZD, 11ZE

Related RDA Sections

29, 30, 31

Related UK Rules

Part 4, 36-37, 42-43

Form

DF19A, DF19B, DF19C

IPO Practice

Tribunal Patents Manual, Patents Hearing Manual, Trade Marks Manual (Tribunal Section).

Other Analogues

Patents Rules Section 7, TM Rules 62-69

2.6.1.1 Invalidation – General Overview It is possible to invalidate a design either before the Registry or before the Court. However, most parties wait to be sued and then raise invalidity as a defence or counterclaim, rather than mounting a freestanding challenge to a design. There have been under 20 Registry design invalidation decisions per annum since 1998 (and under ten every year until 2016). Since the turn of the century, many of these have involved unrepresented parties (though this is likely to change following the UK withdrawal from the EU), and have been decided on the papers without a Hearing. The rules governing contested proceedings, and the procedural powers granted to the Registry, are almost identical to those applying to patent and trade mark disputes, and the various Manuals applicable in those disputes should be consulted for details of the standard procedure. The designs rules specify that: (1). The applicant for revocation files Form DF19A including: (a) a statement of the grounds on which the design is invalid; (b) a concise statement of the facts; and (c) a Statement of Truth. (2) The Registrar forwards this to the proprietor, setting a time limit for reply at the same time (usually two months). 273 0/363/01 ROYAL ENFIELD, [2002] RPC 24, Simon Thorley QC at [28].

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(3) The proprietor files a counterstatement on Form DF19B including: (a) admissions and denials of what was said by the applicant for revocation; (b) a concise statement of the facts; and (c) a Statement of Truth. (4) After the end of this time limit (the close of the pleadings phase) the Registrar sets the periods for filing evidence by the parties. (5) After the end of these time limits (the close of the evidence phase) if one of the parties has requested it, a Hearing takes place before a Hearing Officer, and a decision is usually given orally at the end of it. 2.6.1.2 Invalidation – Pleadings Requirements for the form and statements of case (paragraph numbering in particular) are set out in TPN 3/2016. Although the CPR is not directly applicable before the Registry, applicants for revocation should follow the pleading requirements of Practice Direction PD 63, and: 1. include particulars that will clearly define every issue (including any challenge to any claimed priority date) which it is intended to raise; 2. include a copy of each document referred to, and where necessary a translation; 3. for any prior design relied on for lack of novelty or individual character which was made available to the public by written disclosure, state the date on which and the means by which it was made available to the public; 4. for any prior design relied on for lack of novelty or individual character which was made available to the public by use, state (a) the date or dates of such use; (b) the name of all persons making such use; (c) the place of such use; (d) any written material which identifies such use; (e) the existence and location of any apparatus employed in such use; and (f) all facts and matters relied on to establish that such matter was made available to the public. 2.6.1.3 Invalidation – Evidence Normally, each fact alleged in the pleadings will need to be supported by evidence. That does not apply to facts admitted by the other side; the contents of (or certified copies from) the Register of Designs274 (or of patents275); things so common that the Hearing Officer can take “judicial note” of them; and the contents of common publications such as patents or articles in well-known journals (unless the other party does not admit these). If the pleadings (i.e. statements of case) are

274 RDA s. 17(8)-(12). 275 PA s. 32(9)-(14).

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attested by a Statement of Truth they are formally admissible as evidence, 276 but the Registry will normally expect more. The Hearing Officer can control “the way in which the evidence is to be placed before him”.277 Having said this, evidence is normally written, and usually “by witness statement unless the registrar or any enactment requires otherwise”, 278 supported by a Statement of Truth. Other normally acceptable forms for written evidence are affidavits or statutory declarations (both of which, unlike witness statements, need to be executed before a legal professional). It could also be “in any other form which would be admissible as evidence in proceedings before the court”, 279 but as the Registry is not necessarily intimately familiar with the rules of court, the party concerned may have to persuade them that potential evidence falls into this category. Where evidence is not in English, the Hearing Officer will usually require a translation.280 It is possible to submit evidence confidentially,281 or evidence that is redacted, but good reason must be shown – the normal rule is that evidence is open to the public after 14 days282 and Hearings are public.283 The Hearing Officer can also take oral evidence, either in person at a Hearing or via the telephone or other electronic means.284 Parties may request attendance and cross-examination of witnesses, 285 and the Hearing Officer can order their attendance.286 2.6.1.4 Procedural Powers of the Registrar Beyond this, the Hearing Officer has wide procedural powers to set and modify limits; demand, limit or exclude evidence; allow amendments of statements of case; and so on, provided the right to a fair trial is respected.287 Typical procedures are set out in the various Manuals on the IPO website, and in Tribunal Practice Notices.288 The Hearing Officer may call a Case Management Conference (“CMC”) to establish the procedure 276 277 278 279 280 281 282 283 284 285

RDR r. 21(1)(a). RDR r. 19(4)(c). RDR r. 21(3). RDR r. 21(1)(a). RDR r. 19(3)(b). RDR r. 30. RDR r. 29. RDR r. 20(1). RDR r. 19(3)(d). For details of the procedure, see TPN 3/2010: Requests for cross-examination and the commentary in the Trade Marks Manual, Tribunal Section at 6.8.3. 286 RDR r. 24(1)(a). 287 O/322/18 PULSE MINDSET, Professor Ruth Annand at [47]. 288 E.g. TPN 2/2011: Case management of inter partes proceedings: efficient, fair and less costly resolution of disputes before the Trade Marks Tribunal, and TPN 3/2009: Practice in Patent Proceedings before the Comptroller.

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to be followed in the case.289 Multiple designs owned by the same proprietor are often the subject of a simultaneous attack by the same applicant, and one common practice of the Registry is to consolidate such applications at an early stage of the proceedings. The normal sequence in IPO proceedings is to schedule sequential filing of evidence within sequential two-month periods, 290 with the applicant for revocation going before the proprietor, but simultaneous filing can instead be ordered. 2.6.1.5 Contested Hearings before the Registry Where the parties disagree on procedure, the Hearing Officer calls a Procedural Hearing to decide the issue; procedural orders cannot be appealed until the final decision, unless permission for an interim appeal is given.291 CMCs and Procedural Hearings are usually by telephone. For the latter the parties may be asked to file a skeleton argument in advance (normally two days in advance).292 Although the Hearing Officer can omit a Hearing (if the parties have not requested it) and decide in writing, the Appointed Persons have strongly urged against doing so – matters can otherwise go “horribly wrong”, 293 particularly if one side is unrepresented.294 For the main Hearing (and all others), 14 days’ notice is usually given295 unless otherwise agreed by the parties. Parties can be unrepresented, or represented by anyone whether or however qualified. Legally represented parties are required to file skeleton arguments two clear working days before the hearing, with a separate list of any authorities relied upon.296 The main Hearing is normally public.297 It is possible for the Hearing Officer to be assisted by an advisor298 (though this has apparently not happened to date). Oral evidence and cross-examination is rare, but not unknown. 2.6.1.6 Costs before the Registry The successful party will normally be awarded a contribution to their costs, usually based on the Registry standard scale.299 The costs decision may be taken at the Hearing, or a separate later 289 290 291 292 293 294 295 296 297 298 299

RDR r. 19(2). TPN 2/2010: Time periods for the submission of evidence and submissions in inter partes trade mark proceedings APDR r. 4. Trade Marks Manual, Tribunal Section at 6.6.2. O/209/19 System Products UK Ltd v Truscott Terrace Holdings LLC, [2019] RPC 15, [2019] UKIntelP o20919, Martin Howe QC at [94], [97]. O/380/12 CHINGGIS KHAN, Iain Purvis QC. RDR r. 25(1), but see r. 19(1). TPN 1/2016: Provision of skeleton arguments and attendance at case management conferences/hearings in trade mark proceedings, and Trade Marks Manual, Tribunal Section at 6.7.2. RDR r. 20. RDR r. 37. Currently contained in TPN 2/2016: Costs in proceedings before the Comptroller. See also Trade Marks Manual, Tribunal Section, Part 5.

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decision may be taken if unusual issues arise.

2.6.2 CANCELLATION Designs can be voluntarily surrendered (“cancelled”) by the proprietor on Form DF19C.300 There are a handful of cancellations each year (probably as a result of settlement of a dispute); usually they are accepted by the Registry, but presumably if a licensee or other person recorded on the register objected, there would be a Hearing. Unlike invalidation, cancellation only takes effect as of the date of the decision.301 Thus, any infringements before the date of cancellation remain actionable.

2.7

IPO OPINIONS

“A low-cost option of getting an opinion of whether an infringement has occurred, and that might allow the parties to negotiate a settlement of the issue, could therefore be beneficial to business.”302 RDA Sections

28A

Leading Cases

DLP Ltd’s Patent (HC)

CDPA Sections

249A

Related RDA Sections

–

Related UK Rules

–

IPO Practice

–

Other Analogues

PA s. 74A-74B

The IPO has operated a popular “opinions service” for patents since 2005. The Intellectual Property Act 2014 provided the framework for an equivalent service for designs. A draft of the Design Opinions Service Regulations was included in the 2015 consultation on implementation, 303 but seems to have been temporarily overtaken by other events. As for patents, any person (including the proprietor, and including an anonymous applicant) would be able to request an Opinion on: i. Whether a registered or unregistered design is being infringed or potentially infringed; ii. Whether a registered or unregistered design is valid; 300 301 302 303

RDA s. 11, RDR r. 14. RDA s. 11ZE(1). Consultation on the Reform of the UK Designs Legal Framework, DDU/T150-07-12, UK IPO, July 2012 at 13.3. Consultation on the implementation of a Design Opinions Service, DPS/1269/Mar-15, UK IPO, 2015, https://www.gov.uk/government/consultations/designs-opinions-service-regulations.

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iii. Whether a UK unregistered design right subsists in a particular design. iv. The duration of any UK unregistered design right. There would be a form and a fairly low fee (£200 was proposed). The proprietor (or other party potentially affected, such as a potential infringer) and anyone on the Register (such as a licensee) will be notified and invited to comment, but can choose not to do so. Third parties will also be able to comment. The IPO will be able to decline to give an Opinion, where the question is frivolous on the one hand or “evidence-rich”304 on the other. The aim will be to complete the process in three months. When issued, the Opinion will be non-binding for all purposes, and the IPO will not be liable for its contents. However, as a dispute resolution tool, an opinion from an impartial and experienced body such as the IPO ought to be influential. If the finding is of invalidity, the proprietor could appeal to the Appointed Person (but not the Court).

2.8

APPEALS

2.8.1

APPEALABLE DECISIONS

Not every decision taken by the IPO is appealable.305 The RDA provides for appeals from the following: Appeal: RDA s.

Decision: RDA s.

Decision On:

3A, 3B

Applications for registration

11ZF

11 – 11ZE

Cancellation or invalidation

11A(6), 11AB(5)

11A(3), 11AB(4)

Compulsory modification of licence

28A(7)

27A

Registry Opinion (not yet in force)

Sch 1A, 9A(9)

Sch 1A, 9A(2)

Invalidity of re-registered design from RCD

Appeals are also possible against decisions refusing International designations of the UK.306 Interim (i.e. procedural) decisions can only be appealed together with the final decision, unless permission to appeal immediately is granted by the Registry.307

304 E.g. invalidity based on false proprietorship. 305 But in appropriate circumstances a non-appealable decision which was unlawful or taken with a lack of due process might be the subject of judicial review. 306 RDEPG Part E, 14.08. 307 O/209/19, System Products UK Ltd v Truscott Terrace Holdings LLC, [2019] RPC 15, [2019] UKIntelP o20919, Martin Howe QC at [19].

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The party affected can in general appeal either to the Court or to the “Appointed Person”, 308 except that certain of the above appeals (those concerned with licences of right under UKUDR, and those concerned with Registry Opinions) can only be directed to the Appointed Person. Either way, the appeal is not a re-hearing of the matter but a review of the decision (or Opinion) appealed, 309 and new evidence or grounds are the exception rather than the rule. The Appointed Persons and the Court operate on the basis that they are “not entitled to interfere with decisions of the Registrar unless (to put it broadly) they appear to have been deprived of legitimacy by error or irregularity.”310 There are many differing statements expanding on this hurdle in Appointed Person decisions, and a few decisions of the High Court on the point. 311 These involve some element of deference to the decisions of the Registry as an expert and independent quasi-judicial tribunal, and do not necessarily apply to ex parte decisions.312 It is doubtful whether the same level of deference is appropriate in design appeals, where the Registrar has less experience both of examination and inter partes proceedings than in trade mark or patent matters. The old view that “unless the Comptroller is proceeding upon some wrong principle, he must prima facie be the judge of novelty, having regard to his knowledge and experience in the matter”313 is no longer appropriate where the Registry no longer examines for novelty and the appeal tribunal has more knowledge (and probably more experience) than the Hearing Officer.

308 A person appointed under RDA s. 27A, who is a practitioner with experience of design matters. 309 See TT Education Ltd v Pie Corbett Consultancy Ltd (TALK FOR LEARNING, O/017/17), [2017] UKIntelP o01717, [2017] RPC 17 Daniel Alexander QC. 310 O/169/16 ALTI, Geoffrey Hobbs QC at [13], followed in O/577/18 AE, Emma Himsworth QC. 311 Apple Inc v Arcadia Trading Ltd [2017] EWHC 440 (Ch), [2017] FSR 40, Arnold J. (as he was), and Abanka DD v Abanca Corp [2017] EWHC 2428 (Ch), [2018] Bus. LR 612 Daniel Alexander QC. 312 0/363/01 ROYAL ENFIELD, [2002] RPC 24, Simon Thorley QC at [29]. 313 Game Balls Co Ltd’s Application (1928) 45 RPC 26 at p30.

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2.8.2 APPEALS TO THE APPOINTED PERSON “The system of appeals to an Appointed Person, as an alternative to the route of appealing to the High Court in heavier and more complex cases, was intended to mirror the long standing system of appeals to an Appointed Person in trade mark appeals.”314 RDA Sections

27A, 27B

Related RDA Sections

27, 29

Related UK Rules

8(6), 15(8), Appointed Person (Designs) Rules 2015 (“APDR”)

Form

DF5, DF55, DRF55

IPO Practice

RDEPG Part D 13.09

Other Analogues

TMA s. 76-77, TMR r. 70-73, CDPA s. 249

2.8.2.1 Appointed Person – general Almost all trade mark (and all design) appeals go to the Appointed Person tribunal rather than the Court. The Appointed Person tribunal provides a similar level of expertise to the Court whilst enabling lower costs to parties, and also a lower cost risk if they fail and the other party’s costs are ordered against them. The Registry provides the Appointed Person tribunal with some facilities, but Appointed Persons are completely independent of the Registry and there is no “continuity” from the proceedings below. The design rules are closely modelled on those for trade marks, and consequently trade mark procedural precedent applies.315 No appeal fee is currently required. 2.8.2.2 Starting the Appeal With the exception of Opinions under s. 28A, an appeal requires an appealable decision. A negative examination report on a design application is only a notification of intended refusal, not a decision to refuse an application. An application which is not in order for acceptance at the end of the acceptance period is deemed abandoned, without requiring a decision to refuse. A party who wishes to appeal needs to obtain a refusal decision, either by letter from the Examiner, or after a Hearing.316 There is a one-month time limit from the date of the decision for applying for written grounds on Form DF5.317 Receipt of the written grounds is the initiating point for the appeal period.318 314 Martin Howe QC in the first Appointed Person decision for designs, Javaid v Erol (O/253/17) [2018] RPC 3, [2017] UKIntelP o25317 at [2]. 315 Ibid. at [3]. 316 The ‘Hearing Report’ supplied by the Registry does not normally constitute an appealable decision: O/262/18 Brexit, James Mellor QC. 317 APDR r. 3, RDEPG Part D, 13.08. 318 RDR r. 8(6), 15(8) & 17(2); RDEPG Part D, 13.08.

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Within 28 days, 319 the applicant must file Form DF55 (Form DRF55 for an unregistered design right appeal) together with a statement of the “grounds of appeal” and the “case in support of the appeal”, together with any “supporting documentation”.320 These should set out the entirety of the appellant’s case. 2.8.2.3 Contested proceedings – Respondents’ Notices and Cross-Appeals In contested proceedings (normally invalidity proceedings), the other party or parties may be content with the decision taken by the Registry. If they wish to supplement that decision with their own arguments as to why it was correct, they can file a Respondent’s Notice specifying “any grounds on which the respondent considers the original decision should be maintained where these differ from or are additional to the grounds given by the registrar or comptroller in the original decision.”321 There is a 21-day deadline from the date of the appeal to do so.322 There is a perceived risk in doing so, however, as this might be seen as undermining the Registry decision. Where another party disagrees with the Registry decision and is adversely affected by it, they should instead file their own appeal, within the original appeal period.323 2.8.2.4 Reference to the Court “… the power to refer… should be used sparingly, otherwise the clear object of the legislation to provide a relatively inexpensive, quick and final resolution of appeals by a specialist tribunal would be defeated.”324 RDA Sections

27A(2)-(3)

Leading Cases

Elizabeth Emanuel Trade Mark (AP)

Related RDA Sections

–

Related UK Rules

APDR r. 6

CPR

PD 63 Section III

IPO Practice

–

Other Analogues

TMA s. 76(3), TMR r. 72

The Appointed Person can refer a case to the Court, on an application by the Registrar or a party 319 320 321 322 323

APDR r. 5(3), RDEPG Part D, 13.09. APDR r. 5(1)-(2). APDR r. 5(6). APDR r. 5(5). O/600/18 airblue, Professor Ruth Annand at [77], though in that case the Respondent was permitted to file a late cross-appeal. 324 M. G. Clarke QC, A.J. and M.A. Levy’s Trade Mark (No. 2) [1999] RPC 358 at p360.

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or of his own volition. However in the decade between 2010 and 2019, in nearly 450 case disposals this has happened only three times.325 Referrals have generally been either where there are related proceedings before the Court, or where there is a point of general legal importance (the latter have proved to be very rare). Some of the general factors involved are set out in Emanuel.326 A reference might also be justified in order to allow the Court of Appeal to consider departing from retained CJEU case law.327 In the absence of these factors, even agreement between the parties may not be enough for a transfer.328 The CPR do not explicitly provide a procedure for handling referred design appeals, but it seems likely that the trade mark provisions329 ought to apply by analogy, with the referred appeal directed to the Patents Court.330 2.8.2.5 Procedure “Unless there is a relevant difference between substantive designs law and trade mark law which justifies a different approach, or some other specific and concrete reason, the Appointed Persons for designs appeals will follow and apply the established practice and procedural decisions of the Appointed Persons in trade mark appeals.”331 After any potential referral has been considered, the RDAPR provide for an oral Hearing, normally public.332 At least 14 days’ notice are given. If no party wishes to make oral submissions, the case may be settled on paper. Beyond this, the Appointed Person determines the procedure in each case, based on the same wide range of procedural powers as the Registrar, 333 including the power to extend or abridge time limits, give directions, require or control evidence and so on. Further to these statutory powers the Appointed Person (like the Registrar) “has an inherent power to regulate its own procedure so as to ensure that appeals before it are disposed of in a way calculated to do justice in an efficient and inexpensive manner”, which “can be used to fill the gaps in the statutory provisions but not to circumvent them.”334 Although the CPR do not strictly

325 Source: IPO annual “Facts and Figures”. 326 Elizabeth Emanuel Trade Mark [2004] RPC 15, David Kitchin QC. 327 See the (obiter) comments of Martin Howe QC in H&S Alliance Ltd v GBL UK Trading Ltd O/374/21 at footnote 8 p16. 328 O/065/09 PARKAIR, Amanda Michaels. 329 CPR PD 63 Section III. 330 CPR 63.16(2) 331 Martin Howe QC, Javaid v Erol (O/253/17) [2018] RPC 3, [2017] UKIntelP o25317 at [4]. 332 APDR r. 7 & RDR r. 20. Such hearings may nowadays be conducted online rather than in person. 333 Under RDR r. 19 & r. 24. 334 O/333/05 m.d.e.m., Richard Arnold QC, as he was. See also Pharmedica Gmbh’s Trade Mark Application [2000] RPC 536, Pumfrey J at 541.

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apply to the Appointed Person tribunal, the “overriding objective”335 is applied, 336 together with other general principles of CPR Part 52.337 It is fairly common to arrange a Case Management Conference, usually by telephone. Parties are usually required to file skeleton arguments before the Hearing itself.338 If necessary, the tribunal may stay the appeal pending the outcome of related litigation.339 Other matters, such as attempts to introduce new evidence, new or amended grounds of appeal, or new arguments will usually be considered at the beginning of the Hearing. 2.8.2.6 Outcomes There are too few design appeals to generalise, but most trade mark appeals to the appointed person have failed. Over the decade to 2019, around 17% of appeals were allowed and 5% were referred back for re-Hearing at first instance,340 whereas 55% were dismissed and 20% were withdrawn. It is possible to settle an appeal by an agreed Consent Order.341 Decisions of the Appointed Person are final.342 2.8.2.7 Awards of Costs Awards of costs before the Appointed Person are discretionary, but by convention are usually merely a contribution awarded to the winner by reference to the same fixed scale as applied at first instance by the Registry. This usually results in awards significantly lower than the costs incurred in reality.343 Serious misconduct by the losing party is occasionally penalised by awarding “offscale” costs, approaching the actual amounts incurred, against them: “the paradigm case for off scale costs will involve breaches of rules, delaying tactics or unreasonable behaviour”.344 For litigants in person, “it is the practice… to apply by analogy the Litigants in Person (Costs and Expenses) Act 1975 (as amended)”.345 It appears that the Appointed Person has no power to award parties their costs against the Registry. The normal practice in ex parte cases is to make no award for costs either way. In inter 335 336 337 338 339 340 341 342 343 344 345

CPR Part 1. O/203/13 AD, Professor Ruth Annand. See e.g. O/017/17 TALK FOR LEARNING, Daniel Alexander QC at, e.g., [52]. O/197/17 BERKSHIRE EYE CLINIC, Thomas Mitcheson QC at [6] & footnote 2, noting that this does not apply to unrepresented parties; see also CPR PD 52A Section V. BL O/124/11 KALTUN MADRAN, Professor Ruth Annand. Usually by a different Hearing Officer. O/076/12 CUCINA, Geoffrey Hobbs QC. Though judicial review is almost certainly available in an appropriate case: O/333/05 m.d.e.m., Richard Arnold QC. O/295/14 EDGE, Geoffrey Hobbs QC; O/285/13 WAPPLE.NET, Professor Ruth Annand; O/075/12 MMAX, Anna Carboni. O/116/13 ALLORO, Daniel Alexander QC at [17]. O/126/20 Kailijumei Ltd v Sipavicius, Martin Howe QC.

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partes cases where registry misconduct has caused expense to one of the parties, the Appointed Person can however recommend that the Registry voluntarily make a party an ex gratia payment.

2.8.3 APPEALS TO THE COURT RDA Sections

27, 27A(1),

Related RDA Sections

–

Related UK Rules

CPR 63.16, CPR Part 52, PD 52A and PD 52D; Court of Session Rules Chapter 55

Form

N161

IPO Practice

–

Other Analogues

TMA s. 75-76(2); PA s. 97

Before 2015, appeals to the Court were not possible.346 Since then, at the time of writing none have been filed, so little can be said concerning practice. However, it is likely that the practice applicable to patent and trade mark appeals also applies to designs. An Appellant’s Notice347 should be filed within 21 days of the decision appealed, unless a longer period is set, 348 and served on other parties and the Registry349 within seven days.350 Only the Court can extend these periods.351 The Court, for these purposes, is:352 (a) in England and Wales the High Court; (b) in Scotland, the Court of Session; (c) in Northern Ireland, the High Court.353 Within the English High Court, the Patent Court has jurisdiction. Design appeals are “Statutory Appeals”, the procedure governing which is provided (minimally) within CPR Part 52354 (for England and Wales) and the Court of Session Rules Chapters 41 & 55 (for Scotland). Further appeals, ultimately to the Supreme Court, are possible.

346 347 348 349 350 351 352 353 354

The Registered Designs Appeal Tribunal was the only available appeal body. Form N161, available online. CPR 52.12(2)(b). CPR 63.16(3). CPR 52.12(3)(b). CPR 52.15. RDA s. 27. It is rare for IP cases to be heard in Northern Ireland, however. CPR 63.16; see CPR Part 52 especially Section VI, PD 52A and PD 52D.

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2.9

VALIDITY – PRE-2001 (“EXISTING”) DESIGNS

Governing law

Registered Designs Regulations 2001, Regs 10-11, 13-14

Design Directive Basis (Art)

11(8)

Former RDA Sections

Former 1, 4, 6, 11, 44

Leading Cases

Oakley v Animal (CA), Dyson v Vax (HC)

Related UK Rules

RDR 1995 r. 14, 15, 16, 24, 25, 26, 35

2.9.1

INTRODUCTION

This section is a brief summary only. For more detail, consult a contemporary commentary such as the 6th or 7th edition of Russell-Clarke & Howe. The validity of any design applied for or registered on or before 8 December 2001 (the date on which the UK conformed to the EU Directive 98/71 on Legal Protection of Designs355) is governed by the RDA as it stood between 1989 and 8 December 2001. Thus, the old law applies as regards cancellation and invalidation, 356 but the current law applies as regards infringement – an inconvenient position “capable of having startling and unfortunate consequences”.357 The relevant parts of the RDA pre-2001 are at Annex 3 and those of the RDR pre-2001 are at Annex 4. The effect of the late implementation of the Directive on the transition provisions was discussed in Oakley v Animal, 358 and they were found to have been validly made. A case involving infringement of an existing design was Dyson v Vax.359 Such “existing” designs begin with the digit 2, making them easy to recognise. Designs registered under the pre-1989 version of the RDA (these begin with a 1-) cannot now be in force. 2.9.1.1 “Statement of Novelty” Rule 15(1) required every design to have a “statement of novelty”. Typical statements were: •

•

“The features of the design for which novelty is claimed reside in the shape and configuration applied to the article as shown in the representations.” “The features of the design for which novelty is claimed reside in the pattern and ornament applied to the article as shown in the representations.” “The features of the design for which novelty is claimed reside in the shape, configuration,

355 356 357 358 359

By virtue of The Registered Designs Regulations 2001, SI 2001/3949. Except that designs do not lapse when the corresponding copyright expires – Reg. 11(2), 12(2), 13(3). Dyson v Vax [2010] EWHC 1923 (Pat), [2010] FSR 39 Arnold J. at [17] quoting Russell-Clarke and Howe. Oakley Inc v Animal Ltd & Ors [2005] EWCA Civ 1191, [2006] RPC 9. Dyson v Vax [2010] EWHC 1923 (Pat) [2010] FSR 39, upheld on appeal: [2011] EWCA Civ 1206, [2012] FSR 4.

•

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pattern and ornament applied to the article as shown in the representations.” “The features of the design for which novelty is claimed reside in the shape and configuration applied to the article as shown in the representations excluding the part coloured blue.”

•

The statement of novelty was sometimes treated as a disclaimer, but sometimes the “disclaimed” features were in fact taken into account but given a lower weighting than the claimed features. A statement of novelty directed to “shape and configuration” usually resulted in the “pattern and ornament” being ignored completely, 360 and vice versa. The effect such statements should have under the current law is unclear. In Woodhouse v Aquila361 a statement of novelty disclaiming part of the article shown in dashed lines was taken as wholly excluding that part, and reinforcing the fact that the other parts shown in solid lines were essential elements of the design. In Dyson v Vax362 at first instance the parties wished to treat the statement of novelty (to “shape and configuration”) as a disclaimer. Arnold J. said: “Speaking for myself, I find it difficult to see how the scope of protection of the Registered Design under the Designs Directive can be affected by an artefact of the pre-implementation domestic law.” However, as the parties had both agreed it could be taken into account, he downplayed (but did not wholly ignore) the transparency of part of the article shown. On appeal, 363 it was common ground that colour should be ignored, and the Court obliged. The position is therefore that the statement of novelty has some effect, which is more likely to be that which it would have had under the old law than that of a disclaimer under the current law.

2.9.2 PROTECTABLE DESIGNS Former RDA Sections

Former 1(1)

Leading Cases

Amp v Utilux (HL)

Related RDA Sections

–

Related CDPA Sections

213(2); see also CDPA s. 51

Related UK Rules

–

Section 1 Designs registrable under Act. (1) In this Act “design” means features of shape, configuration, pattern or ornament applied to an 360 361 362 363

Valeo Vision SA & Anr. v Flexible Lamps Ltd 1995 RPC 205 at p215. Woodhouse v Architectural Lighting Systems [2005] ECPCC 25, [2006] RPC 1 at [17], [55]. Dyson v Vax [2010] EWHC 1923 (Pat), [2010] FSR 39 Arnold J. at [51]-[54]. [2011] EWCA Civ 1206, [2012] FSR 4 at [5].

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article by any industrial process, being features which in the finished article appeal to and are judged by the eye, …

2.9.2.1 Shape & Configuration These words have the same meaning as their equivalents for UKUDR and in s. 51 of the CDPA, and are discussed there. 2.9.2.2 Pattern & Ornament “‘Pattern’ and ‘ornament’ can, I think, in the majority of cases be treated as practically synonymous. It is something which is placed on an article for its decoration. It is substantially in two as opposed to three dimensions.”364 2.9.2.3 Eye Appeal “There must be in some way a special, peculiar, distinctive, significant or striking appearance – something which catches the eye and in this sense appeals to the eye.”365 Former RDA Sections

Former 1(1)

Leading Cases

Amp v Utilux (HL)

Related RDA Sections

Former 1(3)

Related CDPA Sections

–

Related UK Rules

–

It has long been held that for registered designs, “the appeal is to the eye, and the eye alone is the judge”.366 No doubt this is still true today. However, the judgment in Amp v Utilux367 elevated this “eye appeal” to a positive requirement for something (not necessarily aesthetic or artistic) that catches the eye, and may influence choice or selection by a consumer. 2.9.2.4 Appearance Material – “aesthetic consideration” Section 1 Designs registrable under Act. (3) A design shall not be registered in respect of an article if the appearance of the article is not material, that is, if aesthetic considerations are not normally taken into account to a material 364 Kestos v Kempat (1934) 53 RPC 139 per Luxmoore J. at p.152. 365 Amp, Inc. v Utilux Pty Ltd [1972] RPC 103 per Lord Pearson, p121. 366 Holdsworth v M’Crea (1867) L.R. 2 H.L. 380 per Lord Westbury at p388. See also Hecla Foundry Co. v Walker, Hunter & Co. (1889) 6 RPC 554, per Lord Herschell at pp558-559. 367 [1971] FSR 572 at 594-595.

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extent by persons acquiring or using articles of that description, and would not be so taken into account if the design were to be applied to the article.

The 1986 White Paper signalled the introduction of this exclusion, introduced in 1989, for the purposes of “restricting the protection of spare parts to that given by the unregistered design right”, and “limiting registration to genuinely aesthetic designs where there is no absolute necessity for a particular design to be used.”368 The reasoning behind the exclusion, and in particular its application to spare parts, seems to be based on the speech of Lord Reid in Amp v Utilux:369 “In the case of finished articles sold to members of the public for use by them I doubt whether this limitation is of much importance. ... But the definition of “article” in section 44 of the Act includes any part of an article made and sold separately. So it includes components like these terminals which are sold to manufacturers to be incorporated in the machines which they make. In such a case it might well be possible to prove that no manufacturer who wanted to buy terminals to use as components would be influenced by their appearance: he would only be influenced by their suitability for the use which he proposed to make of them.” After the sweeping interpretations of “eye appeal” and “dictated by function” given by the House of Lords in that case, it is hard to see that this additional exclusion was required, but the Government considered “that the matter [of spare parts being unregistrable] should be put beyond doubt.” 2.9.2.5 “Article” Former RDA Sections

Former 1(1)

Related RDA Sections

Former 44

Related CDPA Sections

51, 213

Related UK Rules

RDR 1995 r. 14

Section 44

Interpretation

(1) … “article” means any article of manufacture and includes any part of an article if that part is made and sold separately; …

An article of manufacture apparently had to be made by a traditional manufacturing process. 368 White Paper – Intellectual Property & Innovation, Cmnd 9712, April 1986, para 3.37. 369 Amp, Inc. v Utilux Pty Ltd [1972] RPC 103, per Lord Reid p108, Lord Donovan concurring. See also Lord Pearson at p122-123.

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That is consistent with the reference in s. 1 to applying the design to an article “by any industrial process”. Things held not to be an “article (of manufacture)” under the RDA and its predecessors include: • • • • • •

Westminster Abbey;370 A petrol filling station;371 An air-raid shelter;372 The Spice Girls (and perhaps, therefore, any living thing);373 Paper or other carrier that exists solely to carry a picture;374 An icon as such (and perhaps, therefore, any user interface as such), though the screen itself was not excluded;375 Spare Parts.376

•

Although the definition includes parts of articles, the phrase “made and sold” creates a problem if the reference date is the application date, because prior sales would deprive the design of novelty. The words were therefore taken as referring to the intention of the applicant at the time of filing.377 The House of Lords applied a wider construction to these words, requiring that an article “has to have an independent life as an article of commerce and not merely an adjunct of some larger article of which it forms part”.378 This effectively removed protection from almost all spare parts. 2.9.2.6 Sets Former RDA Sections

Former 1(2)

Related RDA Sections

Former 44

Section 44

Interpretation

(1) … “set of articles” means a number of articles of the same general character ordinarily on sale or intended to be used together, to each of which the same design, or the same design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, is applied. … 370 371 372 373 374 375 376 377 378

Saunders v Wiel (1893) 10 RPC 29. R.H. Collier & Co. Ltd’s Application (1937) 54 RPC 253 (Registry). Concrete Ltd’s Design Application (1940) 57 RPC 121 (RDAT). Spice Girls Ltd’s Application for Cancellation of Registered Designs (Registrar), BL ref O/283/99, [2000] ECDR 148. Littlewoods Pools’ Application, Re (1949) 66 RPC 309 (RDAT) Wynn-Parry J. at p.310, but see the comments explaining this case in Lamson Industries Application [1978] RPC 1 (RDAT), Whitford J. Apple Computer Inc.’s Design Applications [2002] FSR 38 (RDAT), Jacob J. at [2] & [7]. Ford Motor Co. Ltd’s Design Applications [1995] RPC 167 (HL) at p.179. Sifam Electrical Instrument Co. Ltd v Sangamo Western Ltd [1973] RPC 899, a copyright case. Ford Motor Co. Ltd’s Application [1995] RPC 167 (HL).

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(2) Any reference in this Act to an article in respect of which a design is registered shall, in the case of a design registered in respect of a set of articles, be construed as a reference to any article of that set. (3) Any question arising under this Act whether a number of articles constitute a set of articles shall be determined by the registrar; and notwithstanding anything in this Act any determination of the registrar under this subsection shall be final.

A set of articles could be applied for in a single registration, if similar and intended to be used together. In practice, the requirement of similarity was easily met in the case of patterns, but much more difficult to meet in relation to shape designs. Their status as a set is not open to challenge after registration. Reproduction of any of the designs of articles of the set, separately of the others, is an infringement. The effect is therefore somewhat similar to that of registration of a series of trade marks, but quite different to a set of articles as a single “product” under the current law discussed at 2.1.1.2. 2.9.2.7 Primarily Literary or Artistic articles Former RDA Sections

Former 1(5)

Related RDA Sections

–

Related CDPA Sections

Former 52

Related UK Rules

RDR 1995 r. 26

Section 1 Designs registrable under Act. (5) The Secretary of State may by rules provide for excluding from registration under this Act designs for such articles of a primarily literary or artistic character as the Secretary of State thinks fit. Rule 26 Exclusion of designs to be applied to certain articles There shall be excluded from registration under the Act designs to be applied to any of the following articles, namely – (1) works of sculpture, other than casts or models used or intended to be used as models or patterns to be multiplied by any industrial process; (2) wall plaques, medals and medallions; (3) printed matter primarily of a literary or artistic character, including book jackets, calendars, certificates, coupons, dress-making patterns, greetings cards, labels, leaflets, maps, plans, playing cards, postcards, stamps, trade advertisements, trade forms and cards, transfers and similar articles.

These provisions had equivalents in copyright law under s. 52 CDPA and r. 3 of the Copyright 124

PART 2 – REGISTERED DESIGNS

(Industrial Process and Excluded Articles)(No. 2) Order 1989379 (both now repealed). They formed part of the former elaborate border between copyright and design protection, for which see Lucasfilm v Ainsworth.380 The articles concerned were seen as matter properly protected by copyright and therefore not by design registration.

2.9.3 EXCLUSIONS Section 1 itemises several things which are excluded from design protection. Some of these are specified in the Rules. 2.9.3.1

Method or Principle of Construction

“… the line between “shape,” “pattern,” and “configuration,” on the one hand, and mode of manufacture on the other hand, is not a very plain line, and not one which is easy to express in words.”381 Former RDA Sections

Former 1(1)(a)

Leading Cases

Moody v Tree

Related RDA Sections

–

Related CDPA Sections

213(3)(a)

Section 1 Designs registrable under Act. (1) In this Act “design”… does not include— (a) a method or principle of construction,

In the 19th century, designs would sometimes include something like a patent claim. For example, in Moody v Tree, 382 the design included a statement reading “Claim for the pattern of the basket, consisting in the osiers being worked in singly and in the butt ends being outside.” The Divisional Court held that “a mere mode of manufacture is not a design at all.”383 Subsequently the exclusion was incorporated into the Act, and the Registry ceased to accept patent-style definitions of designs; as a result the exclusion was rarely used except, in the alternative, to limit the scope of an asserted design. As an identical exclusion continues to apply to UKUDR, the commentary at 6.2.6 is relevant.

379 380 381 382 383

SI 1989/1070. [2008] EWHC 1878 (Ch), [2009] FSR 2; [2009] EWCA Civ 1328, [2010] FSR 10; [2011] UKSC 39, [2011] FSR 41. Re Bayer’s Design (1907) RPC 24, 65 Vaughan Williams LJ at p74. (1892) 9 RPC 333 (note that the page numbers were wrongly printed – this one as “233”). Ibid., Vaughan Williams J. at p336.

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2.9.3.2 Functionality exclusion Former RDA Sections

Former 1(1)(b)(i)

Leading Cases

Amp v Utilux (HL), InterLego v Tyco (PC)

Section 1 Designs registrable under Act. (1) In this Act “design”… does not include— (b) features of shape or configuration of an article which— (i) are dictated solely by the function which the article has to perform,

A design did not include features of shape or configuration dictated solely by the function which the article has to perform. For refusal, all features had to be dictated by function. In Amp v Utilux, 384 the House of Lords held that the presence of alternative shapes was insufficient to avoid this exclusion, and the majority considered that the designer needed an intention beyond that of meeting functional requirements – the minority (Lords Reid and Donovan) thought that even if there was only a functional intention, a design which nonetheless appealed to the eye should be protectable. 2.9.3.3 “ Must-Match” – dependency of the part on the whole Former RDA Sections

Former 1(1)(b)(ii)

Leading Cases

R. v RDAT ex p. Ford (Div Ct)

Related RDA Sections

–

Related CDPA Sections

213(3)(b)(ii)

Section 1 Designs registrable under Act. (1) In this Act “design”… does not include— (b) features of shape or configuration of an article which— (ii) are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.

A design did not include features of shape or configuration which are dependent upon the appearance of another article of which the article was intended by the author of the design to form an integral part – the so-called “must match” test. This exclusion was added by the CDPA at the same time as the creation of UKUDR with the same exclusion, and so UKUDR cases are helpful in understanding the registered design exclusion and vice versa.385 Should the point 384 Amp Inc v Utilux Pty Ltd [1972] RPC 103 (HL). 385 Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, [2006] RPC 31, Jacob LJ at [57].

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arise in future, it is therefore likely that UKUDR cases such as Dyson v Vax will be persuasive in judging existing registered designs. The leading case was R. v RDAT ex p. Ford, 386 which produced decisions of the Registrar, the Registered Designs Appeal Tribunal and (on Judicial Review) the Divisional Court.387 The lists of parts concerned fell into two groups: “… main body panels, doors, the bonnet lid, the boot lid, the windscreen, and suchlike, all of which form part and contribute to the overall shape and appearance of the vehicle. I shall consider these first and shall refer to them as the first group. Then there are parts which, while in situ are contributing features to the appearance of the vehicle, are subsidiary to its essential shape. These include such items as wing mirrors, wheels, seats and the steering wheel, where substitutions are possible while leaving the general shape and appearance of the vehicle unaffected. I shall consider these separately later and shall refer to them as the second group.” Briefly, the first group was unregistrable and the second was registrable. In Valeo Vision, it was held that for a design to be invalid on this basis, all features had to be excluded as “dependent” – in that case they were not.388 It was also held that it did not matter whether the part was designed before the whole or vice versa.389 As an identical exclusion continues to apply to UKUDR, the commentary at 6.2.9 is relevant. 2.9.3.4 Emblems Rule 24 excluded royal portraits, armorial bearings, insignia, orders of chivalry, decorations or flags. However, a design could be registered if an entitled person gave consent. 2.9.3.5 People Rule 25 excluded the name or portrait of living persons or persons recently dead, unless the person (or an entitled person) gave consent.

2.9.4 NOVELTY Former RDA Sections

Former 1(2), (4)

Leading Cases

Stenor Ltd v Whitesides (Clitheroe) Ltd (HL)

386 387 388 389

[1994] RPC 545. The House of Lords decided the ultimate appeal on a different basis. Valeo Vision SA & Anr. v Flexible Lamps Ltd, [1995] RPC 205 at p218. Ibid.

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Section 1 Designs registrable under Act. (2) A design which is new may, upon application by the person claiming to be the proprietor, be registered under this Act in respect of any article, or set of articles, specified in the application. (4) A design shall not be regarded as new for the purposes of this Act if it is the same as a design— (a) registered in respect of the same or any other article in pursuance of a prior application, or (b) published in the United Kingdom in respect of the same or any other article before the date of the application, or if it differs from such a design only in immaterial details or in features which are variants commonly used in the trade. This subsection has effect subject to the provisions of sections 4, 6 and 16 of this Act.

As under the current law, the design had to be novel for any article, not just the article mentioned in the registration. Under still-older laws, the design only had to be novel within its class (see Stenor Ltd v Whitesides (Clitheroe) Ltd), 390 a fuse anticipated by a bicycle crank axle and a mill roller in the same class), but the restriction by class was removed in 1949. Unlike the current law, the disclosure had to be in the UK. A date stamp from the Science Reference Information Service (SRIS) library391 was the usual means of proof.

2.9.5 EXCEPTIONS TO NOVELTY REQUIREMENTS 2.9.5.1

Confidential and similar disclosures

Former RDA Sections

Former 6(1), (3)

As under the current law, confidential disclosures were not invalidating.392 Nor were disclosures in breach of confidence.393 There were two further savings along similar lines: • •

The acceptance of a first and confidential order for textile goods;394 and Communication to a government department to consider the merits of the design.395

2.9.5.2 Certified Exhibitions A six-month grace period existed for disclosures at an exhibition provided it had been precertified by the Secretary of State.396 390 391 392 393 394 395 396

(1946) 65 RPC 1 (HL). Now part of the British Library. s. 6(1)(a). s. 6(1)(b). s. 6(1)(c). s. 6(3). Mod-Tap W Corporation (Delaware) v BI Communications plc [1999] RPC 333.

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2.9.5.3 Prior disclosure of “artistic work” Former RDA Sections

Former 6(4)

Related UK Rules

RDR 1995 r. 35

Leading Cases

Bissell AG’s Design (Registry), Bampal Materials Handling Co Ltd’s Design (Registry)

The copyright saving, or 50 article rule, 397 was inserted by the Copyright Act 1956 to go with Article 10 of that Act. The general notion was that if something qualifying as an artistic work was not initially mass-produced it should benefit from copyright protection, but from the point where it was mass-produced (in the sense of 50 items being made and one sold) it should be registrable as a design and copyright protection should be limited to the same term as the design. As case law extended the scope of designs protected by copyright, the scope of this saving likewise extended. The leading cases are both Registry decisions, namely, Bissell AG’s Design, 398 a carpet sweeper (publication but no manufacture or sale in the UK), and Bampal Materials Handling Co Ltd’s Design, 399 a hand trolley (51 made, one sale sufficient to destroy novelty). 2.9.5.4 Association Former RDA Sections

Former 4

Leading Cases

Sebel & Co Ltd’s Application (No. 1) (RDAT)

Related UK Rules

RDR 1995 r. 16

Other analogues

PA 1949 s. 26, TMA 1938 s. 23

An existing design could be “associated” with an earlier design owned by the same proprietor, where the same design was applied to a new article or a similar design was applied to the same article.400 This prevented “self-collision” with earlier designs, even if registered and published; the earlier design cannot be cited against the later. Where an earlier design owned by another party was close enough to invalidate, it could be bought by the proprietor and associated, to remove the citation. Association therefore played somewhat the same role for designs as association for trade marks under the former Trade Marks Act 1938, and the “patent of addition” system under the former Patents Act 1949.

397 398 399 400

RDA s. 6(4)-(6) and RDR 1995 r. 35. [1964] RPC 125. [1981] RPC 44. The leading case on the similarity required for association was Sebel & Co Ltd’s Application No. 1 [1959] RPC 12.

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2.9.6 ENTITLEMENT, AND OTHER GROUNDS FOR CANCELLATION Former RDA Sections

Former 11

Leading Cases

Ifejika v Ifejika (CA), Masterman’s Design (RDAT)

Related RDA Sections

Former 1(2), 3(2)

Related CDPA Sections

–

Related UK Rules

RDR 1995 r. 14, 15

Section 11 Cancellation of registration. (2) At any time after a design has been registered any person interested may apply to the registrar for the cancellation of the registration of the design… on any other ground on which the registrar could have refused to register the design…

2.9.6.1 Entitlement Amongst the grounds on which a design could be refused, and thus on which it could be cancelled, were that the applicant was not genuinely “the person claiming to be” the proprietor401 or the owner of a corresponding UKUDR.402 In Woodhouse v Architectural Lighting403 a design was cancelled on this basis, because the actual applicant had no claim to be the owner. In Ifejika v Ifejika,404 it was held to be sufficient that the proprietor had equitable title at the time of filing. However, mere good faith is insufficient.405 If there are joint proprietors, one of them cannot file on their own – if he does so, the other can apply to cancel.406 2.9.6.2 Other Grounds, and Discretion Other grounds of refusal and hence of cancellation of an existing design include lack of clarity in the representations or specimen, statement of novelty or indication of product.407 The Registrar also had a general discretion to refuse designs, for example where the “use would be contrary or at least would be seen by a section of the public to be contrary to morality.”408

401 402 403 404 405 406 407

RDA s. 1(2). RDA s. 3(2). Woodhouse UK PLC v Architectural Lighting Systems [2005] ECPCC 25, [2006] RPC 1. [2010] EWCA Civ 563, [2010] FSR 29. Al Bassam Trade Mark [1995] RPC 511 – a trade mark case. Ifejika v Ifejika [2011] EWPCC 31, [2012] FSR 6. An example case is SRIS Reference O/533/02, Cyril Sloggett v Hadley Industries plc (Design) [2002] UKIntelP o53302 (where unsuccessful objections were made under Rules 14 & 15). 408 Masterman’s Design, [1991] RPC 89.

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PART 3 INTERNATIONAL DESIGNS 3.1 GENERAL NATURE OF THE HAGUE AGREEMENT AND INTERNATIONAL DESIGNS...................................................................................132 3.2 THE “INTERNATIONAL PHASE” – FILING AND PROCEEDINGS BEFORE WIPO......134 3.3 THE “NATIONAL PHASE” – EXAMINATION, OBJECTIONS, REFUSALS BY THE NATIONAL OFFICES............................................................................................ 146 3.4

AFTER REGISTRATION........................................................................................ 151

3.5

DESIGN PROTECTION IN THE “IP5”.................................................................... 156

3.6 DESIGN REGISTRATION IN THE G20 GROUP OF MAJOR ECONOMIES............... 162

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3.1 GENERAL NATURE OF THE HAGUE AGREEMENT AND INTERNATIONAL DESIGNS 3.1.1

THE AGREEMENT ITSELF

The Hague system, a WIPO-administered International Registration system treaty, allows a single application to be filed at WIPO designating a number of States (including the UK), and regions (including the EU). The application is filed, examined, registered and administered at the World Intellectual Property Office (“WIPO”) in Geneva, whilst the validity and infringement of the registration are handled separately under national law and by the competent authorities in each designated state or region. The applicable WIPO instruments consist of: • • •

The Hague Agreement Concerning the International Registration of Industrial Designs, Geneva Act (1999) (the “Hague Agreement”); The Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement (the “Common Regulations”); The Administrative Instructions for the Application of the Hague Agreement (the “Administrative Instructions”)

There are several different versions (“Acts”) of the Hague Agreement. The 1999 Geneva Act is the only one which allows designation of regional organisations (such as the EUIPO), and is the only one to which the UK and the EUIPO have acceded. The following comments will therefore be largely restricted to the Geneva Act. The Agreement, Common Regulations and Instructions together specify the procedures to be followed, and also the formal requirements with which the International Design application must comply. Other than certain specific areas where they can make reservations, National Offices are not permitted to impose additional or alternative formal requirements.1 However, other than guaranteeing a minimum term of 15 years, 2 the Hague Agreement does not make any substantive law provisions. The scope, effect and validity of the design in each designated country is the same as that of a national registration,3 and hence in the UK is governed by the RDA (in the version as amended by the IR Order)4 and in the EU by Regulation 6/2002 on the Community Design5 and its Implementing Regulation.

1 2 3 4 5

Hague Art. 12(1). Hague Art. 17. Hague Art. 14(2). The Designs (International Registration of Industrial Designs) Order 2018, SI 2018 No 23. As adapted by CDR Arts. 106a-106f.

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In its original form, the Hague Agreement was a deposit system allowing applicants to deposit a copy of a design which was registered largely without examination, for all designated countries. It therefore originally appealed to those countries (like France) which did not examine their national design registrations. Those which did examine – including Japan, the USA, the Republic of Korea, and (originally) the UK and much of the Commonwealth – stayed outside the system until the arrival of the 1999 Geneva Act. Then as now, the Hague system results in an International Registration granted by WIPO for all designated parties, except those few which conduct a national examination and raise objections. At the time of writing there are 75 parties (countries and regional organisations such as the EUIPO) to the Hague Agreement, of whom only 65 are in the Geneva Act, and only 34 are in the 1960 (Hague) Act. Many economically important countries6 are still outside the system, but more join it every year. The UK has acceded only to the Geneva Act. This has an impact on who can designate the UK, and which other countries a UK applicant can designate, but almost all parties to the 1960 (Hague) Act are also members of the Geneva Act,7 and can therefore be designated by UK applicants.

3.1.2

SAVINGS AND BENEFITS PROVIDED BY THE HAGUE SYSTEM

The Hague system allows very considerable cost savings at the filing stage, as (at its simplest) it involves a single filing; a single language (typically English); a single set of procedures which, though complex, is well understood by regular filers; use of a single representative; a set of fees which are considerably lower than the sum of their equivalent national counterparts; and a single registration. The benefits after filing are even more striking. A single renewal fee, again lower than its national counterparts, and a single, simple, process for registration of transfers of the design, make portfolio management vastly simpler and cheaper.

3.1.3

TIME TAKEN TO SECURE REGISTRATION

The international registration process is not quick. For excellent reasons, WIPO do not usually publish International Registrations until six months after filing. That marks the start of protection in some designated states, but other designated offices have either six or 12 months to raise objections, and in some cases a further six months before they have to grant protection – a total of two years from filing. Applicants can delay publication by requesting deferment, which increases the time taken, or request that publication be accelerated, which reduces it somewhat, but ultimately the choice of designations is the factor determining the total length of time taken in worldwide prosecution. 6 7

Including, at the time of writing, China, India and Australia. The few who are not are parties to the OAPI or the EUIPO regional systems, and can therefore be covered by that route.

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3.1.4

TYPICAL USES OF THE HAGUE SYSTEM

Because of the complexities and flexibilities within the system, it is not always the best or only way of filing designs. There are, however, four situations in which it is clearly useful and usable: 1. A “Greater Europe” filing programme. Because the UK and EU design systems, and those of many countries within the European Economic Area and/or Customs Union with the EU, and an increasing number who have Free Trade Agreements with the EU, have harmonised national design laws, which are compatible with the Hague Agreement, an International Design provides a very cost-effective form of protection across a very large market area with a high chance of being equally valid and enforceable everywhere therein. Further, multiple design applications are allowed in the UK, the EU and many European jurisdictions which allows even greater cost savings. 2. A European Spare-Part filing programme. As many EU countries have national design laws which (unlike the Community Design system) allow enforcement of designs to spare parts, filing spare part designs via the International route allows a cost-effective filing programme. 3. A “mop-up” filing programme. Many applicants would not normally consider filing for design protection in Africa, for example. However, the availability of designations for a large number of territories allows applicants to add protection in potential markets, accepting the risk that there may be enforcement difficulties downstream, at low cost. 4. A single, simple design worldwide filing programme. Where the intention is to file a single design of a traditional type (e.g. the design of a consumer product – a car, a toothbrush, furniture and so on) a well-prepared application can be granted not only in Europe but also in major examining offices worldwide such as Japan, the US and the Republic of Korea. As will be seen below, however, the same is not true of multiple design applications, or those for potentially controversial subject matter.

3.2 THE “INTERNATIONAL PHASE” – FILING AND PROCEEDINGS BEFORE WIPO Applications can be filed electronically or on paper at WIPO in Geneva. The application must be in English, French or Spanish;8 about 90% are in English. All communications between WIPO and the applicant or representative, at the time of writing, are electronic. It is also possible for national offices to act as “receiving offices” through which International Applications can be filed, but neither the UK IPO nor the EUIPO9 offer this service.10 As a result, few from the UK file on paper since the filing date via that route is reliant on international postal services. 8 Hague Art. 5(1), r. 6. 9 CDR Art. 106b. 10 A number of other countries have also made declarations to the same effect under Hague Art. 4(1)(b).

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It is possible for countries to impose national security clearance on design applications.11 The US and Russia do so.12 Where acting for a party based in these countries, or in relation to a design made in these countries, it is important to file through the national office to allow such clearance to take place or seek a foreign filing licence instead – there are usually serious consequences if this does not happen.

3.2.1

ENTITLEMENT TO FILE

The Hague Agreement creates a doubly-closed system: only parties can be designated, and only people with a suitable connection to a party can file. In this respect it is different from, for example, the Patent Cooperation Treaty.13 The required connection is slightly complex. It differs between versions of the Hague Agreement – this summary is limited to the Geneva Act rules as is usually the only relevant Act for UK applicants. An applicant must meet one or more of the following criteria:14 •

•

be a national of a State: o That is a Contracting Party (e.g. the UK), or o That is a member of an intergovernmental organisation that is a Contracting Party (e.g. The EUIPO); have domicile in the territory: o of a State that is a Contracting Party (e.g. the UK), or o in which the treaty establishing an intergovernmental organisation that is a Contracting Party applies (e.g. the UK); have a real and effective industrial or commercial establishment in the territory: o of a State that is a Contracting Party, or o in which the treaty establishing an intergovernmental organisation that is a Contracting Party applies; be habitually resident in a Contracting Party.15

A “real and effective industrial or commercial establishment” must be one at which “some industrial or commercial activity takes place (as distinct from a mere warehouse)”, in WIPO’s view. The term originates in the Paris Convention. Bodenhausen16 says that the question is “whether an establishment is real and effective, and not a faked or ephemeral one”. It is unlikely that owning a local subsidiary (which is a separate legal entity) would qualify the parent. These issues are matters to be decided by the national courts, rather than WIPO. 11 12 13 14 15 16

Hague r. 13(4). The UK does not, despite having statutory basis to do so in RDA s. 5. The current form of the PCT, at any rate. Hague Art. 3. Only applies to Geneva Act parties. Guide to the Application of the Paris Convention for the Protection of Industrial Property, G.H.C. Bodenhausen, WIPO 1969, online at https://www.wipo.int/publications/en/details.jsp?id=239.

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The application form requires the applicants each to indicate their entitlement(s) to file.17 WIPO does not examine the correctness of their assertions.

3.2.2 MANDATORY CONTENTS OF INTERNATIONAL APPLICATIONS The contents of International Applications, in the order presented in the application Form DM/1 and the eHague online filing platform, are discussed at length in the Hague Guide for Users (the “Hague Guide”),18 which should be consulted when any filing is attempted. 3.2.2.1 Mandatory Contents of All International Applications All International Applications must contain:19 (i) a request;20 (ii) data concerning the applicant;21 (iii) one or more reproductions22 (or a specimen23); (iv) an indication of product;24 (v) one or more designations;25 and (vi) the fees.26 The applicant or agent data must include an email address, 27 as WIPO now communicates only electronically.28 The specifics of all of the above are set out in the Common Regulations and Administrative Instructions, and summarised in the Hague Guide. 3.2.2.1.1 Reproductions As in any design application, the reproductions are of great importance. There is no limit on the number which can be filed but there is a fee for each, and (if the paper form is used) a fee for the number of pages. WIPO’s Common Regulations and Administrative Instructions set out its requirements for the representations.29 As at the EUIPO, they cannot include:30 17 18 19 20 21 22 23 24 25 26 27 28 29 30

Boxes 2 & 3 of Form DM/1. At http://www.wipo.int/hague/en/guide/. Hague Art. 5(1), Hague r. 7(3), Administrative Instructions ss. 301-406. Form DM/1 or its online equivalent. The format is in the Administrative Instructions ss. 301-302. The format is in the Administrative Instructions ss. 401-405. The format is in Hague r. 10 and Administrative Instructions ss. 406. The format is in Hague r. 7(3)(iv). Box 7 of Form DM/1. Pages 11-13 of Form DM/1, see also the invaluable WIPO online fee calculator at http://www.wipo.int/hague/en/ fees/calculator.jsp. Common Regulations 3, 7 and 21; see WIPO Hague Agreement Information Notice No. HAGUE/ 2020 Amendments to the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement December 28, 2020. See WIPO Hague Agreement Information Notices No.s HAGUE/2018/17 Discontinuation of use of Telefacsimile (Fax) at the International Bureau of WIPO, Nov 29, 2018 and HAGUE/2020/6, Discontinuation of Paper-based Communications in Favor of Exclusive Use of Electronic Communications, March 30, 2020. Hague r. 9, Administrative Instructions Sections 401-405. Hague r. 402(c).

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i. technical drawings, particularly with axes and dimensions; or ii. explanatory text or legends (but these can be filed separately, in the description or, if eHague is used, accompanying each representation). They may, however, include shading and hatching to provide relief. 31 National offices are permitted to object where the drawings breach their national requirements as to minimum number, or type, of views.32 WIPO have published a helpful Guide to drawing requirements of the USA, Japan and Korea.33 3.2.2.1.2 Specimen Specimens can be filed only where deferment is requested, and must be supplemented before publication by reproductions suitable for publication. They can be no more than 3mm thick, which excludes most designs other than wallpaper or textiles. Unsurprisingly, specimens are rarely used. 3.2.2.1.3 Indication of product The indication of product has little effect in the UK or the EU, but a much greater effect in many territories such as the US, 34 Korea35 and Japan.36 A fairly generic indication, using the terminology of the International (“Locarno”) Classification37 but identifying the type of product clearly enough to forestall a national office objection, is preferable. 3.2.2.1.4 Designations As noted above, the designations available depend on the applicants’ entitlements to file. If the applicants have connections only with Geneva Act territories, then only Geneva Act members can be designated. It is possible to designate both the EU (the “EM” designation) and individual EU member states – dual protection is not excluded in the EU.38 “Self-designation” – designating your own state – is also permitted, 39 unless a state has excluded it.40 3.2.2.1.5 Fees The fee structure is possibly the most complex part of the Hague system. Fortunately, the WIPO online Fee Calculator lightens the burden. The filing fee items are:

31 Hague r. 404(b). 32 Hague r. 9(4). Korea and Vietnam have made declarations concerning their requirements. 33 WIPO Hague Agreement Information Notice No. HAGUE/2016/9 Guidance on preparing and providing reproductions in order to forestall possible refusals on the ground of insufficient disclosure of an industrial design by Examining Offices, Aug 11, 2016. 34 See Curver Luxembourg, SARL v Home Expressions Inc., 938 F.3d 1334, 1336 (Fed. Cir. 2019). 35 See the Hague Guide, p56 Item 8 and p71 fn 3. 36 Where the rights are limited by the class in which the design falls. 37 Hague r. 7(3)(iv). 38 It is specifically mentioned in CDR Art. 95. 39 Hague Art 14(3)(a). 40 Examining Offices can do so, but none has to date.

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1. The Basic Fee for filing – a fixed fee. 2. “Standard” designation fees:41 a. Level 1 fees (the cheapest), for Offices that do no substantive examination; b. Level 2 fees, for Offices that substantively examination other than for novelty; c. Level 3 fees, for Offices that examine novelty or allow opposition. 3. “Standard” designation fees for additional designs (levels 1-3 as above); 4. “Individual” designation fees. These are significantly higher. These are set by “Examining Offices” and international organisations such as the EUIPO. 5. “Individual” designation fees for additional designs (where Examining Offices permit multiple designs); 6. Reproduction fees per image filed; and 7. Word fees for each word over 100 in the description. It should be noted that although the UK does some substantive examination, it is a “Level 1” designation. The fees are payable in Swiss Francs, or $US at rates which fluctuate periodically. 3.2.2.2 National-Specific Mandatory Requirements “Examining Offices” (i.e. those which conduct prior art search and examination42 – thus, not including either the UK IPO or the EUIPO) can impose the following additional requirements (most of which were requested by the USA): (i) data identifying the designer(s);43 (ii) a brief description of the reproduction or of the characteristic features of the industrial design that is the subject of that application;44 (iii) a claim;45 (iv) an oath or declaration;46 The “claim” is nothing like that required for a patent; it merely refers back to the representations. The Form contains a standard wording to be used for the US. Since items (iii) & (iv) are US-specific, the online US Manual of Patent Examining Practice (“MPEP”) should be consulted.

41 42 43 44 45 46

Hague r. 12(b). Hague Art 1(xvii). Required for the US, Finland, Ghana, Hungary, Iceland and/or Mexico, at Box 11 of Form DM/1. Required for Russia, Romania, Vietnam and Syria, at Boxes 9 & 10 of Form DM/1. Required for the US and Vietnam, at Box 12 of Form DM/1. r. 7(4)(c), required for the US, Annex I to Form DM/1.

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3.2.3 OPTIONAL CONTENTS OF INTERNATIONAL APPLICATIONS 3.2.3.1 Optional Contents of All International Applications All International Applications may also contain:47 (v) data concerning the designer;48 (vi) a brief description of the reproduction or of the characteristic features of the industrial design that is the subject of that application;49 (vii) a representative;50 (viii) a priority claim (discussed further below);51 (ix) a declaration of exhibition at an “international exhibition”; 52 (x) a request for deferment of publication(discussed further below);53 and (xi) a PDAS code to support a priority claim (discussed further below).54 3.2.3.1.1 Description The description may either describe: • • •

The reproductions, Any visual disclaimers used in the reproductions, or The characteristic features of the design.

The last is mandatory in order to get a filing date for Romania, the Syrian Arab Republic and Vietnam, and desirable for Russia. Its effect in the UK is unknown. The first two of these will no doubt fulfil the same function as their UK counterpart. The description must concern only features visible in the application. According to WIPO it “may disclose the operation or possible use of the industrial design”,55 but it “may not concern technical features of the operation of the industrial design or its possible utilization”56 – a subtle distinction. Words over 100 incur an additional fee.57

47 48 49 50 51 52 53 54 55 56 57

Hague Art. 5(3), Hague r. 7(5). Hague r. 7(5)(a). Box 11 of Form DM/1. Hague r. 7(5)(a). Boxes 9 & 10 of Form DM/1. Hague r. 7(5)(b). Box 12 of Form DM/1, or Form DM/7. Hague r. 7(5)(c). Box 13 of Form DM/1. Hague r. 7(5)(d). Box 14 of Form DM/1. These “World Expos” are so rare that this provision is irrelevant in practice. Hague r. 7(5)(d). Box 17 of Form DM/1. Hague r. 7(5)(e) and Administrative Instructions s. 408(a). Within Box 13 of Form DM/1. Hague Guide, section How to submit an International Application to the International Bureau: E-filing or DM/1 form, Item 9. Hague r. 11(2). 2 Swiss francs per word at the time of writing.

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3.2.3.2 National-Specific Optional Requirements The optional contents also include: (xii) a “Small Entity Status” declaration allowing the applicant a designation fee reduction;58 (xiii) an “Information Disclosure” statement setting out relevant prior art;59 (xiv) a “grace period” declaration of the applicant’s excused prior disclosures;60 and (xv) a copy of the priority application, for Korea only.61 These “optional” parts are highly desirable when the countries concerned (the US, Japan, and the Republic of Korea) are designated – without them, there will at very least necessarily be an expensive “national phase” in which the applicant has to appoint a local agent and file the documents within a rather short timeframe.

3.2.4 MULTIPLE DESIGN APPLICATIONS Multiple designs filed at the same time allow intellectual property offices to make administrative savings which they pass on to applicants by way of fee reductions. In the UK and at the EUIPO, these reductions are very significant. However, Examining Offices must search and examine each design, so the savings to them are much less significant. As a result, the US, Russia and Japan (and others) do not generally permit multiple designs in one application unless (in the US and Russia) they are similar enough to be considered embodiments of the same design. Korea and Japan avoid the problem by allowing the applicant to link related designs (in somewhat the same manner as the old UK association system for which see 2.9.5.4). The Hague system permits the filing of multiple design applications,62 containing up to 100 designs,63 provided that they meet a “unity of class” requirement – they must all fall into the same class of the International Classification,64 which is a classification of products comprising 32 classes. The cost savings achieved for designated countries which have “standard” designation fees (including the UK) are very substantial. However, international organisations and Examining Offices are allowed to set their own individual designation fees, which can be as high as their

58 Hague r. 7(5)(e) and Administrative Instructions s. 408(b). Annex IV to Form DM/1 for the US. 59 Hague r. 7(5)(g) and Administrative Instructions s. 408(d). Annex III to Form DM/1 for the US. 60 Hague r. 7(5)(e) and Administrative Instructions s. 408(c). Box 15 of Form DM/1 for Japan and Korea. Annex II to Form DM/1 for Korea. 61 Annex V to Form DM/1 for Korea. 62 Hague Art. 5(4). 63 Hague r. 7(3)(v). 64 Under the Locarno Agreement Establishing an International Classification for Industrial Designs: Hague r. 1(1)(vii).

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national fees less any cost saving achieved by the processing performed by WIPO.65 For an the EUIPO designation, there is no fee reduction in a multiple design filing (unlike a direct the EUIPO RCD filing). States whose national laws do not permit multiple design applications can indicate that they will apply a “unity” objection of some kind.66 The US, Russia, Mexico, and Vietnam have done so. Division of the application is then possible, but normally expensive as it involves purely national filing.67 Japan has also done so but does not in fact raise objections; instead the JPO performs ex officio division of the application.68 Thus, as soon as one of these States is designated in an International Application, it is necessary to consider the applicable unity law and division procedure of each such State. Applicants who file without doing so will face likely objections which will require a “national phase” (see below). Either way, the cost will probably exceed what it would cost to seek local advice and file directly.

3.2.5 DEFERMENT OF PUBLICATION If the applicant has made a valid request for deferment of publication in the application itself,69 the design will be registered70 but not immediately published.71 The maximum deferment period is 30 months from the filing or priority date.72 However, unfortunately, the actual deferment period available for each application depends on the designations, so considerable care is required when planning the use of deferment: 1. If one or more of the designated parties does not allow deferment at all,73 then the request for deferment is invalid. The applicant then faces an unattractive choice between abandoning the request for deferment and abandoning, within one month,74 the designation(s) concerned (which include the US, for example);75 2. If one or more of the designated parties is a member of the 1960 Act (which, by definition excludes Examining Offices and the EUIPO), then the maximum deferment period is only 12 months from the filing or priority date;76 3. If one or more of the designated parties has set a deferment period shorter than the above, 65 66 67 68 69 70 71 72 73

Hague Art. 7(2). Hague Art. 13(1). Hague Art. 13(3). Hague Guide p.48 fn 14 Hague r. 7(5)(e). Hague Art. 10(1). Hague Art. 11. Hague r. 16(1)(a). Hague Art. 11(1)(b). Commonly-designated States in this category are the US, Russia, Iceland, Mexico, and Vietnam 74 Hague r. 16(2). 75 Hague Art. 11(3). 76 Hague r. 16(1)(b).

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then the shortest of such periods applies.77 Unfortunately, again, the various States which have made use of this flexibility have a wide range of different deferment periods, though these are helpfully indicated in the small print on the application form.78 The worst consequences of this divergence are mitigated by WIPO’s normal publication delay of six months from the filing date,79 which usually allows applicants the time to sort out any messes they get themselves into. The UK deferment of 12 months from filing date corresponds to the period available for national UK registered designs. The EUIPO has made no reservation, so that the maximum of 30 months is available as for RCDs. When deferment is requested, the applicant can: 1. 2. 3. 4.

Renounce the application before publication;80 Not pay the publication fee and allow the application to be cancelled;81 Pay the publication fee early and request immediate publication;82 or Pay the publication fee (not later than three weeks before the period of deferment) and allow the application to publish at the end of the deferment period.83

3.2.6 PRIORITY CLAIMS The Paris Convention allows a priority claim from an earlier-filed design application,84 and also recognises the possibility that some States may allow a priority claim from a utility model application.85 Membership of the Hague Agreement requires parties to comply with the Paris Convention.86 It is therefore possible to claim priority in an International Application in the expectation that it will have effect in all designations, though that effect depends on national law. At the time of writing, just over half of International Applications claim priority. WIPO permits priority claims but does not require, or even allow,87 the filing of a certified copy of

77 Hague r. 16(1)(b). 78 E.g. Norway: six months from filing or priority; Israel: six months from filing; UK: 12 months from filing; Singapore: 18 months from filing. 79 Hague r. 17(1)(iii); Hague Guide, p63 Item 17. 80 Hague Art. 11(5). 81 Hague Art. 11(6)(a) & r. 16(5). 82 Hague Art. 11(4)(a) & r. 17(1)(ii). 83 Hague Art. 11(6) & r. 17(1)(ii). 84 Paris Art. 4A(1). “Industrial design” includes a “design patent” as in the US or China. 85 Paris Art. 4E(1). 86 Hague Art. 2(2). 87 Except for use in Korea.

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the priority application. The reason for this is historical: most contracting parties did not perform novelty examination, and therefore had no need to determine whether the priority date claimed was valid. When Examining Offices joined, those which always required priority documents to be filed in their national procedure made the same requirement when they were designated in an International Application. The result was that when Japan and the Republic of Korea joined, there would always be a national phase requiring the appointment of a local agent, to file a copy of the priority application, even if nothing else was required. To forestall this, Korea now allows the filing of a copy with the International Application. This copy is not supplied to any other designated office. As a result, if Mexico, Russia, or Japan are designated it is necessary to file a certified copy of the priority application in each within three months from the date of International publication. For the US, it is usually only necessary to do so before grant unless relevant prior art published in the period between the filing and priority dates is cited. These national phases are an expense which is easily overlooked when budgeting. The long-term solution to this problem is the Document Access System (“DAS”) administered by WIPO, which allows participating intellectual property offices to transmit documents automatically between themselves without expense or applicant involvement. At the time of writing, the following Offices allow access to their national design filings (and can therefore form the basis of a DAS priority claim): Country / Organisation Australia

Israel

Austria

Italy

Brazil

Japan

Canada

Mexico

Chile

Norway

China

Republic of Korea

Colombia

Spain

European Union Intellectual Property Office

United States of America

Georgia

WIPO

India Offices participating in DAS which allow access to their design filings

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The following Hague members allow a DAS priority claim (and therefore do not require the applicant to file a certified copy where such a claim is made): Country / Organisation Canada

Mexico

European Union Intellectual Property Office

Norway

Georgia

Republic of Korea

Israel

Spain

Japan

United States of America

Designated Offices accessing DAS

Thus, most of the Offices which would require the filing of a certified copy will allow a DAS claim instead. Unfortunately, however, the UK IPO is not yet a DAS participating Office for designs, so it is not possible to use DAS to claim priority from an earlier UK design application. A priority claim must be made on filing and requires indication of the state or office of filing, and the filing date. If the application number is not known it can be filed later.88 An International Application is treated as a “regular national filing” in each designation, and hence can itself be used as the basis of a priority claim, 89 even in a later International Application. WIPO participates in the DAS programme.

3.2.7

REPRESENTATIVES

A representative (agent, attorney) or firm of representatives can be appointed to act for the applicant before WIPO,90 in which case all correspondence is directed to the representative.91 There are no constraints on who can act as a representative. The appointment can either be filed within the application itself92 or subsequently.93 If the application form is signed by the applicant, nothing more is needed. If not, the signature is required later, on an appointment/power of attorney form.94

88 89 90 91 92 93 94

Hague r. 7(5)(c). Hague Art. 6(2). Hague r. 3(1). Hague r. 3(4). Box 5 of Form DM/1. Hague r. 3(2). Form DM/7.

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3.2.8 EXAMINATION – INTERNATIONAL PHASE WIPO examines International Applications, for formalities and fees only. If the online eHague application system is used, many possible problems are forestalled within the filing process. Thus, typical objections concern the quality of the reproductions, or a lack of “unity of class” in a multiple design. If there are objections, WIPO sets a three-month term for response.95 If the defect concerns one of the requirements for a filing date, then the application is post-dated to the date when the defect is cured.96 If the objection relates to a national-specific mandatory issue, then the consequence of non-compliance is loss of the designation concerned; in other cases it is deemed abandonment of the application.97 There is no international appeal from, or judicial review of, a WIPO decision, but since the international filing creates the effect of a “regular national filing”, it might be possible to seek a national remedy to maintain the effect as a national application under the laws of some designated states or offices; advice should be sought from local attorneys.

3.2.9 REGISTRATION AND PUBLICATION If and when all objections are overcome, WIPO will register the design,98 as of its filing date.99 It is allocated a registration number in the format “DM/xxxxxx”. After registration, the application will be published at six months from the filing date,100 subject to the following: 1. If immediate publication is requested, it will be published right away; 2. If deferment is requested, then publication is as discussed at 3.2.5. For countries with Offices which do not examine, this is the end of the process – the International Design has immediate effect. For offices which do examine, whether for novelty or for other purposes, WIPO forwards a copy of the registration confidentially and in advance of publication. Publication is in the International Designs Bulletin (“IDB”), nowadays a purely electronic publication on the WIPO website, with bibliographic data and reproductions.

95 96 97 98 99 100

Hague Art. 8(1), r. 14(1). Hague r. 14(2). Hague Art. 8(2), r. 14(1). Hague Art. 10(1). Hague Art. 10(2). Hague r. 17(1)(iii).

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3.3 THE “NATIONAL PHASE” – EXAMINATION, OBJECTIONS, REFUSALS BY THE NATIONAL OFFICES The Hague Agreement (1960 Act and Geneva Act) permits offices to perform a national examination after the international design is published. As a result, it is possible for an international design to be registered in some countries and refused in others. “Refusals” (the term actually includes simple objections, since the refusals are not initially final) are sent to WIPO, and thence on to the applicant. However, the applicant must then respond directly to the national office concerned, appointing a local agent if so required by the national law. At this point, a “national phase” comes into being, usually at considerable expense to the applicant. The Hague Agreement sets a default period of six months101 for Offices to notify objections. This period is mandatory in the 1960 Act, and many “Examining Offices” who search prior art designs (such as the USPTO, and the Japanese and Korean IPOs) thought this was too short to enable them to properly examine. The Geneva Act (like the Madrid Protocol for international trade marks) was designed to accommodate Examining Offices. Thus, Examining Offices, and those with an opposition procedure, can elect for a 12 month period instead, to give them more time to resolve validity.102

3.3.1

THE UK NATIONAL PHASE

The UK Act and Rules treat International Applications and designs as UK design applications and registrations, as a consequence of Order 3 of The Designs (International Registration of Industrial Designs) Order 2018103 (“the IR Order”, made under RDA s. 15ZA) except as specifically provided for in versions of the RDA and RDR amended for the purpose by the IR Order. References in this Part to the RDA and RDR are to them as amended by the IR Order. The following pre-grant UK provisions are disapplied in relation to UK designations on International Designs, in favour of their international equivalents. Thus, the IPO does not examine these issues (or any formalities issues), leaving them for WIPO:104

101 102 103 104

Hague r. 18(1)(a). Hague r. 18(1)(b). SI 2018/23. RDEPG 14.05.

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UK provision

Subject

Hague provision

s. 15

Extension of Time for priority

–

r. 4

Applications

Art. 5, r. 7

r. 5

Formal requirements

Art. 5, r. 7, r. 10

r. 6

Partial disclaimers

Art. 5, Instructions s. 403

r. 9

Representation of design for publication

r. 14(2)

r. 10

Time limits under s. 3(5) and s. 3B

–

r. 11

Publication

Art. 10, r. 26

s. 18, r. 26

Certificate of Registration

r. 15(1)

s. 21

Power to correct clerical errors

r. 22

Replaced UK National Pre-Grant Provisions

The IPO performs some limited examination of international designs designating the UK,105 not to search for prior designs but to determine whether the design is: • • • • • • •

owned by someone different to the proprietor of the priority application or their representative;106 not meeting the definition of “design”;107 entirely excluded as dictated by technical function, or “must fit”;108 immoral/contrary to public policy;109 excluded as a flag/emblem;110 lacking in unity within a single design;111 not meeting the Hague rules,112 including insufficiently disclosed/lacking in clarity.113

The IPO may also ask for a copy of the priority application, if priority is claimed.114 If the applicant is not within the UK, a UK address for service is requested; this does not require a professional representative (though this is of course desirable) but just a correspondence address. Refusals are sent to WIPO who forward them to the applicant.115 The applicant can argue (directly 105 106 107 108 109 110 111 112 113 114 115

RDA s. 3A. RDA s. 3A(3). RDA s. 1(2), (3). RDA s. 1C. RDA s. 1D. RDA s. 3A(4)(c), Schedule A1. RDEPG 14.03. RDR r. 8(1). Hague r. 9(4). RDR r. 7(3). RDA s. 3A(5)(a), Hague Art. 12(2) & r. 18.

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before the UK IPO) against an initial refusal, or amend to meet it, and if successful the UK IPO will inform WIPO of the fact.116 The applicant could also request a Hearing and/or appeal, as for a UK registered design filing. One option not open to the applicant in the UK is division. This is not necessary as between different designs in the same application, as the UK has a multiple design system compatible with the Hague system, but may arise if a single design in an application appears to show two different products, or one product with two designs (for example, shown in different colours, or using a different type of representation).117 In 2019, there were about 1,000 International Design Registrations granted for the UK, and about 25 refusals – a refusal rate of only about one quarter of one percent.

3.3.2

THE EUIPO REGIONAL PHASE

The application of EU law to IR/EU’s is governed by Title X1a of the CDR. The EU formal requirements are largely based on those of the Hague system, and the EUIPO makes no further examination of International Registrations on formal grounds. Nor does the EUIPO examine priority, or request supporting documents. In principle, the EUIPO could issue a refusal “if in carrying out an examination of an International Registration, the Office notices that the design for which protection is sought • •

does not correspond to the definition under Article 3(a), or is contrary to public policy or to accepted principles of morality.”118

It will be seen that, as for RCDs, such examination is not in fact mandatory but relies on the examiner noticing a problem. The refusal rate for the EUIPO designations is vanishingly low. A search of the IDB over 2008-2011 by the author failed to find any. Given the very broad definition of “design” on the one hand, and the relaxed and cosmopolitan nature of the EUIPO on the other, it is perhaps not too surprising that refusals are so rare. The procedure is set out in the EUIPO Guidelines.119 The EUIPO will issue any rejection notice within six months of the International Publication,120 setting a two-month term121 for reply

116 RDA s. 3A(5)(b), Hague r. 18(4) & r. 18bis(1)(d). 117 RDEPG 14.03. 118 CDR Art. 106e, corresponding to CDR Art. 47 for RCD applications, punctuation added. See also Guidelines 12.2.2.1. 119 The EUIPO Design Guidelines (“Guidelines”) – Examination of applications for registered Community designs – Section 12: International Registrations. 120 CDIR Art. 11a(1). 121 Guidelines, 12.2.2.2.

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and (if the applicant is not located in the EEA) nomination of a representative on the EUIPO List through whom correspondence must be directed.122 If the EUIPO do not notify WIPO of a rejection within six months of the International Publication, the registration has effect in the EU without further formalities. Amendments of the application are not permitted, so applicants can only argue or renounce one or more of their designs.123 If unsuccessful, applicants can appeal to an the EUIPO Board of Appeal and, in principle, onwards to the General Court and the Court of Justice as with RCDs.124 The ultimate allowance or refusal outcome is notified to WIPO by the EUIPO.

3.3.3

THE NATIONAL PHASE BEFORE “EXAMINING OFFICES”

At present, considerably over half of all designations of the US receive a rejection, as do many Japanese, Russian and Korean designations. Every rejection requires the appointment of a local representative in the territory concerned, and other expenses, in addition to the generally high individual designation fees charged by Examining Offices. It is not usefully possible to generalise the procedures before “Examining Offices” which are based more on national law than the Hague Agreement. Most125 have extended the default six month period after International publication to 12 months in which to notify refusals. The grounds for refusals correspond to the national laws and practices concerned. As noted above: • •

The presence of more than one design in an application is likely to result in a lack of unity, restriction or election requirement in at least the US, and probably in other Examining Offices; Many Examining Offices will require the filing of a certified copy of the priority application, if priority is claimed and the DAS system cannot be used.

One important point to note concerns the reproductions. Many Examining Offices, in particular the US, Japan and Korea, impose both a generally high standard and a number of their own national peculiarities126 for reproductions. It is therefore advisable to refer to WIPO’s Guide to drawing requirements of the USA, Japan and Korea,127 and to have the reproductions prepared by

122 123 124 125 126 127

CDIR Art. 11a(3). Guidelines, 12.2.2.7. CDIR Art. 11a(5). Including the US, Japan, both Koreas, Russia, Canada, Turkey, Israel and Iceland. Permitted by Hague r. 9(3). Korea and Vietnam have declared such requirements to WIPO. WIPO Hague Agreement Information Notice No. HAGUE/2016/9 Guidance on preparing and providing reproductions in order to forestall possible refusals on the ground of insufficient disclosure of an industrial design by Examining Offices, Aug 11, 2016.

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a patent draftsman who is familiar with international design practice, or (in a high-value case) to consult local experts in the country concerned before filing. It is also important to bear in mind that the very wide definitions of protectable subject matter employed in the UK and the EU are not accepted elsewhere. Matter such as icons, GUIs or screen displays; logos and two-dimensional elements; or anything in Locarno Class 32128 will often face refusal. It may be better to approach such matter via national filings instead, since different countries may allow different methods of protection. As to validity in relation to prior designs, again, there is no consistency of approach internationally. In the US, for example, it is often necessary to argue non-obviousness, whereas in Japan the issue may be whether the design could easily be made. Local expertise, though expensive, is essential to success. In the US national phase, applicants and representatives should be aware of two procedural points with important consequences. Firstly, designers, applicants and representatives are under an ongoing duty of candour as regards the USPTO. This chiefly involves an obligation to disclose any known prior art that a reasonable examiner might consider relevant to the validity of the design. There are penal sanctions for non-compliance on the individuals concerned, as well as adverse consequences on the validity and enforceability of any design obtained by fraud on the USPTO. As a consequence, applicants should file an Information Disclosure Statement (“IDS”) indicating all the relevant prior art of which they are aware, and do so again if they become aware of new prior art before the allowance of the design in the US. The initial IDS can be filed with the International Application.129 Secondly, the prosecution history before the USPTO can be used to cut down the scope of the design in infringement litigation – so-called Prosecution History Estoppel or File Wrapper Estoppel (“FWE”). FWE can arise from arguments made to the USPTO about the design and its differences from prior designs. It can also arise where, in relation to a lack of unity objection or restriction or election requirement, an applicant cancels one or more designs from the application. Such cancelled designs may be treated as being abandoned to the public domain, and not covered by the scope of any from the same application that are registered. The applicant can therefore be much worse off in filing several designs and then abandoning some of them than if they had only filed a single design in the first place.130 Examining Offices are permitted to substitute their own date of effective grant of International designs in place of the default 6- or 12-month term after International publication. This should be no more than six months after the applicable 6- or 12-month term.131 128 129 130 131

Korea refuses Class 32 designs as a matter of routine. Annex III to Form DM/1. See for example Pacific Coast Marine Windshields Ltd v Malibu Boats, LLC et al, 739 F.3d 694 (Fed. Cir. Jan. 8, 2014). Hague r. 18(1)(c)(i).

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In some cases132 the date of effective grant is the date a national grant and re-publication takes place, and this takes place only after a grant fee (technically, the second half of the designation fee) is paid.133 In the US, the design is allocated a US design patent number (though the International Registration details also appear on the front page, in small print) and published. For an example (perhaps the only one to date) of a US design patent granted to a UK applicant on the basis of an International Application, see USD854,623.

3.4

AFTER REGISTRATION

International Designs after grant continue to be administered by WIPO and leave little national footprint in most designated states. Neither the UK IPO nor the EUIPO keeps a local register or database of International designs designating them. However, in each designation they are governed by the local substantive law. The following post-grant UK provisions are disapplied in relation to UK designations on International Designs, in favour of their international equivalents: UK provision

Subject

Hague provisions

s. 18, r. 26

Certificate of Registration

Rule 15(1)

r. 12

Extension of duration of right

Art. 17, Rules 23-24, Instruction s. 701

s. 8A, s. 8B, r. 13

Restoration

–

s. 11, r. 14

Cancellation

Rule 21

s. 20, r. 35

Rectification of register

Art 15, r. 20, r. 21(b)(ii)

s. 19, r. 27

Registration of assignments, etc

Art. 16, r. 21

r. 34

Alteration of name or address

Art. 16(1)(ii), r. 21(1)(ii)

s. 21

Power to correct clerical errors

Rule 22

s. 22, r. 28

Inspection

Art. 18, r. 32(1)

r. 31

Information about rights

–

r. 32

Rule 32(1)

r. 33

Copies of representations, specimens

Rule 32(1)

Replaced UK National Post-Grant Provisions

132 The US and Mexico. 133 Hague Art. 14(2), r. 18(1)(c).

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3.4.1

RENEWAL

Renewal fees are paid directly to WIPO, every five years from the filing date for a minimum of fifteen years, though if national law of a designation allows a longer life, then the fee can be paid until the end of that longer term.134 There is a separate fee for each designated State,135 usually at a lower rate than would be payable for a national or regional design registration, and all can be paid in a single transaction so that using the International system results in very considerable portfolio management cost savings to proprietors. As against this, since all the eggs are in one basket, the consequences of an error resulting in nonpayment may be complete loss of the design in all designated States. The UK national restoration mechanism does not apply, and has no equivalent, for International Applications. Six months before the due date WIPO will send the applicant a renewal reminder, but this is “unofficial” in the sense that applicants cannot use non-transmission or non-receipt as an excuse for failure to pay on time.136 It is therefore essential, as with any IP right, to use a reliable renewal reminder system or service rather than relying on the reminder. The reminder notice also contains information on those designations which provide a lifetime of longer than 15 years (in almost every case, 25 years instead of 15).137 These include the UK, the EUIPO and all EU States; those States in the EEA or Customs Union with the EU;138 former Yugoslav States;139 Japan; Russia and several former Soviet Republics.140 It is important to ensure that the renewal reminder system or service tracks these extra terms. The fee can be duly paid up to three months before the due date. An earlier payment is treated as being made three months before the due date,141 but if the amount of the fees has changed between payment and that point in time, the amount will not be correct.142 Earlier payment is therefore risky. Payment can be made using Form DM/4, but this form is not mandatory. The eRenewal online service performs some error-checking and calculation, and is therefore preferable for some applicants. The online WIPO Hague Fee Calculator also has a renewal section, which should be used to generate estimates. The renewal fee structure is similar to the application fee structure, with a basic fee payable in 134 135 136 137 138 139 140 141 142

A list of such countries is at https://www.wipo.int/hague/en/declarations/declarations.html#protection. With the important exception of the US, for which no renewal fees are necessary at the time of writing. Hague r. 23. Administrative Instructions s. 701. Norway, Iceland, Liechtenstein, Switzerland, Turkey, San Marino. Serbia, North Macedonia, Bosnia and Herzegovina, Montenegro. Russian Federation, Armenia, Georgia, Moldova. Hague r. 24(1)(d). Hague r. 27(6)(b).

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every case for the first design and a (very cheap) basic fee for each additional design, accompanied by either “standard” (single level) or “individual” renewal fees for each designation. On payment, WIPO will record and publish the renewal in the IDB on their website, notify the designated Office,143 and send a certificate of renewal to the applicant.144 There is a six month grace period after the due date during which the renewal fee can be late-paid, with a 50% surcharge.145 If the amount of the fees is underpaid, WIPO will notify the applicant, who can pay the difference within the same grace period,146 or alternatively abandon one or more designations to get to the correct amount.147

3.4.2 INFORMATION The UK IPO and the EUIPO provide no useful information on the International Designs designating their territories. In almost every case it is necessary to seek information directly from WIPO.148 3.4.2.1 Searching WIPO hosts the Hague Express database, which allows searching of the International Register in various ways and shows current status and status history as well as bibliographic information and the reproductions. WIPO also makes the same data available in its Global Design Database, together with data from the US, Japan, Korea and many other countries. The International Designs Bulletin is also searchable in various ways. Within each weekly edition, it is possible to search by various status events such as refusals, renewals or invalidations and, from the search results, to access the documents concerned. As regards US designations, the USPTO Public PAIR and PATFT databases can be searched by International Registration number and other criteria, and the file of correspondence with the USPTO can be reviewed via Public PAIR. 3.4.2.2 Supply of copies etc After publication, anyone can, on payment of the associated fees, request:149 • •

extracts from the International Register; certified or uncertified copies of recordings made in the International Register or of items in the file of the International Registration (typically, “priority documents”);

143 144 145 146 147 148 149

Hague Art. 17(5). Hague r. 25(2). Hague r. 24(1)(c). Hague r. 24(3). Hague Guide: Renewal of the International Registration. See CDIR Art. 71(3). Hague Art. 18, r. 32; Hague Guide: Extracts and certified copies, p27.

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• •

written information on the contents of the International Register or of the file of the International Registration; or photographs of specimens.

Before publication, only the proprietor (or someone authorised by the proprietor) can make the request.150 The “contact Hague” page151 can be used for this service.

3.4.3 REGISTRATION OF CHANGES AND CORRECTIONS The UK IPO and the EUIPO will not accept or process documents relating to changes, corrections or transactions relating to International Designs. These must instead be filed at WIPO, but they have the same effect as if filed nationally.152 • •

Corrections can be made either by WIPO ex officio, or at the request of the applicant.153 Changes in name or address of the proprietor154 or representative155 can be made on application. There is a fee for the former, not for the latter. The “contact Hague” page156 can be used for this purpose.

3.4.4 REGISTRATION OF TRANSACTIONS Transfers of the design can be recorded157 on payment of a fee. The transfer may be for only some of the designations, and/or for only some of the designs, in the registration. Where a “partial” transfer of this kind occurs, the International Registration is divided and the new offspring registrations have an added letter to distinguish them. The transfer can be recorded by either the new or the existing proprietor, but in either case the signature of the existing proprietor or a “competent authority” (a court ordering a transfer, for instance) is required.158 WIPO will examine whether the new proprietor has the right to own the International Registration – the criteria are the same as those for applicants discussed at 3.2.1. Transfers where the new proprietor lacks the necessary connection with a member state or office will not be recorded. Otherwise, WIPO will not examine the legality of the transfer – to do so would require knowledge 150 151 152 153 154 155 156 157 158

Hague Art. 11(4)(b). https://www3.wipo.int/contact/en/hague/. Hague Art. 16(2). These are, at the time of writing, the US, Russia, Korea, Mexico and Denmark. Hague r. 22. Hague Art. 16(1)(ii). On Form DM/6. Hague Art. 16(1)(iii). On Form DM/8. https://www3.wipo.int/contact/en/hague/. Hague Art. 16(1)(i). On Form DM/2. Hague r. 21(1)(b).

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of the property law of every designation. It is up to the parties to ensure that the transaction has the force of law. As a result, the proprietor recorded on the International register may not be the true proprietor in law or equity. Designated Offices may declare that they will not accept transfers recorded at WIPO unless the supporting documents are also provided to them.159 They also have the power to refuse to accept such transfers for their territory, where not allowed under their national law.160 In the event that they do so, WIPO will again divide the design, leaving it in the original name for the designation concerned.161

3.4.5 INVALIDATION OR REVOCATION The validity of International Designs in each designation is a matter for the local law; the Hague system contains no substantive provisions on validity. The International design must therefore be attacked in each designation separately, as if it were a national design. Where the intellectual property office in the designation concerned invalidates the design (or learns that it has been invalidated), and all appeals have been exhausted so that the decision has become final it will inform WIPO162 who will record and publish the fact.163 Once a design has been invalidated in a designation, WIPO will not accept a renewal fee for that designation.164 3.4.5.1 Invalidation of the UK designation In the UK, RDA s. 11ZA applies to International designs as well as to national ones. Thus, a party can file invalidation proceedings before the UK IPO. The IPO will notify the proprietor and, where necessary, require him to appoint a UK address for service. Appeals are possible in the normal way, to the Appointed Person or the Patent Court. WIPO is notified if the design is invalidated by final decision.165 The applicable version of s. 11ZA also includes a reference to the Court, so that invalidation proceedings can take place there. Presumably this was necessary as the normal remedy before the Court – rectification of the register – might be unavailable for the International register. The CPR has not been modified at the time of writing, so it is not entirely clear whether the Court must inform the Office of a finding of invalidity so that the Office can in turn inform WIPO.

159 160 161 162 163 164 165

Hague Art. 16(2). OAPI, Mexico, Korea, Russia and the US have so declared. Hague r. 21bis(1). Hague r. 21bis(4). Hague Art. 15(2), r. 20(1). Hague Art. 16(1)(vi), r. 20(2), r. 26(1)(iii). Hague r. 24(2)(d). RDR r. 17(3) & (4).

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3.4.5.2 Invalidation of the EU designation If invalidation proceedings are started before the EUIPO, they notify the proprietor directly and, if the proprietor (being from outside the EU) is required to be represented, set a deadline for appointing an EU lawyer or professional representative. As the Hague official languages are, at the time of writing, all official languages of the EUIPO, the invalidation application must be filed in the language of the International design. Thereafter, proceedings follow the same course as for invalidation of an RCD, with the possibility of appeal to a Board of Appeal and thence to the General Court.166 Once such appeals are exhausted, the EUIPO will report the invalidity to WIPO.167 If invalidity is raised as a counterclaim before a Community Design Court hearing an infringement action,168 and the design is declared invalid, the Court is required to inform the EUIPO169 which in turn is obliged to inform WIPO.170

3.5

DESIGN PROTECTION IN THE “IP5”171

3.5.1

THE US

Hague Agreement?

Yes

Search and Examination?

Yes

Multiple Designs?

No (“embodiments” only)

Grace Period?

12 months pre-filing

Deferment of Publication?

Lifetime

15 years

Protection of designs is via the design patent system. Many features of the US utility patent system therefore apply equally to designs. To be registered a design must be ornamental, novel, original and non-obvious, though the obviousness standard applied is lower than that for utility patents in practice. Designs solely dictated by function are not “ornamental” and cannot be registered. Novelty and scope of protection are both judged through the eyes of the “ordinary observer”, taking into account the prior art. In practice, most design patent trials involve a jury. 166 167 168 169 170 171

Guidelines, 12.2.2.7 Refusal. CDR Art. 106f; CDIR Art. 31(6). CDR Art. 86(1)(a). CDR Art. 86(2), (4). CDR Art. 106f. Major source: Brian W. Gray (Ed.), Industrial Design Rights: An International Perspective, 3rd Edition, Wolters Kluwer 2001.

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A design application should include a claim, though this conventionally merely refers to the drawings. The protection is generally limited to the product claimed. An application cannot include multiple different designs, though it can (without additional fees) contain multiple embodiments of the same design (in practice, closely related versions of the same design, or designs of different parts of the same whole). The US PTO searches and cites prior designs (mostly prior US design patents). Applicants are also under a general duty of candour and good faith as regards the US PTO which includes, amongst other things, a duty to disclose any prior relevant designs to the Examiner. The duty extends to all parties in the chain from the designers to the examiner, including the attorneys involved, and breach can result in severe penalties (as well as invalidity). The US PTO applies a high standard to the drawings or other representations filed, and objections are common. The same examination is applied to Hague Agreement applications as to direct national applications, so objections are common, and it becomes necessary to appoint a US patent attorney to respond to them. If allowed, the application is published (re-published in the case of a Hague application) as a design patent. The correspondence file (“file wrapper) with the US PTO is open to public inspection, and (particularly where the design is amended) statements made to the US PTO can be taken after grant to limit the scope of protection (“file wrapper estoppel”). Some designs can also be protected via the copyright system, but where the design is that of a “useful article” then only those features which can be conceptually separated from the useful aspects of the article can be protected – usually, surface ornamentation. Registration as a trade mark is also possible, but in practice it is necessary to show commercial use on a substantial scale for a substantial time, sufficient to demonstrate that the design has acquired secondary meaning as a trade mark.

3.5.2 THE EU Hague Agreement?

Yes

Search and Examination?

Multiple Designs?

Yes (unlimited, same Locarno Class)

Grace Period?

12 months pre-priority

Deferment of Publication?

Yes (30 months)

Lifetime

25 years

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Designs can be protected in the EU: 1. 2. 3. 4.

Via national design registrations in each State; By a Community Design registration By an International Design designating each State separately; and/or By an International Design designating the EU.

The substantive law is the same as that in the UK. Most national offices do not search and examine. Registration at the EU level is cheaper than through the national level, and the EU and national laws are substantially aligned so there is generally no advantage to the national level. Some EU countries (notably France and Germany) allow enforcement of designs of spare parts, however, so national registrations may be desirable where protection of spare parts are important. The Community Design registration system is unexamined and very fast. Publication can be as soon as two days after filing, though it can be voluntarily deferred on filing for up to 30 months from filing or priority. Multiple designs in a single application are possible where either: 1. All are for “ornamentation”; or 2. All are for products in the same Locarno class. The fees for the second through tenth designs in a Community Design application are half those payable for the first, and those for the 11th onwards are a quarter of those for the first. In each design, there is a maximum of seven representations. There is three-year protection against copying for designs from first disclosure in the EU, via the Unregistered Community Design system. Dual protection of designs by copyright and/or trade mark is also possible. The EUIPO frequently raises objections, however. Although EU trade mark and copyright laws are notionally harmonised, it is easier to protect designs as trade marks or by copyright in some countries than in others. EU unfair competition law is unharmonized, and can also protect designs at least against close copying.

3.5.3 CHINA PRC Hague Agreement?

Search and Examination?

Multiple Designs?

Yes (up to 10, similar or “set”)

Grace Period?

No (exceptional circs only)

Deferment of Publication?

Yes (“delayed examination” up to 3 years)

Lifetime

15 years

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A protectable design is the shape, pattern, colours or combinations thereof, of the whole or part of an industrially applicable product, creating an aesthetic effect. In practice, as designs must be novel over combinations of prior designs, there is a form of obviousness standard. Two dimensional designs which function as indicators (e.g. trade marks) are excluded from registration. Infringement is judged through the eyes of an ordinary consumer, who is familiar with common prior designs and is relatively discerning. Protection of designs is via the design patent system. Many features of the invention patent system therefore apply equally to designs. At present China is not a member of the Hague Agreement, but seems likely to join soon. Design applications may contain up to ten designs; either of variant designs of the same product, or of different products in the same class intended to be sold or used together as a set. Applications should contain a description of the key features of the design. There is no novelty examination prior to grant. Formality examination is fairly rapid, but if deferment is requested on filing, it can be delayed by one, two or three years which also delays publication. The six-month grace period covers only certain specific prior disclosures such as disclosures in breach of confidence, or at technical conferences or international exhibitions, or in the public interest during a national emergency. Prior sales in general, or design registrations, are not covered. Proof of the prior disclosure is required on filing. Copyright protection is not available for the majority of designs, but may protect some foreignoriginating designs as “works of applied art”. Protection via unfair competition for products on the market in China is also available in principle. Trade mark registration of shape marks is possible in principle but difficult in practice.

3.5.4 JAPAN Hague Agreement?

Yes

Search and Examination?

Yes

Multiple Designs?

No (but accepted for International designs)

Grace Period?

12 months pre-filing (declare on filing)

Deferment of Publication? Lifetime

25 years

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A protectable design is the shape, patterns or colours, or any combination thereof, of a product or part of a product which creates an aesthetic impression on the eye. Purely functional designs are not registrable. Designs must be novel and creative compared to prior designs. “Related designs” can be filed up to ten years after the principal, basic or parent design without being invalid over the principal. They are therefore a convenient way of protecting updated versions of an original design. Like former UK and current Indian “associated designs” (for which see 2.9.5.4) and Korean “related designs”, they expire with, and can only be assigned together with, the principal. Multiple design applications are expected to become possible in 2021. The “creativity” requirement is a kind of “obviousness” threshold – a design which could easily have been created by a person of ordinary skill is invalid. Designs are registered for particular products, and the scope of the registration extends to identical or similar designs of identical or similar products. Japanese drawing requirements are relatively strict. In particular it is usually necessary to show a 3D design from all six orthographic views. Protection is available for designs of parts of products by using suitable dashed lines. Protection against close copying is available via unfair competition law for three years for products on the market in Japan. Copyright protection is not available for the majority of designs, but may perhaps protect some relatively artistic designs. Trade mark registration of well-known shape marks is possible.

3.5.5 KOREA (REPUBLIC OF) Hague Agreement?

Yes

Search and Examination?

Yes

Multiple Designs?

No (but “related” designs)

Grace Period?

12 months pre-filing (but not earlier grants)

Deferment of Publication?

Yes (“delayed examination” up to 3 years)

Lifetime

20 years

A protectable design is the shape, pattern, colour or a combination of these applied to the whole or part of a product which produces an aesthetic visual impression. Purely functional designs are not registrable. Designs must be novel and creative compared to prior designs. The “creativity” requirement is a kind of “obviousness” threshold – a design which could easily have been created by a person of ordinary skill is invalid. 160

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Most design applications are examined for novelty, so the grant process takes about a year. However, those in certain classes containing products which show fast-changing fashions can be “partially examined” (i.e. not examined for novelty), and can therefore be registered in a matter of days. At present these are designs of products in Locarno classes 2 (clothing), 5 (textiles) and 10 (office equipment and stationery). Multiple design applications are not possible. However, “related designs” can be filed at the same time as, or up to one year after, the principal, basic or parent design without being invalid over the principal. They are therefore a convenient way of protecting variants and updated versions of an original design. Like former UK and current Indian “associated designs” (for which see 2.9.5.4) they expire with, and can only be assigned together with, the principal. Sets of articles used together can also be registered. Although there are no longer strict drawing rules, it is advisable to submit views which show a 3D design from all six orthographic views plus a perspective view. Alternatively an application can contain a CAD 3D modelling file (to represent a 3D product shape for example) or a video file (to represent an animated icon for example). Protection is available for designs of parts of products by using suitable dashed lines. The scope of the registration extends to designs creating a similar visual impression. Protection against close copying is available via unfair competition law for three years for products on the market in South Korea. Copyright protection is not available for the majority of designs, but may protect patterns which are separable from the product concerned. Trade mark registration of well-known shape marks is possible.

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3.6 DESIGN REGISTRATION IN THE G20 GROUP OF MAJOR ECONOMIES172 All G20 members are also members of the WTO (and hence parties to TRIPS), and the Paris Convention so that design protection, priority claims, and a certain standard of infringement rights are guaranteed. Beyond this, substantive and procedural law varies considerably, as indicated in the table below. Within the table, note that • • • •

•

Hague – Some countries (e.g. Italy) are members of earlier versions of the Hague Agreement; Grace Period – Many countries (e.g. China) also have more limited grace periods in case of, for example, international exhibitions or disclosures in breach of confidence; Multiples – Many countries also allow multiple designs in one application where these form “sets” – i.e. are made and/or sold and/or used together; Deferral – In some countries, there is an acceptance period which can be used to achieve deferral of registration and hence publication, typically for less than a year. In others, delay in grant for over a year may be normal, or may be achievable by applicant conduct. Unregistered – Close copying of designs may also be an act of unfair competition (e.g. Germany, France) or copyright infringement.

As design law seems to be evolving rapidly at present, the summary above cannot be relied on – it is advisable to check a standard reference173 or to consult local professionals.

172 Major sources: Brian W. Gray (Ed.), Industrial Design Rights: An International Perspective, 3rd Edition, Wolters Kluwer 2001 & Clive Thorne (Ed.) International Design Protection: A Global Handbook, 2nd Edition Globe Law, 2017. 173 Such as Katzarov’s Manual on Industrial Property https://www.katzarov-manual.com/ or Henry D. Teegarden (Ed.) Designs and Utility Models Throughout the World, Thomson Reuters (looseleaf).

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Hague (Geneva)?

Grace Period?

Life (years)

Multiples?

Deferral?

Novelty exam?

Unregistered designs?

Argentina

Australia

Brazil

180d

Canada

12m

China

12m

30m

UCD 3y

France

12m

UCD 3y

Germany

12m

100

30m

UCD 3y

India

Indonesia

Italy

12m

30m

UCD 3y

Japan

12m

Unfair comp. 3y

Korea

12m

Unfair comp. 3y

Mexico

12m

Russia

12m

Saudi Arabia

South Africa

Turkey

12m

100

30m

12m

CUCD/SUD 3y, UKUDR

12m

State/Office

Features of design protection in the G20 * Expected to introduce this within 2021.

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PART 4 SUPPLEMENTARY UNREGISTERED DESIGNS & CONTINUING UNREGISTERED COMMUNITY DESIGNS 4.1 UNREGISTERED COMMUNITY DESIGNS............................................................. 166 4.2 EFFECT OF BREXIT............................................................................................. 168 4.3

INFRINGEMENT AND COPYING.......................................................................... 169

4.4

REPAIR CLAUSE DEFENCE.................................................................................. 171

4.5

PROOF OF EXISTENCE AND PRESUMPTION OF VALIDITY...................................172

4.6

CREATION AND COMMENCEMENT OF UCD AND CUCD..................................... 173

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4.1

UNREGISTERED COMMUNITY DESIGNS

“A Community design should, as far as possible, serve the needs of all sectors of industry in the Community. Some of those sectors produce large numbers of designs for products frequently having a short market life where protection without the burden of registration formalities is an advantage and the duration of protection is of lesser significance... This calls for two forms of protection, one being a short-term unregistered design and the other being a longer term registered design.”1 CDR (Art. s)

11, 19(2), 85(2) & 110a(5)

CDR (Recitals)

15-17, 21

Withdrawal Agreement (Art. )

UK/EU TCA (Art. )

245 (ex IP.29)

Leading Cases

C-345/13 Karen Millen Fashions, C-479/12 H. Gautzsch Großhandel

Article 1 [Continuing Unregistered Community]/[Supplementary unregistered] design 1. A design which complies with the conditions contained in this Regulation is referred to as a [“continuing unregistered Community design”]/[“ supplementary unregistered design”]. 2. A design shall be protected as a [continuing unregistered Community design]/[ supplementary unregistered design], if made available to the public in the manner provided for in this Regulation. The unregistered Community design (“UCD”) is a three-year right giving protection against copied products, created by and running from a making available of the design to the public. It is created by provisions scattered throughout the EU Regulation 6/2002 on the Community Design, notably Art. 11, 19(2), 85(2) & 110a(5). Certain UK-specific features2 were implemented in the UK by the confusingly-named Community Design Regulations 2005 (the “CDR05”).3 CDR Art

Subject

11, 110a(5)

Term and commencement

19(2)

Copying

Proof of subsistence

UCD-specific provisions of Regulation 6/2002

The UCD lies conceptually between copyright (for which the prerequisite is originality and the infringement requires copying) and registered designs (for which the prerequisite is novelty and the infringement does not require copying). The same novelty and individual character standards apply 1 2 3

Regulation 6/2002 Recitals 15-17. Remedies, unjustified threats and legal professional privilege. SI 2005/2339.

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as for a registered design (with the substitution of the date of first disclosure as the reference date for judging validity against prior art, rather than the filing or priority date), but the right can only be infringed by copying, and hence cannot be asserted against those dealing with independently developed competing designs. The rights can however be enforced not only against the copiers themselves, but also against those who handle articles using the design (importers, retailers and so on). It has proved a useful weapon against copyists in, for example, the fashion sector. In other respects, a UCD behaves like a Registered Community Design or a UK Registered Design; in particular, the same validity criteria apply and the same acts infringe, and since these criteria are the same as those discussed above for UK Registered Designs (where the corresponding Article numbers of the CDR are also given), they will not be discussed again here. CDR Art.

Subject

RDA s.

Definitions “design”, “product”

Not visible parts

1B(1), (8), (9)

Novelty

1B(2), (3)

Individual Character

1B(4), (5)

Disclosure, state of the art, grace period

1B(6), (7)

Functionality, “must fit”

9, 47(1)(b)

Morality

Scope of protection

7(1), (3)

Rights conferred

7(2), 7A(1)

Defences, non-infringing acts

7A(2), (3)

Exhaustion of rights

7A(4)

Prior Use defence

110

Component parts – right to repair

7A(5)

Government use

12, Sched. 1

Grounds of invalidity

11ZA, 11ZB, 11ZC, 11ZD

25(1)(d)

Prior design

1A(2)

25(1)(g)

Prior signs & emblems

Sched. A1

27, 34

Property in design

15A

32(3)

Exclusive licensee’s right to sue

15C, 24F

UCD/CUCD/SUD provisions of Regulation 6/2002 parallel to registered designs

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4.2

EFFECT OF BREXIT

As of 1 January 2021, UCDs ceased to have effect in the UK. However, the Withdrawal Agreement4 required the UK to give continuing effect to all UCDs which already existed at IP Completion Day (1 January 2021) for the balance of their lifetime, and to do so the government created a Continuing Unregistered Community Design (“CUCD”) by implementing the CDR as UK domestic legislation under the Withdrawal Act, but with heavy amendment to remove the registered design content and EU references, and add provisions creating UK court jurisdiction, applying UK property law and so on. These amendments were made by Schedule 2 of the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019.5 Amendments to similar effect were also made to the CDR05. The CUCD-amended versions of these are at Annex 6. Several trade bodies lobbied the Government to continue with some national equivalent of unregistered Community designs,6 and within the TCA the Government agreed with the EU to do so.7 The result was a new UK-only “mirror right” called Supplementary Unregistered Design (“SUD”), having much the same effect as UCD. This was achieved by creating a second amended version of the CDR and the CDR05 (at Annex 5), by Schedule 1 of the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019.8 The two versions are, as one would expect, similar except that CUCD applies to designs disclosed before IP Completion Day and SUD to designs applied thereafter. As both rights are governed by the CDR (as amended), decisions of the Court of Justice on UCD continue to be relevant. The CDR Recitals were not explicitly retained in UK law, but it is likely that the Courts will continue to refer to them where they give guidance on the interpretation of the Articles.

4 5 6 7 8

At Art. 57. SI 2019/338. See Musker The Future of Unregistered Community Design Right, [2018] CIPA J. 7, April 2018. At Art. 245. SI 2019/338.

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4.3

INFRINGEMENT AND COPYING

“The exclusive nature of the right conferred by the registered Community design is consistent with its greater legal certainty. It is appropriate that the unregistered Community design should, however, constitute a right only to prevent copying. Protection could not therefore extend to design products which are the result of a design arrived at independently by a second designer. This right should also extend to trade in products embodying infringing designs.”9 CDR (Art. s)

19(2)

CDR (Recitals)

UK/EU TCA (Art. )

245(1) (ex IP.29)

Leading Cases

C-479/12 H. Gautzsch Großhandel

Article 19 – Rights conferred by the [continuing unregistered Community design]/ [supplementary unregistered design 1. A [continuing unregistered Community design]/[ supplementary unregistered design] shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes. 2. A [continuing unregistered Community design]/[supplementary unregistered design] shall, however, confer on its holder the right to prevent the acts referred to in paragraph 1 only if the contested use results from copying the protected design. The contested use shall not be deemed to result from copying the protected design if it results from an independent work of creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder.

“Copying” in relation to UCD/CUCD/SUD is presumably an autonomous concept of EU design law,10 but prior to Brexit there were no indications that it had a different meaning to that applied in the UK to copyright and UK unregistered design right; namely, derivation from the protected design. Recital 21 makes it clear that independently designed products, even if identical, are not the result of copying. “Copying” does not need to result in identical or literal reproduction. By Art. 10 (a), “[t]he scope 9 Regulation 6/2002 Recital 21. 10 The same term was also used in relation to copyright infringement in the “InfoSoc” Directive 2001/29/EC on Copyright in the Information Society.

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of the protection conferred by a [continuing unregistered Community design]/[supplementary unregistered design] shall include any design which does not produce on the informed user a different overall impression.” That would be meaningless if Art. 19(2) restricted the scope to identical reproductions. Nor does it need to be “direct” (i.e. made with sight of the protected design itself). A copy of a copy of an original is an indirect copy of the original – at any rate, it certainly “results from copying the protected design”. “Copying” also does not need to be a conscious act. The notion of “subconscious copying” is well established in law, though sometimes hard to prove (or disprove) in practice. It has been said that “[i]t is unusual for a claimant to be able to adduce direct evidence that the defendant copied. Spies who were at the defendant’s elbow during the relevant time are seldom available. Generally the claimant will rely on the similarities between the copyright work and the article alleged to infringe to invite an inference of copying.”11 If there are substantial similarities and the possibility that the defendant has had access to the protected design, an inference of a possibility of copying12 exists. Another possible factor in inferring copying may be the existence of “similar fact” evidence showing previous copying by the defendant.13 The question of who bears the burden of proof of copying was considered by the CJ in Case C-479/12 Gautzsch Großhandel,14 referred from the German courts before whom disclosure and cross-examination are rarely available. The CJ held that: a) The onus of proving copying rests with the holder, whereas the onus of proving independent creation rests with the opposing party. b) However, if a design court finds that the fact of requiring that holder to prove that the contested use results from copying that design is likely to make it impossible or excessively difficult for such evidence to be produced, that court is required, in order to ensure observance of the principle of effectiveness, to use all procedures available to it under national law to counter that difficulty, including, where appropriate, rules of national law which provide for the burden of proof to be adjusted or lightened (e.g. reversed “if there are material similarities between the design and the contested use” to quote the question referred).

11 12 13 14

John Kaldor Fabricmaker v Lee Ann Fashions [2014] EWHC 3779 (IPEC) at [11], a copyright and UCD case. Though not necessarily a strong one, ibid. at [29] Mattel Inc v Woolbro (Distributors) [2003] EWHC 2412 (Ch), [2004] FSR 217. Case C-479/12, H. Gautzsch Großhandel GmbH & Co. KG v Münchener Boulevard Möbel Joseph Duna GmbH [2014] RPC 28.

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4.4

REPAIR CLAUSE DEFENCE

“… the protection granted by Community designs may cause adverse effects by removing or restricting competition on markets, as regards, inter alia, long lasting and expensive complex products such as cars, in respect of which the protection of designs that are applied to the particular component parts which make up the complex product may create a veritable captive market for those spare parts. In that context, the purpose of the ‘repair’ clause is to avoid the creation of captive markets in certain spare parts and, in particular, to prevent a consumer who has bought a long lasting and perhaps expensive product from being indefinitely tied, for the purchase of external parts, to the manufacturer of the complex product.”15 CDR (Art. s)

110

CDR (Recitals)

UK/EU TCA (Art. )

–

Leading Cases

C-397/16 & C-435/16 Acacia Srl, C-500/14 Ford v Wheeltrims

RDA s.

7A(5)

Article 110 – Transitional provision 1. Protection as a [continuing unregistered Community design]/[supplementary unregistered design] shall not exist for a design which constitutes a component part of a complex product used within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance. For visible component parts, such as car body panels, the EU Council found it almost impossible to reach a political agreement between car-producing countries such as France and Germany and consumerist countries such as the UK. However, in the end, a compromise position was defined in CDR Art. 110, which is a defence or a non-infringing act rather than a ground of invalidity. The UK adopted a similar amendment for registered designs.16 In BMW v Round17 Arnold J. pointed out that the CDR Article misses out some text which is present in the corresponding Recital 13. He held that the recital wording applies, so that the defence is available only in relation to components which are “dependent” in appearance, and hence not to alloy wheels. However the CJ, in Joined Cases C-397/16 Audi v Acacia & Pneusgarda & C-435/16 Acacia, Rolando D’Amato & Porsche, held to the contrary – the defence applies to all component parts whether “dependent” or not. BMW v Round is therefore no longer good law. 15 Joined Cases C-397/16 & C-435/16 Acacia at [50]. 16 RDA s. 7A(5), discussed above. 17 Bayerische Motoren Werke v Round and Metal Ltd [2012] EWHC 2099 (Pat), [2013] FSR 18.

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In those cases, the CJ indicated that in order to rely on the ‘repair’ clause contained in that provision, the manufacturers and sellers of a replacement part are under a duty of diligence as regards compliance by downstream users with the conditions that the part should only be used for repair, and that the repair should be to restore the original appearance. The latter criterion meant that that “the replacement part must have an identical visual appearance to that of the part which was originally incorporated”. In Case C-500/14 Ford v Wheeltrims the CJ held that Art. 110 only creates a defence to design infringement, not a freestanding right to copy. Thus, if (as in that case) a component part carries a registered trade mark, Art. 110 gives no right to reproduce the mark. Given that in the Acacia Cases C-397/16 & C-435/16 the CJ held that only identical reproduction is permitted by Art. 110, it might be thought that the combined effect of these cases is to make it legally impossible to reproduce parts which incorporate a registered trade mark. Recognising this difficulty, the Advocate-General in the Acacia cases opined that merely affixing a trade mark did not change the appearance of a component part.18 Whilst that might perhaps have been true of the marks in that case, it cannot be true in every case – for example, where the shape of the entire component is registered as a trade mark.19

4.5

PROOF OF EXISTENCE AND PRESUMPTION OF VALIDITY

“… the different procedures provided for… with regard to… an unregistered Community design arise from the need to determine, with regard to the latter, the date as from which the design at issue is covered by the protection under that regulation and specifically what is covered, which, as there are no registration formalities, may be more difficult to identify in the case of an unregistered design than for a registered design.”20 CDR (Art. s)

Article 85 Presumption of validity – Defence as to the merits 2. In proceedings in respect of an infringement action or an action for threatened infringement of a [continuing unregistered Community design]/[supplementary unregistered design], the design court shall treat the [continuing unregistered Community design]/[supplementary unregistered design] as valid if the right holder produces proof that the conditions laid down in Article 11 have been met and indicates what constitutes the 18 Opinion of Advocate General Saugmandsgaard Øe in Joined Cases C-397/16 & C-435/16 at [108]. 19 Like the car radiator grille in Case T-128/01 DaimlerChrysler v OHIM. 20 Case C-345/13 Karen Millen Fashions v Dunnes at [43].

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individual character of his [continuing unregistered Community design]/[supplementary unregistered design]. However, the defendant may contest its validity by way of a plea or with a counterclaim for a declaration of invalidity. Although unregistered and unexamined, the right is presumed valid if the proprietor proves the date and circumstances of the qualifying disclosure which commences the right, and indicates where the individual character lies. The meaning of the second of these requirements is discussed by the CJ in Case C-345/13 Karen Millen Fashions v Dunnes, according to which it is only necessary to indicate what is the design being asserted (which part and which features of the product), rather than to prove that the design actually has individual character – an impossible task. The presumption is rebuttable in an invalidity defence plea or counterclaim before the competent design Courts.

4.6

CREATION AND COMMENCEMENT OF UCD AND CUCD

“I do not agree that this view is sufficiently free from doubt such that the two points of law are collectively acte clair.”21 CDR (Art. s)

11(2), 110a(5)

UK/EU TCA (Art. )

247

Withdrawal Agreement (Art. )

Article 11 – Commencement and term of protection of the continuing unregistered Community design 1. A design which meets the requirements under Section 1 shall be protected by a continuing unregistered Community design for a period of three years as from the date on which the design was first made available to the public within the European Union. 2. For the purpose of paragraph 1, a design shall be deemed to have been made available to the public within the European Union if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the European Union. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.

21 Beverly Hills Teddy Bear v PMS [2019] EWHC 2419 (IPEC), HHJ Hacon at [58].

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Article 110a 5. ... Pursuant to Article 11, a design which has not been made public within the territory of the Community shall not enjoy protection as a continuing unregistered Community design. Article 3 – Definitions For the purposes of this Regulation: (ab) “European Union” means the countries that were part of the European Union immediately before IP completion day;22

4.6.1 CREATION AND DESTRUCTION OF UCD/CUCD/SUD BY AVAILABILITY TO THE RELEVANT PUBLIC The act which creates and commences an unregistered Community design and its two UK successor rights, CUCD and SUD, is making the design available to the relevant public. If the same design was already available to the relevant public through an earlier disclosure, the unregistered Community design lacks novelty and is invalid. In this respect, the unregistered Community design resembles registered designs, for which “protection is conferred by way of registration upon the right holder for those design features of a product, in whole or in part, which are shown visibly in an application and made available to the public by way of publication or consultation of the relevant file”, 23 and which are similarly invalid over earlier publicly available designs – both are species of the “patent bargain” by which the public grants protection only to those who bring it something new. The type of disclosure which either creates or destroys an unregistered Community design is one which is non-confidential and, “in the normal course of business, … could reasonably have become known to the circles specialised in the sector concerned, operating within” the relevant territory (the EU for unregistered Community designs and CUCDs; the UK or a qualifying country for SUDs).

22 An error, as discussed below. 23 Directive 98/71, Recital (11).

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Disclosure No Before 1st disclosure? Yes Yes Confidential? No

No Could have become known to circles?

Yes Not Available

Available Figure 6: Availability to the Public – UCD/CUCD/SUD

4.6.2 LOCATION OF THE RELEVANT PUBLIC 4.6.2.1 The difference between the public for CUCD and that for SUD The precise location of the relevant public will rarely matter much. Few things that come to the attention of the trade within the EU escape notice in the UK, and vice versa. However, there is a difference in the definitions for UCD and CUCD and for SUD. For UCD, the relevant public is that within the EU. For designs which existed at withdrawal day, that is the public within the EU (including the UK).24 It appears that, unlike the public for registered designs under the RDA, the EU does not include the other European Free Trade Area countries.25 24 Regulation 6/2002 CUCD version Art. 3(ab); Regulation 6/2002 SUD version Art. 7(2). 25 Apparently whilst Directive 98/71 (under which the RDA was amended) was adopted as an EEA text, the same

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Disclosures after IP Completion Day are relevant only to SUD, and for these the relevant public is that within the UK or a qualifying country or territory.26 At the time of writing there do not appear to be any qualifying countries or territories. 4.6.2.2 The CUCD Error Article 7 – Disclosure 1. For the purpose of applying Articles 5 and 6, a continuing unregistered Community design shall be deemed to have been made available to the public if it has been published, or exhibited, used in trade or otherwise disclosed, before the date referred to in Articles 5(1) (a) and 6(1)(a) except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union. Article 11 – Commencement and term of protection of the continuing unregistered Community design 1. A design which meets the requirements under Section 1 shall be protected by a continuing unregistered Community design for a period of three years as from the date on which the design was first made available to the public within the European Union. 2. For the purpose of paragraph 1, a design shall be deemed to have been made available to the public within the European Union if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the European Union. Article 3 Definitions For the purposes of this Regulation: (ab) “European Union” means the countries that were part of the European Union immediately before IP completion day; There is an error in the final text of Regulation 6/2002 in the CUCD version, which affects at least designs first disclosed in the Brexit implementation or transitional period (i.e. between withdrawal at 11pm on 30 January 2020 and IP completion at 11pm on 31 December 2020). The text of the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 201927 created a definition of the EU for CUCD which referred to the EU as it was immediately before UK withdrawal – i.e. the EU including the UK. The relevant public for CUCD purposes would therefore have included the UK public. was not true of the Regulation 6/2002, see Case T-527/14 Paul Rosenich (concerning the Trade Mark Regulation but the same applies for designs). 26 Regulation 6/2002 SUD version Art. s 11(2), 7(2) & 3(d). 27 SI 2019/638, at Regulation 6/2002 CUCD version Art. 3(ab).

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However, when the Withdrawal Agreement was reached, very late in the day, there was evidently a global search-and-replace operation to replace references to “exit day” with references to “IP Completion Day”, effected by the Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020.28 Whilst this achieved the desired effect for dating purposes, it had the effect of defining the EU as being the EU minus the UK, which had left 11 months earlier. If taken literally, this would mean that at for least those designs disclosed within the implementation period, the UK public must be disregarded and only the public in the EU27 taken into account. Disclosures in that period which would not come to the attention of the relevant circles in the EU27 would therefore neither create nor destroy CUCD, even if they came to the attention of the UK circles – a manifestly absurd result for a UK right. In fact, it is not even clear that the problem is limited to disclosures within the transitional period – the erroneous definition of the EU applies generally. 4.6.2.3 The SUD Error Article 7 – Disclosure 1. Subject to paragraph 4, for the purpose of applying Articles 5 and 6, a design shall be deemed to have been made available to the public if paragraph 2 or 3 applies. 2. This paragraph applies where before IP completion day, the design was published or exhibited, used in trade or otherwise disclosed except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union. At least the CUCD error will cease to have much relevance after the expiry of the last CUCD in 2024. For SUD, an equivalent difficulty exists which is capable of having a longer term effect, again arising from the last-minute adoption of the Withdrawal Agreement. In its original form as created by the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, the SUD version of the CDR referred to the public in the EU for prior disclosures occurring before exit day. This was not amended to take account of the Withdrawal Agreement. That leaves open the question whether the EU intended is the EU before exit day (including the UK), the EU before IP Completion day (not including the UK) or the EU at the time of the relevant disclosure (i.e. not including the UK for disclosures within the implementation period). The “correct” reading for SUD, as for CUCD, is that the EU refers to the EU as it stood immediately before exit day, including the UK. Any other reading excludes the public within the UK and leads to the inappropriate result that a SUD could be valid in the UK even though prior disclosed in a way known to the relevant public in the UK. Fortunately, as mentioned above, it will be rare 28 SI 2020/1050.

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to find a disclosure known to the EU public but not the UK public or vice versa. Unfortunately, should that rare situation arise there is no definition of the EU within the CDR (SUD version), and nothing in the Statutes appears to assist.

4.6.3 LOCATION OF THE RELEVANT DISCLOSURES 4.6.3.1 The state of the law concerning UCD Whilst it is clear that prior invalidating disclosures can take place outside the relevant territory, provided they would come to the attention of the circles therein, 29 there is unfortunately still some confusion over the geographical location of the kind of disclosures that start the lifetime of an unregistered Community design. Inevitably, this also affects the two UK successor rights, CUCD and SUD, though to different extents. The confusion arose as a result of a change of purpose during the passage of Regulation 6/2002. The original 1993 draft of the Regulation, following the Commission’s 1991 Green Paper, used a single date of reference for prior publications (now within Art. s 5(1)(a) & 6(1)(a)) and for the disclosures that would create and commence an unregistered Community design. That date was the date of the disclosure which would have come to the attention of the circles specialised in the sector concerned, operating within the Community. The same language still appears, separately, in Art. 7 (for prior disclosures) and in Art. 11 (for creation of unregistered Community designs). However, there was a lengthy hiatus between the original proposal and the final passage of the Regulation. Many changes were made in the meantime to the parallel Design Directive 98/71, and to incorporate these the original Regulation proposal was withdrawn and an amended proposal was put forward which adopted a different approach to commencement of UCD. It is clear from the preparatory materials of the EU Council working group that that some Member States opposed the principle of an unregistered design until very late in the drafting, and that they (and some others) wanted greater certainty as to its commencement date. In the Commission’s explanatory Memorandum accompanying the amended proposal, they indicated that “This notion, when used in order to define the point in time from which the unregistered design right conferred may be invoked, does no longer coincide with the notion used in Art. 8 [now 7] in order to define the point in time at which the requirements for protection must be assessed, as only disclosures taking place within the Community are relevant.” [Emphasis added.] Two separate reference dates were therefore contemplated – the date of first relevant disclosure anywhere for prior art reference purposes, and the date of first relevant disclosure within the EU for commencement of protection.

29 If the point was ever in doubt it was settled by the CJ in C-479/12 H. Gautzsch Großhandel at [33], [36] and answer to question 2.

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Ultimately, the final version of Art. 11 omits the word “therein”, which had limited UCD to disclosures within the EU. The CDR as enacted therefore had the following effects if read literally: 1. A disclosure anywhere in the world could be invalidating prior art against a UCD; 2. But only if it took place before the date of first disclosure of the UCD anywhere in the world. 3. It was therefore impossible for a designer to invalidate their own UCD by prior disclosure, since the disclosure was judged against its own date and therefore could not anticipate itself. 4. The same disclosure, anywhere in the world, would start the UCD right. All of these disclosures, of course, had to be of the kind which would have come to the attention of the circles specialised in the sector concerned, operating within the Community. Some, however, considered that the Commission’s intention to limit Art. 11(2) to only disclosures within the territory of the EU had survived the amendments made during passage, 30 so as to retain two different types of disclosure date – the date of first disclosure which would come to the attention of European circles, and the date of first disclosure within the EU which would come to the attention of European circles. When new Member States joined the EU in May 2004, the Accession Treaty inserted a transitional provision (Art. 110a) into the CDR, within which the second sentence read “Pursuant to Article 11, a design which has not been made public within the territory of the European Union shall not enjoy protection as a continuing unregistered Community design.” Whatever the ambiguities within Art 11(2), if this is read literally as referring not just to transitional disclosures within the new States but to all disclosures, then it is clear that only disclosures within the EU could now commence UCD. That leaves open the case of a design which is first disclosed outside the EU in a manner which would come to the attention of European circles, and subsequently disclosed within the EU in a manner which would come to the attention of European circles. Reading all the provisions literally would produce the following effects: 1. A disclosure anywhere in the world could be invalidating prior art against a UCD; 2. But only if it took place before the date of first disclosure of the UCD anywhere in the world. 3. It was therefore impossible for a designer to invalidate their own UCD by prior disclosure, since the disclosure was judged against its own date and therefore could not anticipate itself. 4. That first disclosure, anywhere in the world, would not start the UCD right if it was outside the EU. 5. But the first subsequent disclosure within the EU would do so.

30 For example, Victor M. Saez, The unregistered Community design, [2002] EIPR, 24(12), 585-590.

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In other words, the date for assessing validity of a UCD does not coincide with the date of commencement of its term. The first disclosure in any country (like the first filing of a design application in any Convention country), equates to a “priority date” for assessing prior art, and the first disclosure in the EU (like the first filing of a design application in the EUIPO) equates to the filing date which creates and commences the design right. This is referred to as the ‘split date’ view in Beverly Hills Teddy Bear v PMS.31 It will be seen that this is in fact what the Commission’s amended proposal was intended to achieve. German case law followed a different path in Thane International Group’s application32 and later in case I ZR 126/06 Gebäckpresse II/Pastry press II in which the German Supreme Court applied the same date of reference when judging disclosures as when judging commencement of the UCD, namely the date of first disclosure within the EU, with the inevitable result that a design first disclosed outside the EU would take away the novelty of a UCD based on a later disclosure of the same design within the EU. Their precise basis for doing so is unclear, despite an ingenious attempt at explanation in Beverly Hills Teddy Bear v PMS; a referral to the CJ33 was withdrawn when the parties settled. In their written arguments to the CJ, both the UK and the EU Commission (as well as the design proprietor) had argued that the CJ judgment in Case C-479/12 H. Gautzsch Großhandel had already decided that any disclosure worldwide was sufficient, but the point is clearly still open. The position at the time of writing is therefore that it remains unclear whether or not a UCD can subsist in a design first disclosed outside the territory of the EU in such a way as to come to the attention of the circles therein. That lack of clarity is (unavoidably) taken over into CUCD by the amendments to the CDR. 4.6.3.2 Location of the relevant disclosures - CUCD Article 110a – Provisions relating to the enlargement of the Community 5. Pursuant to Article 11, a design which has not been made public within the territory of the European Union shall not enjoy protection as a continuing unregistered Community design. Article 3 – Definitions For the purposes of this Regulation: (ab) “European Union” means the countries that were part of the European Union immediately before IP completion day. 31 [2019] EWHC 2419 (IPEC) at [43]-[46]. 32 [2006] ECDR 8. 33 C‑728/19.

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The error noted above in Art. (ab) of the CUCD version of the CDR also affects Art. 110a(5) second sentence, which was (unavoidably) retained. As a result, if the CDR is taken literally, any disclosure within the UK taking place during the implementation period is not a disclosure “within the territory of the European Union” and does not enjoy CUCD. Fortunately, the Withdrawal Agreement provides solutions as regards CUCD. Article 57 – Continued protection in the United Kingdom of unregistered Community designs The holder of a right in relation to an unregistered Community design which arose before the end of the transition period in accordance with Regulation (EC) No 6/2002 shall in relation to that unregistered Community design ipso iure become the holder of an enforceable intellectual property right in the United Kingdom, under the law of the United Kingdom, that affords the same level of protection as that provided for in Regulation (EC) No 6/2002. The term of protection of that right under the law of the United Kingdom shall be at least equal to the remaining period of protection of the corresponding unregistered Community design under Article 11(1) of that Regulation. Article 127 – Scope of the transition 1. Unless otherwise provided in this Agreement, Union law shall be applicable to and in the United Kingdom during the transition period. 6. Unless otherwise provided in this Agreement, during the transition period, any reference to Member States in the Union law applicable pursuant to paragraph 1, including as implemented and applied by Member States, shall be understood as including the United Kingdom. Article 4 – Methods and principles relating to the effect, the implementation and the application of this Agreement 1. The provisions of this Agreement and the provisions of Union law made applicable by this Agreement shall produce in respect of and in the United Kingdom the same legal effects as those which they produce within the Union and its Member States. Accordingly, legal or natural persons shall in particular be able to rely directly on the provisions contained or referred to in this Agreement which meet the conditions for direct effect under Union law. 2. The United Kingdom shall ensure compliance with paragraph 1, including as regards the required powers of its judicial and administrative authorities to disapply inconsistent or incompatible domestic provisions, through domestic primary legislation. It is clear from Art. 127 of the Withdrawal Agreement that the CDR in its unamended form applied until IP Completion day, with the UK being treated as part of the EU. That was implemented in the UK by s. 1A of the Withdrawal Act (inserted by the Withdrawal Agreement Act) which applied the European Communities Act during the implementation period, with “European Union” defined as including the UK.34 34 Withdrawal Act s. 1A(f)(ii) amending Sched 1 of the European Communities Act, which is then the definition

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Art. 57 then requires that any right created before IP Completion day must give rise to a CUCD. This is given direct effect by Art. 4, implemented in the UK by s. 7A of the Withdrawal Act (inserted by the Withdrawal Agreement Act). The CDR as amended has to be read in this light by s. 7A(3). Although this is in itself a complete answer to the CUCD error, there are others; chiefly the Inco35 jurisdiction to “read in” solutions to obvious drafting errors in legislation. To do so, the court must be “abundantly sure of three matters: 1. the intended purpose of the statute or provision in question; 2. that by inadvertence the draftsman and Parliament failed to give effect to that purpose in the provision in question; and 3. the substance of the provision Parliament would have made, although not necessarily the precise words Parliament would have used, had the error in the Bill been noticed”.36 For errors in Statutory Instruments, the accompanying Explanatory Notes can be consulted in exercising the jurisdiction, 37 and in this case they are unambiguous: Explanatory Memorandum – The Designs and International Trade Marks (Amendment, etc.) (EU Exit) Regulations 2019 2.10 … Where a UCD is in existence before exit day, rights holders will continue to have the benefit of the UK protection conferred by this right through the ‘continuing unregistered community design’. Continuing Unregistered Community design 7.5 This instrument will ensure that all UCDs which are in force when the UK leaves the EU will continue to be protected and enforceable in the UK for the remaining period of protection of the right. Explanatory Memorandum – The Intellectual Property (Amendment, etc.) (EU Exit) Regulations 2020 Why is it being changed? 2.6 The 2019 Regulations do not reflect that there is now a transition period in which EU law continues to apply in the UK – if they came into force, they would retroactively make changes

of “European Union” used within the Withdrawal Act by virtue of s. 21 thereof. 35 Inco Europe Ltd & Ors v First Choice Distribution (A Firm) & Ors, [2000] WLR 586, [2000] 2 All ER 109, [2000] UKHL 15. See also Noone, R (on the application of) v Governor of HMP Drake Hall & Anor [2010] 1 WLR 1743, [2010] 4 All ER 463, [2010] WLR 1743, [2010] UKSC 30, Livewest Homes v Bamber [2019] EWCA Civ 1174, [2020] 2 All ER 181. 36 Inco, explained in Industry-Wide Coal Staff Superannuation Scheme Co-Ordinator Ltd v Industry-Wide Coal Staff Superannuation Scheme Trustees Ltd & Anor [2012] EWHC 3712 (Ch) [2013] WLR(D) 6, at [55]. 37 Confederation of Passenger Transport UK v Humber Bridge Board & Anor [2003] EWCA Civ 842, at [].

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as from exit day; 31 January 2020. They also do not address the commitments made in the Withdrawal Agreement or provide fixes to any inoperabilities in new EU law which will be retained at the end of the transition period. 2.8 For the most part, the changes ensure that the provisions of the 2019 Regulations will apply with effect from the end of the transition period as opposed to exit day. This will ensure that, in particular, any EU IP rights arising during that period will be properly protected in the UK going forward. 7.2 The 2019 Regulations were drafted and designed to function in the event that the UK left the EU without an agreement being reached by exit day. They do not reflect the legal situation that now exists following the UK’s entry into the Withdrawal Agreement. This instrument is needed to ensure that the law properly reflects the obligations in the Withdrawal Agreement, and to ensure that it otherwise works effectively at the end of the transition period. 7.3 Because the 2019 Regulations take a similar approach to the arrangements set out in the Withdrawal Agreement, the legislative gap between the two is minimal. This instrument will ensure that the arrangements set out in the Withdrawal Agreement are fully implemented. 7.4 As the 2019 Regulations were intended to take effect on exit day, they do not take account of the transition period, or that EU law now continues to apply until the end of that period. The WAA has deferred the coming into force of instruments made under the EUWA, including the 2019 Regulations, by glossing their commencement provisions so that they refer to IP completion day instead of exit day. However, this change does not extend to other references to exit day in the 2019 Regulations (such as in transitional provisions). If those references are not updated when the 2019 Regulations come into force, the law will be changed retroactively and rights which currently exist may not be properly recognised.

4.6.3.3 LOCATION OF THE RELEVANT DISCLOSURES – SUD The position as regards SUD is a little simpler, because the SUD version of Regulation 6/2002 omits Art. 110a. As a result, there is no explicit restriction on where disclosures need take place. Omitting Art 110a altogether rather than amending it (as for CUCD) suggests deliberate intent. What that intent was is less clear. The Trade and Cooperation Agreement requires that “The duration of protection available for the unregistered design shall amount to at least three years as from the date on which the design was first made available to the public in the territory of the respective Party.” However, that cannot be read as meaning that only a disclosure in the UK can result in an unregistered design, since Art. 11 refers also to other qualifying countries or territories. The Explanatory Memorandum says that the amended Regulation will “provide that supplementary unregistered designs are protected where they are disclosed in the United Kingdom or countries or territories that are designated by statutory instrument under powers inserted into the EU Design Regulation.” However, it does not say that there will otherwise always be no protection. It might merely mean that designs disclosed in the UK are more likely to come to the attention of the circles therein than others. 183

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Much other material published during the Brexit process was similarly open-ended, partly because the UK was seeking to negotiate the issue with the EU. If the UK government and the EU Commission were correct to argue before the CJ38 that Art. 11(2) does not import any limitation on the place of a disclosure commencing UCD, then Art. 11(2) as amended to implement SUD should be read in the same way.

38 In the Beverly Hills Teddy Bear referral C-728/19.

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PART 5 COPYRIGHT PROTECTION OF DESIGNS “It really began when in the late 1960s and early 1970s it was realised by the lawyers that copyright in drawings, particularly engineering drawings, could prevent the reproduction of those drawings in three-dimensional form”1

5.1

THE INTERNATIONAL FRAMEWORK.................................................................... 186

5.2 “WORKS OF APPLIED ART”................................................................................. 188 5.3 “CUMULATION” OF COPYRIGHT AND DESIGN PROTECTION – THE EVOLVING EU CASE LAW............................................................................ 189 5.4

UK COPYRIGHT PROTECTION FOR WORKS OF APPLIED ART AND DESIGNS...... 191

5.5

INFRINGEMENT OF COPYRIGHT IN DESIGNS..................................................... 194

5.6

SECTION 51........................................................................................................203

Jacob LJ, Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, [2006] RPC 31 at [3].

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The law of copyright in the UK forms Part 1 of the Copyright, Designs and Patents Act 1988 (the “CDPA”). That Act was intended “to restate the law of copyright, with amendments… to confer a design right in original designs; to amend the Registered Designs Act 1949…” and various other matters. The radical changes it effected in design protection and in copyright protection of designs largely followed the 1986 White Paper on Intellectual Property and Innovation.2

5.1

THE INTERNATIONAL FRAMEWORK

The 1886 Berne Convention (reinforced by Part II Section 1 of TRIPS) applies universal, simple rules across all categories of works, resulting in a generally good degree of international alignment for most types of copyright work. The UK was a founder member. The Convention gives a broad-brush definition of “artistic works” which includes “works of applied art” (though their introduction in 1908 was opposed by the UK 3). However, even after their introduction into Berne’s canon of artistic works, “industrial designs” and “works of applied art” continue to be treated as exception cases, and as a result the copyright protection available to designs varies in nature and extent across the world; the Convention recognises that some States already protected such designs by registration, and permits those States to curtail the extent to which they also protect designs by copyright. The Berne Convention also allows an exception for designs to the normal “national treatment” rule (i.e. treat foreigners as you treat your own nationals). Art. 2(7) provides that “Works protected in the country of origin solely as designs and models shall be entitled in another country of the Union only to such special protection as is granted in that country to designs and models”. The courts of civil law countries such as France4 and the Netherlands,5 both of which offer generous copyright protection to all classes of design, have used this to deny copyright to authors located in less generous jurisdictions. The antidiscrimination element of EU law prevents them from doing so as against authors from other EU countries,6 but after “IP Completion Day” UK authors can no longer rely on the EU “level playing field” rules. The TCA generally requires both parties to apply “national treatment”, but allows the application of Berne Convention exceptions.7

2 3 4 5 6 7

Cmnd 9712. See Cumulative Protection for Industrial Designs, W B Cornish, 8 U. Brit. Colum. L. Rev. 219, 1973. See for example Case C-28/04 Tod’s v Heyraud [2005] ECR I-5781, [2005] ECDR 32. Apple v Samsung, District Court of The Hague judgment of 24 August 2011. Case C-28/04 Tod’s. TCA Art. 224(1).

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Source

General Rule

Exceptions for Designs

Berne Convention, 19488

“the rights of authors in their literary and artistic works.”

It shall be a matter for legislation in the countries of the Union to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected.10 It shall be a matter for legislation in the countries of the Union to determine the term of protection of… works of applied art in so far as they are protected as artistic works; however, this term shall last at least until the end of a period of 25 years from the making of such a work.11

UCC, 195212

adequate and effective protection of the rights of authors and other copyright proprietors in… artistic works, including… paintings, engravings and sculpture13

… the term of protection in those Contracting States which protect… works of applied art in so far as they are protected as artistic works, shall not be less than ten years…14

TRIPS, 199415

Members shall comply with Articles 1 through 21 of the Berne Convention16… Members shall provide for the protection of independently created industrial designs that are new or original17…

Members shall be free to meet this obligation through industrial design law or through copyright law.18 The duration of protection available shall amount to at least ten years.19

EU Design Directive, 199820

Whereas, in the absence of harmonisation of copyright law, it is important to establish the principle of cumulation of protection under specific registered design protection law and under copyright law21 … A design protected by a design right … shall also be eligible for protection under the law of copyright22 …

… whilst leaving Member States free to establish the extent of copyright protection and the conditions under which such protection is conferred,23

8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24

“…artistic works” shall include every production in the literary, scientific and artistic domain… such as… sculpture… works of applied art;9

The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State.24

Berne Convention for the Protection of Literary and Artistic Works. Berne, Articles 1 & 2(1). Berne, Article 2(7). Berne, Article 7(4). Universal Copyright Convention, UN Treaty No. 2937. UCC, Article I. UCC, Article IV. Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”), Annex 1C to the Agreement Establishing the World Trade Organization, OJ 1994 L336 p. 213. TRIPS, Article 9(1). TRIPS, Article 25(1). TRIPS, Article 25(2). TRIPS, Article 26. Directive 98/71 on the Legal Protection of Designs, OJ 1998 L 289, p28; Regulation 6/2002 on the Community Design, OJ 2003 L 236, p344. DD Recital 8, CDR Recital 32. DD Art. 17, CDR Art. 96(2). DD Recital 8, Regulation Recital 32. DD Art. 17, CDR Art. 96(2).

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5.2

“WORKS OF APPLIED ART”

Despite its importance within the Berne Convention, this term is not defined there. It is mentioned only once in UK copyright law, 25 and left undefined there too, though it appears not to include works of architecture, sculptures or paintings (which are separately recited) even if produced for commercial purposes.26 Should it be understood to include, or be limited to: • • • •

A work with a lower level of artistry than “fine art”? A work of “art” which is subsequently mass-produced? (e.g. cartoons subsequently made into toys27)? A work of art created for purpose of industrial application (i.e. mass-production)? The appearance of a useful/utilitarian article (i.e. product design)?

In Star Athletica, the US Supreme Court quoted dictionaries supporting the latter two of these: • •

art “employed in the decoration, design, or execution of useful objects;”28 “those arts or crafts that have a primarily utilitarian function, or … the designs and decorations used in these arts,”29

WIPO’s Guide to the Berne Convention (1971) gives the following examples:30 • •

“the artistic contributions of the makers of knick-knacks, jewellery, gold and silverware, furniture, wallpaper, ornaments, clothing, etc.” “… two possible sources of works of applied art: those made by craftsmen, and those produced by an industrial process”

25 In s. 18A(1)(b)(ii) concerning the lending right, at a point where one might have expected instead to see a reference to a work of artistic craftsmanship by analogy with s. 62(1)(b), 77(4)(c), 80(4)(c) or 175(4)(b)(ii) since that is the usual companion to a work of architecture in the form of a building. 26 See Guide to the Berne Convention (1971), WIPO publication No. 615(E), Bogsch A. et al, Geneva, 1978, https://www.wipo.int/edocs/pubdocs/en/copyright/615/wipo_pub_615.pdf at 2.6(g) p16. 27 As in the various UK and US Popeye™ cases, such as King Features v O&M Kleeman, (1941) 58 RPC 201 (HL). 28 Webster’s Third New International Dictionary 105 (1976). 29 Random House Dictionary 73 (1966). 30 Guide to the Berne Convention (1971), WIPO publication No. 615(E), Bogsch A. et al, Geneva, 1978, https://www.wipo.int/edocs/pubdocs/en/copyright/615/wipo_pub_615.pdf at 2.6(i) p16-17.

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5.3 “CUMULATION” OF COPYRIGHT AND DESIGN PROTECTION – THE EVOLVING EU CASE LAW Directive (Art. )

Regulation (Art. )

96(2)

UK/EU TCA (Art. )

249 (ex IP.31)

Leading Cases

C-168/09 Flos, C-683/17 Cofemel

TCA Article 249 – Relationship to copyright Each Party shall ensure that designs, including unregistered designs, shall also be eligible for protection under the copyright law of that Party as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Party. Directive Recital (8) Whereas, in the absence of harmonisation of copyright law, it is important to establish the principle of cumulation of protection under specific registered design protection law and under copyright law, whilst leaving Member States free to establish the extent of copyright protection and the conditions under which such protection is conferred;

The EU Design Directive generally impacted only registered designs. It was, for example, “without prejudice to any provisions … relating to unregistered design rights”. However, copyright was touched upon in Article 17 (and Recital 8), and their equivalents in the Community Design Regulation, to introduce “the principle of cumulation of protection”, an approach followed in France. Like Art. 2 of the Berne Convention, Art. 17 of the Directive and Art. 96(2) of the Regulation consist of a broad rule apparently requiring copyright protection, followed by an exception appearing to allow almost complete freedom to national law to derogate from the rule. When implementing the Directive in 2001, the IPO view of this provision therefore was: “The fact that the design of a product is registered must not deny copyright protection which would have been available if the design had not been registered. However this is not presently the case in UK law. There does not appear to be any requirement for amendment to the Copyright, Designs and Patents Act 1988.”31 This turned out to be over-optimistic. In the Flos case, 32 concerning a Bauhaus-style lamp, the CJ seemed to hold that “the principle of cumulation” was wide-ranging: “it is clear from the wording of Article 17 of Directive 98/71, and particularly from the use of the word ‘also’ in the 31 Legal Protection of Designs – A Consultation Paper on the Implementation in the United Kingdom of EC Directive 98/71/EC, The Patent Office, 12 February 2001 at para 49 p17. 32 Case C-168/09 Flos SpA v Semeraro Casa e Famiglia SpA [2011] RPC 10 at [37].

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first sentence thereof, that copyright protection must be conferred on all designs protected by a design right registered in or in respect of the Member State concerned.” The CJ also opined that the term of protection in the EU had been harmonised at life-plus-70 years, causing the UK Government of the time to repeal CDPA s. 52 (which had curtailed the full term of copyright protection granted by s. 12 for mass-produced works to 25 years). Flos was controversial for a while.33 Two subsequent Advocate-General Opinions took differing lines on the applicability of copyright to designs. In Case C-5/11 Donner, again concerning designer furniture, Advocate-General Jääskinen opined that “the Member States have no discretion to exclude works of applied arts and industrial designs and models, such as the items here in issue, from the scope of copyright protection. This is so because of Directive 98/71/EC on the legal protection of designs which binds the Member States to afford copyright protection in this area.” On the other hand, in Case C-169/15, Montis Design v Goossens (concerning lower-end furniture), AdvocateGeneral Campos Sánchez-Bordona’s obiter dicta stated that “it is difficult to identify when an object (in this case, an armchair or a dining chair) can be classified as an ‘artistic work’ which is capable, by virtue of its individual characteristics, of benefiting from the protection inherent in copyright … Article 17 of Directive 98/71 confers on Members States the power to decide ‘the extent to which, and the conditions under which, such a protection is conferred, including the level of originality required’, if their legislation gives protection inherent in copyright to designs and models.” Recently, the CJ has confirmed Flos. In Case C-683/17 Cofemel, concerning various items of clothing including jeans, 34 the Court of Justice indicated that for protection in the EU, “it is both necessary and sufficient that the subject matter reflects the personality of its author” and that Art. 2(1) Berne Convention applies in the EU, with the result that “literary and artistic works include every production in the literary, scientific and artistic domain, whatever the mode or form of its expression may be” that in view of the different natures of copyright and design protection” are protected. Originality, in the sense defined by CJEU case law, is the only test for protection. Highly functional designs may lack originality in this sense. In Case C‑833/18 Brompton Bicycle, the CJ held that “… copyright protection… applies to a product whose shape is, at least in part, necessary to obtain a technical result, where that product is an original work resulting from intellectual creation…”. In Cofemel, they also held that “… although under Union law the protection of drawings and models and the protection associated with copyright can be granted cumulatively to the same object, such accumulation can only be considered in certain situations.” So, not all designs automatically attract copyright protection, but the Court has not yet explained how to determine the borderline. 33 See for example Lionel Bently, The return of industrial copyright? [2012] EIPR 34(10), 654-672. 34 Following Case C-310/17 Levola concerning cheese.

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Whatever these cumulation provisions mean, their effect survives the UK withdrawal from the EU as they have a direct counterpart in the TCA.35

5.4 UK COPYRIGHT PROTECTION FOR WORKS OF APPLIED ART AND DESIGNS Section 1 Copyright and copyright works. (1) Copyright is a property right which subsists in accordance with this Part in the following descriptions of work— (a) original literary, dramatic, musical or artistic works, … (2) In this Part “copyright work” means a work of any of those descriptions in which copyright subsists. Section 4 Artistic works. (1) In this Part “artistic work” means— (a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality, (b) a work of architecture being a building or a model for a building, or (c) a work of artistic craftsmanship. (2) In this Part— “building” includes any fixed structure, and a part of a building or fixed structure; “graphic work” includes— (a) any painting, drawing, diagram, map, chart or plan, and (b) any engraving, etching, lithograph, woodcut or similar work; “photograph” means a recording of light or other radiation on any medium on which an image is produced or from which an image may by any means be produced, and which is not part of a film; “sculpture” includes a cast or model made for purposes of sculpture.

5.4.1

THE “CLOSED LIST” OF WORKS IN THE UK

As noted above, the “cumulation” provisions of the Directive and the Regulation were not included when the Directive was implemented in UK law (or afterwards). And when the “Infosoc Directive”36 was implemented in UK law, no changes to the nature of protectable works, or the definition of originality, were made, since none seemed required. Sections 1 and 4 of the CDPA are therefore unchanged since 1989, and have much in common with their equivalents in predecessor statutes.

35 At Art. 249. 36 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society

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The UK law of copyright has never extended to all “artistic works”. Historically, separate laws were enacted to protect: • • •

Engravings (1735) Sculptures (1798), and Paintings, drawings and photographs (1862)

The 1911 Copyright Act drew these separate laws together into a single statute, and added “Works of Artistic Craftsmanship”, but retained them within separate categories of artistic works. Thus until now, the UK has had a “closed list” copyright system – if something fitted into one of the statutory categories it was a protected “artistic work” under s. 4 (and its predecessors), and if not, it wasn’t. See for example Norowzian v Arks37 (“jump cut” dance) and Creation Records v News Group38 (compilation of “rock star cliché” articles). That is different to the position in many other countries, where the “open list” approach of the Berne Convention is adopted, the types of works being mentioned only as examples. “Graphic works” are protected in the UK irrespective of artistic quality, and include drawings, diagrams and plans. It might be though that the term was broad enough to capture any two dimensional designs, but since photographs are separately recited, they at least are presumably not “graphic works”. It was held39 that a fabric is not a “graphic work”, as “All the examples of a graphic work set out in the subsection are created by the author making marks on a substrate to generate an image.” By way of contrast, the only statutory classes of potentially protectable three-dimensional works within s. 4 are: • • •

Sculptures irrespective of artistic quality; Works of architecture; and Works of artistic craftsmanship.

These three classes of work are also grouped together at several points in the CDPA where threedimensional works are envisaged.40 Until 2001, sculptures and printed matter were excluded from registered design protection,41 as 37 38 39 40

[2000] ECDR 205, [2000] FSR 363. [1997] EMLR 444, [1997] EWHC Ch 370. Wrongly, in my view. Response Clothing v Edinburgh Woollen Mill (Rev 1) [2020] EWHC 148 (IPEC) at [16]. Specifically CDPA s. 62(1)(b), 77(4)(c), 80(4)(c) & 175(4)(b)(ii), though, curiously, the term “works of applied art” – undefined, but used in Berne – takes the place of sculptures and works of artistic craftsmanship in the provisions for rental and lending rights in s. 18A. 41 By RDR 1995 r. 26 and its predecessors.

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were buildings,42 with the intention that overlap between design and copyright protection should be limited to works of artistic craftsmanship, and this was in practice the case until various developments occurred in the 1960s and 1970s. However, further changes seem now to be required if UK law is to comply with EU copyright provisions as interpreted by the CJ in Levola, Cofemel and Brompton Bicycle. In particular, it is unclear whether a “closed list” system can be compliant. In the interim, a broader interpretation of “works of artistic craftsmanship” appears to be the current approach to conformity.43

5.4.2 IDEA/EXPRESSION DICHOTOMY “… it all depends on what you mean by ‘ideas’”44 TRIPS Article 9 Relation to the Berne Convention 2. Copyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such.

Although it finds no place in the CDPA, the principle that copyright does not protect ideas and that, therefore, ideas can be freely copied is honoured in UK law (perhaps more in the breach than the observance). In Designers Guild v Russell Williams (concerning a fabric pattern consisting of flowers and stripes) Lord Hoffmann stated two propositions about the distinction: 1. “The first is that a copyright work may express certain ideas which are not protected because they have no connection with the literary, dramatic, musical or artistic nature of the work… for example… an inventive concept expressed in an artistic work. However striking or original it may be, others are (in the absence of patent protection) free to express it in works of their own […]. 2. The other proposition is that certain ideas expressed by a copyright work may not be protected because, although they are ideas of a literary, dramatic or artistic nature, they are not original, or so commonplace as not to form a substantial part of the work.”45 Beyond these two propositions, however, the attitude of the UK Courts was well summarised46 by Jacob J. (as he was) in 1984 quoting US Judge Learned Hand47: “Nobody has ever been able to fix that boundary and nobody ever can.” The CJ has in recent cases signalled a greater role for the idea/expression dichotomy in copyright law.48 It remains to be seen how the UK Courts will treat this signal. 42 43 44 45 46 47 48

See Concrete Ltd’s Design Application (1939) 57 RPC 121. As in Response Clothing v Edinburgh Woollen Mill (Rev 1) [2020] EWHC 148 (IPEC). L.B. (Plastics) v Swish [1979] RPC 551 Lord Hailsham of St. Marylebone at p629, after the fashion of C.E.M Joad. [2000] UKHL 58, [2001] FSR 113. Ibcos v Barclays, [1994] FSR 275 at p291. Nichols v Universal Pictures (1930) 45 F.(2d.) 119. Case C‑833/18 Brompton Bicycle [2020] FSR 36 at [27], [31].

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Lord Hoffmann’s point about an invention having “no connection with the … artistic nature of the work” might seem to apply equally to a design depicted in an artistic work (though a design is not an “idea”). However, it is unlikely that this was his intention, because that would have been contrary to what the House of Lords had previously held in LB Plastics v Swish and BL v Armstrong, and inconsistent with the various Copyright Acts (which had for half a century contained provisions mitigating the effect of copyright protection of designs).

5.5

INFRINGEMENT OF COPYRIGHT IN DESIGNS

5.5.1

PRIMARY INFRINGEMENT OF ARTISTIC COPYRIGHT

CDPA Sections

16, 17, 18

Related Copyright Sections

100

Related UKUDR Sections

226

EU basis

Infosoc Directive 2001/29/EC, Arts 2 & 4

Leading Cases

LB (Plastics) v Swish (HL), BL v Armstrong (HL), Designers Guild v Russell Williams (HL), C-5/08 Infopaq

Section 16 The acts restricted by copyright in a work. (1) The owner of the copyright in a work has, in accordance with the following provisions of this Chapter, the exclusive right to do the following acts in the United Kingdom— (a) to copy the work (see section 17); (b) to issue copies of the work to the public (see section 18); … (d) to communicate the work to the public (see section 20); … and those acts are referred to in this Part as the “acts restricted by the copyright”. (2) Copyright in a work is infringed by a person who without the licence of the copyright owner does, or authorises another to do, any of the acts restricted by the copyright. (3) References in this Part to the doing of an act restricted by the copyright in a work are to the doing of it— (a) in relation to the work as a whole or any substantial part of it, … Section 17 Infringement of copyright by copying. (1) The copying of the work is an act restricted by the copyright in every description of copyright work; and references in this Part to copying and copies shall be construed as follows. (2) Copying in relation to a literary, dramatic, musical or artistic work means reproducing the work in any material form. This includes storing the work in any medium by electronic means. …

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(6) Copying in relation to any description of work includes the making of copies which are transient or are incidental to some other use of the work. Section 18 Infringement by issue of copies to the public (1) The issue to the public of copies of the work is an act restricted by the copyright in every description of copyright work. (2) References in this Part to the issue to the public of copies of a work are to the act of putting into circulation in the United Kingdom copies not previously put into circulation in the EEA by or with the consent of the copyright owner.

Infringement of copyright has been significantly modernised as a result of EU legislation.49 As a result, the main acts of primary infringement relevant to mass-produced designs are infringement by copying (the “reproduction right”), and by issuing copies to the public (the “distribution right”). The latter only applies to the first sale of goods in the EEA, so that if there is an infringing sale to a distributor, it is doubtful whether further downstream sales of the same articles are primary infringements (though they may instead be secondary infringements, see below). However, in Moon v Thornber, HHJ Birss (as he then was) suggested that this did not apply under certain circumstances. In that case, inter-group sales amongst the infringer’s group of companies were ignored, and the inter-group company which acted as distributor “to the public” was found to be the infringer. Infringement by performance, by showing or playing of work in public, 50 or by adaptation, 51 is not applicable to any artistic work, and there is no infringement by rental or lending to the public for “works of applied art”52 (a term derived undefined in UK law but which would appear to include sculptures and works of artistic craftsmanship, and perhaps any design protected by copyright). Infringement can occur when a “substantial part” of the work is taken. The part does not have to be a discrete part of the work – it can be something abstracted from the work.53 Substantiality is a matter of quality (i.e. importance) not quantity of the part reproduced.54 To be “substantial” the part taken has itself to pass the originality test,55 which nowadays means that it must be the author’s

49 For present purposes, most notably by the EU Information Society Directive 2001/29/EC. The WIPO Copyright Treaty (Treaty Series No. 30 (2011), Cm 8161) is relevant as the background to that Directive. 50 CDPA s. 19. 51 CDPA s. 21. 52 CDPA s. 18A, introduced to implement Directive 2006/115/EC. For the reasoning behind the exclusion see Proposal for a Council Directive on rental right, lending right, and on certain rights related to copyright, COM (90) 586 final – SYN 319, 24 January 1991, at 2.2, pp42-43, accessed on 12 December 2020 at http://aei.pitt.edu/10901. 53 Designers Guild v Russell Williams (Textiles), [2001] FSR 11 at [24]. 54 Ladbroke v William Hill [1964] 1 WLR 273 per Lord Reid at page 276, Lord Hodson at page 288 and Lord Pearce at page 293. 55 Ladbroke v William Hill [1964] 1 WLR 273 per Lord Pearce at page 293; Designers Guild v Russell Williams (Textiles), [2001] FSR 11, Lord Hoffman at [24]-26].

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own intellectual creation.56 The part concerned needs to be a substantial part of the infringed work, but does not need to be a substantial part of the infringing article; the infringing article therefore does not need to have any overall similarity to the infringed work – differences are irrelevant.57 “Authorising” infringement is itself an infringement. It involves grant or purported grant of the right to do the act complained of, but not mere enablement, assistance or encouragement.

5.5.2 SECONDARY INFRINGEMENT OF COPYRIGHT “Facts from which a reasonable man might suspect the relevant conclusion cannot be enough.”58 “The reasonable person is not a lawyer.”59 CDPA Sections

22, 23, 24, 27

Related Copyright Sections

26, 97, 99, 107, 108

Related UKUDR Sections

227, 228

Leading Cases

LA Gear v Hi-Tec Sports (CA)

Secondary infringement of copyright is a term covering various acts, but always also involving a mental element. The acts of secondary infringement by dealing in infringing articles are importing,60 selling or hiring or offering for either, exhibiting or distribution or possession in the course of business, or large-scale non-business distribution.61 These require that the infringer is dealing with something “he knows or has reason to believe is, an infringing copy of the work”. Similar knowledge requirements are scattered throughout the Act, in relation to secondary infringement of performance and moral rights and “innocent infringement” (for which see below). “Infringing copy” is here defined as something that infringes copyright, or something imported into the UK that would have infringed copyright if made here. There is also a form of “contributory infringement” by providing articles specifically designed or adapted for making copies of a work, “knowing or having reason to believe that it is to be used to make infringing copies”.62 Examples might be a mould, or perhaps a disc containing a design document.

56 C-5/08 Infopaq [2009] ECR I-6569, [2010] FSR 20 at [39] dealing with “reproduction in part” under the InfoSoc Directive 2001/29 to which the CDPA should conform. 57 Designers Guild v Russell Williams (Textiles), [2001] FSR 11, Lord Millett at [38]. 58 LA Gear v Hi-Tech Sports [1992] FSR 121 at pp.138-9. 59 FBT v Let Them Eat Vinyl, [2019] EWHC 829 (IPEC), [2019] ECDR 10 at [41]. 60 CDPA s. 22. 61 CDPA s. 23. 62 CDPA s. 24.

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5.5.3 INDIRECT COPYING, CHANGES OF FORM AND CATEGORY “It must be immaterial whether the infringing article is derived directly or indirectly from the original work. The standard is objective; the question is whether the original work or a substantial part thereof has been reproduced. If it has been, then it is no answer to say that it has been copied from a work which was itself, whether licensed or unlicensed, a copy of the original.”63 CDPA Sections

16, 17

Related Copyright Sections

4, 182A(2)

Related UKUDR Sections

226(4)

Section 16 The acts restricted by copyright in a work. (3) References in this Part to the doing of an act restricted by the copyright in a work are to the doing of it— … (b) either directly or indirectly; and it is immaterial whether any intervening acts themselves infringe copyright. Section 17 Infringement of copyright by copying. (2) Copying in relation to a literary, dramatic, musical or artistic work means reproducing the work in any material form … (3) In relation to an artistic work copying includes the making of a copy in three dimensions of a two-dimensional work and the making of a copy in two dimensions of a three-dimensional work.

5.5.3.1

Artistic Works

“The other important consideration… in any case of three dimensional copying by reverse engineering is that the plaintiff’s claim to protection… rests solely upon artistic copyright…”64 Under the CDPA65 and its predecessors,66 a three-dimensional reproduction of a two-dimensional work is an infringement and vice versa. Before the CDPA, it was also an infringement to indirectly copy design documents by copying an article made from them, without having seen the design documents.67 63 Simonds J, King Features Syndicate v O&M Kleeman [1940] Ch. 523 at p532; substantially repeated in Copinger and Skone James on Copyright, 9th ed., p. 180, itself cited with approval by Danckwerts LJ in Dorling v Honnor Marine [1965] Ch. 1 [1964] RPC 160, and (in a dissenting judgment) by Lord Griffiths in BL v Armstrong, [1986] RPC 279 at p383. 64 Interlego v Tyco, [1988] UKPC 3, [1988] RPC 343, Lord Oliver at 365. 65 CDPA s. 17(3). 66 Copyright Act 1956, s. 48(1). 67 CDPA s. 16(3). For the position under previous Acts see King Features v O&M Kleeman, (1941) 58 RPC 207 (HL), Lord Wright at p217 and, before the Court of Appeal, (1941) 58 RPC 57 at p62; the development of

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5.5.3.2 Literary Works “Were the law otherwise… everybody who made a rabbit pie in accordance with the recipe of Mrs. Beeton’s Cookery Book would infringe the literary copyright in that book.”68 Since the 1911 Act consolidated the various forms of copyright, it has generally been an infringement to reproduce a work in any material form. However, despite this broad wording, the UK Courts have so far declined to find that a three-dimensional article infringes a literary work; see, most recently, Abraham Moon v Thornber.69 The clearest reason is perhaps the existence of s. 17(3) itself. In relation to its predecessor, the Privy Council indicated70 that “infringement of copyright by three-dimensional copying is restricted to artistic copyright” – in other words, the existence of the specific rule for artistic copyright displaces what might otherwise be a general rule that form is wholly irrelevant. The older cases on point concern written, human-readable literary works which can be seen as instructions for making something, in relation to which it has been said that copyright in a recipe book is not infringed by a cake71 or a rabbit pie72 baked according to the recipe. Reverseengineering a pudding (and, presumably, a cake or a rabbit pie) to recover the recipe to which it was made has also been said not to be an infringement of literary copyright in the recipe.73 Something which is a literary work may also be an artistic work. A “graphic work”, or “artistic work” in general, is “a record of a visual image”, “irrespective of the medium in which it is recorded”. Thus in Abraham Moon v Thornber,74 concerning a written “ticket” containing instructions for making a fabric pattern, an addressee could “see the fabric design from looking at the ticket (or vice versa)”. 5.5.3.3 Files of Computer Data A file of computer data defining a design may be on a different footing to a recipe. In Autospin v Beehive, it was held (obiter but, in the writer’s opinion, correctly) that “it may well be sensible to

68 69 70 71 72 73 74

the doctrine of indirect infringement is laid out in Lord Griffiths’ dissenting judgment in British Leyland v Armstrong Patents [1986] UKHL 7, [1986] RPC 279. Pape J., Cuisenaire v Reed, [1963] VR 719 at p735. Abraham Moon & Sons Ltd v Thornber [2012] EWPCC 37, [2013] FSR 17 at [93]-[99]. Fellner questions whether this approach is correct (C. Fellner, Industrial Design Law, Sweet & Maxwell 1995, 2.171-2.174). Interlego v Tyco [1988] UKPC 3, [1988] RPC 343, Lord Oliver at p373. J & S Davis (Holdings) v Wright Health Group [1988] RPC 403 at p414 Lambretta Clothing v Teddy Smith [2003] EWHC 1204 (Ch), [2003] RPC 41 at [78], though the analogy tracks back at least as far as Cuisenaire v Reed [1963] VR 719, an Australian case, followed by the Supreme Court of Canada in Cuisenaire v South West Imports [1969] SCR 208, Richie J. at [9]. Navitaire v EasyJet [2004] EWHC 1725 (Ch), [2006] RPC 111 at [127], approved by the Court of Appeal in Nova Productions v Mazooma Games [2007] EWCA Civ 219, [2007] ECDR 6 at [48]-[52] and in SAS Institute v World Programming [2013] EWCA Civ 1482, [2014] RPC 8 at [84]. Abraham Moon & Sons Ltd v Thornber [2012] EWPCC 37, [2013] FSR 17 at [108].

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say that making a three-dimensional article from a data file in a computer (a literary work) which precisely defines the shape of the article is to reproduce it.”75 And in Abraham Moon v Thornber it was said76 (obiter) that “The only thing which makes sense to be referred to as the artist’s work in that case is the computer file recording the image. The same images, hanging on the wall of the Royal Academy in London earlier this year, are not the actual pictures drawn by the artist, they are “copies” produced from the computer file… the only record fixed in a material form of the visual image the artist created is an organised table of essentially numerical data which, when looked at directly by a layman, means nothing. The visual image is only visible, at least to a layman, as a result of using the fixed record to tell a machine (a loom or a computer) to produce something.”

5.5.4 INDIRECT PROTECTION OF 3D DESIGNS VIA THEIR PRECURSOR DESIGN DOCUMENTS Many mass-produced product designs are based on earlier design documents, which in the past were usually drawings, diagrams and plans. These were (and still are) protected as artistic works, “irrespective of artistic quality”. A defence77 which had been intended to prevent infringement by indirect copying of technical drawings failed entirely to do so,78 with the result that before the CDPA, in the 1980s, copying any article made from preliminary drawings (which, in practice, meant virtually any mass-produced article) infringed the copyright in those drawings, even though the vast majority of such articles would never have qualified for copyright, design or patent protection in their own right.79

75 76 77 78 79

Autospin (Oil Seals) Ltd v Beehive Spinning [1995] RPC at p701. Abraham Moon & Sons Ltd v Thornber [2012] EWPCC 37, [2013] FSR 17 at [105]. Copyright Act 1956, s. 9(8). The death knell was the House of Lords judgment in L.B. (Plastics) v Swish [1979] RPC 551, [1979] FSR 145 (HL). A good example is L.B. (Plastics) v Swish [1979] RPC 551, [1979] FSR 145 (HL).

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Proprietor's Design Drawing

Manufacturing (2D to 3D reproduction)

Competitor's Design Drawing

Reverse Engineering (3D to 2D reproduction)

Proprietor's Product

Manufacturing (2D to 3D reproduction)

Competitor's Product

Figure 7: Indirect infringement of copyright in design drawings by copying product

The end of the trend came with BL v Armstrong,80 in which a car exhaust system was held protectable by copyright in its drawings. When the appeal reached the House of Lords, their Lordships agreed that this had not been Parliament’s intention. The majority held that they should leave the solution to Parliament, but Lord Griffiths’ dissenting judgment proposed a solution: “I appreciate, of course, that many design drawings in industry may serve a dual purpose in that the designer employs or is employed to use his skills to produce an object which is in itself attractive and that such a design drawing may also serve the purpose of an instruction to the craftsman or machinist who is to produce the object. No doubt, this applies in the jewellery trade and also in the fashion trade. The work and labour of such designers applied to producing objects attractive in themselves is as worthy of the protection of indirect copying as the work of the artist who paints a picture. Nothing I say is intended to cast doubt upon the justification for extending the protection of indirect copying to such cases. Where, however, the draughtsman has produced a mechanical drawing or a blueprint of a purely functional object the construction of reproducing in section 3(5) should not be extended to include ‘indirect copying’ but should be limited to its natural meaning of direct copying. This construction will achieve the true purpose of Parliament by giving the protection of artistic copyright to preserve the commercial value of his work and labour and at the same time honour the intention of Parliament, expressed through the Design Copyright Act 1949, that protection should not be extended to manufacturers for purely functional objects devoid of eye appeal.”

80 British Leyland Motor Corp v Armstrong Patents Company Ltd [1986] UKHL 7, [1986] RPC 279, [1986] FSR 221.

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5.5.5 RELIANCE ON REGISTER OF DESIGNS Section 53 Things done in reliance on registration of design (1) The copyright in an artistic work is not infringed by anything done— (a) in pursuance of an assignment or licence made or granted by a person registered (i) under the Registered Designs Act 1949 as the proprietor of a corresponding design, or (ii) under the Community Design Regulation as the right holder of a corresponding registered Community design and (b) in good faith in reliance on the registration and without notice of any proceedings for the cancellation or invalidation of the registration or, in a case of registration under the 1949 Act, for rectifying the relevant entry in the register of designs; and this is so notwithstanding that the person registered as the proprietor was not the proprietor of the design for the purposes of the 1949 Act or, in a case of registration under the Community Design Regulation, that the person registered as the right holder was not the right holder of the design for the purposes of the Regulation. (2) In subsection (1) a “corresponding design”, in relation to an artistic work, means a design within the meaning of the 1949 Act which if applied to an article would produce something which would be treated for the purposes of this Part as a copy of the artistic work. (3) In subsection (1), a “ corresponding registered Community design ”, in relation to an artistic work, means a design within the meaning of the Community Design Regulation which if applied to an article would produce something which would be treated for the purposes of this Part as a copy of the artistic work. (4) In this section, “the Community Design Regulation” means Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs.

This defence permits licensees, and others, to rely on the state of the Register of Designs. If they are in good faith using the design by virtue of a licence or assignment then there is no infringement of any corresponding copyright. A licence of a registered design therefore functions by default as a licence also under any corresponding copyright. The section needs updating. The references to Registered Community Designs are inappropriate after Brexit, and there is no reference to International Designs (UK).

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5.5.6 OTHER POSSIBLE DEFENCES AND PERMITTED ACTS The CDPA now contains a plethora of defences and permitted acts. The following is a brief listing of those capable of applying to designs protected as artistic works which are not dealt with specifically elsewhere. Many are based on those listed in Art. 5 of the Information Society Directive 2001/29/EC. Defence

Section

Fair dealing by research & private study

Fair dealing by criticism, review, quotation & news reporting

Fair dealing by caricature, parody or pastiche

30A

Incidental inclusion

Fair dealing by illustration for teaching

Inclusion of work on public display

Later work by same author

In addition, the Courts have recognised the following equitable defences to copyright infringement: Defence

Case

Acquiescence and Laches

Brooker v Fisher81

Public Interest

Ashdown v Telegraph82

Finally, s. 171(3) provides a general saving for “… any rule of law preventing or restricting the enforcement of copyright, on grounds of public interest or otherwise.” This potentially appears to preserve the following: Defence

Case

Use of patent drawings

Catnic v Hill & Smith83

Non-derogation from grant, for repair purposes

BL v Armstrong84

81 82 83 84

[2008] EWCA Civ 287, [2008] FSR 26 – unusually long delay. [2001] EWCA Civ 1142, [2002] RPC 5. [1978] FSR 405 – not followed in several later cases. [1986] UKHL 7, [1986] RPC 279 – not followed in several later cases.

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5.6

SECTION 51

“These provisions (and especially section[s] 51 …) are difficult to understand without reference to their legislative history. Unfortunately the history is itself quite complicated.”85 Related Copyright Sections

4, 79

Related UKUDR Sections

213, 236, 263(1)

Leading Cases

Lucasfilm v Ainsworth (SC), BBC v Pally Screen Printing

Section 51 Design documents and models (1) It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design. (2) Nor is it an infringement of the copyright to issue to the public, or include in a film or communicate to the public, anything the making of which was, by virtue of subsection (1), not an infringement of that copyright. (3) In this section— “design” means the design of the shape or configuration (whether internal or external) of the whole or part of an article, other than surface decoration; and “design document” means any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise.

5.6.1

SCOPE AND OPERATION OF S. 51

“The unregistered right will be the right generally applicable to the design of articles. It will, however, still be necessary to retain full copyright protection for articles which qualify as artistic works in their own right in view of the UK’s obligations under the Berne Copyright Convention. In order to avoid any conflict arising from dual protection, the new right will not impinge on articles which are themselves artistic works.”86 The Government’s White Paper, following within a few months of the Lords judgment in BL v Armstrong, proposed to remove most three-dimensional articles from the protection granted by their two-dimensional design drawings. Unregistered design protection was to fill part of the gap. That intention was realised by the Section 51 defence, which does more or less what Lord Griffiths suggested in BL v Armstrong: direct or indirect copying of a design document to make another design document (i.e. 2D to 2D direct copying) remains an infringement of copying, but indirect copying to make an article to the design disclosed in those documents (i.e. indirect copying 85 Lucasfilm v Ainsworth [2011] UKSC 39, [2011] FSR 41, per Lords Walker & Collins at [15]. 86 White Paper – Intellectual Property & Innovation, Cmnd 9712, April 1986, para 3.32 p.21.

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including a 2D to 3D reproduction) or copying such an article, is not an infringement. Thus, from the point where an article is made, the chain of causation is broken – any copies downstream of the article are not infringements, whether 2D or 3D.87 The words “anything other than an artistic work or a typeface” create a small (but perhaps expanding) hole in the defence, as discussed below, through which copyright in the design document can be infringed by copying the article. This could lead to dual protection, by the design document and also by the depicted artistic work (e.g. sculpture).88 However, if one is an exact and literal copy of the other, it may lack originality.89 No

Artistic Work?

CDPA s. 4

Reproduced?

CDPA ss. 16-17

Yes No

Yes

Recording 3D design?

CDPA s. 51

Yes Yes

Of "sculpture" or W.A.C.?

CDPA s. 51

No No

Yes

Separable 2D art?

No Copyright Infringement

Flashing Badge

Figure 8: Copyright infringement and the operation of s. 51 87 BBC v Pally Screen Printing [1998] FSR 665 at p672, followed in Mackie Designs Inc v Behringer, [1999] EWHC Ch 252, [1999] RPC 717. 88 Counsel’s argument in BL v Armstrong [1986] RPC 279 at p337 responds that that this is unsurprising. 89 The Privy Council left the point open in Interlego v Tyco [1988] UKPC 3, [1988] RPC 343, Lord Oliver at p371.

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Not infringement: s. 51 Proprietor's Design Drawing

Manufacturing (2D to 3D reproduction)

Competitor's Design Drawing

Reverse Engineering (3D to 2D reproduction)

Manufacturing (2D to 3D reproduction)

Not infringement: s. 51

Proprietor's Product

Competitor's Product Figure 9: Effect of s. 51 – breaking the chain of indirect infringement of copyright

5.6.2 MEANING OF “DESIGN” “Shape and configuration are for all practical purposes considered as synonymous (..). Each signifies something in three dimensions; the form in which the article itself is fashioned.”90 The definition of “design” here (i.e. “shape or configuration (whether internal or external) of the whole or part of an article, other than surface decoration”) corresponds to the definition of a protectable unregistered design produced by the combined effects of s. 213(2) and (3)(c) (see 6.2.1), and should be given the same meaning,91 with the effect that the defence generally excludes from copyright protection the kind of subject matter potentially protectable by UKUDR – i.e. generally three-dimensional rather than purely two-dimensional designs. The words “shape and configuration” (by way of contrast with “pattern and ornament”) had a long history in registered design law at the date the CDPA was enacted, which is relevant in interpreting s. 51.92 90 Kestos v Kempat (1934) 53 RPC 139 at p.152, Luxmoore J, cited with approval by Jacob LJ in Lambretta Clothing v Teddy Smith [2004] EWCA Civ 886, [2005] RPC 6 at [17]. 91 Abraham Moon & Sons Ltd v Thornber [2012] EWPCC 37, [2013] FSR 17 at [112] specifically in relation to surface decoration but the general point applies equally to shape & configuration. 92 Lambretta Clothing v Teddy Smith [2004] EWCA Civ 886, [2005] RPC 6 at [15].

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It has been said that “All articles (even thin flat ones) are three dimensional…. There is no reason why a “design” should not subsist in what people would ordinarily call a “flat” or “2-dimensional” thing – for instance a new design of doily.”93 However, the difficulty of applying s. 51 in such cases is illustrated in the Flashing Badge case.94

5.6.3 “SURFACE DECORATION” “In our view, decoration is a matter for copyright and indeed registered designs law.”95 Surface decoration survives the exclusion of s. 51, and therefore remains potentially enforceable by copyright, because it is not within the definition of “design”. The term means the same as in s. 213 relation to UKUDR96, discussed at 6.2.7. “Decoration” excludes “surface features which have significant function”.97 Thus, it need not be strictly twodimensional, or confined to the surface.98 In Lambretta v Teddy Smith99 the Court of Appeal held that the colours of a jacket were “surface decoration” even though they went all the way through the fabric, like the message through a stick of rock.

5.6.4 “ARTICLE” The term “article” is used widely throughout the CDPA.100 The only definition in the CDPA (“article in a periodical”) is not applicable to s. 51. The same term is used in the definition of protectable designs in Part III (UKUDR) of the CDPA (see 6.2.2), and in many places concerning designs in the then-current version of the RDA, in Part IV and Schedule 4 of the CDPA. Following the logic of the Court of Appeal in Lambretta Clothing v Teddy Smith, it would be natural, both as a matter of drafting and for systematic reasons, to expect it to bear the same meaning in s. 51 as in ss. 52 (now repealed) and 53 (and perhaps also the rest of Part I)101 as well as Part III of the CDPA. The former text of the RDA contained a definition of “article” as being “any article of manufacture 93 Ibid. at [24]. See also Freddy SPA v Hugz Clothing Ltd [2020] EWHC 3032 (IPEC) at [118]. Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, [2006] RPC 31 at [74]. 94 Flashing Badge Company v Groves [2007] EWHC 1372 (Ch), [2007] FSR 36. 95 Lord Beaverbrook, Hansard HL Deb 12 January 1988 vol 491, col 1112 96 Abraham Moon & Sons Ltd v Thornber [2012] EWPCC 37, [2013] FSR 17 HHJ Birss at [112]. 97 Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, [2006] RPC 31. 98 Ibid. 99 Lambretta Clothing v Teddy Smith [2004] EWCA Civ 886, [2005] RPC 6. 100 Of the several hundred references, those relating to infringement (ss. 22-24, 27) and offences (s. 100) ought to have the same meaning as in s. 51. 101 For which, see Pensher Security Door Co. Ltd v Sunderland City Council [2000] RPC 249 (was realty an article?) and Sony Computer Entertainment Inc v Ball [2005] FSR 9 (was programmed RAM an article? Is “article” limited to “tangible substances”?).

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and includes any part of an article if that part is made and sold separately”. The “made and sold separately” requirement had been held not to cover spare parts,102 and since UKUDR was intended to cover these,103 that definition does not appear applicable to UKUDR at least.

5.6.5 MEANING OF “DESIGN DOCUMENT” A “design document” is a record of a “design” as defined above. A drawing for something other than a design as defined above is not a “design document” and therefore escapes the effects of s. 51. In Flashing Badge Co. v Groves,104 Rimer J. held that the drawings relied on incorporated both “(a) a design for an artistic work; and (b) a design for something other than an artistic work, namely an article in the nature of a badge in the same outline shape as the artistic work.” Section 51 applied to the latter but not the former. In Lambretta v Teddy Smith Jacob LJ had taken the opposite view (that where a drawing is a “design document” then s. 51 excludes all copyright in what is depicted), but he was in a minority, and the case was on very rare facts.105 It appears that the distinction, according to Rimer J., was that the artwork for the flashing badge in that case was separable from the three-dimensional badge, whereas the colourways in Lambretta could have no existence as a copyright work without the shape of the jacket. Preliminary artistic sketches by a commercial artist which included Star Wars helmets and armour were considered in Lucasfilm v Ainsworth.106 “The purpose of the McQuarrie drawings was to provide designs for the film… The drawings of the Stormtroopers were not intended to be the definitive design to which the ultimate product must be made, in the sense that a car part will be made from an exactly corresponding drawing, but it is plain that the intention was that it be followed as closely as possible. It was not some vague idea, some elements of which, or ideas from which might be adopted in the future. It was in a very real sense a design for the costume/ prop that was to appear in the film. In those circumstances I am satisfied that it was a design ‘for’ the helmet and armour and therefore a design document in relation to them.” BBC v Pally,107 the “Teletubbies” case, is to similar effect. The purpose for which the drawing or other design documents were prepared may be relevant, as the quote above from Lucasfilm suggests. However, there is no definite statement by the Courts that purpose is determinative under the CDPA.

102 Sifam Electrical Instrument Co. Ltd v Sangamo Weston Ltd [1973] RPC, subsequently confirmed by the House of Lords in Ford Motor Co. Ltd’s Design Applications, [1995] RPC 167. 103 White Paper 3.26-3.27, see also Jacob LJ, Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, [2006] RPC 31 at [8]-[11] & [126]. 104 [2007] EWHC 1372 (Ch), [2007] FSR 36. 105 As Jacob LJ explains in Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, [2006] RPC 31. 106 Lucasfilm Ltd v Ainsworth [2008] EWHC 1878 (Ch), [2008] ECDR 17, [2009] FSR 2. 107 BBC Worldwide Ltd v Pally Screen Printing Ltd [1998] FSR 665.

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NAVIGATING DESIGN LAW

In considering whether something is a “design document” the format does not matter – it is “any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise”.

5.6.6 “DESIGN DOCUMENTS” RELEVANT TO THE OPERATION OF S. 51 The s. 51 defence to copyright infringement only bites where the design document is a copyright work of some kind – otherwise there would be no infringement and no need of a defence. Further, where the design document is a literary work and not an artistic work, it is doubtful whether it could be infringed by making an article to the design or copying an article made to the design,108 (see 5.5.3.2), so the s. 51 defence is unlikely to be necessary. Thus, for s. 51 it is usually only necessary to consider design documents which qualify as “graphic works” under s. 4.

5.6.7

“ANYTHING OTHER THAN AN ARTISTIC WORK”

The exclusion is not limited to “functional” designs, as Lord Griffiths had suggested in BL v Armstrong, but applies to all kinds of 3D designs, unless the subject of the drawing or other document is itself a statutory artistic work. Thus, to survive s. 51 the design document (drawing or other copyright work) has to depict something which is itself an “artistic work”. s. 51 therefore concerns two different copyright works: the design document which is protected (e.g. a graphic work), and the design which it depicts (e.g. a sculpture or work of artistic craftsmanship). Subject to the possible effects of the CJ Cofemel case, discussed above, within the “closed list” of works of s. 4 the only candidates that could be a “shape and configuration of the whole or part of an article” and hence constitute a design are: • A sculpture; • A work of architecture;109 • A work of artistic craftsmanship; or perhaps • An engraving. 5.6.7.1 Sculptures In Lucasfilm v Ainsworth110 the Court of Appeal held that “the existence of what can loosely be described as a work of art” was “the key to the identification of sculpture.” The Imperial Trooper helmets and armour in that case were therefore not “sculptures”. Nonetheless, “it is not possible or wise to attempt to devise a comprehensive or exclusive definition of “sculpture” sufficient to determine the issue in any given case.” They therefore approved the “multi-factorial approach” adopted at first instance, as did the Supreme Court.111 One of the factors listed in Lucasfilm at first instance (and not criticised on appeal) was the “intrinsic quality of being intended to be enjoyed 108 Abraham Moon & Sons Ltd v Thornber [2012] EWPCC 37, [2013] FSR 17. 109 It is also possible that a building is not an “article”, see for example by analogy Concrete Ltd’s Application, (1940) 57 RPC 121, but the statute under which that case was decided had a definition of “article”, unlike the CDPA. 110 [2008] EWHC 1878 (Ch), [2009] EWCA Civ 1328. 111 [2011] UKSC 39, [2011] FSR 41.

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PART 5 – COPYRIGHT PROTECTION OF DESIGNS

as a visual thing”, i.e. “visual appeal in the sense that it might be enjoyed for that purpose alone, whether or not it might have another purpose as well.”112 Thus, most useful articles (furniture, clothing and so on) which are not put onto a mantelpiece or hung on a wall to be admired will not qualify as sculptures. The Supreme Court commented113 that “a three-dimensional work made by an artist’s hand”, Laddie J.’s definition in Metix v Maughan,114 “seems to be the only suggested definition or near-definition that has not attracted adverse comment from any quarter”. 5.6.7.2 Works of artistic craftsmanship “Works of artistic craftsmanship” entered UK law in the 1911 Act, and remain undefined. However, clearly both art and craftsmanship are required. The words “irrespective of artistic quality” are absent from this part of s. 4, so artistic quality may apparently be considered by the court. Though the point has been controversial, it is now clear that the artistry and the craftsmanship do not have to be embodied in the same person.115 In Lucasfilm v Ainsworth, at first instance116 it was held that (as for sculptures), the primary consideration (though not the only one) in determining whether something is a work of artistic craftsmanship is whether the maker had the conscious purpose of creating a work of art. That was interpreted in Response Clothing v Edinburgh Woollen Mill as an intention to “make something that would be aesthetically pleasing to customers”. That deals with the “artistic” side of the phrase. But craftsmanship is also required. In Hensher v Restawhile117 the House of Lords was divided on whether this limits protection to hand-made articles,118 but more recently Judge Hacon, in Response Clothing v Edinburgh Woollen Mill, concluded that it did not. His test for craftsmanship was whether someone had made an article in a skilful way, taking justified pride in their workmanship.119 In Hensher v Restawhile120 witnesses described a sofa as “flashy”, “a good commercial design”, “it’s a wonderful suite: it’s horrible, it’s vulgar and it’s brash but I am afraid, unfortunately, … the young people will go for it”. Their Lordships didn’t think it either artistic or the work of an artistcraftsman. Some other (unsuccessful) cases were Merlet v Mothercare121 (baby’s rain cape), Guild v Eskandar122 (clothing), Burge v Swarbrick123 (Australia, yacht hull).

112 113 114 115 116 117 118 119 120 121 122 123

Lucasfilm Ltd v Ainsworth [2008] EWHC 1878 (Ch), [2009] FSR 2, Factors (vi) & (vii) at [118]. Lucasfilm Ltd v Ainsworth [2011] UKSC 39, [2011] FSR 41, Lord Walker and Lord Collins at [35], [38]. Metix (UK) Ltd v G H Maughan (Plastics) Ltd [1997] FSR 718 at pp 721-722. Lucasfilm Ltd v Ainsworth [2008] EWHC 1878 (Ch), [2009] FSR 2 at [131]. [2008] EWHC 1878 (Ch), [2009] FSR 2. George Hensher v Restawhile Upholstery (Lancs) Ltd, [1975] RPC 31 (HL), [1976] AC 64. Compare Lord Reid at p77 and Viscount Dilhorne at p84 with Lord Simon of Glaisdale at p90-91. [2020] EWHC 148 (IPEC) at [38]. George Hensher v Restawhile Upholstery (Lancs) Ltd, [1975] RPC 31 (HL), [1976] AC 64. [1986] RPC 15. [2001] FSR 38. [2007] HCA 17; (2007) 234 ALR 204; 81 ALJR 950.

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In two Commonwealth cases, however, works were found to be works of artistic craftsmanship: •

•

Wildash v Klein124, wire sculptures of animals (“The present handicraft works in issue are “works of artistic craftsmanship”. They demonstrate the requisite artistic quality and are the product of the requisite craftsmanship. Each is made by hand and has artistic character that is likely to be valued or appreciated by its owner.”) But there was no infringement. Bonz v Cooke125, hand-knitted woollen sweaters. Again, the infringement claim failed.

In Response Clothing v Edinburgh Woollen Mill126 Judge Hacon applied Bonz v Cooke to give “works of artistic craftsmanship” a broad interpretation covering fabric patterns set up on a loom, in order to conform to the CJ Cofemel case discussed above. His formulation of the “artistic” part of the term was to require “an artist in that he or she used their creative ability to produce something which has aesthetic appeal”. This appears to be the first case in which the UK courts have found copyright subsistence and infringement of a work of artistic craftsmanship. In reaching his decision, the Judge recognised that the House of Lords which heard Hensher v Restawhile might have come to the opposite conclusion on subsistence if they had heard it before the Cofemel judgment. It seems likely that Mann J., who decided Lucasfilm, would have done so too. 5.6.7.3 Engravings Hi Tech Autoparts v Towergate127 concerned a rubber mat for the feet of a car driver moulded from metal plates.128 The plates were held to be an engraving. See also Wham-O v Lincoln,129 a New Zealand Court of Appeal case concerning a Frisbee™ and the prototypes and moulds for it. 5.6.7.4 Works of Architecture s. 4 defines a work of architecture as being a building or model thereof. A “design document” showing the shape and configuration of a building130 therefore escapes s. 51, as the building depicted is a work of architecture, and hence a statutory “artistic work”. An example case finding infringement of architectural drawings both by making drawings and by building houses is Cala Homes,131 and a wholly unsuccessful example is Pearce v Ove Arup.132

124 125 126 127 128 129 130 131 132

[2004] NTSC 17. Bonz Group (Pty) Ltd v Cooke [1994] 3 NZLR 216. [2020] EWHC 148 (IPEC). Hi Tech Autoparts Ltd v Towergate Two Ltd (No. 2) [2002] FSR 15, [2002] FSR 16. A widely criticised decision, but in line with Wham-O v Lincoln. It was considered without criticism by the Court of Appeal in Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, [2006] RPC 31. Wham-O Manufacturing Co v Lincoln Industries Ltd [1985] RPC 127. If a building is in fact an “article” for the purposes of s. 51. Cala Homes (South) Ltd v Alfred McAlpine Homes East Ltd [1995] EWHC 7 (Ch), [1995] FSR 818. Pearce v Ove Arup Partnership Ltd [2001] EWHC Ch 455, [2001] EWHC Ch 481.

210

PART 6 UK (“NATIONAL”) UNREGISTERED DESIGN RIGHT “It has the merit of being short. It has no other… words and phrases such as ‘commonplace’, ‘dependent’, ‘aspect of shape or configuration of part of an article’ and ‘design field in question’ are full of uncertainty in themselves and pose near impossible factual questions…”1

6.1 GENERAL.............................................................................................................212 6.2

SUBSISTENCE....................................................................................................214

6.3

ORIGINALITY...................................................................................................... 223

6.4

QUALIFICATION FOR UKUDR.............................................................................. 229

6.5

DURATION.......................................................................................................... 232

6.6

COMMENCEMENT AND FIXATION – DESIGN DOCUMENT OR MODEL................ 233

6.7

INFRINGEMENT OF UKUDR................................................................................. 234

6.8

LICENCES OF RIGHT.......................................................................................... 242

6.9

PROCEEDINGS BEFORE THE REGISTRY, AND APPEALS..................................... 243

6.10 SEMICONDUCTOR TOPOGRAPHIES................................................................ 245

Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, [2006] RPC 31, Jacob LJ at [14].

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NAVIGATING DESIGN LAW

6.1

GENERAL

6.1.1

NOMENCLATURE

This right is termed ‘design right’ within the CDPA (the RDA calls it ‘national unregistered design right’). However, since other types of unregistered design protection now exist, to minimise confusion in this book it will generally be referred to as UK Unregistered Design Right (“UKUDR”).

6.1.2

SOURCES OF LAW

UKUDR is a UK-specific right, not generally harmonised with EU law.2 It is wholly located in Part III of the CDPA. This part is short and has changed little since it was enacted.3 There are two related Statutory Instruments with self-explanatory titles: • •

The Design Right (Proceedings before the Comptroller) Rules 19894 (as amended); and The Design Right (Reciprocal Protection) (No. 2) Order 1989.5

6.1.3

BACKGROUND AND PURPOSE

Before the CDPA, the law of copyright had expanded so that the engineering drawings of functional, even purely functional articles such as exhaust pipes, gave protection against copying of those articles. In February 1986, the House of Lords (in BL v Armstrong6) decried the state of the law, and two months later the Government issued a White Paper which led to the CDPA.7 They commented (bullet points added) that: “The protection of functional articles by copyright is highly controversial. The objections most frequently raised against protection by copyright are that: • • • •

The term of protection is too long; The right given by copyright effectively results in a monopoly with no mechanism for remedying abuses; The protection is uncertain because it is not registered; and The law is at variance with international practice. …”8

However, rather than simply abolishing such protection, “the Government has concluded that

2 3 4 5 6 7 8

It is excluded from the scope of Directive 98/71, see Art.s 2 & 16 and Recital (7), and from Regulation 6/2002, see Art. 96(1). The major changes were as a result of the Intellectual Property Act 2014. SI 1989/1130. SI 1989/1294. [1986] UKHL 7, [1986] RPC 279, [1986] 1 All ER 850, [1986] FSR 221. Intellectual Property and Innovation. Cmnd 9712,April 1986, HMSO. White Paper, 3.18 p18.

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PART 6 – UK (“NATIONAL”) UNREGISTERED DESIGN RIGHT

some protection should be available to give the manufacturer who has spent money on design the opportunity to benefit from his investment, thus providing an incentive to further investment.”9 Accordingly, they elected “to provide protection on copyright principles but without the more objectionable features of full copyright protection.”10 It was intended to “be the right generally applicable to the design of articles”11 including spare parts,12 and to “apply to both functional and aesthetic designs”.13 Thus, UK unregistered design right was created to provide a relatively short-term replacement for copyright for three-dimensional works, whilst copyright protection was largely removed by s. 51 of the CDPA. Coincidentally, in 1984 the US enacted the Semiconductor Chip Protection Act14 to protect the purely functional designs of the layouts of layers of semiconductor integrated circuits, and in 1985 the EU commenced drafting their responsive Semiconductor Topography Directive.15 Whilst the immediate inspiration for UKUDR was the messy copyright law surrounding BL v Armstrong, much of its architecture was based on the Semiconductor Topography Directive, which itself was implemented in the UK as a form of UKUDR.16

6.1.4

RECIPROCAL QUALIFICATION

The government’s view was that it was not obliged, under the Berne or Paris Conventions, to apply national treatment (i.e. treat foreigners in the same way as UK nationals) to UKUDR as these rights were additional to those required by the Conventions.17 That had been the approach taken by the US in relation semiconductor topographies four years previously, 18 and the EU’s Directive.19 Accordingly, the government decided to restrict protection to nationals or residents of the UK, the EEA (on the basis that EU law does not permit discrimination) and, beyond that, only those countries which granted reciprocal protection for a range of functional articles.20

9 10 11 12 13 14 15 16 17 18 19 20

Ibid. 3.21 p19. Ibid. 3.26 p20. Ibid. 3.32 p21. Ibid. 3.27 p20. Ibid. 3.33 p21. Semiconductor Chip Protection Act of 1984 (17 USC §§ 901-914). Council Directive 87/54/EEC of 16 December 1986 on the legal protection of topographies of semiconductor products. By The Design Right (Semiconductor Topographies) Regulations 1989, SI 1989/1100. See the White Paper, 3.34. White Paper, 3.34 p21. 17 USC s. 92a(1). At Art. 3(6) & (7). Ibid. 3.34 p22.

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NAVIGATING DESIGN LAW

6.2

SUBSISTENCE

Several requirements must be met for UKUDR to subsist. These are set out in s. 213. They correspond in part to exclusions from copyright infringement under s. 51. CDPA Sections

213

Related Copyright Sections

1(1)(a), 1(3), 3(1), 51

Section 213 Design right (1) Design right is a property right which subsists in accordance with this Part in an original design. … (5) Design right subsists in a design only if the design qualifies for design right protection... (6) Design right does not subsist unless and until the design has been recorded in a design document or an article has been made to the design. …

For design right to subsist, as for copyright, the design must be original, 21 must be recorded, 22 and must be connected with a person connected with a qualifying country.23 Each of these is discussed further below. Questions of qualification nowadays rarely arise for copyright works (as most economically significant countries are members of the WTO and/or the Berne Convention and therefore qualify under CDPA s. 15924). However, it is a major issue for unregistered designs.

6.2.1

MEANING OF “DESIGN”

“… the very phrase “shape or configuration” has an antique ring about it – precisely because it is an antique phrase”25 CDPA Sections

213(2)

Related Copyright Sections

51(3)

Former RDA Sections

Former 1(1) (now repealed)

Leading Cases

Dyson v Qualtex (CA), Lambretta v Teddy Smith (CA)

21 Cf s. 1(1)(a). 22 Cf s. 3(2) for literary works – presumably the absence of anything corresponding for artistic works is because all those listed in s. 4 imply some kind of recorded form. 23 Cf s. 1(3). 24 As varied by the Copyright and Performances (Application to Other Countries) Order 2016, SI 2016/1219. 25 Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd [2004] EWCA Civ 886, [2005] RPC 6 at [15].

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Section 213 Design right (2) In this Part “design” means the design of the shape or configuration (whether internal or external) of the whole or part of an article.

This definition of “design” as “shape or configuration” is essentially the same as in s. 51(3) (for which see 5.6.2), and should be interpreted in the same way, 26 so that protection by UKUDR exists in the space from which copyright is excluded by s. 51. The phrase “shape and configuration” has also been used in versions of the RDA between 1883 and 2001 (including that at Schedule 4 of the CDPA), and should be given the same interpretation.27 Originally, both s. 213 and s. 51 referred to “any aspect of” the shape etc, but these words were deleted by the Intellectual Property Act 2014, with effect even for pre-existing designs. 28 It has been said that “Shape and configuration are for all practical purposes considered as synonymous (..). Each signifies something in three dimensions; the form in which the article itself is fashioned.”29 However, there will be difficult cases at the edges of the meanings of the words. As noted at 5.6.2, the third dimension may be small – i.e. the design may be cut from a thin sheet. In Mackie Designs v Behringer30 Pumfrey J. held that “configuration” included “the relative arrangement of parts or elements”. That definition has been followed since at first instance.31 “However, there are limits to the extent of abstraction which is permissible in respect of a configuration claim…”32 In Lambretta Clothing v Teddy Smith, where the claimant claimed infringement of UKUDR in the design of a track top, “the mere juxtaposition of colours in two dimensions [is not sufficient] to fall within the term “configuration”. The Court of Appeal agreed. It appears that “dynamic features” of a design – “the way in which particular parts of an article moved in use” – may also be protectable: Neptune v Devol.33

26 Abraham Moon & Sons Ltd v Thornber [2012] EWPCC 37, [2013] FSR 17 at [112] specifically in relation to surface decoration but the general point applies equally to shape & configuration. 27 Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd [2004] EWCA Civ 886, [2005] RPC 6 at [15]. 28 Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 (Pat), EWHC 2172, [2018] FSR 3. 29 Kestos v Kempat (1934) 53 RPC 139 at p.152, Luxmoore J, cited with approval by Jacob LJ in Lambretta Clothing v Teddy Smith [2004] EWCA Civ 886, [2005] RPC 6 at [17]. 30 Mackie Designs Inc v Behringer Specialised Studio Equipment (UK) Ltd [1999] RPC 717. 31 E.g. in Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172, [2018] FSR 3, Carr J. at [57]. 32 Ibid. at [59]. 33 Ibid. at [61].

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6.2.2 MEANING OF “ARTICLE” As noted at 5.6.4, “article” for UKUDR should have the same meaning as under s. 51 for copyright, but with the extension that every provision that applies to an article applies also to “a kit, that is, a complete or substantially complete set of components intended to be assembled into an article”.34

6.2.3 UKUDR IN PART OF AN ARTICLE UKUDR can subsist in the shape or configuration of the whole or part of an article. The design of any whole article thus also includes an almost infinite number of potential designs of parts of the article. As there is no registration to limit protection to specified designs, the effect of this becomes apparent in only infringement proceedings, as discussed below.

6.2.4 IDEA/DESIGN DICHOTOMY “Design right protects the physical manifestation of an idea, and does not protect the idea itself.”35 A case stated at too high a level of generality may relate to an unprotectable idea, rather than a design. An example was Neptune v Devol,36 where “the ‘asymmetry’ of the cutaway is no more than an idea, or method or principle of construction, expressed at a high level of generality, in an attempt to find a common feature in two quite different shapes.” As in Neptune v Devol, an “idea” will often (but perhaps not always) also be specifically excluded as a “method or principle of construction” (for which see 6.2.6).

6.2.5 EXCLUDED MATTER CDPA Sections

213(3)

Related Copyright Sections

51(3)

Former RDA Sections

Former 1(1) (now repealed)

Leading Cases

Dyson v Qualtex (CA), Lambretta v Teddy Smith (CA)

Some aspects of shape and configuration of an article are excluded. Other than “surface decoration”, these exclusions do not have equivalents in s. 51. There is therefore a “gap” – containing unprotectable designs – between what is excluded from copyright and what is included within UKUDR.

34 CDPA s. 260, inserted (with an RDA counterpart, now gone again) to overcome Dorling v Honnor Marine. 35 Rolawn Ltd v Turfmech Machinery [2008] EWHC 989 (Pat), [2008] RPC 27 at [79], followed in Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 (Pat) [2018] FSR 3 at [54]. 36 Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 (Pat) EWHC 2172, [2018] FSR 3.

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6.2.6 METHOD OR PRINCIPLE OF CONSTRUCTION “… the line between ‘shape’, ‘pattern’, and ‘configuration’, on the one hand, and mode of manufacture on the other hand, is not a very plain line, and not one which is easy to express in words.”37 CDPA Sections

213(3)(a)

Former RDA Sections

Former 1(1)(a) (now repealed)

Leading Cases

Landor & Hawa v Azure Designs (CA), Bailey v Haynes

Section 213 Design right (3) Design right does not subsist in— (a) a method or principle of construction,

A method or principle of construction is expressly excluded. This exclusion was shared with the RDA as discussed at 2.9.3.1. On any normal meaning of the word “design”, this exclusion is probably redundant, as a “design” is not a “method”.38 In Red Spider v Omega39, Mann J. equated this to the idea/expression dichotomy of copyright law: “The relevant distinction is between real, particular designs on the one hand (which are capable of protection under the section) and ideas on the other.” In that case a “streamlined” valve was held to be a method or principle of construction, whereas the 15 degree angle enabling the streamlining was not. Similar examples are analysed in Neptune v Devol. 40 6.2.6.1 Exclusion as a construction tool or defence “The closer perhaps to a patent claim the description of the design becomes, the more suspicious one has to be.”41 This exclusion is normally used as a “squeeze” to prevent overbroad claims (e.g. Rolawn v Turfmech42). “The real meaning is this: that no design shall be construed so widely as to give to its proprietor a monopoly in a method or principle of construction. What he gets is a monopoly for one particular individual and specific appearance. If it is possible to get several different Re Bayer’s Design (1907) 24 RPC 65, per Vaughan Williams LJ at p74. Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, [2006] RPC 31 at [74]. Red Spider Technology v Omega Completions Technology [2010] EWHC 59. Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 (Pat), [2018] FSR 3. Pumfrey J. in JCM Seating Solutions Ltd v James Leckey Designs Ltd, [2002] EWHC 3218 (Ch) (unrep., 2002 WL 32173180) at [29]. 42 [2008] EWHC 989, [2008] RPC 27.

37 38 39 40 41

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appearances, which all embody the general features which he claims, then those features are too general and amount to a method or principle of construction. In other words, any conception which is so general as to allow several different specific appearances as being made [sic] within it is too broad and will be invalid.”43 In Magmatic v PMS,44 the Trunki™ case, the claimant relied on a number of UKUDRs. Infringement of some of them (for example, the clasp, the tow strap, certain internal features (the straps and pouch) etc) was found, but the claim to UKUDR in the outside of the case did not succeed, the design as defined being held to be excluded from protection as a method or principle of construction. 6.2.6.2 Exclusion as a direct attack where design “merges” with method of construction A rare direct validity attack on this ground was successful in Bailey v Haynes45 which concerned a knitted plastic mesh bait bag for anglers. In this case, the evidence showed that the mesh design was essentially generated by the particular “Atlas warp stitch” knitting method used to make it. Thus, giving protection to the design would have monopolised the method or principle of construction “by Atlas warp stitch knitting”. Not without hesitation, the judge came to the conclusion that UKUDR protection was excluded.

6.2.7 “SURFACE DECORATION” CDPA Sections

213(3)(c)

Related Copyright Sections

51(3)

Former RDA Sections

Leading Cases

Dyson v Qualtex (CA), Lambretta v Teddy Smith (CA)

Section 213 Design right (3) Design right does not subsist in— (c) surface decoration.

As noted at 5.6.3, surface decoration is saved from exclusion by s. 51 as it is appropriate subjectmatter for copyright protection. To minimise overlap with UKUDR it is therefore excluded from s. 213.

43 Russell-Clarke on Copyright in Industrial Designs (7th Ed. ) Sweet & Maxwell (2005) at para 3-80, quoted in Landor & Hawa International Ltd v Azure Designs Ltd [2006] EWCA Civ 1285, [2006] FSR 22. 44 [2013] EWHC 1925 (Pat) (Arnold J). 45 [2006] EWPCC 5.

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6.2.7.1

Relationship of “surface decoration” with a surface

“… any realistic and practical construction of the words ‘surface decoration’ must cover both the case where a surface is covered with a thin layer and where the decoration like that in Brighton rock, runs right through the article.”46 For the purposes of this exclusion, surface decoration is not necessarily wholly confined to a two dimensional surface. It may apparently include features standing out slightly from a surface, though this is a question of degree, and is a value judgment for the court to make – for example, contrast Mark Wilkinson v Woodcraft47 with Neptune v Devol 48 (both concerning “cock-beading” on kitchen units). This is in accordance with what Parliament probably intended; the Minister indicated that “relief decoration applied to a surface” should remain within copyright and therefore fall outside of UKUDR.49 It may also extend below the surface. In Lambretta v Teddy Smith,50 the Court of Appeal considered whether the colour of clothing was surface decoration, and held that provided decoration was on the surface, it could also run right through the article. It is unclear that this is what Parliament intended. The original wording proposed referred to “decoration applied to the surface of the article” (emphasis added), and when this was replaced with “surface decoration” the Minister indicated that the amendment was to “merely take advantage of the simpler drafting to simplify the references to surface decoration” and emphasised “that the meaning and substance of Clause 51 have not changed.”51 6.2.7.2 Limitation implied by “decoration” Regardless of where they are located, features with a significant technical function are not “surface decoration” – Dyson v Qualtex52 (in which the ribbing on a handle which provided grip was held to be part of the shape, and so part of the design, and not surface “decoration”).

46 47 48 49 50 51 52

Jacob LJ, Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd [2004] EWCA Civ 886 [2005] RPC 6. Mark Wilkinson Furniture Ltd v Woodcraft Designs [1998] FSR 63. Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 (Pat), [2018] FSR 3 at [61]. Lord Beaverbrook, 23 February 1988, in the Lords Committee stage, Hansard HL Deb Vol 493 Col 1180. Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd [2004] EWCA Civ 886 [2005] RPC 6. Lord Beaverbrook, 29 March 1988, in the Lords Committee stage, Hansard HL Deb Vol 495 Col 619. Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, [2006] RPC 31 at [83].

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6.2.8 “MUST FIT” – DESIGNS OF INTERCONNECTIONS “The problem is that where one article has to fit another, it must of necessity be a copy of the design of that other article to some extent. That is of particular but by no means exclusive application to spare parts used to repair equipment of all kinds… should we restrict the mustfit exception to cases where the copying is essential… ? In our view that is too narrow. It would place an intolerable burden on competitors who would have to analyse every one of their designs minutely to decide whether any copied feature was really essential. Again it would convey the impression of a minor and limited exception restricted in application to cases of absolute necessity. The Bill as drafted is more flexible. It will allow competitors to operate fairly without forever looking over their shoulders and it will protect designers against unfair copying of the freestanding aspects of their original designs.”53 CDPA Sections

213(3)(b)(i)

Related Copyright Sections

RDA Sections

1C(2)

Leading Cases

Dyson v Qualtex (CA)

Section 213 Design right (3) Design right does not subsist in— (b) features of shape or configuration of an article which— (i) enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function

The UKUDR “must-fit” exception is similar to that for registered designs and SUD, but in broader terms. It excludes features of shape or configuration which “enable the article to be connected to, or placed in, around or against, another article so that either article may perform its function”. It doesn’t exclude the whole article from protection (unless all parts are “must-fit”). One effect is to exclude protection for certain aspects of spare parts, which often have to fit into the rest of a machine. The shape of the features excluded must “enable” the connection. That appears to require some degree of intention in the design process.54 It is not enough that, if shaped differently, a feature would block proper function.55

53 Lord Beaverbrook in the Lords Committee stage, Hansard HL Deb Vol 491 Cols 1112-1113, 12 January 1988. 54 Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, [2006] RPC 31 at [45]-[46]. 55 Ibid. at [38], [47].

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In Dyson v Qualtex,56 Jacob LJ approved three propositions extracted from Ultraframe v Fielding and Ocular Sciences as follows: (i) It does not matter if there are two ways of achieving the necessary fit or connection between the subject article (the first one referred to in the sub-section) and the article to which it fits or with which it interfaces. If the design chosen by the design right owner is a way of achieving that fit or interface, then it does not attract design right no matter how many alternative ways of achieving the same “fit” might be available.57 (ii) For the purposes of the sub-section, the article with which the subject article is interfacing can be part of the human body. (iii) The sub-section operates to exclude design right even if the relevant part of the design performs some function other than the function described in the sub-section – for example, it is decorative, 58 or has an additional function not falling within the provision. This additional function does not exclude the operation of the provision. In relation to “articles” which comprise many smaller “articles” the question arises – is the design of the whole deprived of protection, as well as each part individually? Dyson v Qualtex59 says not, ending the previous controversy. Thus, although UKUDR in each part of a car might be excluded, so that a rival spares manufacturer could not be sued, UKUDR in the whole car exists and could be enforced against a rival carmaker.

56 Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, [2006] RPC 31. 57 The same does not apply to the Community Directive and Regulation “must-fit” exclusions in view of the reference to reproduction in “exact dimensions” there. 58 Probably not a “function” within the meaning of the provision – see the same decision at [83]. 59 Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, [2006] RPC 31 at [21].

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6.2.9 “MUST MATCH” – DEPENDENCY OF THE PART ON THE WHOLE Because spare parts have to fit, they must to some extent be copies of the original designs. Consequently, the Bill will allow copying where there is no design freedom. This will apply whether there is no design freedom for functional or aesthetic reasons. Of course, where there is design freedom, competitors will have to create their own designs. This will ensure that designs are protected from unfair copying. But competitors will always be able to copy as much as they need to.60 “unless the spare parts dealer can show that as a practical matter there is a real need to copy a feature of shape or configuration because of some design consideration of the whole article, he is not within the exclusion. ... In the end it is a question of degree – the sort of thing where a judge is called upon to make a value judgment.”61 CDPA Sections

213(3)(b)(ii)

Related Copyright Sections

Former RDA Sections

Former 1(1)(b)(ii)

Leading Cases

Dyson v Qualtex (CA), R. v RDAT ex p. Ford (Div Ct)

Section 213 Design right (3) Design right does not subsist in— (b) features of shape or configuration of an article which— (i) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part

The so-called “must match” exclusion deals with features which “are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part.” The “integral part” wording was added during the passage of the Act “to make it absolutely clear that the exception applies only to parts of a single object. The effect would be that the exception would not apply to individual items in a set of cutlery or a suite of furniture. In other words, it would not apply to families of articles but only within a single article.”62 Thus, it was mainly aimed at spare parts (such as car panels) which must be replaced keeping the original appearance. Clearly, some kind of “visual link” or “consistent theme” between the part and the rest of the whole is necessary, but this of itself is not sufficient – the fact that the part does match does

60 Lord Young, introducing the CDP bill at second reading, Hansard HL Deb Vol 489 Col 1479, 12 November 1987. 61 Jacob LJ, Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, [2006] RPC 31 at [64]. 62 Lord Beaverbrook in the Lords Committee stage, Hansard HL Deb Vol 494 Col 109 1 March 1988. See also his comments at Vol 491 Col 1113, 12 January 1988.

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not mean that it has to match.63 Even if the public cares about the appearance of the part, “It is not enough to assert that the public “prefers” an exact copy for it will always do so… The more there is design freedom the less is there room for the exclusion.”64 The question is whether there is a dependency of the kind, or to the extent, which would make the whole article in question (including the part) radically different in appearance if the feature was a different shape. That approach followed the car spares decision of the Divisional Court in the Ford case65 under the corresponding provision of the former RDA (see 2.9.3.3) in which a large number of spare parts were considered. It follows that a feature with little visual impact will be less likely to “depend” on the appearance of another.66 The approach adopted in Dyson v Qualtex and the cases it discusses could be said to be the wrong way round. Asking whether a change in the part results in a change in the whole is really testing whether the design of the whole is dependent on the design of the part, rather than whether that of the part is dependent on that of the whole which is what the statute asks. But the question is so obscure that any clear answer is better than none.

6.3

ORIGINALITY

“The court must be satisfied that the design for which protection is claimed has not simply been copied (e.g.: like a photocopy) from the design of an earlier article. It must not forget that, in the field of designs of functional articles, one design may be very similar to or even identical with another design and yet not be a copy: it may be an original and independent shape and configuration coincidentally the same or similar. If however the court is satisfied that it has been slavishly copied from an earlier design, it is not an ‘original’ design in the copyright sense.”67

6.3.1

ORIGINALITY GENERALLY

CDPA Sections

213(1)

Related Copyright Sections

1(1)(a)

Former RDA Sections

Leading Cases

Farmers Build v Carier Bulk Materials (CA)

Other Analogues

TRIPS Art. 25(1)

63 Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, [2006] RPC 31 at [70] approving the judgment below. 64 Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, [2006] RPC 31 at [64]. 65 R. v Registered Designs Appeal Tribunal Ex p. Ford Motor Co Ltd [1994] RPC 545 – this was a decision under the then-current version of the Registered Designs Act 1949 rather than the CDPA, but the provision concerned was identically worded. The House of Lords appeal should be ignored as it does not deal with the point. 66 Ibid. at [71] adopting Laddie J’s remarks in Ultraframe v Fielding [2003] RPC 435. 67 Mummery LJ in Farmers Build v Carier Bulk Materials [1998] EWCA Civ 1900, [1999] RPC 461 adopting the approach of Aldous J. in C & H Engineering v F Klucznik & Sons Ltd [1992] FSR 421 at p427.

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213 Design right (1) Design right is a property right which subsists in accordance with this Part in an original design.

A protectable design must be both original and not commonplace in its design field. “Original” was initially interpreted here in the same sense as in the copyright case law existing at the time of passage of the CDPA.68 A borderline case was Bailey v Haynes69 in which the designer of the mesh bait bags had started with a blank sheet of paper and went through 30 or 40 theoretical designs before selecting the “Atlas warp stitch” method of construction. The judge was satisfied that he had not copied from an antecedent work and did have to decide some details (the number of repeats per centimetre, for example), and therefore that he had exercised “some (albeit rather a small) degree of skill and labour so as to enable the court to say the design was original”. It is now an open question “whether the traditional test for originality in the copyright sense – that the author has spent sufficient time, labour and skill in the creation of the work – still applies, or whether the new test in copyright law, as defined by the Court of Justice of the European Union and expressed in terms of the work comprising the expression of the author’s own intellectual creation, also now applies to s. 213” (Hacon J., Action Storage).70 Hacon J. had previously held71 that a change in the EU law of copyright can have no direct bearing on the UK law of unregistered designs, which was probably the correct view (notwithstanding Whitby 72 in which Arnold J. had assumed, without deciding, that the “author’s own intellectual creation” test now applies). There are several aspects of UKUDR which need to mesh with copyright law, but originality is not one of them – indeed, the UKUDR test already differs from copyright law due to the “not commonplace” requirement. Changes to an existing design which are “minor and localised” do not give rise to “a new originality” in the design as a whole: Ultraframe v Eurocell;73 Raft v Freestyle,74 approved in Neptune v Devol.75 Where a design is produced by making incremental changes to an existing design, a new design right subsists only in those parts of the design that have been changed. As the Privy Council have said, “[t]he prolongation of the period of statutory protection by periodic reproduction of the original work with minor alterations is an operation which requires to be 68 C&H Engineering v Klucznik & Sons Limited [1992] FSR 421, Farmers Build v Carier Bulk Materials [1998] EWCA Civ 1900, [1999] RPC 461 at p482, Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, [2006] RPC 31 at [85]. The former copyright originality requirement as applied to product designs is discussed in Interlego v Tyco, [1988] UKPC 3, [1988] RPC 343. 69 [2006] EWPCC 5. 70 Hacon J. in Action Storage v G-Force [2016] EWHC 3151 (IPEC), [2017] FSR 18. 71 In Raft Ltd v Freestyle of Newhaven Ltd [2016] EWHC 1711 at [9]. 72 Whitby Specialist Vehicles v Yorkshire Specialist Vehicles [2014] EWHC 4242 (Pat); [2016] FSR 5 at [43]. 73 [2005] RPC 7 at [129] – [131]. 74 [2016] EWHC 1711 (IPEC). 75 Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 (Pat), [2018] FSR 3.

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scrutinized with some caution”.76 Otherwise where small changes are regularly made, design right might never expire.

6.3.2 “NOT COMMONPLACE” “… although design right does indeed subsist in the design of any part of an article, there is already a built-in limit as to how far this can be taken. This is because design right does not subsist in commonplace features, and as one takes ever smaller parts of a design, sooner or later the result will be commonplace. The Bill as drafted is therefore already self-limiting to prevent it being taken to absurd limits.”77

CDPA Sections

213(4)

Related Copyright Sections

Former RDA Sections

Leading Cases

Farmers Build v Carier Bulk Materials (CA)

Other Analogues

Topography Directive 87/54/EEC, Art. 2(2)

Section 213 Design right (4) A design is not “original” for the purposes of this Part if it is commonplace in a qualifying country in the design field in question at the time of its creation; and “qualifying country” has the meaning given in section 217(3). 217 Qualifying individuals and qualifying persons. (3) In this section “qualifying country” means— (a) the United Kingdom, (b) a country to which this Part extends by virtue of an Order under section 255, or (d) to the extent that an Order under section 256 so provides, a country designated under that section as enjoying reciprocal protection.

Unlike the essentially subjective originality test, the question whether a design is “commonplace” is an objective one. It is important to note initially that the “not commonplace” requirement is quite different to novelty of a registered design. There is no requirement that the design be “new” for UKUDR protection.

76 [1988] UKPC 3, [1988] RPC 343. 77 Lord Beaverbrook in the CDPA Lords Report Stage, 1st March 1988 Hansard HL Deb Volume 494 col 126.

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6.3.2.1 Origins of the requirement The origin of the “commonplace” requirement is the EU Semiconductor Topography Directive,78 which is implemented as a kind of UKUDR as discussed above, but there is as yet no CJEU case law on its meaning. The ultimate source is the US Semiconductor Chip Protection Act 1984 which refers to designs that are “staple, commonplace, or familiar” in the field, “combined in a way that, considered as a whole, is not original”.79 According to the Court of Appeal, the same is true of UKUDR – “[t]he fact that a design is made up of features, which, individually, are commonplace would not necessarily make the design commonplace, provided that the combination is not commonplace.”80 A somewhat similar test (“variants commonly used in the trade”) existed in the RDA at the time the CDPA was enacted, but the Court of Appeal held that it was inappropriate to refer to this test in interpreting the “not commonplace” requirement.81 6.3.2.2 Meaning and test In Ocular Sciences,82 Laddie J. summarised the word “commonplace” as conveying “trite, trivial, common-or-garden or hackneyed or of the type which would excite the peculiar attention in those in the relevant art”. The Court of Appeal83 commented that “Laddie J. was right not to attempt a definition of “commonplace” in the Ocular case. Every attempt to do so is doomed to failure.” Mummery LJ suggested a methodology for determination whether a design as a whole is “commonplace”,84 which (re-ordered and simplified but keeping his numbering) is as follows:85 (2) Check whether the asserted design has been directly copied from an earlier design – if so, the design is not original and the “commonplace” issue does not arise at all; (1) Compare the design of the article in which design right is claimed with the design of other articles in the same field, as at the time of its creation; (3) Ascertain how similar the asserted design is to the design of similar articles in the same field of design made by persons other than the parties or persons unconnected with the parties; (4a) Filter out similarities where there is a causal link, such as copying, which accounts for the resemblance; 78 87/54/EC of 16 December 1986. 79 17 USC s. 902 (b)(2), see also the Washington Treaty on Intellectual Property in Respect of Integrated Circuits Art. 3(2) (not in force – not acceded to by the EU, the US or the UK). 80 Farmers Build v Carier Bulk Materials, [1998] EWCA Civ 1900, [1999] RPC 461. 81 Ibid. 82 Ocular Sciences v Aspect Vision Care [1997] RPC 289, approved by the Court of Appeal in Farmers Build v Carier Bulk Materials, Ibid. 83 In Farmers Build v Carier Bulk Materials, [1998] EWCA Civ 1900, [1999] RPC 461. 84 Ibid. 85 [1999] RPC 461.

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(4b) The closer the similarity of the asserted design and the various other designs, the more likely it is that the designs are commonplace; (5) If there are aspects of the asserted design which do not occur at all in prior designs in the relevant field, and are reproduced in the alleged infringement, the design is original and not commonplace; (4c) If a number of designers working independently of one another in the same field produce very similar designs by coincidence the most likely explanation of the similarities is that there is only one way of designing that article. In those circumstances the design in question can fairly and reasonably be described as “commonplace”. (4d) This comparative exercise must be conducted objectively and in the light of the evidence, including evidence from experts, but is a question of fact and degree to be decided by the court, not the witnesses, expert or otherwise. In Ultraframe v Clayton86 all the features excluded from UKUDR by statutory exceptions (e.g. must fit, must match, etc.) were first filtered out before applying the commonplace test. That general approach was upheld by the Court of Appeal in Dyson v Qualtex87 and Lambretta Clothing v Teddy Smith.88 A “commonplace” attack based on a single prior “article in the field” which has allegedly been copied resolves to a normal originality attack: Action Storage.89 According to Hacon J. in Action Storage,90 “Prior art which renders a design commonplace will not be obscure. The evidential burden rests on the defendant to show that it is not. ... it will be ready to hand, not matter that has to be hunted for and found at the last minute.” 6.3.2.3 The field in question The “design field in question” must be given its ordinary and natural meaning, and a reasonably broad approach is taken. “What matters are the sort of designs with which a notional designer of the article concerned would be familiar”, and those earlier designs are considered through the eyes of a person to whom the designs were ultimately intended to appeal.91 In the Semiconductor Topography Directive, the corresponding term is “the semiconductor industry”, which gives guidance to the breadth implied.92 Thus, in Lambretta v Teddy Smith the 86 87 88 89 90 91 92

Ultraframe UK Ltd v Clayton [2003] RPC 23. [2006] EWCA Civ 166, [2006] RPC 31. Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd [2004] EWCA Civ 886, [2005] RPC 6 at [58]. Action Storage Systems Ltd v G-Force Europe.Com Ltd & Anor [2016] EWHC 3151 (IPEC), [2017] FSR 18. Ibid., quoting Ultraframe (UK) Ltd v Eurocell Building Plastics Ltd [2005] EWCA Civ 761, [2005] RPC 36 at [60]. Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd [2004] EWCA Civ 886, [2005] RPC 6 at [45]. Ibid.

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design field was not limited to young man’s casual wear but included sportswear, and in Scholes Windows v Magnet93 the design field was not limited to U-PVC casement windows, casement windows or U-PVC windows but extended to all windows. 6.3.2.4 Geographical limits on the field A design must not be “commonplace” in any “qualifying country”.94 The Design Right (Reciprocal Protection) (No. 2) Order 198995 lists “qualifying countries”. For designs created between 1 October 2014 and IP Completion Day (1 January 2021), the relevant countries also included the EU/EEA. For designs created prior to 1 October 2014, designs only had to be “not commonplace” compared to earlier designs which had been marketed in the UK, or of which UK designers would be aware.96 6.3.2.5 Use of “commonplace” test as a squeeze argument In Neptune v Devol97 it was held that “the commonplace exclusion remains a useful cross-check on the breadth of a claim to infringement – the more generalised the definition of the design relied upon, the more likely it is to encompass designs which would ‘excite no peculiar attention in those in the relevant art’.” (Quoting Laddie J. in Ocular Sciences.) Thus, “It will not be often that the design of an entire article is found to be commonplace. ... Much more frequently it will be the design of part of an article that is vulnerable to an allegation that it is commonplace.” The relevant part will be the part which has allegedly been copied. Action Storage.98 6.3.2.6 Parallel UKUDR, CUCD/SUD, and registered rights As the novelty test does not apply, a parallel UKUDR may often validly subsist even where a registered design is invalid over prior art which is publicly disclosed but not “commonplace” (Mummery LJ in Farmers Build99). A simple geometrical shape can be original and “not commonplace” – Sales v Stromberg100 (the design of a “Vortex Energiser”, a triple spiral design for use with “imploded water”, alleged to be similar to Neolithic cave art) even though it would probably lack the novelty and individual character required to support a registered design.

93 94 95 96 97 98 99 100

[1999] EWCA Civ 532, [2002] FSR 172. As a result of amendments made by the Intellectual Property Act 2014. SI 1989/1294. see Fulton v Totes and Dyson Ltd v Qualtex (UK) Ltd [2006] EWCA Civ 166, [2006] RPC 31. Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172 (Pat), [2018] FSR 3. [2016] EWHC 3151 (IPEC), [2017] FSR 18. [1999] RPC 461. [2005] EWHC 1624 [2006] FSR 7.

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As a result, where UKUDR and registered designs (or CUCD/SUDs) are asserted together, the UKUDR has a better chance of overall success.101

6.4

QUALIFICATION FOR UKUDR

“… the real anomaly, if anomaly it be, is that citizens of the United States of America are not entitled to design right under the CDPA unless habitually resident in the European Union or one of the comparatively limited list of qualifying countries…”102 CDPA Sections

213(5), 217, 218, 219, 220, 221

Related Copyright Sections

Part 1 Chapter IX

Other Analogues

Topography Directive 87/54/EEC, Art. 3

Section 213 Design right (5) Design right subsists in a design only if the design qualifies for design right protection by reference to— (a) the designer or the person by whom the designer was employed (see sections 218 and 219), or (b) the person by whom and country in which articles made to the design were first marketed (see section 220), or in accordance with any Order under section 221 (power to make further provision with respect to qualification).

As noted above, the UKUDR qualification system is significantly different to that for copyright (it is based more closely on the EU Topography Directive) and involves a much shorter list of qualifying countries. It is essentially by virtue of reciprocity, not on the usual basis of “national treatment”. The qualification criteria were substantially amended by the Intellectual Property Act 2014. There is a linkage between the qualification103 and first ownership104 provisions: generally, the person(s) who would be first owner is the person(s) who counts when qualification is considered, and only persons who qualify can be first owners.

101 See Estelle Derclaye, The British unregistered design right: will it survive its new community counterpart to influence future European case law? Columbia Journal of European Law, 10 (2). pp. 265-295, available at: http://eprints.nottingham.ac.uk/id/eprint/1736, and Derclaye, Estelle A Decade of Registered and Unregistered Design Rights Decisions in the UK: What Conclusions Can We Draw for the Future of Both Types of Rights?, IP Theory: Vol. 3: Iss. 2, Article 6, available at: http://www.repository.law.indiana.edu/ipt/vol3/iss2/6. 102 Pumfrey J., Mackie Designs Inc v Behringer Specialised studio equipment (UK) Ltd & Ors [1999] EWHC Ch 252, [1999] RPC 717. 103 CDPA ss. 217, 218, 219, 220, 221. 104 CDPA s. 215.

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6.4.1

ROUTES TO QUALIFICATION FOR UKUDR

A design may qualify for UKUDR in one of four ways: • • • •

by reference to the designer (s. 218); by reference to an employer (s. 219), for designs created before 1 October 2014, by reference to a commissioner;105 or by reference to the circumstances of first marketing (s. 220).106

Design

Employer is the relevant person

Yes

Employee Designer?

Designer is the relevant person

Qualifying Person?

1st Marketed in UK?

Yes

Marketer is the relevant person Yes Yes

Design qualifies, relevant person is 1st owner

Qualifying Person?

Design does not qualify

Figure 10: Qualification for UKUDR (post-Brexit design)

105 CDPA s. 219 as enacted, before amendment by the Intellectual Property Act 2014. 106 These first marketing qualification provisions have changed from those for designs created before 1 October 2014 by virtue of amendments made by Intellectual Property Act 2014.

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The criteria for qualification and for first ownership (see 7.2.5) are generally aligned. If the designer is a qualifying person, then the design is protected107 and the first owner is the designer108 – unless the design is created by an employee during the course of his or her employment. In that case if the employer is a qualifying person, then the design is protected109 and the first owner is the employer.110 If it does not qualify any other way, then a design might qualify depending on the circumstances of its first marketing111 if the first marketer is a qualifying person and the first marketing is in a suitable territory. If it does, the first owner of UKUDR is the first marketer.112 • • •

For designs created since IP Completion Day (1 January 2021), a design qualifies if the territory in which it is first marketed is the UK.113 For designs created between 1 October 2014 and 31 December 2020, a design qualifies if the territory in which it was first marketed was the UK, or an(other) EU state.114 For designs created before 1 October 2014, a design qualifies if the territory in which it is first marketed was the UK or an(other) EU state,115 and its qualifying first marketer was exclusively authorised116 to sell the articles concerned in the UK.

“Marketing” is defined in s. 263(2) as referring to articles “being sold or let for hire, or offered or exposed for sale or hire, in the course of a business”. But it must be “intended to satisfy the reasonable requirements of the public” and not “merely colourable”. “Marketing” for UKUDR therefore corresponds to “publication” of a copyright work as defined in s. 175(6), which has been held to allow purely passive offers for sale.117 In the case of a jointly created, owned or marketed design, the design will qualify for protection if any of the designers (or employers or first marketers as the case may be) is a qualifying person,118 but only those who qualify may be first owners.119

107 108 109 110 111 112 113 114 115 116

CDPA s. 218. CDPA s. 215(1). CDPA s. 219(1). CDPA s. 215(3). CDPA s. 220. CDPA s. 215(4). Or a country to which the design extends under s. 255–at the time of writing there are none. Ibid. CDPA s. 219(4) as enacted. By the person who would have been the owner of UKUDR as designer, employer or commissioner if he had been a qualifying person or someone claiming title from such a person. 117 British Northrop Limited & Ors v Texteam Blackburn Limited & Anr [1973] FSR 241. 118 CDPA ss. 218(3), 219(2), 220(2). 119 CDPA ss. 218(4), 219(3), 220(3).

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6.4.2 QUALIFYING PERSONS A qualifying person is an individual habitually resident in a qualifying country, or a legal body formed under the law of a qualifying country, or has a place of business at which substantial business activity is carried out in a qualifying country. There is as yet no case law on the meaning of this.

6.4.3 QUALIFYING COUNTRIES The list is currently short: the UK,120 and other countries designated under s. 256 which reciprocally enforce British designs (Hong Kong and New Zealand, and some territories of lower economic importance (except to tax planners) comprising the Crown Dependencies121 and British Overseas Territories122). The latter are set out in a Statutory Instrument.123 The policy appears to be to extend protection only to those countries which protect wholly functional designs.124 Note that most countries are not qualifying countries. In particular, the USA, China, Korea and Japan are not qualifying countries. For designs created before “IP Completion Day” (1 January 2021) any (other) EU/EEA country was a qualifying country, but not thereafter.

6.5

DURATION

CDPA Sections

216

Related Copyright Sections

12, 13, 14, 15

Other Analogues

EU Topography Directive 87/54/EEC Art. 7

Section 216 Duration of design right. (1) Design right expires— (a) fifteen years from the end of the calendar year in which the design was first recorded in a design document or an article was first made to the design, whichever first occurred, or (b) if articles made to the design are made available for sale or hire within five years from the end of that calendar year, ten years from the end of the calendar year in which that first occurred. (2) The reference in subsection (1) to articles being made available for sale or hire is to their being made so available anywhere in the world by or with the licence of the design right owner.

120 121 122 123 124

Or a country to which the design extends under s. 255–at the time of writing there are none. The Channel Islands and the Isle of Man. Anguilla, Bermuda, the British Virgin Islands, the Cayman Islands, Gibraltar and so on). The Design Right (Reciprocal Protection) (No. 2) Order 1989, SI 1989/1294. New Zealand and Hong Kong do so by copyright in the underlying drawings, as used to be the case in the UK under the Copyright Act 1956; the Channel Islands provide an equivalent local unregistered design right.

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The lifetime of UKUDR is the shorter of ten years from the end of the year of first sale or 15 years from first recordal in a design document, or manufacture. This twin-track term provision is closely based on that applicable to semiconductor topographies.

6.6 COMMENCEMENT AND FIXATION – DESIGN DOCUMENT OR MODEL UKUDR only subsists once the design has been recorded in a “design document” or a corresponding article is actually made.125 A “design document” is defined as “any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise”.126 The identical definition applies within the Section 51 exclusion from copyright. In Lucasfilm, a case under s. 51, Mann J. held that although “The drawings of the Stormtroopers were not intended to be the definitive design to which the ultimate product must be made, in the sense that a car part will be made from an exactly corresponding drawing” they were nonetheless design documents, as “it is plain that the intention was that it be followed as closely as possible. It was not some vague idea, some elements of which, or ideas from which might be adopted in the future. It was in a very real sense a design for the costume/prop that was to appear in the film.”127 It was argued in that case (relying on King Features,128 a copyright case under a previous act) that the intention of the creator of the design document at the time of creation was relevant – if it was not at that time intended to form the basis for making an article, it could not be a “design document”. Mann J. found it unnecessary to decide that issue.129 In the context of infringement by making a design document, a similar question was also left open by Lewison J. in Societa Esplosivi Industriali v Ordnance Technologies,130 and appears still to be undecided.

125 126 127 128 129 130

CDPA s. 213(6). CDPA s. 263(1). Lucasfilm Ltd & Ors v Ainsworth & Anor [2008] EWHC 1878 (Ch), [2009] FSR 2 at [140]. King Features Syndicate Inc v O & M Kleeman Ltd [1941] AC 417, (1941) 58 RPC 207 (HL). Lucasfilm Ltd & Ors v Ainsworth & Anor [2008] EWHC 1878 (Ch), [2009] FSR 2 at [140]. Societa Esplosivi Industriali SpA v Ordnance Technologies (UK) Ltd (formerly SEI (UK) Ltd) [2007] EWHC 2875 (Ch) [2008] 2 All E.R. 622 [2008] RPC 12.

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6.7

INFRINGEMENT OF UKUDR

The infringement provisions for UKIDR within the CDPA were generally based on those for infringement of artistic copyright in their original form, prior to the impact of the EU InfoSoc Directive.

6.7.1

THE PLEADED DESIGN

As there is no registration, the design identified is a matter for the claimant in an infringement action. It may be the design of the whole or that of part of an article. The claimant is required to specify what the design in suit is, and is therefore able to select or “trim” the part or parts of his own design for the action, and thereby limit the corresponding parts of the infringing product for comparison (Ocular Sciences v Aspect,131 Fulton v Totes Isotoner132). In Fulton, the infringer copied most but not quite all of an umbrella case. The design claimed was defined as “the whole case minus a short side of the ‘cuff’ (at the open end). The UKUDR claim succeeded, whereas the parallel claim under the (pre-2001) Registered Design failed since it had not been entirely reproduced.

6.7.2

PRIMARY INFRINGEMENT – MAKING AN ARTICLE

CDPA Sections

226

Related Copyright Sections

2(1), 16

RDA Sections

Leading Cases

Schütz v Werit (SC), United Wire v Screen Repair Services (HL)

Other analogues

TRIPS Art. 26

Section 226 Primary infringement of design right (1) The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes— (a) by making articles to that design, or (3) Design right is infringed by a person who without the licence of the design right owner, does… anything which by virtue of this section is the exclusive right of the design right owner. Section 263 Minor definitions. (3) References in this Part to an act being done in relation to an article for “commercial purposes” are to its being done with a view to the article in question being sold or hired in the course of a business.

UKUDR confers the exclusive right to reproduce the design by making articles to the design for 131 Ocular Sciences Ltd v Aspect Vision Care Ltd (No.2) [1997] RPC 289, [1996] EWHC (Pat). 132 A Fulton Company Ltd v Totes Isotoner (UK) Ltd [2003] EWCA Civ 1514, [2004] RPC 16.

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PART 6 – UK (“NATIONAL”) UNREGISTERED DESIGN RIGHT

“commercial purposes”. Those purposes are narrowly defined only to include sale or hire in the course of business.133 The same also applies to kits of parts for making up an article.134 The right applies only to acts performed in the UK.135 “Making” an article has always been an act of infringement of a patent (and, at least since 1949, of a registered design) and poses no difficulties of interpretation, except perhaps where an old product is “remanufactured” rather than being repaired. The House of Lords have said that “Repair is one of the concepts (like modifying or adapting) which shares a boundary with “making” but does not trespass upon its territory”136 – something is either one or the other.

6.7.3

PRIMARY INFRINGEMENT – MAKING A DESIGN DOCUMENT

Section 226 Primary infringement of design right (1) The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes— (b) by making a design document recording the design for the purpose of enabling such articles to be made. (3) Design right is infringed by a person who without the licence of the design right owner, does … anything which by virtue of this section is the exclusive right of the design right owner.

Section 51 breaks the chain of copyright infringement by indirect copying if it is a product that is copied. Thus, making a copied design document from a copied product (even if this reproduces the original one) is not an infringement of copyright. For that reason, it is (or may be) an infringement of UKUDR. Directly copying the proprietor’s design document to make another design document could be an infringement both of copyright and of UKUDR, but if so, the UKUDR infringement would not be actionable because of s. 236. In Societa Esplosivi Industriali v Ordnance Technologies137 Lewison J. held that there is only infringement where the maker intended the document, at the time it was made, to be used to make articles to the design. There, the design document (a computer file) was made to simulate testing of a warhead, not to make the warhead, so there was no infringement. 133 Note that the phrases “commercial purposes”, “commercial purpose” and “non-commercial purpose are used elsewhere in the CDPA without this definition. 134 CDPA s. 260. 135 Satco Plastics Ltd v Super Pack Ltd [2013] EWPCC 29. 136 United Wire Ltd v Screen Repair Services (Scotland) Ltd, [2000] 4 All ER 353, [2001] RPC 24 (HL); see also Schütz (UK) Ltd v Werit (UK) Ltd [2013] UKSC 16, [2013] RPC 16 for an extensive discussion of “making” in the context of patents. 137 Societa Esplosivi Industriali SpA v Ordnance Technologies (UK) Ltd (formerly SEI (UK) Ltd) [2007] EWHC 2875 (Ch), [2008] RPC 12 at [67].

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6.7.4

INFRINGEMENT BY AUTHORISING

Section 226 Primary infringement of design right (3) Design right is infringed by a person who without the licence of the design right owner… authorises another to do, anything which by virtue of this section is the exclusive right of the design right owner.

UKUDR infringement by authorising has a copyright counterpart,138 considered by the House of Lords in CBS v Amstrad,139 of which it has been said that “‘authorise’ means the grant or purported grant of the right to do the act complained of. It does not extend to mere enablement, assistance or even encouragement. The grant or purported grant to do the relevant act may be express or implied from all the relevant circumstances.”140 The same appears true in relation to UKUDR.

6.7.5

SIMILARITY AND SCOPE

For both primary and secondary infringement, there will be infringement if the design is copied so as to produce “articles exactly or substantially to that design”. This is “an objective test to be decided through the eyes of the person to whom the design is directed”: Aldous J, C & H Engineering v Klucznik.141 It is not the same as the test for copyright infringement: “… there is a difference between an enquiry into whether the item copied forms a substantial part of the copyright work and an enquiry whether the whole design containing the element which has been copied is substantially the same design as that which enjoys design right protection… On that test it may not be enough to copy a part, even a substantial part. Regard has to be had to the overall design which enjoys design right.”142 It is therefore important for a claimant to assert a design which is closely reproduced in the defendant’s product.

6.7.6

COPYING

Section 226 Primary infringement of design right (2) Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to that design, and references in this Part to making articles to a design shall be construed accordingly. (4) For the purposes of this section reproduction may be direct or indirect, and it is immaterial whether any intervening acts themselves infringe the design right. 138 CDPA s.16(2). 139 CBS Songs Ltd and Ors v Amstrad Consumer Electronics Plc [1988] AC 2013. 140 Twentieth Century Fox Film Corp v Newzbin Ltd [2010] EWHC 608 (Ch), [2010] FSR 21 at [90], approved by the Court of Appeal in Tunein Inc v Warner Music UK Ltd & Anor [2021] EWCA Civ 441 at [166]. 141 [1992] FSR 421. 142 L Woolley Jewellers Ltd v A & A Jewellery Ltd & Anor [2002] EWCA Civ 1119, [2003] FSR 15 at [19].

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There is no UKUDR infringement without “copying”. There is no definition of “copying”, but it is clearly intended to correspond to the equivalent notion of copyright law. Useful observations in relation to the question of “copying” were made by Lewison J. in the Virgin Atlantic case.143 Close similarity in appearance coupled with access to the design in question are usually enough to throw the evidential burden of proof onto the defendant. Proof “is likely in many cases to involve testing the cogency of the evidence of independent derivation against the strength of the inference of copying”.144 However, even where the defendant admits (or disclosure reveals) “inspiration” from and a desire to compete with the claimant’s design, and produces something similar, this may be insufficient to establish infringement. In Virgin Atlantic v Premium,145 Rolawn v Turfmech,146 and Red Spider v Omega,147 defendants were found to have copied only non-protectable “idea” or “method or principle of construction” elements, and to have recreated something similar without copying.

6.7.7

SECONDARY INFRINGEMENT

CDPA Sections

227-228

Related Copyright Sections

22, 23, 27

RDA Sections

–

Other analogues

–

Section 227 Secondary infringement: importing or dealing with infringing article (1) Design right is infringed by a person who, without the licence of the design right owner— (a) imports into the United Kingdom for commercial purposes, or (b) has in his possession for commercial purposes, or (c) sells, lets for hire, or offers or exposes for sale or hire, in the course of a business, an article which is, and which he knows or has reason to believe is, an infringing article. Section 228 Meaning of “infringing article” (1) In this Part “infringing article”, in relation to a design, shall be construed in accordance with this section. (2) An article is an infringing article if its making to that design was an infringement of design right in the design. (3) An article is also an infringing article if – 143 Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group Ltd & Anor [2009] EWHC 26 (Pat), [2009] ECDR 11 at paras [34]-[37]. 144 EC Medica Group UK Ltd & Ors v Dearnley-Davison & Ors [2018] EWHC 1952 (Ch). 145 Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group Ltd [2009] ECDR 11 [2009] EWHC 26 (Pat). 146 Rolawn Ltd v Turfmech Machinery Ltd [2008] EWHC 989 (Pat), [2008] RPC 27. 147 Red Spider Technology v Omega Completions Technology [2010] EWHC 59 (Ch).

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(a) it has been or is proposed to be imported into the United Kingdom, and (b) its making to that design in the United Kingdom would have been an infringement of design right in the design or a breach of an exclusive licence agreement relating to the design. (6) The expression “infringing article” does not include a design document, notwithstanding that its making was or would have been an infringement of design right.

Secondary infringement of UKUDR, like copyright, involves dealing in infringements with an element of knowledge or belief. There is secondary infringement of UKUDR where a person imports into the UK, or possesses for commercial purposes, sells, lets, or exposes for sale etc, in the course of a business an article which he knows or has reason to believe is an infringing article.148 Knowing involves “knowledge of facts from which a reasonable man would arrive at the relevant belief. Facts from which a reasonable man might suspect… cannot be enough…”.149 A potential infringer can be put on notice, but requires time to evaluate the facts and convert them into the relevant belief before infringement commences. An article is an “infringing article” if its making was an infringement of the UKUDR in that design. Alternatively, if it has been made abroad and imported, or is proposed to be imported, into the UK, it is an “infringing article” if it would have been an infringement had it been made in the UK. A “design document” is not an “infringing article”.

6.7.8 CONTRIBUTORY INFRINGEMENT: EQUIPMENT SPECIALLY ADAPTED FOR MAKING INFRINGEMENTS Although making moulds, plates, negatives or anything else specifically for producing infringing copies was an infringement of both copyright150 and registered design rights151 in 1989, for some reason the same provision was not enacted for UKUDR. However, the Court can order delivery up and disposal of such things, as discussed at 9.4.4.

6.7.9

DEFENCES

CDPA Sections

244A, 244B

Related Copyright Sections

32, 36

RDA Sections

Other analogues

PA s. 60(5)

148 149 150 151

CDPA s. 227. LA Gear [1992] FSR 121, a copyright case. Copyright Act 1911 s. 7, Copyright Act 1956 s. 18, CDPA s. 24. Former RDA s. 7(3).

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As a result of the Intellectual Property Act 2014, the same defences to infringement exist as for registered designs (for which see 2.3.3), i.e.: UKUDR Defence

CDPA s.

RDA s.

PA s.

Private, non-commercial acts

244A(a)

7A(2)(a)

60(5)(a)

Experimental Purposes

244A(b)

7A(2)(b)

60(5)(b)

Reproduction for teaching purposes

244A(c)

32-36

7A(2)(c)

Reproduction for purpose of making citations

244A(c)

7A(2)(c)

Use on foreign ships & aircraft

244B(a)

7A(2)(d)

60(5)(e,f)

Import & use of spares to repair same

244B(b,c)

7A(2)(e,f)

60(5)(f)

The “teaching”152 defence has a precursor in Art. 5(3) of the Semiconductor Topography Directive153 and an approximate counterpart in the “illustration for instruction” copyright defence.154

6.7.10 OVERLAP WITH COPYRIGHT INFRINGEMENT 236 Infringement of copyright. Where copyright subsists in a work which consists of or includes a design in which design right subsists, it is not an infringement of design right in the design to do anything which is an infringement of the copyright in that work.

Where copyright and UKUDR both exist in parallel “in a work which consists of or includes a design” (as in a sculpture or a work of artistic craftsmanship for example), then “it is not an infringement of design right in the design to do anything which is an infringement of the copyright in that work”.155 There would be no basis in the Berne Convention for truncating copyright merely because another right exists, so it is necessarily the design right claim which gives way. In overlap cases, it is therefore important to sue on the copyright, at least in the alternative.

6.7.11 COMBINED EFFECTS OF S. 51 & S. 236 ON COPYRIGHT AND UKUDR INFRINGEMENT To summarise the effects of ss. 51 and 236: Firstly, where the design document or model is for (i.e. depicts) something which is itself an artistic work, then s. 51 has no effect. Copying to make articles or design documents, whether directly or indirectly, infringes any copyright in the design 152 CDPA s. 244A, 244B, added by the Intellectual Property Act 2014. 153 Council Directive 87/54/EEC of 16 December 1986 on the legal protection of topographies of semiconductor products. See also s. 226(1A) of the CDPA as amended by the Design Right (Semiconductor Topographies) Regulations 1989. 154 CDPA s. 32. See also ss. 33-36. 155 CDPA s. 236.

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document. According to the Flashing Badge case,156 the same is true where the design document contains some separable or dissociable 2D surface decoration. If design right subsists, that too is infringed. However, as s. 236 operates, only the copyright can be enforced. Design is of Artistic article (e.g. sculpture, building, WAC)

UKUDR inf?

Directly copying design doc, to make design doc

Yes

Yes – but s. 236

Directly copying design doc, to make article

Yes

Yes – but s. 236

Indirectly (e.g. telephone call) copying design doc, to make design doc

Yes

Yes – but s. 236

Indirectly copying design doc via article, to make design doc

Yes

Yes – but s. 236

Directly copying article, to make article

Yes

Yes – but s. 236

Directly copying article, to make design doc

Yes

Yes – but s. 236

Indirectly copying article, to make article

Yes

Yes – but s. 236

Indirectly copying article, to make design doc

Yes

Yes – but s. 236

Secondly, where the design document or model is for (i.e. depicts) something that is not an artistic work (by far the commoner situation), then s. 51 bites. However, directly copying the design document to make something other than an article, or copying it indirectly other than via an article, remains an infringement of copyright. If the end-product is another design document, then UKUDR is also infringed, but again only the copyright can be enforced due to s. 236. Design is of Non-Artistic article (e.g. helmet, car)

UKUDR inf?

Directly copying design doc, to make design doc

Yes

Yes – but s. 236

Indirectly (e.g. telephone call) copying design doc, to make design doc

Yes

Yes – but s. 236

Directly copying design doc, to make article

Yes

156 Flashing Badge Co v Groves [2007] EWHC 1372 (Ch), [2007] FSR 36.

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Figure 11: Infringements of copyright in a design document, direct (left) and indirect (right)

But any copying of an article, or making an article, is not an infringement of copyright, though it is an infringement of any subsisting UKUDR: Design is of Non-Artistic article (e.g. helmet, car)

UKUDR inf?

Indirectly copying design doc via article, to make design doc

Yes

Directly copying article, to make article

Yes

Directly copying article, to make design doc

Yes

Indirectly copying article, to make article

Yes

Indirectly copying article, to make design doc

Yes

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6.8

LICENCES OF RIGHT

Section 237 Licences available in last five years of design right. (1) Any person is entitled as of right to a licence to do in the last five years of the design right term anything which would otherwise infringe the design right.

In the last five years of the term of UKUDR, any person is entitled as of right to a licence to do anything which would otherwise infringe the design, on terms which, in default of agreement, shall be settled by the IPO. In determining the royalty where an application has been made for a licence of right but no agreement has been reached the approach taken is not to assess what damages the rights owner might have suffered, but to try to determine what willing parties would have agreed.157 A defendant may undertake to take a licence of right and thereby avoid an injunction and an order for delivery up.158 It is not enough for the infringer to say that he will, at some time in the future (e.g. when he loses the infringement action), apply for a licence – an interlocutory injunction will be granted unless the defendant undertakes to take the licence of right forthwith: Dyrlund v Turberville Smith Ltd.159 Damages or an account of profits will be limited to double the amount which would have been payable if the infringer had a licence from the beginning. However, that is a cap and not a guarantee – the actual damage suffered may often be only a reasonable royalty, not twice that amount. UKUDR is therefore at its most useful during the five years160 after first marketing. This five-year lifetime is in line with that recommended for car body panels by the Monopolies and Mergers Commission in their report into Ford’s refusal to license.161 For compulsory licences of right, see 8.3.

157 NIC Instruments Ltd’s Licence of Right (Design Right) Application [2005] RPC 1. 158 CDPA s. 239. 159 [1998] FSR 774. Note the similar findings in relation to FRAND licenses in Optis Cellular Technology v Apple Retail [2021] EWHC 2564 (Pat). 160 Potentially up to six. 161 Ford Motor Company Limited: a report on the policy and practice of the Ford Motor Company Limited of not granting licences to manufacture or sell in the United Kingdom certain replacement body parts for Ford vehicles, Cmnd 9437, Monopolies and Mergers Commission, 28th February 1985, 6.65-6.68; summary at Re Ford Motor Company Limited’s Replacement Body Parts Policy, [1986] FSR 147.

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6.9

PROCEEDINGS BEFORE THE REGISTRY, AND APPEALS

CDPA Sections

246, 247, 248, 249, 250, 251, 252

Related RDA Sections

11A, 11AB, 27A

Related UK Rules

Design Right (Proceedings before Comptroller) Rules 1989, Appointed Person (Designs) Rules 2015

Form

DRF1, DRF2, DRF4, DRF55

IPO Practice

Other Analogues

PA s. 46, Schedule 1 para 4(2)(c)

The IPO has jurisdiction to hear several types of application involving UK unregistered designs. However there have been only a handful of cases since 1989 (and only one since 2011). The Design Right (Proceedings before Comptroller) Rules have been heavily amended by, amongst other things, the Design Right (Proceedings before Comptroller) (Amendment) Rules 1999,162 and as a result the general nature of contested proceedings, and the powers of the IPO, are the same as those available in registered design proceedings163 (see 2.6.1). The following applications may be made to the IPO: Determination of:

CDPA Section(s)

DR Rule(s)

Form

Subsistence of design right

246(1)(a)

3-9, 13

DRF1

Term of design right

246(1)(b)

3-9, 13

DRF1

Identity of first owner of design right

246(1)(c)

3-9

DRF1

Application for licence of right

237, 238, 247, 248

10-12

DFR3

Variation of terms of licence of right

248(3)

14-16

DRF4

Where there is a valid application on one of these grounds, the IPO may also decide “any incidental question of fact or law”.164 A Hearing Officer has held that this includes jurisdiction over “an issue over copyright that impinges on a question of design right”.165 The applicant files the relevant form with fee and statement of case, indicating the name of any other parties (usually the proprietor) if known. Other parties with a “substantial interest” 162 163 164 165

SI 1999/3195. RDR Rules Part 4, 36-37 & 42-43. CDPA s. 246(3). Justwise Group v Magis [2005] UKIntelP o12605 (BL O/126/05) at [31].

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(usually at least the proprietor) can then apply to be joined to the action by filing Form DRF2 with statement of interest and counterstatement. If the identity of the proprietor is unknown, the Hearing Officer may make a direction specifying further searching or advertising measures. If these are unsuccessful, a free licence of right can be awarded. The proprietor can then ask for a royalty to be settled and applied, on Form DRF4. Appeals to the Appointed Person are possible, on Form DRF55 (though none are known to have occurred to date). They follow the same course as those for registered designs under the Appointed Person (Designs) Rules. The CPDA specifically provides for the following: Appeal: CDPA s.

Decision: CDPA s.

Decision On:

249

247, 248

Terms of licence of right

251(4)

246

Subsistence, term, first ownership and incidental issues

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PART 6 – UK (“NATIONAL”) UNREGISTERED DESIGN RIGHT

6.10 SEMICONDUCTOR TOPOGRAPHIES CDPA Sections

Part III

Related UK Rules

Design Right (Semiconductor Topographies) Regulations 1989

Other Analogues

Directive 87/54/EEC; TRIPS Part II Section 6; Washington Treaty on Intellectual Property in Respect of Integrated Circuits, 1989

The Design Right (Semiconductor Topographies) Regulations 1989166 came into force contemporaneously with the CDPA. They create another, parallel, version of Part III of the CDPA specifically to implement the EU Topography Directive.167 The same obligations have been incorporated into the Treaty on Intellectual Property in respect of Integrated Circuits (“IPIC” or “the Washington Treaty” – not yet in force but applied by TRIPS Part 2 Section 6). Semiconductor topography right is therefore a species of unregistered design right, but the following major differences apply (there are also some less important ones): • • • • •

The definition of a protected design is different – it is limited to topographies. The “first ownership” provisions are different. The qualifying countries and qualifying individuals are different (they include the USA and most other major manufacturing nations).168 There is a right of analysis or evaluation, and a right to make the products on the basis of a result of that evaluation. Licences of Right are not available.

There is no UK case law, and very little case law anywhere else.169

166 SI 1989/1100. 167 Previously implemented as a standalone right by the Semiconductor Products (Protection of Topography) Regulations 1987, SI 1987/1497. 168 Regulation 4 of, and Part I of the Schedule to the Design Right (Semiconductor Topographies) Regulations 1989, SI 1989/1100. 169 In the US, Brooktree Corp. v Advanced Micro Devices, 977 F.2d (Fed. Cir. 1993) and Altera Corp. v Clear Logic, Inc., 424 F. 3d 1079 (9th Cir. 2005) are noteworthy.

245

PART 7 DESIGNERS, OWNERSHIP, AND PROPERTY 7.1 DESIGNERS.........................................................................................................248 7.2 FIRST OWNERSHIP............................................................................................. 252 7.3

PROPERTY IN DESIGNS...................................................................................... 255

7.4

ASSIGNMENTS...................................................................................................258

7.5

LINKAGES BETWEEN DIFFERENT RIGHTS IN DESIGNS....................................... 261

7.6

DESIGN APPLICANTS......................................................................................... 262

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The property and ownership provisions for UK Registered Designs, UK Unregistered Designs and copyright are quite closely aligned. Those for Continuing Unregistered Community Designs and Supplementary Unregistered Design Right differ at some points.

7.1

DESIGNERS

7.1.1

THE LEGAL POSITION OF DESIGNERS

Sadly, given their importance in the real world, designers have little significance in UK law. Unlike authors of copyright works, they have no moral rights. Unlike inventors, they are not entitled to compensation. The only relevance of the designer is as the basis of analysis of subsistence and ownership of a design.

7.1.2

(ABSENCE OF) MORAL RIGHTS

There is no provision for moral rights in relation to UK registered designs, UK unregistered designs, Continuing Unregistered Community Designs and Supplementary Unregistered Design Right. Although the Registered Community Design system guarantees the designer the right to be named,1 the UK national registered design system does not even make that possible. Some moral rights exist in relation to any copyright in a design, but they are attenuated. The right to be identified as author (“paternity”) and the right to object to derogatory treatment are only applicable where: •

•

For sculptures or works of artistic craftsmanship (i.e. 3D works), copies of a graphic work representing it, or of a photograph of it, are issued to the public – i.e. the right only applies to 2D representations, and not to competing 3D copies, of the work.2 In addition, the paternity right (to be identified) is not applicable to design documents where the s. 51 defence applies (i.e. the acts of making articles, or copying articles when made, except where the article is itself an “artistic work” such as a sculpture or a work of artistic craftsmanship).3

Further, for employed designers of any kind of work, where the employer is the first owner of copyright, the rights do not apply to approved by the owner.4

1 2 3 4

CDR Art. 18. Copyright: CDPA ss. 77(4)(c) & 80(4)(c). Copyright: CDPA s. 79(4)(f). Copyright: CDPA ss. 79(3) & 82(1)(a).

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7.1.3

WHO IS THE AUTHOR/DESIGNER?

Right

Provisions

Registered Designs

RDA s. 2(3) & s. 44(1)

UKUDR

CDPA s. 214(1)

CUCD/SUD

–

CDPA s. 9(1)

Leading Case

Uwug v Ball

Other analogues

PA s. 7(3)

The Design Directive does not refer to designers and thus, in all three UK-originating rights, the definition is consistent and time-honoured: the “author” of a copyright artistic work or a UK registered design, and the “designer” of a UK unregistered design, is “the person who creates it”. The “it” concerned depends on, firstly, the legal definition of what is protected and, secondly, the actual design claimed by the proprietor in the proceedings concerned. The EU Regulation 6/2002 (which applies after Brexit to Continuing Unregistered Community Designs and Supplementary Unregistered Design Right) contains no such definition. The Court of Justice has held5 that “designer” in the Regulation is an autonomous concept of EU law, but has not defined that concept, and there does not seem any reason to give “designer” a different meaning to that it has in the UK statutes when dealing with the UK successor rights to Community Designs. The person who makes the final, finished drawings is not necessarily the sole designer or author, for “to have regard merely to who pushed the pen is too narrow a view of authorship”.6 The person who had the original idea which led to the final design may on the facts be the sole designer, a joint designer, or not a designer at all. Originator held to be sole designer. In LED Technologies v Elecspess,7 an Australian case, the originator of a design idea who had made sketches and passed them to a Chinese collaborator who drew them up accurately, devised a CAD model and made moulds, was held to be the sole author of the resulting design. Likewise in Pearson v Morris Wilkinson,8 the claimant had made a rough sketch of a pram containing some remarks; gave the size, and some rough instructions to the person who fabricated the pram. There had been no ambiguity about the instructions, and the prototype produced was exactly what the claimant had wanted, so he was held to be the sole designer. 5 6 7 8

Case C-32/08 FEIA [2010] RPC 13. Cala Homes (South) Limited v Alfred McAlpine Homes East Limited [1995] FSR 818, approved in Kogan v Martin [2019] EWCA Civ 1645, [2020] FSR 3 at [41]. LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941. In the Matter of Frederick Pearson’s Registered Designs (1906) 23 RPC 738.

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NAVIGATING DESIGN LAW

Originator held to be joint designer. A company director who gave detailed instructions (with some sketches) to an architect as to the design of a house which the architect then drew was held to be a joint author.9 Originator held not to be a designer at all. Where “[o]n the instructions given” someone “might easily have produced any one or other of these two particular [prior art] designs or the registered Design or, perhaps, something different from each of them”, a design (in that case, of a fabric) has not yet been made.10 Likewise, where the claimant had an idea for a desk and asked the defendant (a furniture maker with whom he had worked before) to make it for him, he was unhappy with what was produced and the two went back and forth until the final design was reached; clearly, the instructions given did not map directly onto the eventual design, and the defendant was the sole designer.11 The question is thus whether the original conception is “specific enough to amount to a design, rather than a number of ideas of what the design should include.”12

7.1.4

COMPUTER-GENERATED WORKS AND DESIGNS

Right

Provisions

Registered Designs

RDA s. 2(4)

UKUDR

CDPA s. 214(2), 263(1)

CUCD/SUD

–

CDPA s. 9(3), s. 178

Leading Case

Nova Productions v Mazooma Games (HC), Thaler v Comptroller-General (HC)

Other analogues

All three UK-originating rights deal with designs or works “generated by computer in circumstances such that there is no human” designer or author. In such cases, the designer or author is the person who makes “the arrangements necessary for the creation”. Mere use of CAD software tools is unlikely to fall within these provisions, but use of artificial intelligence, for example, would seem to do so. The provision was considered briefly in Nova Productions v Mazooma Games13 (individual frame images in an animated sequence generated by a computer program) and, obiter, in Thaler v Comptroller-General14 (a patent case).

9 10 11 12 13 14

Cala Homes (South) Limited v Alfred McAlpine Homes East Limited [1995] FSR 818. Pressler & Co v Gartside & Co. [1933] 50 RPC 240. Heinrichs’ Design (1892) 9 RPC 73. Uwug Ltd v Ball (t/a Red) [2013] EWPCC 35. Nova Productions v Mazooma Games [2006] EWHC 24 (Ch), [2006] RPC 14 at [104]-[105]. Thaler v Comptroller-General of Patents, Designs And Trade Marks [2020] EWHC 2412 (Pat) at [49].

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PART 7 – DESIGNERS, OWNERSHIP, AND PROPERTY

7.1.5

JOINT AUTHORS/DESIGNERS

Right

Provisions

Registered Designs

–

UKUDR

CDPA s. 259(1)

CUCD/SUD

–

CDPA s. 10(1) & 178

Leading Case

Kogan v Martin (CA)

Other analogues

UK copyright and UK unregistered design law deal with designs or works “produced by the collaboration of two or more” designers or authors “in which the contribution of each is not distinct from that of the other” or others. These are “work of joint authorship”15 or “joint works”,16 and “joint designs”, 17 respectively. The criteria for determining joint authorship were discussed by the Court of Appeal in Kogan v Martin.18 For such designs, any references to “the designer” or “the author” have to be read as references to all authors/designers. The RDA makes no reference to joint authors. Things which have been held insufficient to constitute being a joint author or designer include: • • • • • • •

15 16 17 18 19 20 21 22 23 24 25

Selecting silicone to compensate for differential expansion of glass blocks, not visible in the design as registered;19 Selecting adhesives;20 Approving and accepting a design created to order by someone else;21 Spotting a design abroad;22 Commercialising and exploiting the design;23 Scanning images and cleaning them up, under the direction of a designer;24 Setting the specification for computer software, and fixing errors and bugs in it.25

Copyright: CDPA s. 10 etc. Copyright: CDPA s. 88 heading. UKUDR: CDPA s. 259(1). Kogan v Martin [2019] EWCA Civ 1645, [2020] FSR 3. Glass Block Constructions (Aust) Pty Ltd v Armourglass Australia Pty Ltd [2005] ADO 1. Henrick v Taplin and Henrick [2009] ADO 1. A. Pressler & Co. Ltd v Gartside & Co. (of Manchester) Ltd and Widd & Owen Ltd (1933) 50 RPC 240. Lazarus v Charles (1873) Law J Rep Chanc 507; LR 16 Eq. 117. Ibid. MEI Fields Designs Ltd v Saffron Cards And Gifts Ltd [2018] EWHC 1332 (IPEC), [2018] FSR 33 at [76]-[77]. Fylde Microsystems Ltd v Key Radio Systems Ltd [1998] FSR 449 at 455, approved in Kogan v Martin [2019] EWCA Civ 1645, [2020] FSR 3 at [42].

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NAVIGATING DESIGN LAW

Although the literary copyright provisions of the CDPA deal with co-authorship and “collective works”, where different authors have made distinct contributions or works combined into a whole26 (such as an encyclopaedia), there are no specific parallel provisions for artistic works, or for registered or unregistered UK or EU designs.

7.2

FIRST OWNERSHIP

Right

Provisions

Registered Designs

RDA s. 2(1)

UKUDR

CDPA s. 215(1)

CUCD/SUD

Art. 14(1)

CDPA s. 11(1)

Other analogues

PA s. 7(2)

The “first owner” of all relevant rights is by default the author/designer. As International design registrations are treated like national applications and registrations, the provisions of the RDA also apply to them.27 However, in each case there are important exceptions.

7.2.1

EMPLOYEE DESIGNS

Right

Provisions

Registered Designs

RDA s. 2(1B), s. 44(1)

UKUDR

CDPA s. 215(3), 263(1)

CUCD/SUD

Art. 14(3)

CDPA s. 11(2), s. 178

Leading Case

C-32/08 FEIA

Other analogues

PA s. 39

In each case, works or designs made by an employee in the course of employment will usually vest in the employer who is therefore the first owner. “Employment” here is used in the narrow sense of “employment under a contract of service or of apprenticeship”. However, someone hired via their Personal Services Company may also be treated as an employee, if that is what they are.28 26 Copyright: CDPA s. 10A, s. 178. 27 Hague Agreement (Geneva Act), Art. 14; The Designs (International Registration of Industrial Designs) Order 2018, SI 2018/23. 28 Sprint Electric Ltd v Buyer’s Dream Ltd [2018] EWHC 1924 (Ch) at [141]-[142] & [186].

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PART 7 – DESIGNERS, OWNERSHIP, AND PROPERTY

In place of “course of his employment”, the CDR refers to “the execution of his duties or following the instructions given by his employer” (which will usually come to the same thing). In applying this test, the Court of Justice has also adopted a narrow definition of “employment”.29

7.2.2 FUTURE COPYRIGHT OR DESIGN RIGHT (UKUDR & COPYRIGHT ONLY) Right

Provisions

Registered Designs

–

UKUDR

CDPA s. 223

CUCD/SUD

–

CDPA s. 91

Leading Case

PRS v B4U (CA)

Other analogues

–

A contract which purports to assign a design which has yet to be created (and therefore does not exist at the time of the contract) will usually be treated as an agreement to assign the rights after they come into being, and hence something which transfers the equitable ownership but not the legal title in the design or work.30 However, the CDPA varies this position for copyright and UKUDR.31 If there is an agreement in writing and signed by the person who would otherwise be the first owner of the right, which purports to assign the work or design to an assignee, then as soon as the right comes into being the right does indeed vest in the assignee (or his successor in title), in law as well as equity, and no further formalities or transactions are required. PRS v B4U (at both instances32) contains a rather detailed analysis of the effects of an assignment of future copyright. No such provisions exist for UK registered designs, presumably because these are rights in applications or registrations and therefore require the existence of an application or registration. There is also no such provision for SUD or CUCD.

29 Case C-32/08 FEIA [2010] RPC 13, referring to contracts of employment and excluding commissioned designs. 30 See KCI Licensing v Smith & Nephew [2010] EWHC 1487 (Pat) at [64] – [66], a patent case which seems applicable by analogy. 31 Copyright: CDPA s. 91, UKUDR: CDPA s. 223. 32 Performing Right Society Ltd v B4u Network (Europe) Ltd [2012] EWHC 3010 (Ch), [2013] FSR 19, and B4U Network (Europe) Ltd v Performing Right Society Ltd [2013] EWCA Civ 1236, [2014] FSR 17.

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7.2.3

COMMISSIONED DESIGNS

In the past, a person who commissioned a design for money was the first owner of UK registered and unregistered designs.33 No such provisions existed for copyright.34 These provisions were repealed by the Intellectual Property Act 2014 for consistency with Community design law (but still have effect in relation to designs created before the deletion took effect35). Thus, where a design is newly commissioned the commissioner will not automatically be the first owner of copyright or design rights.

7.2.4 JOINT WORKS – QUALIFYING AUTHORS (UKUDR & COPYRIGHT ONLY) Right

Provisions

Registered Designs

–

UKUDR

CDPA s. 218(4)

CUCD/SUD

–

CDPA s. 154(3)

Other analogues

–

Joint works or designs (or other collaborative designs, where the contributions are separable) will normally be jointly owned (for which, see below) where the designers are not employees. However, there are some exceptions: •

•

For UKUDR (and copyright, though the issue rarely arises there), in relation to nonemployed designers, if any of the designers are not “qualifying persons”36 they have no share in ownership. For International Designs, only qualifying persons can be applicants, and transfers will only be recorded for assignees who are qualifying persons.37

7.2.5

FIRST MARKETERS (UKUDR & COPYRIGHT ONLY)

Where a UK unregistered design does not qualify for protection by reference to the designer or employer, 38 it may qualify by reference to first marketing in the UK by a qualifying person as

33 UKUDR: Former CDPA s. 215(2) & s. 263(1); UK RD: Former RDA s. 2(1A). 34 The Copyright Act 1956 did contain such provisions for photographs (s. 4(3)) and sound recordings (s. 12(4)) but these disappeared in the CDPA – though the commissioner of a photographs benefits instead from a privacy right. 35 On 1 October 2014. 36 UKUDR: Which in practice normally requires a connection with the UK, Hong Kong or New Zealand – or, if the design is pre-Brexit, any EEA country. 37 Hague Agreement (Geneva Act), Art. 3 & Art. 16(1)(i). 38 Or, in the past, the commissioner.

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PART 7 – DESIGNERS, OWNERSHIP, AND PROPERTY

discussed at 6.4.1, in which case that first marketer is the owner of the design right.39 Although nowadays unlikely as so few countries do not qualify for copyright protection, the same could occur where a copyright work is first published in the UK.40 There is no equivalent for Unregistered Community Designs, or the successor SUDs or CUCDs. The German Supreme Court has held that the first discloser of a design is not to be presumed to be the legal owner.41 The SUD and CUCD versions of Regulation 6/2002 explicitly provide that the true owner can challenge ownership of a person who has published a design.42

7.3

PROPERTY IN DESIGNS

7.3.1

NATURE OF PROPERTY

Right

Provisions

Registered Designs

RDA s. 15A

UKUDR

CDPA s. 213(1), s. 222(1)

SUD

Art. 15(1), Art. 27

CUCD

Art. 15(1), Art. 27

CDPA s. 1(1), s. 90(1)

Other analogues

PA s. 30(1), TMA s. 22, s. 27

A right in a UK design – or an International Design (UK)43 – or copyright work is a species of property right, as is that in a pending application for a registered design. Different laws of property apply in England, Wales and Northern Ireland on the one hand; and Scotland on the other, so the statutes make separate provision for Scotland. UK Registered and Unregistered designs and artistic copyright, Continuing Unregistered Community Designs and Supplementary Unregistered Designs are personal or moveable property (specifically, intangible property) in England, Wales and Northern Ireland, and incorporeal moveable property in Scotland. Additionally, all intellectual property rights in designs44 may be classified (under English law) as “choses” (or “things”) “in action”. This has implications on the formalities necessary when they can be assigned in law.45

UKUDR: CDPA s. 215(4). Copyright: CDPA s. 155 & 104(4) (though this is only a presumption of ownership). Bolerojäckchen (Bolero Jacket), I ZR 23/12, BGH 13 December 2012. SUD, CUCD; Regulation 6/2002, Art 15(1) as amended in both versions. The Designs (International Registration of Industrial Designs) Order 2018 Schedule 2 para 14. See Ifejika v Ifejika [2010] EWCA Civ 563, [2010] FSR 29 at [25]. Unlike rights in patents, see the Patents Act 1977, s. 30(1). See, generally, Dictionary of Intellectual Property Law, Elgar Publications, P Groves (Ed). 45 Law of Property Act 1925, s. 136. 39 40 41 42 43 44

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In English law, it is possible for the legal ownership of a design (or any other property) to become separated from the equitable, or beneficial, ownership. This might be done intentionally: it is possible to set up an express trust whereby X holds the design for the benefit of Y. However, it can also happen accidentally where an intended transfer fails for some reason to pass legal ownership.46 Directors of a company, whether or not they are also employees, have duties to further the fortunes of that company in the interests of its shareholders. Thus, subject to any agreement between the director and the shareholders to the contrary, copyright or design rights held by a director will usually be held on trust for the company itself, which can call for them to be assigned to it,47 at least where the design was created during the directorship.48 Likewise, partners who hold intellectual property may owe a duty to assign it to the partnership,49 depending on how directly it relates to the partnership business.50 There are thus three potentially different proprietors to consider: 1. The registered proprietor (for a registered right), who is presumed to be the owner; 2. The owner in law; and 3. The beneficial owner (i.e. the owner in equity).

7.3.2

CO-OWNERSHIP AND JOINT OWNERSHIP

Right

Provisions

Registered Designs

RDA s. 44(1)

UKUDR

CDPA s. 258(2)

CUCD/SUD

–

CDPA s. 173(2)

Co-owners of a design may own different parts of the design (or the designs of different parts of the whole) or they may jointly own the whole. In the second case they may under English law of property be either “joint tenants” or “tenants in common”. These forms of ownership have rather different effects. Subject to contract, joint 46 See, generally, John Fitzgerald and Alison Firth, Equitable assignments in relation to intellectual property, IPQ 1999, 2, 228-249. 47 Vitof Ltd v Altoft [2006] EWHC 1678 (Ch) at [144]-[151], and more generally Ultraframe v Fielding [2003] EWCA Civ 1805, [2004] RPC 24. 48 Unlike the position in Coffey’s Registered Designs [1982] FSR 227 (CA). 49 Coward v Phaestos Ltd [2013] EWHC 1292 (Ch) at [222]. 50 In Coffey’s Registered Designs, supra, no such duty was found.

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tenancy usually requires equal shares, and when one co-owner dies the rights pass to the other tenants. Tenancy in common does not require equal shares, and each share can be separately transmitted (e.g. to the heirs of the deceased tenant). The usual default in England and Wales is that co-owners of designs and copyright will hold them as tenants in common, but it may be clear from the circumstances (or agreed by contract between the co-owners) that joint tenancy or some other arrangement applies.51 Although the Acts generally refer to the proprietor in the singular, this has to be read as a reference to all of the joint owners. This has the consequence that the joint owners cannot separately licence the design or work – consent of all of them must be sought.52 Joint owners cannot even separately exploit the design without consent of all other owners.53 Joint ownership in design cases is therefore an inconvenient outcome for warring parties, and is accordingly rarely sought or granted. Joint ownership of SUD and CUCD is mentioned in each version of Regulation 6/2002 as amended54 and the CDR05 as amended,55 but not discussed beyond a provision that any one of joint owners can on their own refer a Crown Use dispute to Court if the other owners are named as parties (this has an identical counterpart for UKUDR 56).

7.3.3

SUCCESSION AND TRANSMISSION OF RIGHTS IN DESIGNS

Designs and copyright can be transmitted on death or by other operation of law like other forms of personal property.57

51 See Copinger & Skone James on Copyright 17th Ed., 5-01 & 13-122. 52 This is explicit in the CDPA. It is hard to read the RDA differently. 53 Robin Ray v Classic FM Plc [1998] FSR 622 at [637], a copyright case but as the UKUDR provisions are essentially identical the same result would appear to necessarily apply. As the RDA is differently worded It is a little less clear whether the same is true for registered designs, but again this seems to be the obvious way to read the words of the Act, and the legislature seem to have intended the licensing and assignment of registered and unregistered designs to run parallel so it would be surprising if a different result obtained in the case of co-owners. The point was discussed but not decided in Ifejika v Ifejika [2011] EWPCC 31, [2012] FSR 6 at [15]. As against this, it could be said that the reasoning in Steers v Rogers [1893] AC 232, (1893) 10 RPC 245 is as applicable to registered designs as to patents. 54 SUD, CUCD: CDR Art. 14(2) & Art. 15(2). 55 SUD, CUCD: CDR05, Schedule, para. 5(3). 56 UKUDR: CDPA s. 252(3). 57 Copyright: CDPA s. 90(1), UKUDR: CDPA s. 222(1); UK RD: RDA s. 15B(1).

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7.4

ASSIGNMENTS

7.4.1

ASSIGNMENT OF RIGHTS IN DESIGNS AND WORKS

Right

Provisions

Comment

Registered Designs

RDA s. 15B(1)

UKUDR

CDPA s. 222(1)

CUCD/SUD

–

CDPA s. 90(1)

Other analogues

TMA s. 24, PA s. 30

Patent provisions less similar

Designs and copyright can be assigned, like other forms of personal property. The law governing the transaction might be English or Scottish law, but it might alternatively be the law of another country. For copyright, “[t]he rule at common law is that the question of whether, and to what extent, title to copyright is assignable depends on the law under which that copyright was created” – in some countries, copyrights cannot in fact be assigned (they are “inalienable”). The UK is party to various EU and international mechanisms which govern valid choices of law in contracts, and the intention was that these arrangements should be unaffected by Brexit.58 It is explicit for UKUDR and copyright that assignments “may be partial, that is, limited so as to apply: (a) to one or more, but not all, of the things the design right owner has the exclusive right to do; (b) to part, but not the whole, of the period for which the right is to subsist.” There seems no reason to doubt that the same is true of UK Registered Designs, UCD, CUCD or SUD. However, as renewal fees are due if a Registered Design is to be kept alive, assigning it for only a limited period of time requires thought as to who will be responsible for maintaining and defending the design.

58 This would seem to be the intention behind The Law Applicable to Contractual Obligations and NonContractual Obligations (Amendment etc.) (EU Exit) Regulations 2019, SI 2019/834.

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7.4.2

STATUTORY REQUIREMENTS FOR ASSIGNMENTS

Right

Provisions

Registered Designs

RDA s. 15B(3)-(4)

UKUDR

CDPA s. 222(3), s. 261

CUCD/SUD

–

CDPA s. 90(3), s. 176(1)

Other analogues

TMA s. 24(3), PA s. 30(6)-(6A)

To have effect in law, assignments of copyright and registered and UK unregistered designs should be in writing and signed by or for the assignor(s). No such formalities are specified in the Regulation on Community Designs, or in its UK successor versions, 59 though a written, signed assignment is advisable. No particular form of words is required.60 A company seal can be used to sign for a company, and signature by the required officers will be treated as if it were the seal.61 Either a simple contract or a deed can be used. In other respects the law of property (as it applies to “things in action”) is applicable to designs. Whilst the above requirements apply to an assignment in law, “the general rules relating to equitable assignments” apply to designs as to “any other form of chose in action”.62 Thus, an equitable assignment might be implied from an oral contract.63

7.4.3

ASSIGNMENT OF PRIORITY APPLICATION, AND/OR PRIORITY RIGHT

As noted above, an applicant for a UK Registered Design claiming priority must be the same as the applicant for the priority application, or their successor in title (see 2.4.4.3). The applicant must be the successor in title by the date of filing of the UK Registered Design – an assignment afterwards cannot cure a title defect. However, it is enough to be the equitable, as opposed to the legal, owner.64 In fact, if the equitable title has been transferred, legal ownership may not be enough.65 59 These are therefore in the same position as was the design in Ifejika v Ifejika [2010] EWCA Civ 563, [2010] FSR 29 at [25] under the RDA as it then was: “Although a written legal assignment is the usual method of transmission, s. 2(2) imposes no requirements as to the form any assignment or transmission of the right should take”. 60 Thus, in Ibcos v Barclays Mercantile [1994] FSR 275 an assignment was found to arise from the words “[A] recognises that all PK Software Manuals are the sole property of [B]”. 61 See for example section 44(2)(b) of the Companies Act 2006. 62 Ifejika v Ifejika [2010] EWCA Civ 563, [2010] FSR 29 at [25]. 63 As in Warner v Gestetner [1987] Lexis Citation 1040, [1988] EIPR D-89. 64 See Edwards Lifesciences AG v Cook Biotech Inc [2009] EWHC 1304 (Pat), [2009] FSR 27 and, most recently, Accord Healthcare v Research Corporation Technologies [2017] EWHC 2711 (Pat), [2018] RPC 4 at [75]; the Court of Appeal expressed provisional approval of this general approach in Idenix Pharmaceuticals v Gilead Sciences [2016] EWCA Civ 1089 at [266] – patent cases applicable by analogy. 65 Accord Healthcare v Research Corporation Technologies [2017] EWHC 2711 (Pat), [2018] RPC 4 at [76].

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Thus, where the original priority applicant has assigned the foreign application before a UK filing, the assignee should file the UK application. This is the case whether or not the assignment would meet the requirements of English or Scottish law, provided it is sufficient to be treated as an assignment of the equity (the beneficial interest) in the design – i.e. the right to call for the design to be formally assigned later. The IPO has the right to examine entitlement to priority, and to refuse the application if the applicant does not appear to be the priority applicant or his/her successor in title.66 As it is necessary to file a copy, and sometimes a translation, of the priority application, discrepancies between the priority applicant and the UK applicant are liable to lead to objections. As a result, Application Form DF2B67 includes a box allowing applicants to explain in advance: “If the earlier application was made in a different name, say how the current applicant has a right to apply. If, for example, by assignment of the earlier application, give the date of the transaction.” It may be necessary to provide a copy of the assignment if so requested. Even if the priority application has not been assigned, there is an accepted practice of assigning the right to file in another country and claim priority to it.68 The right to claim priority is a future “thing in action”, so that an assignment of priority right is an equitable assignment only. Nonetheless it is probably advisable that it satisfies the same requirements as would an assignment of an existing application.

7.4.4

OTHER POINTS TO CONSIDER

Every transaction is different, but in most cases (as with other IP rights) it is also important to consider whether: (a) The right to any back-damages that have already accrued is to be assigned; (b) There is any reversion to the assignor (for example after a certain time or on the occurrence of certain trigger events); (c) The assignment carries any warranties (for example, that the assignee is the sole owner); and, if so, which;69 (d) There is a licence to use any “background” rights (e.g. earlier works or designs which are reproduced in the design concerned), and/or; (e) Any other rights are to be assigned (see below).

66 RDA s. 3A(3). 67 Strangely, Form DF2A (the main application form) no longer does. 68 Referred to as “an entirely synthetic right” (but nonetheless accepted) by an EPO Technical Board of Appeal in Case T 0844/18 (CRISPR-Cas/BROAD INSTITUTE), [2021] EPOR 9 at [80]. 69 The Law of Property (Miscellaneous Provisions) Act 1994 (1994 c. 36) implies certain covenants as to title into any assignment.

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7.5

LINKAGES BETWEEN DIFFERENT RIGHTS IN DESIGNS

7.5.1

GENERAL

A consequence of multiple different rights in a design is that some may, inadvertently or otherwise, be assigned or licensed separately of others leaving the intended beneficiary blocked. The CDPA made some efforts to reconcile UKUDR, UK RDs and (to a lesser extent) copyright. Unfortunately, UCD (and SUD and CUCD) were never brought under the same umbrella, though the IP Act 2014 did to some extent harmonise first ownership and defences.

7.5.2

LINKS BETWEEN UK RD AND UKUDR

“The policy was plainly to avoid separation of ownership of the two legal rights.”70 The CDPA created some systemic links between ownership of UK Registered Designs and any associated UK Unregistered Design Right, with the intention (subject to contract) of keeping the two together. Specifically: • • •

An assignment of UKUDR is assumed also to assign any associated UK Registered Design, subject to any contrary intention;71 and An assignment of a UK Registered Design is assumed also to assign any associated UKUDR, subject to any contrary intention;72 The applicant for a UK Registered Design has to be the person who claims to be the owner of any associated UKUDR in the design.73 (At one time, the application form used to require a declaration to this effect, but it disappeared in the 2006 versions of the application forms74). Ownership in equity is arguably sufficient.75

70 IPO letter quoted with approval by HHJ Fysh J in Woodhouse UK Plc v Architectural Lighting Systems [2005] EWPCC (Designs) 25, [2006] ECDR 11 at [42]. 71 RDA s. 19(3B). 72 CDPA s. 224. 73 RDA s. 3(3). For a history of the hoary phrase “claiming to be the proprietor”, see AL BASSAM Trade Mark [1995] RPC 511 at page 523. 74 To the relief of many after the Registrar statement that “… applicants should not be left with the impression that the making of such a declaration is not without importance or consequence. In this connection, I note that section 34 of the Act makes causing a false entry to be entered in the register a criminal offence.” IPO letter quoted with approval by HHJ Fysh in Woodhouse UK Plc v Architectural Lighting Systems [2005] EWPCC (Designs) 25, [2006] ECDR 11 at [42]. 75 Ifejika v Ifejika [2010] EWCA Civ 563, [2010] FSR 29 at [28]; although now-repealed provisions of former s. 1 rather than current s. 3(3) was considered, it is hard to see why that should make a difference.https://www. legislation.gov.uk/ukpga/Geo6/12-13-14/88/section/3

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7.5.3 LINKS BETWEEN UK RD AND COPYRIGHT An assignee or licensee of a registered design does not infringe any copyright corresponding to the design, when relying on a licence or assignment which has been registered at the IPO, even if the licensor or assignor turns out not to have been the true owner.76

7.5.4 NO LINK BETWEEN UKUDR AND COPYRIGHT There is no similar statutory presumption that an assignment or licence of UKUDR carries with it an assignment or licence of copyright. Presumably the reason is that the original scheme of the CDPA was that the two should not overlap because of the combined effects of the s. 236 defence to UKUDR infringement where copyright is infringed, and the s. 51 defence to copyright infringement which usually operates where UKUDR exists.

7.6

DESIGN APPLICANTS

7.6.1 UK REGISTERED DESIGN APPLICANTS Until 2001, the RDA required that the applicant was “a person claiming to be the proprietor”.77 This meant, in fact, “was the proprietor” – a good faith belief was not enough to prevent a design being removed from the Register if the registered proprietor was not in fact the true owner78 - though arguably it was enough to be the equitable, not the legal, owner at the time of filing.79 However, this requirement was removed in 2014,80 with the apparent effect that any person could be the applicant. Before grant, the IPO can in principle refuse an application on proprietorship grounds if:81 • •

It is made by someone who is not the proprietor of the corresponding unregistered design right,82 or It is made by someone who is not the owner (or assignee) of the foreign application from which it claims priority.83 This is also true in examination of a Hague (International) design designating the UK.

Strangely, although the requirement that the applicant claim to be the proprietor was deleted, the power to refuse on that basis was not84 – clearly an accident. However, if the registered proprietor is

76 77 78 79 80 81 82 83 84

CDPA s. 53. RDA as enacted, s. 3(2). Ifejika v Ifejika [2010] EWCA Civ 563, [2010] FSR 29 at [14]. Ibid. at [28]. IP Act 2014, s. 6. The Explanatory Memorandum indicated that “This brings UK law into line with the way the EU Regulation deals with applications for registered designs.” RDA s. 3A(3). RDA s. https://www.legislation.gov.uk/ukpga/Geo6/12-13-14/88/section/3A3(3). RDA s. 14(1). RDA s. 3A(3) still refers to s. 3(2).

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not the true owner, the true owner (and no one else85) can after registration bring proceedings (at the IPO or in Court) to invalidate the design,86 or (in Court) to rectify the register to take it over.87

7.6.2 REGISTRATION OF ASSIGNMENTS AND OTHER TRANSFERS AT THE IPO “People need to know who is on the register.”88 RDA Sections

s. 19

Related UK Rules

r. 27(3), (4)

Form

DF12A

The RDA indicates that anyone newly acquiring a UK RD (or an interest in one), is obliged to register their title,89 though the currently registered proprietor can also do so.90 In fact, there are no apparent penalties for non-registration, but the Act refers throughout to the privileges of the registered proprietor,91 and registration confers several specific benefits. • • •

• •

Firstly, registration of title is prima facie proof of ownership92 and an unregistered instrument can only be admitted into Court proceedings with the permission of the Court;93 Secondly, the registered proprietor will be the party recognised by IPO in proceedings before it; Thirdly, the registered proprietor (and anyone else with a registered interest) has some protection against later transactions, which are subject to such registered interests94 – “equity’s darling”, the bona fide purchaser for value without notice, is on notice by virtue of the registration; Fourthly, the registered proprietor is the person who can bring infringement proceedings;95 Fifthly, registration of an assignment or licence also carries a licence under corresponding copyright (see 5.3).

Changes in name or address can also be registered.96 85 86 87 88 89 90 91 92 93 94 95 96

RDA s. 11ZB(5). RDA s. 11ZA(2). RDA s. 20. Jacob J, LG Electronics v NCR Financial Solutions Group Ltd [2003] FSR 24 at [18], approved by the Supreme Court in Schütz (UK) Ltd v Werit (UK) Ltd [2013] UKSC 16, [2013] RPC 16 at [85]. RDA s. 19(1) “he shall”. RDA s. 19(2). Defined in RDA s. 44 as “the person or persons for the time being entered in the register of designs as proprietor of the design”. RDA s. 17(8). RDA s. 19(5). RDA s. 15B(2). RDA s. 24A(1). RDR r. 34, Form DF16A.

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7.6.3

INTERNATIONAL DESIGN APPLICANTS

The Hague Agreement (Geneva Act) is a closed system – it can only be used by applicants with the necessary connection to a Contracting Party (a country, or a region such as the EU). This means: • • • •

being a national of; having a habitual residence in; having a domicile in; or having a real and effective industrial or commercial establishment in:

a State that is a Contracting Party, or is a member of an intergovernmental organization (like the EUIPO) that is a Contracting Party. If there are joint applicants, they all need to be entitled to apply through one of these connections. The application form DM/1 requires the applicant(s) to explain the basis of their entitlement to file. Where priority is claimed, then as for the UK the applicant also needs to be the same as, or successor in title to, the applicant for the priority application. WIPO does not examine this issue, but national offices which examine may do so: the UK can refuse an application if the applicant is not the successor in title of the priority applicant.97 Contracting States can specify that only the designer can be the applicant for that State, and/ or that the designer must be named in the application. A few have done so.98 In such cases, the application form contains a statement that “Where the person identified as the creator is a person other than the applicant, it is hereby stated that the present International Application has been assigned by the creator to the applicant.”99 Where the US is designated, it is desirable to file Annex 1 with Form DM1, which is a sworn declaration by the designer (“inventor”) indicating that he authorises the filing, or on his behalf indicating the designer and signed by the applicant as representative, legal or equitable owner of the design.

7.6.4

REGISTRATION OF ASSIGNMENTS AND OTHER TRANSFERS AT WIPO

Changes in proprietor can be recorded at WIPO on Form DM/2. The assignment can be “partial” in the sense that: • •

Ownership can be assigned to different people in respect of different designations, and/or Where the registration contains multiple designs, they can each be separately assigned.

97 RDA s. 3A(3) as amended by The Designs (International Registration of Industrial Designs) Order 2018, SI 2018/23. 98 Finland, Ghana, Hungary, Iceland and Mexico. The US also requires indication of the designer. 99 Form DM/1 Item 11.

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The change is notified to WIPO, who do not require details of the mechanism by which the transfer took place and do not enquire into it. The request to register the change can be made by the currently-registered proprietor (assignor). It can also be registered by the new proprietor (assignee), but only if accompanied by the signature of the current proprietor (assignor), or attested by a Court or other competent authority of the currently-registered proprietor’s (assignor’s) State. However, it is important to note that any new proprietor has to have suitable entitlements in the same way as an applicant would have. WIPO will not register any change to a new proprietor who lacks an entitlement. This makes it difficult for groups to use IP holding companies in tax havens (many of which are not parties to the Hague Agreement (Geneva Act) to hold their International Designs.

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PART 8 EXPLOITATION 8.1

TERMS IN DESIGN-COMMISSIONING CONTRACTS...........................................268

8.2 VOLUNTARY LICENSING..................................................................................... 269 8.3

COMPULSORY LICENSING AND LICENCES OF RIGHT........................................ 272

8.4

CROWN USE OF DESIGNS.................................................................................. 273

8.5

DESIGN PORTFOLIO MANAGEMENT.................................................................. 277

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8.1

TERMS IN DESIGN-COMMISSIONING CONTRACTS

Many designs are commissioned from independent designers or firms of designers. There is no single standard contract suitable for commissioning designs, but some issues arise regularly enough to require mention. The core of a design commissioning contract includes: • • •

The client’s specification or brief to the designer which the delivered design must meet; The designer’s delivery process (delivery date, acceptance process by the client); and The payment terms.

Where the IP terms are explicit, it is likely that buying outright ownership of the design rights will cost more than buying a bare licence to use the design. Intellectual property may not explicitly be dealt with. If not, then it is necessary to imply intellectual property terms into the contract. These usually involve at least a non-exclusive licence to use the delivered design – why else would the client pay for it?1 In some cases, a licence is not enough, and ownership will be implied. That would be the case where, for example, the deliverable was to be a new trade mark of the client, 2 with the necessary implication that the client should be able to stop imitators. It is also necessary to be clear which designs are being bought, and which are licensed. For example, a contract may specify that the designer should deliver several candidate designs, from which the client can accept one. In that case, the rights assigned are usually only those in the accepted design. Or a delivered design may be based substantially on the designer’s background designs existing before the commission, and/or developed during the commission. The rights assigned are again usually only those in the accepted design, though it would usually be necessary to imply a licence to use the background designs to the extent that they are reproduced in the accepted design. A normal provision is that the rights in the design are only assigned to the client when the contract is complete, the deliverable design has been accepted, and payment has been made in full. If the contract comes to an early or unhappy end, the client will not have acquired the rights, in law at least. Clients may seek reassurance that the design will not infringe third-party intellectual property 1 2

See for example the discussion of the authorities in MGN v Grisbrook [2010] EWCA Civ 1399, [2011] ECDR 4. As in Griggs v Evans [2005] EWCA Civ 11, [2005] FSR 31.

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rights. The value of any warranties or indemnities in the contract will depend on the resources of the independent designer, but it is often the case that the designer or design firm is too small, compared to the client, to be good for the client’s losses if the design should infringe third-party rights, and rare for designers to carry professional indemnity insurance. Nonetheless, a contract term that the designer shall not copy others has some value if the client later wishes to show “innocence” in infringement proceedings. Where the designer is famous, it may be necessary also to consider: • • •

Exclusivity, for example for a season or a year, during which the designer will not work for competitors; Right (or obligation) to use the designer’s name; and Quality and/or marketing control, so that for example a fashion designer is not associated with low-quality clothing, or low-end channels such as supermarkets.

8.2

VOLUNTARY LICENSING

Voluntary licensing of designs is relatively uncommon. Competitors ought to be able to develop their own products without requiring a licence. Some exceptions to the rule are: (a) Inward licensing of toys – it is fairly common for individuals to propose unsolicited toy ideas to toy companies, and these will sometimes be picked up. A licence is the best way for the creator to secure an income stream. (b) Merchandising – a popular magazine cartoon strip may be exploited as films, toys or games. Similarly a popular game can be exploited as a film or book, or a film can be exploited as a game or book. It is therefore fairly common to licence toymakers to manufacture and sell toys under any relevant design, trade mark or copyright. The licensee is usually in a different sector to the licensor, so the licence is “vertical” rather than “horizontal”. (c) Franchising – franchisors try to ensure a consistent image across all of their franchisee businesses, and this often involves the use of licensed designs, trade marks or copyright to control the franchisees. (d) Financial structuring – or, to put it more bluntly, tax planning. Companies within a group may hold IP rights in a holding company incorporated in a fiscally favourable jurisdiction, and have operating companies pay a royalty to the holding company on licensed products.

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Some issues to consider (which are common to most IP rights) are: Nature. Is the licence: • Exclusive3? • Sole? • Non-exclusive? • With right to sub-licence? Scope. Is the licence for: • All acts or just for, e.g., manufacture? • All products? • All parts of the UK? • All time, or time-limited? Restrictions. Are there limitations on: • Quality? • Materials? • Distribution channels? Litigation and cooperation. • Can the licensee sue independently? • If not, is the licensor obliged to do so? • If not, are the parties obliged to cooperate? • Who is responsible for renewal payments? • Who is responsible for registering the licence? Consideration and Payment. Is the licence: • Free? • Lump-sum? • Royalty-based and if so, on what? Marking. Should licensed goods be marked: • With a reference to the design and/or copyright? • With a reference to the licensor? Licensing is usually pro-competitive in effect since it enables licensees to do things they otherwise could not, but the Competition and Market Authority (“CMA”) warn that you should not “[t]hink that using an intellectual property licence as a framework for collaboration… will protect you from 3

Defined in RDA s. 15C & CDPA ss. 92 & 225 as one “authorising the licensee to the exclusion of all other persons, including the person granting the licence”.

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scrutiny.”4 A detailed discussion of competition law is beyond the scope of this book but it should be noted that licence terms which create price or volume constraints, or divide the UK market, will be treated as suspicious under Chapters I5 or II6 of the Competition Act 1998.7 The CMA can impose fines of up to 10% of worldwide turnover, and/or pursue criminal sanctions. Foreign competition authorities may also be engaged where the agreement has effect outside the UK.8 The EU Commission has provided Block Exemption Regulations which assist companies in determining whether or not they need to notify agreements to the CMA for review for clearance. The government has continued the effect of the following (with amendments) in the UK after Brexit: Block exemption

Commission Reg.

Expiry date

Vertical agreements (“VBER”)

330/2010

31 May 2022

Research and development agreements (“R&D BER”)

1217/2010

31 December 2022

Specialisation agreements (“Specialisation BER”)

1218/2010

31 December 2022

Technology transfer agreements (“TTBER”)

316/2014

30 April 2026

Of these, the TTBER is the most relevant for designs. It applies only where the parties account for less than 20% of the total market (30% if they are related parties).9 It specifically covers licences under design rights10 and other intellectual property (e.g. copyright) licensed within and ancillary to design right licences,11 though not copyright licences in general. A licence which contains “hardcore” (formerly known as “black-listed”) restrictions, on production volume, price, or customers for example, loses the benefit of the exemption.12 Such restrictions are also unlikely to be allowed if clearance is sought. If “excluded” (formerly known as “grey-listed”) conditions are present, then those conditions lose the benefit of the exemption.13 These are “hard grant-back” (an obligation to assign the licensee’s improvements to the licensor) and “no challenge” validity clauses.

4 5 6 7 8 9 10 11 12 13

CMA Joint Venture Business Advice, 12 April 2018, https://www.gov.uk/government/publications/joint-venturesand-competition-law-dos-and-donts/joint-venture-business-advice. Agreements in restraint of trade. Abuse of dominant position. 1998 c.41. Including the EU Commission in relation to Art. s 101 & 102 of the Treaty on the Functioning of the European Union (“TFEU”). Ibid. Art. 3. TTBER Art. 1(b)(iii). It is unclear whether “design rights” include unregistered design rights. Ibid. Art. 2(3) & 1(h). Ibid. Art. 4. Ibid. Art. 5.

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8.3

COMPULSORY LICENSING AND LICENCES OF RIGHT

RDA Sections

11A, 11AB

Design Directive Basis (Art. )

Design Directive Recitals

SUD, RCD Equivalent (Art. )

Related UKUDR Sections

238

Other Analogues

(c): s. 144, Sched. 2A para.17(1); PA s. 51.

When the RDA was enacted in 1949, a compulsory licence could be ordered on the ground that a design was not being worked in the UK “to such an extent as is reasonable in the circumstances of the case”.14 However, none had been granted by 198515 and it is likely that none were granted thereafter. The provision was repealed in 2001,16 on the basis that it was “probably incompatible with the Directive since there is no statement in the Directive that they are allowed, nor any related provision in the Regulation.”17 Although this was not considered, compulsory licences would also seem to be incompatible with TRIPs which permits only very limited exceptions to the proprietor’s rights (essentially replicated within the UK/EU TCA). In 1985, the Monopolies and Mergers Commission reported on Ford’s refusals to grant licences for body panels. They noted the presence of patent provisions18 allowing the order of a compulsory licence of right (on terms settled by the Comptroller) in response to a finding of a “refusal of a design right owner to grant licences on reasonable terms”; bemoaned the absence of corresponding powers over designs and copyright; and suggested creating such powers.19 This was done, for copyright, registered and unregistered designs, by the CDPA.20 Since then, these powers have remained unused. 14 RDA Former s. 10. 15 Ford Motor Company Limited: a report on the policy and practice of the Ford Motor Company Limited of not granting licences to manufacture or sell in the United Kingdom certain replacement body parts for Ford vehicles, Cmnd 9437, Monopolies and Mergers Commission, 28th February 1985, Appendix 1 para 16; summary at Re Ford Motor Company Limited’s Replacement Body Parts Policy, [1986] FSR 147. 16 By Regulation 6 of the Registered Designs Regulations 2001. 17 Legal Protection of Designs: A Consultation Paper on the implementation in the United Kingdom of EC Directive 98/71/EC, Patent Office, 12 February 2001 at para 46. 18 PA s. 51(4). 19 Ford Motor Company Limited: a report on the policy and practice of the Ford Motor Company Limited of not granting licences to manufacture or sell in the United Kingdom certain replacement body parts for Ford vehicles, Cmnd 9437, Monopolies and Mergers Commission, 28th February 1985, 6.17-6.19, 6.56-6.61, 6.70; summary at Re Ford Motor Company Limited’s Replacement Body Parts Policy, [1986] FSR 147. 20 At the same time, the patent provisions were amended for consistency.

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The relevant trigger is a finding of: (a) conditions in licences granted by a design right owner restricting the use of the design by the licensee or the right of the design right owner to grant other licences, or (b) a refusal of a design right owner to grant licences on reasonable terms. An example of a refusal to grant licences on reasonable terms is Ford’s offer of a 60% royalty for its body panels.21 A few other examples may be found in the (sparse) case law on the patent compulsory licensing provisions, which contain the same wording.22 For licences of right in general, see 6.8.

8.4

CROWN USE OF DESIGNS

Servants and agents of the Crown (i.e. the UK government, not the sovereign in person) can generally be sued for infringement23 in the civil courts, 24 but the Crown Proceedings Act 194725 precludes injunctions against the Crown.26 However, this exemption does not extend to suppliers and contractors. The Crown Use provisions for inventions and designs modify this basic regime. The general scheme of the Crown Use provisions is that the Crown (or a person such as a contractor or agent, authorised by the Crown) can do what would normally be an infringement, but must pay compensation to the design holder (or exclusive licensee). The authorisation of agents or contractors may be given retrospectively, and may be express or may arise through necessary implication.27 Where the use is a procurement of goods for the Ministry of Defence, authorisation is commonly given in a standard contract condition.28

21 22 23 24 25 26 27 28

British Leyland was offering licences at 7% in the same period. PA s. 48A(1)(b), and its predecessors PA s. 48(3)(d), PA1949 s. 37(1)(d), PA1907-1946 s. 27(2)(d) See s. 3 of that Act. For the details, see CPR Part 66 and PD 66. 1947 c. 44. See Section 21. IPCOM v Vodafone [2021] EWCA Civ 205. For older contracts, Standard Condition SC 32A and/or 32B of Form GC/Stores/1. More recently, see DEFCON 632, and Condition D1 of Standard Contracting Terms SC2.

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8.4.1

CROWN USE OF REGISTERED DESIGNS

RDA Sections

12, First Schedule

Design Directive Basis (Art. )

Design Directive Recitals

SUD, RCD Equivalent (Art. )

Leading Cases

Pfizer v Minister of Health (HL), Patchett’s Patent (CA), IPCOM v Vodafone (CA)

Related UKUDR Sections

240, 241, 242, 243, 244

Other Analogues

CUCD/SUD: CDR05 Sched. PA, ss. 55-59

The First Schedule of the Registered Designs Act 1949 makes elaborate (and rarely-used29) provisions saving the Crown from infringement of UK registered designs. These are closely similar to those of the Patents Act 197730 (and more so to those of the Patents Act 1949) and, in the absence of design cases, patent case law and practice is the only available guidance. The scope of use “for the services of the Crown” is a little nebulous. Generally, it will extend to duties imposed on Ministers and their departments, which include defence, 31 and sales of products for foreign defence purposes (i.e. to foreign governments for their own or mutual defence purposes, or to the United Nations for use by forces acting in its name).32 In Pfizer v Minister of Health33 which concerned supply of drugs by the National Health Service, the majority of the House of Lords held that an act was done “for the services of the Crown if it was done for the purpose of performing a duty or exercising a power, which was imposed upon or invested in the executive government by statute or by prerogative”. The scope of Crown Use may change over time with the changing role of the State, as indicated by Lord Reid in Pfizer.

29 The author worked for some time in the government department responsible for claims for Crown Use, and noted records of only a single such claim, based on use by the Prison Service of a registered design relating to handcuffs. 30 The two share a common ancestor in the Patents Act 1949. 31 Patchett’s Patent (No.2) [1967] FSR 249, [1967] RPC 237. 32 Registered Designs Act 1949, First Schedule Section 12(6). 33 Pfizer Corporation v Ministry of Health (1965) AC 512, [1965] 82 RPC 261.

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8.4.2 CROWN USE PROVISIONS FOR UK UNREGISTERED DESIGNS “The power which the Crown is seeking to give itself is a new power. It has been described somewhat vulgarly as licensed burglary.”34 CDPA Sections

240, 241, 242, 243, 244

Leading Cases

Pfizer v Minister of Health (HL), Patchett’s Patent (CA)

Related RDA Sections

12, First Schedule

Other Analogues

CUCD/SUD: CDR05 Sched. PA, ss. 55-59

Where the Crown uses a patented invention, the Patents Act 1977 provides that it also acquires a parallel right to use any necessary copyright or unregistered design right, subject to payment to the relevant rights holder where it does so.35 In the absence of a patent, the Crown has the right to use unregistered UK designs, under provisions36 modelled on those of the Registered Designs Act but with their scope limited to “the defence of the realm, foreign defence purposes, and health service purposes”. The last of these purposes is explicitly defined.

8.4.3 EMERGENCY CROWN USE POWERS During periods of emergency, the Crown can use UK registered and unregistered designs for much wider purposes.37

8.4.4 CROWN USE OF COMMUNITY AND SUPPLEMENTARY UNREGISTERED DESIGNS Finally, equivalent Crown use provisions apply to Community designs, by the Schedule to the CDR0538 (implementing CDR Art. 23 which is itself now no longer applicable in the UK), “but only to the extent that the use is necessary for essential defence or security needs” – a much narrower scope than that of UK Registered Designs or even UK Unregistered Designs. The same applies to Continuing Unregistered Community Designs and Supplementary Unregistered Designs by virtue of the respective modified versions of the CDR05.

34 35 36 37 38

Lord Mottistone, Hansard HL Deb Volume 491 col 1158, 12 January 1988. PA s. 57(1) & (9). CDPA s. 240, 241, 242, 243. Set out in paragraph 4 of the First Schedule to the RDA and CDPA s. 244. SI 2005/2339.

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8.4.5 PRINCIPLES OF COMPENSATION Compensation is payable by the Crown where it does something which would otherwise infringe the design; if the design would not be infringed or is invalid, the Crown will not pay. There are two distinct bases of compensation. Under paragraph 2 of the Schedule, compensation is payable without regard to the nature of the holder of the design. The amount is determined on a “willing licensor – willing licensee” basis, according to the Court of Appeal in Patchett’s Patent, 39 and the amount concerned under this head is the same whether the design is held by an individual who has never worked it, or a large company who produces products to the design in volume. On the other hand, if the holder is a manufacturer who could have supplied the Crown’s order and the Crown uses its powers to purchase from elsewhere, paragraph 2A40 allows the holder to recover its loss for not getting the contract, including lost profits and underused capacity, in addition to compensation payable under paragraph 2. In the event of dispute over compensation, the proprietor (or exclusive licensee) can bring the dispute to the High Court where it will proceed generally like an infringement action.

8.4.6 CROWN USE OF COPYRIGHT WORKS No corresponding Crown use rights exist for copyright, except in conjunction with use of a patented invention.41 The Defence Contracts Act 195842 does permit the Crown to authorise a potential defence supplier to use any technical information or copyright material in his possession for the purposes of supply to the Crown, specifically including: “any specification or design for articles, and any process or technique used in the production of articles (not being in any case a patented invention or registered design), and any drawing, model, plan, document or other information relating to the application or operation of any such specification, design, process or technique” On its face this applies to licensees supplied with such technical information by a licensor, who are released from their licence obligations (including payment obligations – the Crown is instead required to compensate the licensor for such use, as for use of protected designs). However, s. 6(2) of the Act extends its scope to include copyright infringement as well as breach of contract and confidentiality. In practice, as prior notice and Ministerial approval is required for such authorisations, the Act is used rarely, if ever.

39 40 41 42

Patchett’s Patent (No.2) [1967] FSR 249, [1967] RPC 237. Added by the CDPA. PA s. 57(1). 1958 c. 38, 6 & 7 Eliz. 2.

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Under the Copyright, Designs & Patents Act 1988, where the Crown has a document embodying an unpublished work, the Crown acquires the right to freely copy the document and/or issue copies to the public for the purpose for which it was supplied or “any related purpose which could reasonably have been anticipated by the copyright owner”,43 but only, where it was supplied to the Crown in the course of public business by or with the licence of the copyright owner, and subject to any agreement to the contrary in any event.

8.4.7 USE BY OTHER GOVERNMENTS IN THE UK; USE BY THE UK GOVERNMENT ABROAD The doctrine of state or sovereign immunity is generally recognised as protecting a state from being sued in the courts of another, at least as regards its non-commercial activities such as defence. Thus, foreign forces in the UK and UK forces abroad are normally immune from actions for design or copyright infringement or use. However, use of a design in the UK by foreign forces is treated as Crown Use and can be authorised (and presumably compensated) by the UK government.44

8.5

DESIGN PORTFOLIO MANAGEMENT

In an ideal world, innovators would have protection for every innovative design, everywhere. However, protection entails cost. “Portfolio management” generally involves maintaining the best protection within the available budget; and keeping records that allow the owner to know what protection they have so that they can make decisions as to how to use or abandon it.

8.5.1

MANAGING UNREGISTERED DESIGN RIGHTS

Unregistered UK designs do not benefit from any presumptions of authorship or ownership.45 It would therefore be wise to log and retain, for each new product, at least: • • • •

The designers, together with their nationalities and residences; Their contracts of employment (if internal), or development contracts (if external); Dates and copies of the design documents; and The dates, circumstances and documentation of: o First disclosure, o First marketing, and o First sales.

As any UKUDR will last 15 years from the calendar-end of creation or ten years from the calendar-end of first marketing, and damages could be claimed for up to six years post-expiry, 43 CDPA s. 48. 44 By virtue of Schedule 4 of The Visiting Forces and International Headquarters (Application of Law) Order 1999, SI 1999/1736. 45 Unlike the presumptions available to copyright authors or owners named on publication: CDPA s. 104.

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counsel of perfection is to retain such documents for up to 16 years (with an annual clear-out each New Year). For UK purposes there is no need to use external providers to archive designs if the client’s internal records are adequately kept, but elsewhere there may be advantages to the use of a notary or a specialist online archive. For example, Anti Copying In Design (“ACID”)46 offers its members use of an “IP Databank” to store details of their unregistered designs. Sadly, most companies do not in fact keep records of unregistered designs until they are copied.

8.5.2 MANAGING REGISTERED DESIGN RIGHTS 8.5.2.1 Management information It is important to maintain records of each design registration indicating, in addition to the data suggested above for unregistered designs, at least the filing date and status in each country where the design is registered. Most IP record systems will provide this functionality. To ensure that the design can easily be identified, it is desirable additionally to keep at least one representative image of the design, as well as a reference to the product to which it is applied, and details of any licences granted. 8.5.2.2 What to file in addition to filing designs for each new product, thought should be given to protecting logos or patterns, or other elements of a design, which might be used on future products (for example as a trade mark). In some cases, it may also be desirable to consider protecting the designs of major components, at least in countries which permits protection of spare parts (Germany and France, for instance). 8.5.2.3 Where to cover The choice of countries to cover depends on a number of factors. Firstly, it is desirable to protect major existing markets, and future potential markets, of the proprietor and/or any licensees. Secondly, it is desirable to protect the major markets or manufacturing territories of known competitors or likely counterfeiters, so as to be able to stop infringements at source. Against this, it is necessary to balance the cost of obtaining protection in each territory. Costs can be very low if the international system is used, but may be hundreds or thousands of pounds (including translation costs and local agent charges) if the national route is used.

46 https://www.acid.uk.com/

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Further factors which act against selecting a territory include enforcement difficulties (e.g. inadequate legal systems) and likelihood of refusal. Larger proprietors therefore often have an “A” list set of countries in which they always file, and a longer “B” list of countries in which only important designs are filed. 8.5.2.4 How to file The filing strategy selected depends on several factors. Most important of these is the relative cost. It is always cheaper to use multiple design filings, where these are available. A single new product may involve several new designs – of the whole; of new parts; of major spares and components; of surface decoration, logos and ornaments. There may also be accessories or companion products (e.g. different game pieces in a board game, or different items of cutlery or crockery) which are sold and/or used together and could be considered to form a “set”. If it is not essential to file immediately, there may be advantages in bundling together even wholly unrelated designs into a single application, to save fees. However, whilst multiple designs are a feature of UK, EU and International design practice, many major countries47 do not allow them and others48 allow them only under restricted circumstances. It is almost always cheaper to use regional or international filings (e.g. via the Hague system) than to file national applications, particularly when agent charges are taken into account. This may, however, not be true of major “examining offices” such as the US, Japan and Korea, where objections are frequent and appointment of local agents is necessary as a result – better and often cheaper protection for these is in some cases obtained by filing direct. Against its advantages, the Hague system adds some delay to the registration process; if rapid registration is necessary, it may be preferable to choose a regional filing (e.g. at EUIPO) or national filings. For important designs, using the national filing route with the assistance of a local agent increases the chances of obtaining valuable design protection. Many applicants use the priority system to first file in a relatively convenient and cheap office (such as the IPO) and then file abroad within six months claiming priority. Whilst this can defer costs, it is not very compatible with the Hague international design system which at present does not require WIPO to forward priority documents to all designated offices. If the international system is to be used, it may be better to file directly at WIPO as the first filing, and claim priority from that elsewhere as needed.

47 e.g. the US. 48 E.g. Korea.

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8.5.2.5 Managing Renewal Payments In most countries, renewal fees must periodically be paid to maintain a design registration in force, usually through a mandatory local agent. However the renewals for international designs can be paid centrally at WIPO – a strong point in favour of the Hague design system. Whilst it would be cheaper for a proprietor to pay renewal fees themselves, most design proprietors use specialist external renewal agencies. The advantages of using external agencies are: firstly, that their systems are less likely to fail; secondly, that they monitor each country for changes in law or fees so that there is no need for the proprietor to do so; and thirdly, that they can negotiate bulk deals with local agents which reduce the charges for renewal services. Specialist renewal agencies are also likely to carry indemnity insurance which may provide partial relief if a design is accidentally abandoned. Renewal agencies generally offer a “renew unless” option, in which case designs are renewed by default, which is the safest way to manage a portfolio. 8.5.2.6 Portfolio pruning Many product designs have a limited lifetime on the market. For this reason, most design registrations are not renewed past their first five-year term. Renewal fees in many countries are progressive over time, so that the cost of keeping a design rises. With a fixed budget, it is therefore desirable to abandon designs of little value to free budget for filing new designs. The five-year renewal cycle for international designs (also used in many national design systems) also provides a convenient portfolio review cycle. 8.5.2.7 Post grant registrations Where an assignee receives the assignment of a design after registration, there are benefits in registering the change of title. However, an assignment registration program before national offices is expensive and time-consuming, because of the need to obtain translations; obtain local advice; pay any relevant transaction fees or taxes; and obtain notarised or legalised copies of documents. On the other hand, registration of assignments is a quick and easy formality for international design registrations, although a handful of countries will not accept the international registration as proof without further steps before the national office concerned.49 It is also necessary to bear in mind that an international design cannot be assigned to a person who would not have been entitled to file the design. Thus, inter-group transfers to holding companies in tax havens may prove difficult if the international system is used. It is possible, and relatively cheap, to record changes of name and address (or corrections to the name and address) of the proprietor before WIPO, and desirable to do so. Again, this can be an expensive exercise before national offices, and the cost may outweigh the benefits. 49 The US, Russia, Korea, Mexico, Denmark and OAPI at the time of writing.

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There are fewer reasons for a proprietor to register licences, mortgages and so on (though it may be in the licensee’s or lender’s interests to do so). It is not possible to register licences or mortgages for international designs at WIPO.

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PART 9 LITIGATION 9.1 INTERPRETATION OF REGISTERED DESIGNS...................................................... 284 9.2 STANDING TO SUE............................................................................................. 286 9.3 COURTS WITH JURISDICTION........................................................................... 287 9.4

REMEDIES FOR INFRINGEMENT......................................................................... 288

9.5

THREATS............................................................................................................ 303

9.6

PRIVILEGE.......................................................................................................... 305

9.7 CRIMINAL INFRINGEMENT..................................................................................306 9.8

ADMINISTRATIVE ENFORCEMENT..................................................................... 307

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Almost all UK design litigation is civil litigation, and the competent courts are set out in the RDA at s. 27. Within England and Wales, the procedure is governed by the Civil Procedure Rules (the “CPR”) as modified by the special provisions of CPR Part 63, and in Scotland the Rules of the Court of Session and in particular Chapter 55 thereof. TRIPS contains some minimum standards on enforcement of intellectual property rights, which were enacted and expanded by the EU Directive 2004/48/EC on the enforcement of intellectual property rights1 (the “Enforcement Directive”), implemented in the UK by the Intellectual Property (Enforcement, etc.) Regulations 20062 which in turn amended the primary and secondary IP legislation.

9.1

INTERPRETATION OF REGISTERED DESIGNS

Design protection in the UK is based on the registered visual images and there is nothing like a patent claim to define the scope. “It is, of course, up to an applicant as to what features he includes in his design application…”, 3 so the applicant can determine the scope and focus of the registered design by what he or she decides to include and exclude from the representations. The decisions of the Court of Appeal4 and the Supreme Court5 in Magmatic v PMS (the “Trunki” case) explain how to interpret a registered design (in that case, a Registered Community Design). According to Kitchin LJ: “An application for a Community design must contain a representation of the design suitable for reproduction and an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied. It may also include a description explaining the representation. But all this additional information does not affect the scope of the design (see: Article 36(6) of the Regulation). At the end of the day, the scope of the design must be determined from the representation itself. ... The scope of the protection must be discerned from the graphical representation and the information it conveys.” In the Supreme Court, Lord Neuberger indicated that the correct approach to interpretation is that: “… each Community Registered Design image must be interpreted in its own context…” “… we should interpret the images on a Community Registered Design by reference to how it would appear to a reader in the light of the terms of the Principal Regulation, the Implementation Regulation and the practice of OHIM.”6 1 2 3 4 5 6

EU OJ L 157, 30.4.2004. SI 2006/1028. Magmatic Ltd v PMS International Group Plc [2016] UKSC 12, [2016] RPC 11. Magmatic Ltd v PMS International Group Plc [2014] EWCA Civ 181, [2014] RPC 24. Magmatic Ltd v PMS International Group Plc [2016] UKSC 12, [2016] RPC 11. Now the EUIPO.

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(For a UK registered design, one should substitute references to the RDA, the RDR and the practices of the IPO described in the DPNs and the Guide; for a re-registered design, presumably the EU legislation and practice in force prior to IP Completion Day will remain relevant to interpreting the design.) This is much like “purposive construction”, as used in interpreting statutes, contracts and patents, for the last of which see Lord Hoffmann in Kirin Amgen:7 “Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance was addressed would have understood the author to be using the words to mean. Notice, however, that it is not, as is sometimes said, “the meaning of the words the author used”, but rather what the notional addressee would have understood the author to mean by using those words. The meaning of words is a matter of convention, governed by rules, which can be found in dictionaries and grammars. What the author would have been understood to mean by using those words is not simply a matter of rules. It is highly sensitive to the context of and background to the particular utterance. It depends not only upon the words the author has chosen but also upon the identity of the audience he is taken to have been addressing and the knowledge and assumptions which one attributes to that audience.” The “addressee” is a rival manufacturer, not a consumer: “After all one of the most important groups of people interested in scrutinising the register will be rival manufacturers and designers of the products in question. They are not users. They will know how to interpret technical drawings. In practice users are much less likely to consult the register than manufacturers and designers.” HHJ Birss (as he was), Sealed Air v Sharp.8 Thus: “... the determination of what design is actually registered is a matter for the court”, suitably informed by evidence of the characteristics and knowledge of the addressee. HHJ Birss (as he was), Sealed Air v Sharp.9

7 8 9

Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46, [2005] RPC 9. Sealed Air Ltd v Sharp Interpack Ltd [2013] EWPCC 23. Ibid.

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9.2

STANDING TO SUE

“… the right to sue under intellectual property rights created and governed by statute are inherently governed by the statute concerned.”10 Enforcement Dir (Art.)

UK/EU TCA (Art. )

257 (ex IP.39)

TRIPS (Art.)

RDA Sections

24F

UKUDR CDPA Sections

234-235

101-102

SUD, RCD Equivalent (Art. )

32(3)

Other Analogues

PA s. 67; Trade Marks: TMA s. 31

Either the proprietor or an exclusive licensee can sue for infringement. A non-exclusive licensee generally cannot do so, but a non-exclusive licensee of SUD or CUCD can bring an action with consent of the proprietor, or join an action as a party to recover damages.11 In any case, the proprietor needs to be joined if they have not given permission to sue. The rights of joint proprietors are not detailed in statute. It is likely but not certain that the consent of all is required in order to sue, but with that consent, one co-owner can sue without joining the others. However, having started litigation, settlement (like any other form of dealing) appears to require the agreement of all co-owners.

10 Oren v Red Box Toy Factory Ltd [1999] FSR 785 (PC), Jacob J. at p800. 11 CDR Art. 32(3) & (4).

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9.3

COURTS WITH JURISDICTION

RDA Sections

24E, 27

UKUDR CDPA Sections

232, 251(4), 252(6)

115

SUD, RCD Equivalent (Art.)

Art 81

CPR

63.2, 63.13, PD 63 16.1

In the 19th century, many design cases were decided before the Magistrates’ Courts; some before the common law and Chancery Courts, and some before the county courts; sometimes with a jury,12 sometimes without. However, in 1939 it was decided that the County Court had no jurisdiction to hear validity of a design,13 and litigation moved to the High Court. In 1989, Part VI of the CDPA created a Patents County Court with jurisdiction for design cases. This has now become the Intellectual Property Enterprise Court (“IPEC”), a specialised list within the High Court.14 Currently, jurisdiction for civil cases is moderately complex, and it is determined by the combination of the Civil Procedure Rules (“CPR”) and the specific statutes concerned for each right. The following have jurisdiction for all design and copyright matters: • • •

In England and Wales, the High Court; In Scotland, the Court of Session; and In Northern Ireland, the High Court.

Additionally, the following courts have jurisdiction for orders for delivery up and disposal: • • •

In England and Wales, the County Court; In Scotland, the Sheriff’s Court; and In Northern Ireland, the County Court.

12 E.g. Moody v Tree, (1892) 9 RPC 333. 13 Figorski (John) Ltd v Smith Seymour Ltd (1939) 56 RPC 135 at p137 applying s. 41 of the County Courts Act 1934. The same proviso regarding “franchises” has existed since 1888 at least, and is currently at s. 15(2)(b) of the County Courts Act 1984. 14 CPR 63.2.

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In greater detail, the position in England and Wales is as follows: •

For Registered Designs, any proceedings (other than criminal proceedings) under the RDA are allocated by CPR Part 63 to the Patent Court or the IPEC:15 o Appeals must go to the Patent Court;16 o Infringement cases can go to either, except that claims where the damages or account of profits claimed will exceed £50K must go to the Patent Court.17 For UKUDR, copyright and SUD/CUCD, any proceedings must be started in:18 o The Chancery Division; o The IPEC (if worth under £50K, – and, if worth less than £10K, the IPEC Small Claims Track); or o a County Court hearing centre where there is also a Chancery District Registry (i.e. those of Birmingham, Bristol, Caernarfon, Cardiff, Leeds, Liverpool, Manchester, Mold, Newcastle upon Tyne and Preston).19

•

9.4

REMEDIES FOR INFRINGEMENT

Enforcement Dir (Art.)

Chapter II Section 5, Section 6, Section 7

UK/EU TCA Arts

256, 261-267 (ex IP.38)

TRIPS (Art.)

41, 44, 45, 46, 47, 50

RDA Sections

24A, 24B, 24C, 24D, 24E, 24F, 24G

UKUDR CDPA Sections

229, 230, 231, 232, 233, 234, 235

96, 97, 98, 99, 100, 101, 101A

SUD, RCD Equivalent (Art. )

89, 90; CDR05 Reg.s 1A, 1B, 1C, 1D

Other Analogues

PA s. 61, TMA s. 14(2)

For registered and unregistered designs and copyright, the remedies available are those generally available for infringement of intellectual property, with some supplementary provisions. Remedies were partially harmonised by the EU IP Enforcement Directive, 20 implemented in the UK (to the extent that the UK was not already compliant) by The Intellectual Property (Enforcement, etc.) 15 16 17 18 19 20

CPR 63.2. CPR 63.16(2) CPR 63.17A. CPR 63.13, PD 63 16.1. PD 63 16.2. 2004/48/EC on the Enforcement of Intellectual Property Rights.

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Regulations 200621 which in turn made amendments to the primary legislation concerned and the CDR05. When the UK left the EU, most of the obligations of the Enforcement Directive were retained within the UK EU FTA, because they are largely also required by TRIPS.

9.4.1

INJUNCTIONS/INTERDICTS

9.4.1.1

Final injunctions/interdicts

Enforcement Dir (Art.)

UK/EU TCA (Art. )

263 (ex IP.45)

TRIPS (Art.)

RDA Sections

24A(2), 24B(3)

UKUDR CDPA Sections

229(2)

96(2)

SUD, RCD Equivalent (Art. )

89(1)(a)(i), CDR05 Reg 1A(2)

Other Analogues

PA s. 61(1)(a)

All English courts competent for design infringement cases can in their inherent equitable jurisdiction22 order an injunction to cease infringement. Scottish Courts can order an interdict to equivalent effect. Injunctions are also specifically provided for by statute in relation to registered designs and for CUCD and SUD. Though it is a discretionary remedy, a final negative injunction of this kind usually follows a finding of infringement of an intellectual property right. The current approach of the Courts is explained in Evalve v Edwards Lifesciences. Unless public interest factors such as those around a life-saving drug are involved, “the burden on the party seeking to show that the injunction would be disproportionate is a heavy one.”23

21 SI 2006/1028. 22 And recognised in section 37(1) of the Senior Courts Act 1981. The County Courts have the same powers by virtue of s. 38(1) of the County Courts Act 1984 (1984 c. 28). 23 Evalve Inc v Edwards Lifesciences Ltd [2020] EWHC 513 (Pat) Birss J. at 56-58 following HTC Corporation v Nokia Corporation [2013] EWHC 3778 (Pat), [2014] RPC 30, Arnold J. at [32].

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9.4.1.2 Interim injunctions/interdicts Enforcement Dir (Art.)

9(1)(a)

TRIPS (Art.)

UK/EU TCA (Art. )

261 (ex IP.43)

SUD, RCD Equivalent (Art. )

Leading Cases

American Cyanamid v Ethicon (HL), Utopia Tableware v BBP Marketing

CPR

25.1(1)(a)

Interim or interlocutory injunctions (and injunctions quia timet) are in principle also available in the Court’s discretion. The principles for grant are set out in the speech of Lord Diplock in American Cyanamid v Ethicon. The initial hurdle – presence of a “serious question to be tried”24 – is fairly easy to overcome in a design case, where the scope of the right is always arguable and the validity usually so. The next question is whether a final injunction and damages at full trial would not be an adequate remedy, typically because the damage is unquantifiable. In addition to purely financial losses which would not be calculable or payable, there are losses which are not purely financial at all, such as:25 • • • •

loss of exclusivity in the unique shape of the design; damage to the proprietor’s reputation as a supplier of unique products; tarnishment of the high-quality image of the design due to reproduction in cheaper materials; risk that because of the existence of two products of the same shape, further manufacturers will be encouraged to create products of that shape.

These probably constitute damage in the form of “moral prejudice”, in the terms of the Enforcement Directive.26 The short commercial lifetime of many designs may also be a factor favouring grant of interim injunctions. Further, as the lifetime of SUD/CUCD and UKUDR is relatively short, infringements 24 American Cyanamid Co v Ethicon Limited [1975] UKHL 1, [1975] FSR 101, [1975] RPC 513. See Neurim Pharmaceuticals (1991) Ltd & Anor v Generics UK Ltd (t/a Mylan) & Anor [2020] EWHC 1362 (Pat) at [27]. 25 Utopia Tableware v BBP Marketing [2013] EWPCC 15. 26 Henderson v All Around the World Recordings [2014] EWHC 3087 (IPEC) at [90], see also Kohler Mira Ltd v Bristan Group Ltd [2014] EWHC 1931 (IPEC) at [60].

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will often be close to the expiry date (or the date on which licences of right become available), in which case an interim “springboard injunction” may be sought if the proprietor has a good case, 27 to prevent an infringer who would not have long to wait from profiting by jumping the gun instead. The third issue – the balance of convenience (or inconvenience) – depends on the circumstances of each case. Finally, “delay defeats equity”. Interim injunctions are only available where the claimant seeks the injunction without delay.

9.4.2 DAMAGES Enforcement Dir (Art.)

Intellectual Property (Enforcement, etc.) Regulations 2006 (reg.)

UK/EU TCA (Art. )

265 (ex IP.47)

TRIPS (Art.)

45(1)

RDA Sections

24A(2)

UKUDR CDPA Sections

229(2)

96(2)

SUD, RCD Equivalent (Art. )

CDR05 Reg 1A(2)

Leading Cases

General Tire v Firestone (HL), Gerber v Lectra (CA), Henderson v All Around the World Recordings

Other Analogues

PA s. 61(1)(c)

As design infringements are species of tort, the default remedy at common law is an award of damages. If the case is brought in the Intellectual Property Enterprise Court (IPEC), there is a cap on recoverable damages (at present £500,000). There is also a “small claims track” within IPEC for unregistered (but not for registered) designs, with a lower cap (at present £10,000). No limit applies in other competent UK courts. The factors to be taken into account in calculating damages in IP cases are set out in reg. 3 of the Intellectual Property (Enforcement, etc.) Regulations 2006.28 27 Forse v Secarma Ltd, [2019] EWCA Civ 215, [2019] IRLR 587 at [33]-[34]. For a review of final springboard injunctions see Smith & Nephew Plc v Convatec Technologies Inc, [2013] EWHC 3955 (Pat), [2014] RPC 22, Birss J. at [121]-[133] (upheld on appeal). 28 SI 2006/1028.

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9.4.2.1 Compensatory damages These are primarily to compensate the loss suffered by the claimant – to put the claimant back in the position they would have enjoyed but for the infringement. Except in low value cases or in the event of agreement between the parties, the enquiry as to the quantum of damages is a separate process taking place after the trial on substance. 9.4.2.1.1 Lost sales of protected product Where the claimant is selling products, the claimant’s assumption will be that each sale made by the defendant is one lost by the claimant, and damages will therefore correspond to the claimant’s lost margin on each infringing product. If the defendant’s prices are much lower, or there are further competitors in the market, however, this assumption can be difficult to prove. 9.4.2.1.2 Convoyed Sales Where other, unprotected, products are associated with the protected product it is possible that the claimant will also lose sales of these. If this can be proved, the corresponding losses can be recovered in damages29 9.4.2.1.3 Lost royalty–“user principle” damages “For damages to be awarded on the user principle is close to saying there is no damage so some will be invented”.30 Where other damages cannot be proved, the claimant can recover damages on the basis that the defendant should have paid a licence fee.31 The principle is of long standing and although not universally accepted it has received the support of the House of Lords32 and the Supreme Court.33 If there are no comparable existing licences to form the basis of a calculation and the patentee would not in fact grant a licence, the relevant royalty is assessed on the hypothetical “willing licensee-willing licensor” basis employed for many years in Crown Use and licence of right cases.34

29 See Gerber Garment Technology Inc v Lectra Systems Ltd [1997] RPC 443 at p453, 455 (a patent case) and Design & Display Ltd v Ooo Abbott [2016] EWCA Civ 95 (a design case concerning account of profit). 30 Reed Executive Plc v Reed Business Information Ltd [2004] EWCA Civ 159, [2004] RPC 40 per Jacob LJ at 31 Meters Ltd v Metropolitan Gas Meters Ltd, (1911) 28 RPC 157, per Fletcher Moulton LJ at 164-165, approved in General Tire Co v Firestone Tyre Co. Ltd (No. 2) [1976] RPC 197, [1975] FSR 273 per Wilberforce at pp824-827. 32 General Tire Co v Firestone Tyre Co (No. 2) [1976] RPC 197, [1975] FSR 273 at p280, approving Meters Ltd v Metropolitan Gas Meters Ltd (1911) 28 R.P.C. 157, Fletcher Moulton L.J. at 164–5. 33 Morris-Garner v One Step (Support) [2018] UKSC 20, [2019] AC 649 at [95]. 34 See Patchett’s Patent (No.2) [1967] FSR 249, [1967] RPC 237, Allen & Hanbury Ltd’s (Salbutamol) Patent [1987] RPC 327.

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9.4.2.2 Non-economic damage and dissuasion – the Enforcement Directive “The phenomenon of counterfeiting and piracy leads to businesses losing turnover and market shares (loss of direct sales) which they have sometimes had difficulty acquiring, not to mention the intangible losses and the moral prejudice they suffer because of the loss in terms of brand image with their customers (loss of future sales). The spread of counterfeit and pirated products in fact leads to a prejudicial downgrading of the reputation and originality of the genuine products particularly when businesses gear their publicity to the quality and rarity of their products.”35 The Intellectual Property (Enforcement, etc.) Regulations36 (implementing the Enforcement Directive) require taking into account of unfair profit made from the infringement and also “elements other than economic factors, such as the moral prejudice caused to the rightholder by the infringement”.37 However, “[t]he aim is not to introduce an obligation to provide for punitive damages but to allow for compensation based on an objective criterion …”38 The losses concerned are economic in nature, 39 but presumably difficult to quantify. It has been said that they are “likely to arise only in very particular circumstances”.40 9.4.2.3 “Additional Damages” RDA Sections

24A(2)

UKUDR CDPA Sections

229(3)

97(2)

SUD, RCD Equivalent (Art.)

89(1)(d), CDR05 Reg 1A(2)

Leading Cases

Henderson v All Around the World Recordings

Where the infringement is flagrant, additional damages may be awarded in case of UK unregistered design right or copyright infringement. Flagrancy is “… scandalous conduct, deceit and such like; it includes deliberate and calculated infringement” and may go as far as “carelessness sufficiently serious to amount to an attitude of ‘couldn’t care less’.”41 35 Proposal for a Directive of the European Parliament and of the Council on measures and procedures to ensure the enforcement of intellectual property rights, Brussels, 30.1.2003 COM(2003) 46 final 2003/0024 (COD) at p9, cited in Henderson v All Around the World Recordings [2014] EWHC 3087 (IPEC) at [90]. 36 2006, SI 2006/1028 reg. 3. 37 For which see Henderson v All Around the World Recordings [2014] EWHC 3087 (IPEC) at [80]-[82]. 38 Enforcement Directive, Recital (26). 39 Henderson v All Around the World Recordings [2014] EWHC 3087 (IPEC) at [89]-[91]. 40 Kohler Mira Ltd v Bristan Group Ltd [2014] EWHC 1931 (IPEC) at [60]. 41 Henderson v All Around the World Recordings [2014] EWHC 3087 (IPEC) at [102], Signature Realty Ltd v Fortis Developments Ltd [2016] EWHC 3583 (Ch) at [98].

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These are a species of exemplary damages, and as a result they “may be partly or indeed wholly punitive.”42 The Enforcement Directive requires remedies to be dissuasive,43 which refers not only to dissuading the defendant but also to dissuading other potential infringers.44 If only minimal damages are awardable at law, the case for additional damages is stronger.45 It was held that additional damages were available also for infringement of unregistered Community designs, by virtue of the then-applicable version of Art. 89(1)(d).46 The same would appear to be true of CUCD and SUD.47 If this is the case, then although the point is untested they may also be available for registered designs.48 9.4.2.4 Damages instead of an injunction “In my view, the decision in Shelfer is out of date, and it is unfortunate that it has been followed so recently and so slavishly.”49 Enforcement Dir (Art.)

UK/EU TCA (Art. )

264 (ex IP.46)

TRIPS (Art.)

UK Basis

Senior Courts Act 1981, s. 50

SUD, RCD Equivalent (Art.)

Although a power to grant damages instead has long existed,50 throughout the 20th century following the 1895 Shelfer v City of London Electric Lighting judgment, final injunctions were the customary remedy for infringement of property rights. In Coventry v Lawrence, the Supreme Court signalled a change of direction permitting courts to depart from the constraint of Shelfer. Separately, the EU Enforcement Directive required courts to be able to award damages in place of

42 Phonographic Performance Ltd v Ellis (t/a Bla Bar) [2018] EWCA Civ 2812, [2019] FSR 15 Lewison LJ at [61]. 43 Enforcement Directive Art. 3(2). 44 Phonographic Performance Ltd v Hagan (t/a Lower Ground Bar and the Brent Tavern) [2016] EWHC 3076 (IPEC), [2017] FSR 24 at [25]. 45 Nichols Advanced Vehicle Systems Inc. v Rees [1979] RPC 127 at p140. 46 Original Beauty Technology v G4K Fashion [2021] EWHC 294 (Ch) at [508]. 47 As the text of that Article has not changed in a relevant way, and additional damages would seem to be within the scope of Reg 1A(2) of the CDR05 as amended. 48 By RDA s. 24A(2), which corresponds to CDR05 Reg 1A(2). 49 Coventry v Lawrence [2014] UKSC 13, [2014] AC 822, [2014] 2 WLR 433, [2014] 2 All ER 622, [2014] HLR 21, per Lord Sumption at [161], commenting on Shelfer v City of London Electric Lighting Co (No. 2) [1895] 2 Ch 388. 50 Lord Cairns’ Act (the Chancery Amendment Act 1858 (21 & 22 Vict c 27)), and now s. 50 of the Senior Courts Act 1981.

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an injunction if the infringer “acted unintentionally and without negligence, if execution of the measures in question would cause him/her disproportionate harm and if pecuniary compensation to the injured party appears reasonably satisfactory.” On the other hand, routinely awarding damages instead of an injunction would be equivalent to granting a compulsory licence, which is not permitted by TRIPS for designs. In a “normal” infringement case between two companies competing in the market, where there is no specific public interest in play, the courts are unlikely to deny an injunction.51 9.4.2.5 “Innocent Infringement” defence to damages “I think the fallacy of the argument lies in the suggestion that in the normal course a defendant who comes across an article will have no reason to believe that design right subsists. In the context of an industrial article, that will generally not be the case. If the defendant picks up a stone from a beach, plainly a reasonable man in his position would have no reason to believe that design right subsists in its design. By contrast, he is likely to have good reason to suppose that design right subsists in an industrial article. He is deemed familiar with the law relating to UDRs, otherwise he could never reach any concluded view as to the subsistence of design right. Also, part of his reasonable make up is the knowledge that industrial articles are commonly protected by UDRs. He is not an innocent abroad.”52 RDA Sections

24B

UKUDR CDPA Sections

233

97(1)

SUD, RCD Equivalent (Art.)

CDR05, Reg. 1A(5)

Related CDPA Sections

22-23, 227

Leading Cases

Kohler Mira v Bristan

Other analogues

PA s. 62(1)

Despite the title of the sections concerned, this might better be termed “ignorant infringement”. A defendant can avoid damages if it can show that at the time of the infringement it: • • •

(©) – did not know, and had no reason to believe, that copyright subsisted; (UKUDR) – did not know, and had no reason to believe, that design right subsisted; (UK RD) – was not aware, and had no reasonable ground for supposing, that the design was registered; or

51 This seems to be the result of Evalve v Edwards Lifesciences [2020] EWHC 513 (Pat). 52 HHJ Hacon, Kohler Mira Ltd v Bristan Group Ltd [2014] EWHC 1931 (IPEC) at [18].

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•

(SUD/CUCD) – were not aware, and had no reason to believe, that the design to which the action relates was protected.

These clearly mean the same, despite the different wording. For UKUDR, the innocence requirements are slightly different for primary and secondary infringers: •

Innocent infringement – primary infringement: In an action for primary infringement, if the defendant can show that at the time of the infringement he did not know and had no reason to believe that UKUDR subsisted in the design to which the action relates, the claimant is not entitled to damages (though an account of profits may be available).53

•

Innocent infringement – secondary infringement: In an action for secondary infringement, if the defendant can show that the infringing article was “innocently acquired” (he did not know and had no reason to believe that UKUDR subsisted in the design to which the action relates) by him (or by a predecessor in title of his), the claimant is only entitled to a reasonable royalty, and to no other remedies.54 This is a different matter to the knowledge required for there to be a secondary infringement in the first place.55

The test of constructive knowledge is similar to that in the secondary infringement provisions for copyright and UKUDR, 56 although the latter is directed to knowledge of infringement rather than mere knowledge of the existence of the rights. Likewise the test (“the defendant knew, or had reasonable grounds to know, that he engaged in infringing activity”) for assessment of damages which appears in the Intellectual Property (Enforcement, etc.) Regulations 200657 at reg. 3(1). Any assertion of this defence should be “by the time of the CMC”.58 It is inappropriate to leave it until the enquiry as to damages. 9.4.2.6 Effect of Marking Marking products to indicate that they are protected by design rights or copyright is not mandatory,59 or essential to recovering damages. However, it is the normal method of countering the innocence defence to damages. A copyright notice usually contains the © symbol or the word copyright; the year of first publication; and an indication of the owner of copyright.60 However, 53 54 55 56 57 58 59 60

CDPA s. 233(1). CDPA s. 233(2), (3). CDPA s. 227. Ibid. at [14]. SI 2006/1028. OOO Abbott v Design & Display Ltd [2014] EWHC 2924 (IPEC) at [53]. Though it was once very important. These are the formalities prescribed in the Universal Copyright Convention (to which the UK is a party) at Art. III(1), though under circumstances not applicable to the UK.

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the term of copyright is so long that the date may nowadays be inessential – a copyright notice omitting the date was considered in Bodo Sperlein v Sabichi.61 There is no prescribed form for a notice of the existence of UKUDR or SUD/CUCD, but the same elements are advisable – the date of first marketing (for UKUDR) or first disclosure (for SUD/ CUCD) is particularly relevant given the short life of these rights. In relation to registered designs, the RDA indicates that “a person shall not be deemed to have been aware or to have had reasonable grounds for supposing that the design was registered by reason only of the marking of a product” unless the marking also contained “the number of the design or a relevant internet link.”62 9.4.2.7 Web-Marking Since 2017 it has been possible to mark products with a reference to a “relevant internet link” – a free-of-charge website which links the marked product with the protecting design.63 This followed the introduction of an equivalent provision for patents. 9.4.2.8 False Marking Care must be taken in marking. False marking, which suggests that a product is protected by a registered design when it is not, and dealing in such a product, or marking a product as registered after the design has expired, are offences.64 Whilst there are no such specific offences for copyright or unregistered designs, there is old case law to the effect that it may disentitle a claimant to equitable relief.

9.4.3 ACCOUNT OF PROFITS “The purpose of ordering an account of profits in favour of a successful plaintiff... is to prevent an unjust enrichment of the defendant.”65 The courts of England and Wales in their equitable discretion can order an account of defendant’s profits as an alternative to damages.66 The claimant can choose between damages and an account of profit after the trial on substance, and even after sufficient financial disclosure by the defendant to make an informed choice.

61 62 63 64 65 66

Bodo Sperlein Ltd v Sabichi Ltd [2015] EWHC 1242 (IPEC), [2016] ECDR 19 at [55]. RDA s. 24B(2) & (3). RDA s. 24B(2) & (2A), by virtue of the Digital Economy Act 2017, 2017 c. 30. RDA s. 35. Slade J, My Kinda Town Ltd v Soll & Anr [1982] FSR 147 at p156; [1983] RPC 15 at p55. The existence of the remedy is recognised in the RDA at s. 24F, in the CDPA at ss. 98, 102, 235 & 239, and in the CDR05 at reg. 1A(2).

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The “innocence” defence discussed above does not apply to accounts of profit. It has never done so for copyright, UKUDR, or unregistered Community Designs. In the brief period between 2006 and 2014 it did so apply for registered designs, but the Intellectual Property Act 2014 reversed that (whilst introducing the “innocence” defence to damages only for Unregistered Community Designs, as a compromise measure).67 As this is an equitable remedy, it might be refused where “for example, the infringer was entirely innocent or the… owner has delayed in bringing proceedings.”68 Being “entirely innocent”, however, is a much higher bar than merely being ignorant of the existence of rights.

9.4.4 DELIVERY UP AND DISPOSAL “… it is important to remember what the jurisdiction to grant an order for delivery up is for. It is not anything more than a way of making sure that the injunction is obeyed.”69 Enforcement Dir (Art.)

UK/EU TCA (Art. )

262 (ex IP.44)

TRIPS (Art.)

46, 59

RDA Sections

24C, 24D

UKUDR CDPA Sections

230, 231

99, 113, 114

SUD, RCD Equivalent (Art.)

89(c), (d); CDR05, Reg.s 1B, 1C

Other analogues

PA s. 61(1)(b) Trade Marks: TMA ss. 16-19

The Court may make a disposal order that infringing products be destroyed, or forfeited to the proprietor of the design or work. It may also order them to be delivered up to the claimant (or some nominated person) before or with such a disposal order. Similar remedies are available in relation to products involved in a crime of design or copyright infringement.70 Such orders are not intended to punish the defendant but to ensure that the injunction is complied with, and will not automatically be granted if the injunction is sufficient, or an alternative solution is available.71 67 68 69 70

Explanatory Notes to the Intellectual Property Act 2014, [35]-[37]. Hollister Incorporated v Medik Ostomy Supplies Limited [2012] EWCA Civ 1419; [2013] FSR 24 per Kitchin LJ at [55]. Jacob LJ, Mayne Pharma PTY Ltd & Anor v Pharmacia Italia SPA [2005] EWCA Civ 294, [2005] 3 WLUK 340 at [4]. For the application of which see Drain, R (On the Application Of) v Birmingham Crown Court [2018] EWHC 1255 (Admin), [2018] 1 WLR 4865. 71 See Mayne Pharma v Pharmacia supra, Merck Canada Inc & Anor v Sigma Pharmaceuticals Plc [2013] EWCA Civ 326, [2013] RPC 35.

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9.4.4.1 Means for making the product Enforcement Dir (Art.)

Art. 10(1)

UK/EU TCA (Art. )

262 (ex IP.44)

TRIPS (Art.)

RDA Sections

Former s. 7, 24C(1)(b), 35ZC(3)

UKUDR CDPA Sections

230(1)(b)

24, 99(1)(b), 107(2)(a), 108(a)(b), 114A(1)(b), 114B(1)(b)

SUD, RCD Equivalent (Art. )

89(1)(c), CDR05, Reg. 1B(1)(b)

Other analogues

TMA s. 17(5)

Delivery up and disposal orders can also cover anything “specifically designed or adapted” for making infringing copies, which are treated like infringing articles where the defendant knows or has reason to believe they will be used to infringe. As the Enforcement Directive required the UK to provide for delivery up or destruction of “materials and implements principally used in the creation or manufacture of those goods” (i.e. those “found to be infringing an intellectual property right”), the same applies to all other UK IP rights.

9.4.5 DISSEMINATION OF RESULT “The grant of such an order is not to punish the party concerned for its behaviour. Nor is it to make it grovel – simply to lose face. The test is whether there is a need to dispel commercial uncertainty.”72 Enforcement Dir (Art.)

15, Recital 27

UK/EU TCA (Art. )

267 (ex IP.49)

TRIPS (Art.)

45(2)

Leading Cases

Samsung v Apple (CA)

The Enforcement Directive provides that a successful proprietor can be given an order forcing the defendant to publicise the judgment, as a “supplementary deterrent to future infringers and

72 Jacob LJ, Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1430, [2013] FSR 10 at [77].

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to contribute to the awareness of the public at large.”73 No specific provision was included when the Directive was enacted in the UK, because the Courts already have wide discretionary powers to make positive injunctions.74 The Court’s inherent powers extend to making an order in favour of a successful defendant (or claimant in a declaration of invalidity), something not mentioned within the Enforcement Directive. However, such orders are not the norm – “the court should be satisfied that such an order is desirable before an order is made.... They should normally only be made, in the case of a successful intellectual property owner where they serve one of the two purposes set out in Art. 27 of the Enforcement Directive and in the case of a successful non-infringer where there is a real need to dispel commercial uncertainty in the marketplace (either with the non-infringer’s customers or the public in general).”75 An order may involve publication in a journal, and/or a party’s website.

9.4.6 COSTS “… the general rule is that the unsuccessful party will be ordered to pay the costs of the successful party…”76 Enforcement Dir (Art.)

UK/EU TCA (Art. )

266 (ex IP.48)

TRIPS (Art.)

45(2)

CPR

44.2, 45 Section IV, 63.26

An award of costs is at the discretion of the court, but where costs are awarded the longstanding practice in all parts of the UK is to award the overall “winner” (in a realistic sense) some proportion of their actual legal expenses, including (indeed, largely made up of) lawyers’ fees. In England and Wales, where there is doubt on whether costs were properly incurred (and such doubt can always be created if it does not exist), the “standard” basis of cost recovery resolves doubt in favour of the paying (i.e. unsuccessful) party. On that basis, costs must also be “proportionate”. This basis therefore involves recovery of only a proportion – perhaps 60-80% (once the costs draftsman and the taxing judge are finished with the figures) – of the costs actually incurred. 73 Enforcement Directive, Recital (27) quoted in Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1430, [2013] FSR 10 at [71]. 74 Under s. 37(1) of the Senior Courts Act 1981. 75 Jacob LJ, Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1430, [2013] FSR 10 at [69]. 76 CPR 44.2(2)(a).

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Where misconduct or some other basis justifies an award on the “indemnity” basis, however, the costs do not have to be “proportionate” and the court resolves doubt in favour of the payed (i.e. successful) party. Recovery is therefore higher. In the IPEC, special costs rules apply awarded costs on a fixed schedule (in the same general manner as in proceedings before the IPO or the Appointed Person), and the total is capped.77 In the IPEC Small Claims track, cost recovery is even more limited – only expenses such as fees are recoverable, and lawyers’ charges are not. 78

9.4.7 CERTIFICATE OF CONTESTED VALIDITY “… the vice at which the provision is aimed [is] vexing a patentee with essentially the same points on which he has previously won.”79 RDA Sections

Leading Cases

Optis v Apple, SKB v Apotex (No. 2) (CA)

Other Analogues

PA, s. 65; Trade Marks: TMA s. 73

There is a statutory power under RDA s. 25 to certify the validity of a registered design, if it survived a challenge in litigation. The effect of such a certificate is that in subsequent litigation, if the proprietor is successful again, costs may be awarded on a higher basis than would normally be the case. The “solicitor and client” basis required by the RDA is not exactly the same as either of the current bases (the standard basis or the indemnity basis, see above) but is generally more favourable than either.80 Actual solicitor’s charges to clients are at present assessed on the basis of CPR 46.9, on the “indemnity basis” but with some modifications.

77 78 79 80

Currently at £50,000, CPR Part 45 Section IV. CPR 63.27(4) and 27.14. Jacob LJ, SmithKline Beecham Plc v Apotex Europe Ltd (No.2) [2004] EWCA Civ 1703, [2005] FSR 24 at [10]. See Optis Cellular Technology LLC v Apple Retail UK Ltd [2020] EWHC 3248 (Pat) and SmithKline Beecham Plc v Apotex Europe Ltd (No.2) [2004] EWCA Civ 1703, [2005] FSR 24. In the latter, the parties seem to have agreed however to use the “indemnity costs” basis anyway.

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9.4.8 DECLARATIONS/DECLARATORS – NON-INFRINGEMENT AND OTHERS “While negative declarations can perform a positive role, they are an unusual remedy in so far as they reverse the more usual roles of the parties. The natural defendant becomes the claimant and vice versa. This can result in procedural complications and possible injustice to an unwilling `defendant’. This in itself justifies caution in extending the circumstances where negative declarations are granted, but, subject to the exercise of appropriate circumspection, there should be no reluctance to there being granted when it is useful to do so.”81 Leading Cases

Messier Dowty v Sabena, Juul Labs v MFP

CPR

40.20

Other

Senior Courts Act 1981 s. 19(1).

There is no specific statutory right to seek a declaration (“declarator” in Scotland) of noninfringement of a design, but the Court has an inherent discretionary power to make declarations.82 The scope for seeking “negative declaratory relief” was significantly broadened in 2001 by the Court of Appeal, in Messier Dowty v Sabena,83 and has apparently continued to broaden since. The relevant principles have been said to be that: “i. The correct approach to the question of whether to grant negative declarations was one of discretion rather than jurisdiction. ii. The use of negative declarations should be scrutinised and their use rejected where it would serve no useful purpose, but where such a declaration would help ensure that the aims of justice were achieved, the court should not be reluctant to grant a negative declaration. iii. Before a court can properly make a negative declaration, the underlying issue must be sufficiently clearly defined to render it properly justiciable.”84 An example of a successful use of declaration of non-infringement proceedings (in that case, concerning a Registered Community Design) was Samsung v Apple.85 It is unlikely that a declaration of invalidity can be sought, as there are statutory routes for invalidating a design.86 81 Lord Woolf (with whom the rest of the court agreed) in Messier-Dowty Ltd & Anor v Sabena SA & Ors [2000] EWCA Civ 48, [2001] 1 All ER 27, [2001] 1 WLR 2040. 82 Codified but not superseded by CPR Part 40.20, Senior Courts Act 1981 s. 19(1). See Juul Labs, Inc v MFP Enterprises Ltd (t/a ‘Smoke Nation’) [2020] EWHC 3380 (Pat), Mann J. at [28]-[32] – an unsuccessful application for a declaration – for a summary of the relevant factors. 83 Messier-Dowty Ltd & Anor v Sabena SA & Ors [2000] EWCA Civ 48, [2001] 1 All ER 27, [2001] 1 WLR 2040. 84 Pumfrey J in Nokia Corp v InterDigital Corp [2006] EWHC 802 (Pat) at [20], not criticised on appeal: [2006] EWCA Civ 1618, [2007] FSR 23. 85 [2012] EWHC 1882 (Pat), [2013] ECDR 1; [2012] EWCA Civ 1339, [2013] ECDR 2, [2013] FSR 9. 86 See Fujifilm Kyowa Kirin Biologics Co, Ltd v Abbvie Biotechnology Ltd [2017] EWCA Civ 1, [2017] RPC 9, a patent case.

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9.5

THREATS

“I take the policy to be… that rival manufacturers may threaten each other but should not threaten each other’s customers with the objective of inducing them to cease dealing with their rivals.”87 Right

Provisions

Basis

Registered Designs

RDA s. 26, 26A, 26B, 26C, 26D, 26E, 26F

IP (Unjustified Threats) Act 2017

UKUDR

CDPA s. 253, 253A, 253B, 253C, 253D, 253E

IP (Unjustified Threats) Act 2017

CUCD/SUD

CDR05 Regs. 2, 2A, 2B, 2C, 2D, 2E, 2F

IP (Unjustified Threats) Act 2017

–

Other analogues

PA s. 70-70F, TMA s. 21-21F

IP (Unjustified Threats) Act 2017

Unjustified threats of design, but not copyright, infringement proceedings are actionable. The original purpose of the threats provisions “was clearly to stop patentees who were88 ‘willing to wound but afraid to strike’ from holding the sword of Damocles above another’s head”.89 However, certain types of threat are now exempted from the scope of the threats provisions. The provisions for UK registered designs, UKUDR and UCD/SUD/CUCD are now mercifully aligned by the Intellectual Property (Unjustified Threats) Act 2017, which amended the RDA, CDPA and CDR05. The Law Commission report Patents, Trade Marks and Designs: Unjustified Threats90 noted that “many inconsistencies have crept in over time. As a consequence, [the various threats provisions] can be difficult to follow and apply.” It also identified some specific problems which needed to be solved. As a result, the present provisions are not only harmonised but also improved over their predecessors. The provisions are now complex, but briefly: •

“The term ‘threat’ covers any information that would convey to a reasonable man that some person has trade mark rights and intends to enforce them against another. It matters not that the threat may be veiled or covert, conditional or future”.91 The term is now defined in

87 Unilever v Procter & Gamble [1999] EWCA Civ 3027, [2000] FSR 344 per Jacob LJ at [59]. 88 In Pope’s words on Addison. 89 Unilever v Procter & Gamble [1999] EWCA Civ 3027, [2000] FSR 344 per Jacob LJ at [56], followed in Best Buy v Worldwide Sales Corp [2011] EWCA Civ 618, [2011] FSR 30 at [21]. 90 Law Commission Report LAW COM No 360, 12th October 2015, Cm 8851, [2014] EWLC 346. 91 L’Oreal v Johnson & Johnson [2000] FSR 686 at [12], approved in Best Buy v Worldwide Sales Corp [2011] EWCA Civ 618, [2011] FSR 30 at [21].

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• •

the various statutes, to mean a threat of proceedings in the UK or in respect of acts in the UK. Anyone aggrieved by the threat can bring proceedings, and obtain damages and an injunction against further threats (and a declaration that they were unjustified). The threat can be brought against the author of the threat, including not only the proprietor of the design right but also the individual author of the letter, who may be an external advisor.

However, • •

•

If the Court finds that there was actually infringement, then the threat is justified and the proprietor has a defence; The intention of the provisions appears to be to force the design proprietor to threaten only the primary infringer – i.e. the manufacturer or infringer (the latter no doubt because a foreign manufacturer is often beyond the reach of the UK Courts). Thus, threats are not actionable if they are: o Directed at a person who is the actual or intended manufacturer or importer; and/or o Complaining only of manufacture or importation. Anything other than a direct threat or demand to cease and desist is permitted if in a “permitted communication”, which is necessary to notify someone of the existence of design rights, and thus put them on notice, and is believed to be true by the writer. A letter writer who is a “professional advisor”, i.e. a legally regulated person such as a patent or trade mark attorney or a solicitor or barrister, is not liable if they identify their client.

Given these issues, threats actions continue to be useful against a proprietor who is ‘willing to wound but afraid to strike’, but are otherwise ill-advised – if the proprietor is in fact willing to strike and has a good case, the effect of a threats action will merely be to invite a counterclaim for infringement. Although there are no equivalent statutory provisions for copyright or passing off, a threat to customers could be actionable as interference with business or contractual relations, or malicious falsehood92 or trade libel.93 Professional advisors should note that although they have some immunity from the statutory threats provisions, “it is not acceptable for those who have the status of expert professional men in the… field to use the weight of their professional qualifications to make clearly unsupportable allegations”, and that there might be disciplinary as well as tortious remedies for such conduct.94

92 Jaybeam Ltd v Abru Aluminium Ltd [1975] FSR 334 at p341-342. 93 Essex Electric (Pte) Ltd and Anr v IPC Computers [1991] FSR 690. 94 Antec International Ltd v South Western Chicks (Warren) Ltd [1997] FSR 278.

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9.6

PRIVILEGE

Advisor

Provisions

UK Patent Attorneys

CDPA s. 280

European Patent Attorneys

CDPA s. 280

TM Attorneys

TMA, s. 87

EUIPO Design Representatives

CDR05, Reg. 4

Authorised Litigators

Legal Services Act 2007, s. 190

Legal professional privilege is a common law procedural right which enables parties (and their representatives) to resist disclosing documents, and information, to the Court and the other side. The protected matter includes communications from the client which seek legal advice from an appropriate advisor, and the advisor’s replies. The advisor is usually a solicitor or barrister or, in Scotland, advocate; or their foreign equivalents. It also includes material prepared for litigation. Further treatment of the subject is beyond this book, except as regards the statutory extensions of privilege in design matters to IP attorneys which is limited to communications or documents concerning any matter relating to: Advisor

Matter

UK Patent Attorneys

“any invention, design, technical information, or trade mark, or as to any matter involving passing off”

European Patent Attorneys

“any invention, design, technical information, or trade mark, or as to any matter involving passing off”

TM Attorneys

“any matter relating to the protection of any design or trade mark, or as to any matter involving passing off”

EUIPO Design Representatives (pre-Brexit)

“the protection of any design”

EUIPO Design Representatives (pre-Brexit)

a “continuing unregistered Community design” or “supplementary unregistered design”

Extent of privilege for types of non-lawyer IP advisor

It should be noted that few people are actually on the EUIPO design representatives list.95 Most EUIPO representatives are on the trade mark list96 instead, which confers the same right to 95 Under CDR Art. 78. 96 Under EUTMR Art. 120

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represent in design matters but not the same privilege. The EUIPO’s databases do not clearly distinguish these lists. For IP attorneys holding a litigation certificate, the broader rights provided by the LSA 2007 apply once litigation is contemplated or in existence. Foreign IP advisors who are not recognised as lawyers, and are not on the EUIPO list of design representatives, will find it difficult to sustain a claim to legal advice privilege in the UK courts.97

9.7

CRIMINAL INFRINGEMENT

RDA Sections

35ZA

Leading Cases

R v Johnstone (HL)

Other Analogues

The Intellectual Property Act 2014 introduced offences relating to infringement of registered designs, as s. 35ZA-35ZD of the RDA. The offences require several additional elements beyond those required for civil infringement, namely: • • • •

Acts “in the course of business”, which does not mean “a purpose which is merely incidental to the carrying on of the business”; Resemblance close enough to be exact or with features that differ only in immaterial details from the design;98 Intentional copying;99 and Knowledge or reason to believe that the design is registered.100

The penalties are quite severe. Non-infringement is a defence,101 as is reasonable belief that the person concerned did not infringe.102 An invalid design cannot be infringed, so invalidity can also be raised as a defence, as can reasonable belief in invalidity.103

97 However, litigation privilege may apply to documents prepared “whether by a patent agent or by anybody“ where proceedings are in contemplation or on foot: Societe Francaise Hoechst v Allied Colloids, [1992] FSR 66 followed in Linstead v East Sussex, Brighton and Hove Health Authority [2001] PIQR p25 (QBD). 98 RDA s. 35ZA(1)(a)(ii) & (2)(b). 99 RDA s. 35ZA(1)(a) & (2). 100 RDA s. 35ZA(1)(b)(i). 101 RDA s. 35ZA(5)(a). 102 RDA s. 35ZA(5)(b). 103 RDA s. 35ZA(4).

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Enforcement is by the police and the Crown Prosecution Service,104 or by local authorities (for which, see below), but is rare. According to the government’s IP Crime Group, around 400 defendants a year are found guilty of trade mark counterfeiting offences; under a hundred of copyright piracy offences; and none to date of design piracy offences. The EU at one time proposed a Directive105 on criminal enforcement of IP rights which would have included designs, but it was abandoned.

9.8

ADMINISTRATIVE ENFORCEMENT

9.8.1

CUSTOMS ENFORCEMENT

Regulation (EU) No 608/2013 (the “Customs Enforcement Regulation”, as applied by The Customs (Enforcement of Intellectual Property Rights) (Amendment) (EU Exit) Regulations 2019) provides for customs seizure of goods which infringe registered designs or copyright. Rights-holders can notify the Customs authorities of their registered designs, and may optionally also give them additional useful information such as branding, the sender or recipient, shipment details and so on. When potentially infringing goods are found by the customs, they are detained and information is sent to the contact nominated by the rights-holder, for a decision on whether they infringe. The owner of the goods is also notified. The rights-holder then has ten days (extendable by ten more) to start a civil action for infringement if they wish. If they do not do so, then the owner of the goods may ask for their release. Otherwise, they are liable to be destroyed.

9.8.2 LOCAL AUTHORITY ENFORCEMENT The Trading Standards teams within local authorities in the UK have the power106 to investigate and prosecute the criminal offences of registered design107 and copyright108 infringement and, in the latter case, the duty to do so. The levels of experience and enthusiasm, and the funding available, vary dramatically across the country but support is provided by the IPO and the police service, and where their attention is drawn to infringements by individual proprietors or collective enforcement bodies they will cooperate with them also in securing convictions where possible. Pirated and counterfeit goods are not usually checked for conformity to safety standards, and are often dangerous to the public; where this is the case, enforcement action is more likely. 104 Whose prosecution guidance is at https://www.cps.gov.uk/legal-guidance/intellectual-property-crime. 105 The last text was European Parliament legislative resolution of 25 April 2007 on the amended proposal for a directive of the European Parliament and of the Council on criminal measures aimed at ensuring the enforcement of intellectual property rights (COM(2006)0168 – C6-0233/2005 – 2005/0127(COD). 106 Under the Consumer Protection Act 2015. 107 RDA s. 35ZA, 35ZB. 108 CDPA s. 107.

307

PART 10 SEARCHING 10.1 Design searching generally............................................................................. 310 10.2 Name and Number Searches.......................................................................... 310 10.3

Watching and Monitoring Searches............................................................... 310

10.4

Subject-Matter Searches................................................................................ 311

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10.1

DESIGN SEARCHING GENERALLY

Finding registered designs which have effect in the UK at present requires separate searches of UK and International (Hague) registrations. As many re-registered Community Designs are in force in the UK, it is also sometimes sensible to search the EUIPO’s eSearchPlus Community Design database and then locate the re-registered UK equivalents (and likewise for older Hague registrations designating the EU and now re-registered in the UK). Designs are easily searched by their bibliographic data – applicant or owner, filing or priority date. Beyond this, designs are classified by WIPO, EUIPO and the UK IPO (and most other registries) under the International (Locarno) Classification, administered by WIPO which is based on the products to which they are applied or in which they are incorporated. Searching by product is therefore also relatively easy.

10.2 NAME AND NUMBER SEARCHES A rather basic search by applicant/owner name or design number can be performed on the UK IPO website.1 It does not include International Designs designating the UK, which must be separately searched on WIPO’s “Hague Express”2 or “International Designs Bulletin”3 databases (the latter is the “official” live database).

10.3 WATCHING AND MONITORING SEARCHES Bibliographic information on UK designs has been published since 1878. Since 1997, the IPO has published selected views from design registrations, more recently online only. Although the publication is more-or-less daily, designs are batched into months which can be viewed together (in date order) to allow the monitoring of competitor activity. Selecting a displayed design takes the user to the Register entry for that design. The same exercise can be performed for International Designs using the “Hague Express”4 or “International Designs Bulletin”5 databases on WIPO’s website (the latter is the “official” live database).

1 2 3 4 5

At https://www.registered-design.service.gov.uk/find/. At https://www3.wipo.int/designdb/hague/en/. At https://www.wipo.int/haguebulletin/?locale=en At https://www3.wipo.int/designdb/hague/en/. At https://www.wipo.int/haguebulletin/?locale=en.

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10.4 SUBJECT-MATTER SEARCHES 10.4.1 GENERAL NATURE OF SEARCHING BY DESIGN Design searching is an exercise with an inherent element of subjectivity. It is extremely rare to find two identical designs, so comparison and judgment of the similarity between designs is almost always required. Since validity and scope of protection are not limited by indication of product or classification, prior art searching (for judging novelty) and infringement/clearance/ Freedom to Operate (“FTO”) searching require some thought. The norm is to conduct a ‘‘picture search’’ through the representations of a fairly large number of designs. Large numbers may appear daunting, but the eye alone can often dismiss irrelevant pictures very quickly, without requiring the conscious cognitive effort involved in patent or trade mark searching. The essence of effective design searching is to cut down the number of irrelevant designs to be inspected to a manageable level by using classification or other tools, whilst attempting to minimise the collateral risk of excluding relevant designs.

10.4.2 USING THE LOCARNO CLASSIFICATION TO SEARCH DESIGN REGISTRATIONS BY PRODUCT Designs are primarily classified by the International Locarno classification,6 so the first step in subject-matter searching will normally be to determine the best Locarno subclass(es). Almost all design databases offer a search by Locarno class. The classification changes every few years, and most databases do not update the classifications allocated at publication so it may be necessary to consult historical versions of the classification as well as the current one. UK designs can be searched via Locarno classification (and other criteria) on the TMDN “Designview” database (which also includes all Registered Community Designs and International Designs, and many EU and other national designs). International and Community Designs, and many others (not including UK Registered Designs) are also searchable via WIPO’s “Global Design Database”. Additionally, the USPTO provides a very detailed domestic design classification (based on the Locarno system but going deeper) for searching US Design Patents, and in some cases, Utility Patents. However, Locarno is a classification of products, not of their appearances, and in the UK, designs are not tied to a single product. Thus, it will not always be possible to stop the search at one class. For example, a search for toy cars should at minimum also cover the class for cars as well as the class for toys. In the case of surface ornamentation or decoration designs (which could be applied to any product), it will clearly be desirable to search the class of the product to be ornamented, but also to cross-search, at a minimum, class 32 (and for older designs, former class 99), in which graphic symbols and logos are classified. 6 Under the Locarno Agreement Establishing an International Classification for Industrial Designs (1968) – the 13th Edition is current at the time of writing, and accessible via WIPO’s website.

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10.4.3 SEARCHING COMMUNITY DESIGN REGISTRATIONS USING THE VIENNA CLASSIFICATION For trade marks, the Vienna classification scheme7 allows searching based on the pictorial elements of a design, and is therefore a way of limiting the search by the appearance of the design to be searched. Additionally, the EUIPO cross-classifies Registered Community Designs in certain Locarno sub-classes under the Vienna classification. This is a discretionary service provided by the EUIPO, and it is understood that classification may not always be up to date. As applied by the EUIPO, the Vienna classification uses a three level hierarchy. For example, class 1 is ‘‘celestial bodies, natural phenomena, geographical maps’’; sub-class 1.15 is ‘‘natural phenomena’’; and sub-sub-class 1.15.5 is ‘‘flames’’. It is therefore possible to search, in some detail, for graphic elements in certain classes. They can be searched by Vienna classification through the eSearchPlus database on the EUIPO website.

10.4.4 SEARCHING COMMUNITY DESIGN REGISTRATIONS BY REVERSE IMAGE SEARCH The EUIPO offers an image search tool for searching Registered Community Designs (and EU Trade Marks) by uploading images to be searched, as do a few other registries (not at present including the IPO), and it is likely that many more will do so in future. A growing number of commercial search tools also offer image searching.8 Although these resources are hit-and-miss at present, their coverage and accuracy are improving. They should be included as a first step in any design search, but not relied upon to establish the absence of relevant designs.

10.4.5 VALIDITY SEARCHES Registered designs are classified, reliably datable, and usually deemed available to the sector concerned. They are therefore the usual starting point for a validity search. However in most sectors they form only a small fraction of the designs available to the public. Searches for prior publications should therefore begin with Community and International designs, then move to the more readily searchable of the national design and trade mark databases. As prior-filed, later-published designs can be cited for novelty and individual character, the search should go a little forwards in time from the filing date of the design under attack, to capture GB and International(GB) designs published after, but filed before, its priority and filing dates. Beyond these, searchers should consider searching US designs (which are comprehensively classified for easy searching), Chinese designs (since the Chinese Office registers more designs than any other) and Japanese designs. For logo-type designs, several trade mark databases are 7 Under the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (1973) – the 8th Edition is current at the time of writing, and accessible via WIPO’s website. 8 For example, Clarivate™/Compumark™ TM go365™.

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classified using the Vienna Convention and can therefore be searched by figurative content (for example, the US trade mark database Trademarkscan2). Search engines such as Google™ and Bing™ provide image (or “reverse image”) searches, allowing a user to upload an image and returning others deemed similar by the search algorithm. These do not at present index UK or International registered design images, but provide a quick-and-dirty way of searching unregistered designs. Disclosure websites9 should be considered, since their intention is to publicise designs as of a particular date. The Trade Marks and Designs Network (TMDN) Common Practice CP1010 suggests suitable evidence for proving dates of disclosure of designs, as well as common Internet sources of such disclosures. Department store and mail-order catalogues, and trade association libraries and journals, may be useful sources of hardcopy prior art.

10.4.6 FREEDOM-TO-OPERATE/INFRINGEMENT CLEARANCE SEARCHES Clearance searching in the UK requires a search of UK registered designs and International designs designating the UK. It is necessary to search the former back 25 years. As the UK only joined the International system in 2018, it is unnecessary to search International designs further back than that. In principle, all RCDs and International Designs (EU) should now appear on databases as UK re-registered designs. However, until it is certain that the transition was completely reliable, it may be advisable to search also the EUIPO and WIPO databases (for International Designs designating the EU) prior to 1 January 2021, and cross-check for UK re-registrations of anything relevant. The EUIPO eSearchPlus database also offers additional searching options, as mentioned above. Most designs are not renewed after the first five-year period. Applying a status filter in the search to eliminate lapsed and surrendered registrations therefore drastically reduces the number of designs which must be reviewed. It is possible to protect the appearance of part of a product (integral or separable), as well as the whole. Thus, an earlier registration of a part of a product can be infringed by a product which contains a similar portion, even if the product also has additional portions which do not resemble the registration. When clearance searching, it is therefore necessary to cover designs which resemble any part of that to be cleared, not just those which resemble the whole. 9 E.g. http://www.ip.com. 10 On Criteria for Assessing Disclosure of Designs on the Internet. TMDN April 2020.

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Whilst the primary tool for limiting the scope of infringement clearance searching is classification, some limited ‘‘belt and braces’’ protection against mis-classification may be obtained by a supplementary search using verbal indications of product. However, since indications of product are both non-limiting and uncontrolled, a clearance search limited by word alone should not be regarded as satisfactory. In general, whilst clearance searching is prudent, and can often be successful in revealing obstacles, the vagaries of design searching mean that a clear search cannot always be taken as a guarantee that no obstacles exist. It is therefore important to inform clients of the limitations inherent in infringement clearance searching of designs. Whilst the advice given will depend upon the search strategy adopted, it will usually be appropriate to make the following points: (1) The search will not have covered applications which have been filed but not yet registered, or those which have been filed abroad and are still within the six-month priority period for UK filing. Any such design can remain secret for up to 12 months from filing date. It may be prudent therefore to perform a top-up search after a year. (2) Although the most relevant classes will have been searched, in principle, the design to be cleared could infringe a design in another class. It is also possible that relevant designs have been mis-classified elsewhere by the applicant or the Office. (3) Although the searcher has attempted to cite all relevant designs, he/she is not an ‘‘informed user’’ in the sector concerned and it is possible that such a user would have a different view of similarity. (4) Although design records have been searched, it is possible that the product might infringe other registered rights such as trademarks. (5) If the design to be cleared has been copied from another, it may infringe copyright or unregistered design rights, or constitute “passing off”.

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International design law treaty provisions........................................................ 316

Registered Designs Act 1949 – Concordance with EU provisions.....................319

The Registered Designs Act 1949 pre-2001 – relevant sections.......................320

The Registered Designs Rules 1995 – relevant rules........................................ 325

Provisions on Supplementary Unregistered Designs....................................... 327

Provisions on Continuing Unregistered Community Designs......................... xxx

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ANNEX 1

INTERNATIONAL DESIGN LAW TREATY PROVISIONS

1 – PARIS CONVENTION Article 5quinquies Industrial Designs Industrial designs shall be protected in all the countries of the Union. Article 4 Priority A. (1) Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed. C. (1) The periods of priority referred to above shall be twelve months for patents and utility models, and six months for industrial designs and trademarks. E. (1) Where an industrial design is filed in a country by virtue of a right of priority based on the filing of a utility model, the period of priority shall be the same as that fixed for industrial designs. Article 5 Industrial Designs: Failure to Work; Importation of Articles B. The protection of industrial designs shall not, under any circumstance, be subject to any forfeiture, either by reason of failure to work or by reason of the importation of articles corresponding to those which are protected.

2 – BERNE CONVENTION Article 2 (1) The expression “literary and artistic works” shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as ... works of applied art; ... (6) The works mentioned in this article shall enjoy protection in all countries of the Union. This protection shall operate for the benefit of the author and his successors in title. (7) Subject to the provisions of Article 7(4) of this Convention, it shall be a matter for legislation in the countries of the Union to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected. Works protected in the country of origin solely as designs and models shall be entitled in another country of the Union only to such special protection as is granted in that country to designs and models; however, if no such special protection is granted in that country, such works shall be protected as artistic works. 316

ANNEXES

Article 7 (4) It shall be a matter for legislation in the countries of the Union to determine the term of protection of photographic works and that of works of applied art in so far as they are protected as artistic works; however, this term shall last at least until the end of a period of twenty-five years from the making of such a work. (8) In any case, the term shall be governed by the legislation of the country where protection is claimed; however, unless the legislation of that country otherwise provides, the term shall not exceed the term fixed in the country of origin of the work.

3 – TRIPS SECTION 4: INDUSTRIAL DESIGNS Article 25 Requirements for Protection 1. Members shall provide for the protection of independently created industrial designs that are new or original. Members may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features. Members may provide that such protection shall not extend to designs dictated essentially by technical or functional considerations. 2. Each Member shall ensure that requirements for securing protection for textile designs, in particular in regard to any cost, examination or publication, do not unreasonably impair the opportunity to seek and obtain such protection. Members shall be free to meet this obligation through industrial design law or through copyright law. Article 26 Protection 1. The owner of a protected industrial design shall have the right to prevent third parties not having the owner’s consent from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes. 2. Members may provide limited exceptions to the protection of industrial designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the legitimate interests of third parties. 3. The duration of protection available shall amount to at least 10 years.

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4 – HAGUE AGREEMENT, GENEVA ACT Article 2 Applicability of Other Protection Accorded by Laws of Contracting Parties and by Certain International Treaties (1) [Laws of Contracting Parties and Certain International Treaties] The provisions of this Act shall not affect the application of any greater protection which may be accorded by the law of a Contracting Party, nor shall they affect in any way the protection accorded to works of art and works of applied art by international copyright treaties and conventions, or the protection accorded to industrial designs under the Agreement on Trade-Related Aspects of Intellectual Property Rights annexed to the Agreement Establishing the World Trade Organization. (2) [Obligation to Comply with the Paris Convention] Each Contracting Party shall comply with the provisions of the Paris Convention which concern industrial designs. Article 14 Effects of the International Registration (1) [Effect as Application Under Applicable Law] The International Registration shall, from the date of the International Registration, have at least the same effect in each designated Contracting Party as a regularly-filed application for the grant of protection of the industrial design under the law of that Contracting Party. (2) [Effect as Grant of Protection Under Applicable Law] (a) In each designated Contracting Party the Office of which has not communicated a refusal in accordance with Article 12, the International Registration shall have the same effect as a grant of protection for the industrial design under the law of that Contracting Party at the latest from the date of expiration of the period allowed for it to communicate a refusal or, where a Contracting Party has made a corresponding declaration under the Regulations, at the latest at the time specified in that declaration. Article 17 Initial Term and Renewal of the International Registration and Duration of Protection (1) [Initial Term of the International Registration] The International Registration shall be effected for an initial term of five years counted from the date of the International Registration. (2) [Renewal of the International Registration] The International Registration may be renewed for additional terms of five years, in accordance with the prescribed procedure and subject to the payment of the prescribed fees. (3) [Duration of Protection in Designated Contracting Parties] (a) Provided that the International Registration is renewed, and subject to subparagraph (b), 318

ANNEXES

the duration of protection shall, in each of the designated Contracting Parties, be 15 years counted from the date of the International Registration. (b) Where the law of a designated Contracting Party provides for a duration of protection of more than 15 years for an industrial design for which protection has been granted under that law, the duration of protection shall, provided that the International Registration is renewed, be the same as that provided for by the law of that Contracting Party.

ANNEX 2 REGISTERED DESIGNS ACT 1949 – CONCORDANCE WITH EU PROVISIONS RDA Sections

DD Art

CDR Art

Subject

Definitions “design”, “product”

1A(2)

11(1)(d)

25(1)(d)

Prior design

1B(1), (8), (9)

Not visible parts

1B(2), (3)

Novelty

1B(4), (5)

Individual Character

1B(6), (7)

Disclosure, state of the art, grace period

Functionality, “must fit”

9, 47(1)(b)

Morality

7(1), (3)

Scope of protection

7(2), 7A(1)

Rights conferred

7A(2), (3)

Defences, non-infringing acts

7A(4)

Exhaustion of rights

7A(5)

14, 18

110

Component parts – right to repair

Prior Use defence

Term of registered design

11ZA – 11ZD

Grounds of invalidity

12, Schedule 1

Government use

15A

27, 34

Property in design

15C, 24F

32(3)

Exclusive licensee’s right to sue

Schedule A1

11(2)(c)

25(1)(g)

Prior signs & emblems

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ANNEX 3 THE REGISTERED DESIGNS ACT 1949 PRE-2001 – RELEVANT SECTIONS SECTION 1

DESIGNS REGISTRABLE UNDER ACT.

(1) In this Act “design” means features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye, but does not include— (a) a method or principle of construction, or (b) features of shape or configuration of an article which— (i) are dictated solely by the function which the article has to perform, or (ii) are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part. (2) A design which is new may, upon application by the person claiming to be the proprietor, be registered under this Act in respect of any article, or set of articles, specified in the application. (3) A design shall not be registered in respect of an article if the appearance of the article is not material, that is, if aesthetic considerations are not normally taken into account to a material extent by persons acquiring or using articles of that description, and would not be so taken into account if the design were to be applied to the article. (4) A design shall not be regarded as new for the purposes of this Act if it is the same as a design— (a) registered in respect of the same or any other article in pursuance of a prior application, or (b) published in the United Kingdom in respect of the same or any other article before the date of the application, or if it differs from such a design only in immaterial details or in features which are variants commonly used in the trade. This subsection has effect subject to the provisions of sections 4, 6 and 16 of this Act. (5) The Secretary of State may by rules provide for excluding from registration under this Act designs for such articles of a primarily literary or artistic character as the Secretary of State thinks fit.

320

ANNEXES

SECTION 4 REGISTRATION OF SAME DESIGN IN RESPECT OF OTHER ARTICLES, ETC. (1) Where the registered proprietor of a design registered in respect of any article makes an application— (a) for registration in respect of one or more other articles, of the registered design, or (b) for registration in respect of the same or one or more other articles, of a design consisting of the registered design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, the application shall not be refused and the registration made on that application shall not be invalidated by reason only of the previous registration or publication of the registered design: Provided that the right in a design registered by virtue of this section shall not extend beyond the end of the period, and any extended period, for which the right subsists in the original registered design. (2) Where any person makes an application for the registration of a design in respect of any article and either— (a) that design has been previously registered by another person in respect of some other article; or (b) the design to which the application relates consists of a design previously registered by another person in respect of the same or some other article with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, then, if at any time while the application is pending the applicant becomes the registered proprietor of the design previously registered, the foregoing provisions of this section shall apply as if at the time of making the application the applicant had been the registered proprietor of that design.

SECTION 6

PROVISIONS AS TO CONFIDENTIAL DISCLOSURE, ETC.

(1) An application for the registration of a design shall not be refused, and the registration of a design shall not be invalidated, by reason only of— (a) the disclosure of the design by the proprietor to any other person in such circumstances as would make it contrary to good faith for that other person to use or publish the design; (b) the disclosure of the design in breach of good faith by any person other than the proprietor of the design; or (c) in the case of a new or original textile design intended for registration, the acceptance of a first and confidential order for goods bearing the design. 321

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(2) An application for the registration of a design shall not be refused and the registration of a design shall not be invalidated by reason only— (a) that a representation of the design, or any article to which the design has been applied, has been displayed, with the consent of the proprietor of the design, at an exhibition certified by the Secretary of State for the purposes of this subsection; (b) that after any such display as aforesaid, and during the period of the exhibition, a representation of the design or any such article as aforesaid has been displayed by any person without the consent of the proprietor; or (c) that a representation of the design has been published in consequence of any such display as is mentioned in paragraph (a) of this subsection, if the application for registration of the design is made not later than six months after the opening of the exhibition. (3) An application for the registration of a design shall not be refused, and the registration of a design shall not be invalidated, by reason only of the communication of the design by the proprietor thereof to a government department or to any person authorised by a government department to consider the merits of the design, or of anything done in consequence of such a communication. (4) Where an application is made by or with the consent of the owner of copyright in an artistic work for the registration of a corresponding design, the design shall not be treated for the purposes of this Act as being other than new by reason only of any use previously made of the artistic work, subject to subsection (5) . (5) Subsection (4) does not apply if the previous use consisted of or included the sale, letting for hire or offer or exposure for sale or hire of articles to which had been applied industrially— (a) the design in question, or (b) a design differing from it only in immaterial details or in features which are variants commonly used in the trade, and that previous use was made by or with the consent of the copyright owner. (6) The Secretary of State may make provision by rules as to the circumstances in which a design is to be regarded for the purposes of this section as “applied industrially” to articles, or any description of articles.

SECTION 11

CANCELLATION OF REGISTRATION.

(1) The registrar may, upon a request made in the prescribed manner by the registered proprietor, cancel the registration of a design.

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(2) At any time after a design has been registered any person interested may apply to the registrar for the cancellation of the registration of the design on the ground that the design was not, at the date of the registration thereof, new..., or on any other ground on which the registrar could have refused to register the design; and the registrar may make such order on the application as he thinks fit. ... (4) A cancellation under this section takes effect— (a) in the case of cancellation under subsection (1) , from the date of the registrar’s decision, (b) in the case of cancellation under subsection (2) , from the date of registration, (c) in the case of cancellation under subsection (3) , from the date on which the right in the registered design expired, or, in any case, from such other date as the registrar may direct. (5) An appeal lies from any order of the registrar under this section.

SECTION 44 INTERPRETATION. (1) In this Act, except where the context otherwise requires, the following expressions have the meanings hereby respectively assigned by them, that is to say— “article” means any article of manufacture and includes any part of an article if that part is made and sold separately; “artistic work” has the same meaning as in Part I of the Copyright, Designs and Patents Act 1988; “corresponding design”, in relation to an artistic work, means a design which if applied to an article would produce something which would be treated for the purposes of Part I of the Copyright, Designs and Patents Act 1988 as a copy of that work; “design” has the meaning assigned to it by section 1(1) of this Act; “proprietor” has the meaning assigned to it by section two of this Act; “registered proprietor” means the person or persons for the time being entered in the register of designs as proprietor of the design; “set of articles” means a number of articles of the same general character ordinarily on sale or intended to be used together, to each of which the same design, or the same design with 323

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modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, is applied. (2) Any reference in this Act to an article in respect of which a design is registered shall, in the case of a design registered in respect of a set of articles, be construed as a reference to any article of that set. (3) Any question arising under this Act whether a number of articles constitute a set of articles shall be determined by the registrar; and notwithstanding anything in this Act any determination of the registrar under this subsection shall be final.

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ANNEX 4 THE REGISTERED DESIGNS RULES 1995 – RELEVANT RULES RULE 14

ARTICLE TO WHICH DESIGN IS APPLIED

(1) Every application shall state the article to which the design is to be applied and that the applicant claims to be the proprietor of the design in relation to that article.

RULE 15

STATEMENT OF NOVELTY ON REPRESENTATIONS OR SPECIMENS

(1) Except in the case of an application to register the pattern or ornament of a design to be applied to a textile article, to wallpaper or similar wall covering or to lace or to sets of textile articles or lace, a statement satisfactory to the registrar of the features of the design for which novelty is claimed shall appear on each representation or specimen of the design.

RULE 16 REGISTRATION OF SAME DESIGN IN RESPECT OF OTHER ARTICLES, ETC. If the application is for the registration of a design which has already been registered or applied for in respect of one or more articles, or consists of a design already registered or applied for with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, and it is desired to claim the protection of section 4 for such application, it shall contain the number or numbers of the registration or registrations already effected or the application or applications already made.

RULE 24 USE OF PORTRAIT OF A MEMBER OF THE ROYAL FAMILY OR ARMORIAL BEARINGS, ETC. Where a portrait of Her Majesty or of any member of the Royal Family, or a reproduction of the armorial bearings, insignia, orders of chivalry, decorations or flags of any country, city, borough, town, place, society, body corporate, institution or person appears on a design, the registrar, before proceeding to register the design, shall, if he so requires, be furnished with a consent to the registration and use of such portrait or reproduction from such official or other person as appears to the registrar to be entitled to give consent, and in default of such consent he may refuse to register the design.

RULE 25

USE OF PORTRAIT OF LIVING OR RECENTLY DEAD PERSON

Where the name or portrait of a living person appears on a design, the registrar shall be furnished, if he so requires, with consent from such person before proceeding to register the design and, in the case of a person recently dead, the registrar may call for consent from his personal representative before proceeding with the registration of a design on which the name or portrait of the deceased person appears.

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RULE 26

EXCLUSION OF DESIGNS TO BE APPLIED TO CERTAIN ARTICLES

There shall be excluded from registration under the Act designs to be applied to any of the following articles, namely— (1) works of sculpture, other than casts or models used or intended to be used as models or patterns to be multiplied by any industrial process; (2) wall plaques, medals and medallions; (3) printed matter primarily of a literary or artistic character, including book jackets, calendars, certificates, coupons, dress-making patterns, greetings cards, labels, leaflets, maps, plans, playing cards, postcards, stamps, trade advertisements, trade forms and cards, transfers and similar articles.

RULE 35

INDUSTRIAL APPLICATION OF DESIGNS

A design shall be regarded for the purposes of section 6 as “applied industrially” if it is applied— (a) to more than fifty articles which do not all together constitute a single set of articles as defined in section 44(1); or (b) to goods manufactured in lengths or pieces, not being hand-made goods.

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ANNEX 5 PROVISIONS ON SUPPLEMENTARY UNREGISTERED DESIGNS UNOFFICIAL VERSION1 COUNCIL REGULATION (EC) NO 6/2002 OF 12 DECEMBER 2001 (SUD VERSION) Note: the UK SIs do not deal with the recitals – I have left some of them in place with minor edits where they seem to clarify the Articles. Whereas: (7) Enhanced protection for industrial design not only promotes the contribution of individual designers to the sum of Community excellence in the field, but also encourages innovation and development of new products and investment in their production. (8) Consequently, a more accessible design-protection system adapted to the needs of the internal market is essential for Community industries. (9) The substantive provisions of this Regulation on design law should be aligned with the respective provisions in Directive 98/71/EC. (10) 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. (11) The mechanical fittings of modular products may nevertheless constitute an important element of the innovative characteristics of modular products and present a major marketing asset, and therefore should be eligible for protection. (12) Protection should not be extended to those component parts which are not visible during normal use of a product, nor to those features of such part which are not visible when the part is mounted, or which would not, in themselves, fulfil the requirements as to novelty and individual character. Therefore, those features of design which are excluded from protection 1

Prepared using material from legislation.gov.uk under the Open Government Licence v3.0 and from the EU Commission under Commission Decision 2011/833/EU.

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for these reasons should not be taken into consideration for the purpose of assessing whether other features of the design fulfil the requirements for protection. (13) Full-scale approximation of the laws of the Member States on the use of protected designs for the purpose of permitting the repair of a complex product so as to restore its original appearance, where the design is applied to or incorporated in a product which constitutes a component part of a complex product upon whose appearance the protected design is dependent, could not be achieved through Directive 98/71/EC… Under these circumstances, it is appropriate not to confer any protection as a supplementary unregistered design for a design which is applied to or incorporated in a product which constitutes a component part of a complex product upon whose appearance the design is dependent and which is used for the purpose of the repair of a complex product so as to restore its original appearance… (14) 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. (15) A supplementary unregistered design should, as far as possible, serve the needs of all sectors of industry… (16) Some of those sectors produce large numbers of designs for products frequently having a short market life where protection without the burden of registration formalities is an advantage and the duration of protection is of lesser significance… (17) This calls for two forms of protection, one being a short-term supplementary unregistered design . . . (19) A supplementary unregistered design should not be upheld unless the design is new and unless it also possesses an individual character in comparison with other designs. (21) … It is appropriate that the supplementary unregistered design should, however, constitute a right only to prevent copying. Protection could not therefore extend to design products which are the result of a design arrived at independently by a second designer. This right should also extend to trade in products embodying infringing designs. (25) Those sectors of industry producing large numbers of possibly short-lived designs over short periods of time of which only some may be eventually commercialised will find advantage in the supplementary unregistered design. 328

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(31) This Regulation does not preclude the application to designs protected by supplementary unregistered designs of the industrial property laws or other relevant laws of the Member States, such as those relating to design protection acquired by registration or those relating to unregistered designs, trade marks, patents and utility models, unfair competition or civil liability.

HAS ADOPTED THIS REGULATION: TITLE I

GENERAL PROVISIONS ARTICLE 1 SUPPLEMENTARY UNREGISTERED DESIGN 1. A design which complies with the conditions contained in this Regulation is referred to as a “supplementary unregistered design.” 2. A design shall be protected as a supplementary unregistered design, if made available to the public in the manner provided for in this Regulation. 3. But a design that is made available to the public before IP completion day is not protected under this Regulation.

TITLE II

THE LAW RELATING TO DESIGNS Section 1 Requirements for protection ARTICLE 3 DEFINITIONS For the purposes of this Regulation: (a) “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; (b) “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; (c) “complex product“ means a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product. 329

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(d) “qualifying country” and “qualifying territory” mean a country or territory designated by regulations made under Article 7. ARTICLE 4 REQUIREMENTS FOR PROTECTION 1. A design shall be protected by a supplementary unregistered design to the extent that it is new and has individual character. 2. A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character: (a if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter; and (b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character. 3. “Normal use” within the meaning of paragraph (2)(a) shall mean use by the end user, excluding maintenance, servicing or repair work. ARTICLE 5 NOVELTY 1. A design shall be considered to be new if no identical design has been made available to the public: (a) in the case of a supplementary unregistered design, before the date on which the design for which protection is claimed has first been made available to the public. 2. Designs shall be deemed to be identical if their features differ only in immaterial details. ARTICLE 6 INDIVIDUAL CHARACTER 1. 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 a user by any design which has been made available to the public: (a) in the case of a supplementary unregistered design, before the date on which the design for which protection is claimed has first been made available to the public. 2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration. ARTICLE 7 DISCLOSURE 1. Subject to paragraph 4, for the purpose of applying Articles 5 and 6, a design shall be deemed to have been made available to the public if paragraph 2 or 3 applies. 2. This paragraph applies where before IP completion day, the design was published or exhibited, used in trade or otherwise disclosed except where these events could not reasonably have become 330

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known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union. 3. This paragraph applies where on or after IP completion day but before the date mentioned in Articles 5(1)(a) or 6(1)(a), the design was published or exhibited, used in trade or otherwise disclosed except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the United Kingdom, a qualifying country or a qualifying territory. 4. A design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality. 5. For the purposes of this Regulation, a “qualifying country” is a country designated as such, and a “qualifying territory” is a territory designated as such, in Regulations made by the Secretary of State. 6. Regulations under paragraph 5 are to be made by statutory instrument and are subject to annulment in pursuance of a resolution of either House. ARTICLE 8 DESIGNS DICTATED BY THEIR TECHNICAL FUNCTION AND DESIGNS OF INTERCONNECTIONS 1. A supplementary unregistered design shall not subsist in features of appearance of a product which are solely dictated by its technical function. 2. A supplementary unregistered design shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function. 3. Notwithstanding paragraph 2, a supplementary unregistered design shall under the conditions set out in Articles 5 and 6 subsist in a design serving the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system. ARTICLE 9 DESIGNS CONTRARY TO PUBLIC POLICY OR MORALITY A supplementary unregistered design shall not subsist in a design which is contrary to public policy or to accepted principles of morality.

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Section 2 Scope and term of protection ARTICLE 10 SCOPE OF PROTECTION 1. The scope of the protection conferred by a supplementary unregistered design shall include any design which does not produce on the informed user a different overall impression. 2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration. ARTICLE 11 COMMENCEMENT AND TERM OF PROTECTION OF THE SUPPLEMENTARY UNREGISTERED DESIGN 1. A design which meets the requirements under Section 1 shall be protected by a supplementary unregistered design for a period of three years as from the date on which the design was first made available to the public within the United Kingdom, a qualifying country or a qualifying territory. 2. For the purpose of paragraph 1, a design shall be deemed to have been made available to the public within the United Kingdom, a qualifying country or a qualifying territory if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the United Kingdom, a qualifying country or a qualifying territory. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.

Section 3 Right to the supplementary unregistered design ARTICLE 14 RIGHT TO THE SUPPLEMENTARY UNREGISTERED DESIGN 1. The right to the supplementary unregistered design shall vest in the designer or his successor in title. 2. If two or more persons have jointly developed a design, the right to the supplementary unregistered design shall vest in them jointly. 3. However, where a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to the supplementary unregistered design shall vest in the employer, unless otherwise agreed or specified.

ARTICLE 15 CLAIMS RELATING TO THE ENTITLEMENT TO A SUPPLEMENTARY UNREGISTERED DESIGN 1. If a supplementary unregistered design is disclosed or claimed by a person who is not entitled to it under Article 14, the person entitled to it under that provision may, without prejudice to any other remedy which may be open to him, claim to become recognised as the legitimate holder of that design. 332

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2. Where a person is jointly entitled to a supplementary unregistered design, that person may, in accordance with paragraph 1, claim to become recognised as joint holder. 3. Legal proceedings under paragraphs 1 or 2 shall be barred three years after the date of disclosure of a supplementary unregistered design. This provision shall not apply if the person who is not entitled to the design was acting in bad faith at the time when such design was disclosed or was assigned to him.

Section 4 Effects of the supplementary unregistered design ARTICLE 19 RIGHTS CONFERRED BY THE SUPPLEMENTARY UNREGISTERED DESIGN 1. A supplementary unregistered design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes. 2. A supplementary unregistered design shall, however, confer on its holder the right to prevent the acts referred to in paragraph 1 only if the contested use results from copying the protected design. The contested use shall not be deemed to result from copying the protected design if it results from an independent work of creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder. ARTICLE 20 LIMITATION OF THE RIGHTS CONFERRED BY A SUPPLEMENTARY UNREGISTERED DESIGN 1. The rights conferred by a supplementary unregistered design shall not be exercised in respect of: (a) acts done privately and for non-commercial purposes; (b) acts done for experimental purposes; (c) acts of reproduction for the purpose of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source. 2. In addition, the rights conferred by a supplementary unregistered design shall not be exercised in respect of: (a) the equipment on ships and aircraft registered in a third country when these temporarily enter the territory of the United Kingdom; (b) the importation in the United Kingdom of spare parts and accessories for the purpose of repairing such craft; (c) the execution of repairs on such craft.

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ARTICLE 21 EXHAUSTION OF RIGHTS The rights conferred by a supplementary unregistered design shall not extend to acts relating to a product in which a design included within the scope of protection of the supplementary unregistered design is incorporated or to which it is applied, when the product has been put on the market in the United Kingdom or the European Economic Area by the holder of the supplementary unregistered design or with his consent.

Section 5 Invalidity ARTICLE 24 DECLARATION OF INVALIDITY 2. A supplementary unregistered design may be declared invalid even after the supplementary unregistered design has lapsed. 3. A supplementary unregistered design shall be declared invalid by a supplementary unregistered design court on application to such a court or on the basis of a counterclaim in infringement proceedings. ARTICLE 25 GROUNDS FOR INVALIDITY 1. A supplementary unregistered design may be declared invalid only in the following cases: (a) if the design does not correspond to the definition under Article 3(a); (b) if it does not fulfil the requirements of Articles 4 to 9; (c) if, by virtue of a court decision, the right holder is not entitled to the design under Article 14; (e) if a distinctive sign is used in a subsequent design, and the law governing that sign confers on the right holder of the sign the right to prohibit such use; (f) if the design constitutes an unauthorised use of a work protected under copyright law; (g) if the design constitutes an improper use of any of the items listed in Article 6ter of the “Paris Convention” for the Protection of Industrial Property hereafter referred to as the “Paris Convention,” or of badges, emblems and escutcheons other than those covered by the said Article 6ter and which are of particular public interest in the United Kingdom, a qualifying country or a qualifying territory. 2. The ground provided for in paragraph (1)(c) may be invoked solely by the person who is entitled to the supplementary unregistered design under Article 14. 3. The grounds provided for in paragraph (1)(e) and (f) may be invoked solely by the holder of the earlier right. 4. The ground provided for in paragraph (1)(g) may be invoked solely by the person or entity concerned by the use.

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ARTICLE 26 CONSEQUENCES OF INVALIDITY 1. A supplementary unregistered design shall be deemed not to have had, as from the outset, the effects specified in this Regulation, to the extent that it has been declared invalid. 2. Subject to claims for compensation for damage caused by negligence or lack of good faith on the part of the holder of the supplementary unregistered design, or to unjust enrichment, the retroactive effect of invalidity of the supplementary unregistered design shall not affect: (a) any decision on infringement which has acquired the authority of a final decision and been enforced prior to the invalidity decision; (b) any contract concluded prior to the invalidity decision, in so far as it has been performed before the decision; however, repayment, to an extent justified by the circumstances, of sums paid under the relevant contract may be claimed on grounds of equity.

TITLE III

SUPPLEMENTARY UNREGISTERED DESIGNS AS OBJECTS OF PROPERTY ARTICLE 27 PROPERTY RIGHT A supplementary unregistered design is personal property (in Scotland, incorporeal moveable property) which subsists in accordance with this Regulation. ARTICLE 32 LICENSING 1. A supplementary unregistered design may be licensed. A licence may be exclusive or non-exclusive. 2. Without prejudice to any legal proceedings based on the law of contract, the holder may invoke the rights conferred by the supplementary unregistered design against a licensee who contravenes any provision in his licensing contract with regard to its duration, the form in which the design may be used, the range of products for which the licence is granted and the quality of products manufactured by the licensee. 3. Without prejudice to the provisions of the licensing contract, the licensee may bring proceedings for infringement of a supplementary unregistered design only if the right holder consents thereto. However, the holder of an exclusive licence may bring such proceedings if the right holder in the supplementary unregistered design, having been given notice to do so, does not himself bring infringement proceedings within an appropriate period. 4. A licensee shall, for the purpose of obtaining compensation for damage suffered by him, be entitled to intervene in an infringement action brought by the right holder in a supplementary unregistered design.

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TITLE IX

JURISDICTION AND PROCEDURE IN LEGAL ACTIONS RELATING TO SUPPLEMENTARY UNREGISTERED DESIGNS Section 2 Disputes concerning the infringement and validity of supplementary unregistered designs ARTICLE 81 JURISDICTION OVER INFRINGEMENT AND VALIDITY 1. In this Regulation, “design court” means— (a) in England and Wales, the High Court; (b) in Scotland, the sheriff court and the Court of Session; and (c) in Northern Ireland, the county court and the High Court. 2. The design courts shall have exclusive jurisdiction: (a) for infringement actions and actions in respect of threatened infringement of supplementary unregistered designs; (b) for actions for declaration of non-infringement of supplementary unregistered designs, if they are permitted under national law; (c) for actions for a declaration of invalidity of a supplementary unregistered design; (d) for counterclaims for a declaration of invalidity of a supplementary unregistered design raised in connection with actions under (a). ARTICLE 84 ACTION OR COUNTERCLAIM FOR A DECLARATION OF INVALIDITY OF A SUPPLEMENTARY UNREGISTERED DESIGN 1. An action or a counterclaim for a declaration of invalidity of a supplementary unregistered design may only be based on the grounds for invalidity mentioned in Article 25. 2. In the cases referred to in Article 25(2), (3), and (4) the action or the counterclaim may be brought solely by the person entitled under those provisions. 3. If the counterclaim is brought in a legal action to which the right holder of the supplementary unregistered design is not already a party, he shall be informed thereof and may be joined as a party to the action in accordance with the laws applying to the design courts. 4. The validity of a supplementary unregistered design may not be put in issue in an action for a declaration of non-infringement. ARTICLE 85 PRESUMPTION OF VALIDITY—DEFENCE AS TO THE MERITS 2. In proceedings in respect of an infringement action or an action for threatened infringement of a supplementary unregistered design, the design court shall treat the design as valid if the right 336

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holder produces proof that the conditions laid down in Article 11 have been met and indicates what constitutes the individual character of his supplementary unregistered design. However, the defendant may contest its validity by way of a plea or with a counterclaim for a declaration of invalidity. ARTICLE 86 JUDGEMENTS OF INVALIDITY 1. Where in a proceeding before a design court the supplementary unregistered design has been put in issue by way of a counterclaim for a declaration of invalidity: (a) if any of the grounds mentioned in Article 25 are found to prejudice the maintenance of the design, the court shall declare that design invalid; (b) if none of the grounds mentioned in Article 25 is found to prejudice the maintenance of that design, the court shall reject the counterclaim. ARTICLE 89 SANCTIONS IN ACTIONS FOR INFRINGEMENT 1. Where in an action for infringement or for threatened infringement a design court finds that the defendant has infringed or threatened to infringe a supplementary unregistered design, it shall, unless there are special reasons for not doing so, order the following measures: (a) an order prohibiting the defendant from proceeding with the acts which have infringed or would infringe that design; (b) an order to seize the infringing products; (c) an order to seize materials and implements predominantly used in order to manufacture the infringing goods, if their owner knew the effect for which such use was intended or if such effect would have been obvious in the circumstances; (d) any order imposing other sanctions appropriate under the circumstances which are provided by law. ARTICLE 90 PROVISIONAL MEASURES, INCLUDING PROTECTIVE MEASURES 1. Application may be made to the courts, including design courts, for such provisional measures, including protective measures, in respect of a supplementary unregistered design as may be available. 2. In proceedings relating to provisional measures, including protective measures, a plea otherwise than by way of counterclaim relating to the invalidity of a supplementary unregistered design submitted by the defendant shall be admissible. Article 85(2) shall, however, apply mutatis mutandis. 3. A design court shall have jurisdiction to grant provisional measures, including protective measures.

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Section 3 Other disputes concerning supplementary unregistered designs ARTICLE 94 OBLIGATION OF THE DESIGN COURT A design court which is dealing with an action relating to a supplementary unregistered design other than the actions referred to in Article 81 shall treat the design as valid. Articles 85(2) and 90(2) shall, however, apply mutatis mutandis.

TITLE XII

FINAL PROVISIONS ARTICLE 110 TRANSITIONAL PROVISION 1. Protection as a supplementary unregistered design shall not exist for a design which constitutes a component part of a complex product used within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance. ARTICLE 111 ENTRY INTO FORCE 1. This Regulation shall enter into force on the 60th day following its publication in the Official Journal of the European Communities.2

Date of entry into force: 6.3.2002

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THE COMMUNITY DESIGN REGULATIONS 2005 (SUD VERSION) 1 INTRODUCTORY AND INTERPRETATION 1.—(1) These Regulations may be cited as the Community Design Regulations 2005 and shall come into force on 1st October 2005. (2) In these Regulations— “design court” has the meaning given by Article 81 of the Design Regulation; “Design Regulation” means Council Regulation (EC) 6/2002 of 12th December 2001 on Community Designs as amended by regulation 4(1) of, and Part 1 of Schedule 1 to, the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2018; and “supplementary unregistered design” has the meaning given by Article 1 of the Design Regulation. 1A INFRINGEMENT PROCEEDINGS (1) This regulation and regulations 1B to 1D are without prejudice to the duties of the design court under the provisions of Article 89(1)(a) to (c) of the Design Regulation. (2) Subject to paragraph (5), in an action for infringement of a supplementary unregistered design all such relief by way of damages, injunctions, accounts or otherwise is available to the holder of the supplementary unregistered design as is available in respect of the infringement of any other property right. (5) In an action for the infringement of an supplementary unregistered design, damages shall not be awarded against a person who proves that at the date of the infringement that they were not aware, and had no reason to believe, that the design to which the action relates was protected as a supplementary unregistered design 1B ORDER FOR DELIVERY UP (1) Where a person— (a) has in his possession, custody or control for commercial purposes an infringing article, or (b) has in his possession, custody or control anything specifically designed or adapted for making articles to a particular design which is a supplementary unregistered design, knowing or having reason to believe that it has been or is to be used to make an infringing article, the holder of the supplementary unregistered design in question may apply to the design court for an order that the infringing article or other thing be delivered up to him or to such other person as the court may direct. (2) An application shall not be made after the end of the period specified in the following provisions of this regulation; and no order shall be made unless the court also makes, or it appears to the court that there are grounds for making, an order under regulation 1C (order as to disposal of infringing articles, &c.). 339

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(3) An application for an order under this regulation may not be made after the end of the period of six years from the date on which the article or thing in question was made, subject to paragraph (4). (4) If during the whole or any part of that period the holder of the supplementary unregistered design— (a) is under a disability, or (b) is prevented by fraud or concealment from discovering the facts entitling him to apply for an order, an application may be made at any time before the end of the period of six years from the date on which he ceased to be under a disability or, as the case may be, could with reasonable diligence have discovered those facts. (5) In paragraph (4) “disability”— (a) in England and Wales, has the same meaning as in the Limitation Act 1980; (b) in Scotland, means legal disability within the meaning of the Prescription and Limitation (Scotland) Act 1973; (c) in Northern Ireland, has the same meaning as in the Statute of Limitations (Northern Ireland) 1958. (6) A person to whom an infringing article or other thing is delivered up in pursuance of an order under this regulation shall, if an order under regulation 1C is not made, retain it pending the making of an order, or the decision not to make an order, under that regulation. (7) The reference in paragraph (1) to an act being done in relation to an article for “commercial purposes” are to its being done with a view to the article in question being sold or hired in the course of a business. (8) Nothing in this regulation affects any other power of the design court. 1C ORDER AS TO DISPOSAL OF INFRINGING ARTICLES, &C (1) An application may be made to the design court for an order that an infringing article or other thing delivered up in pursuance of an order under regulation 1B shall be— (a) forfeited to the holder of the supplementary unregistered design, or (b) destroyed or otherwise dealt with as the design court may think fit, or for a decision that no such order should be made. (2) In considering what order (if any) should be made, the design court shall consider whether other remedies available in an action for infringement of the right in a supplementary unregistered design would be adequate to compensate the holder and to protect his interests.

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(3) Where there is more than one person interested in an article or other thing, the design court shall make such order as it thinks just and may (in particular) direct that the thing be sold, or otherwise dealt with, and the proceeds divided. (4) If the design court decides that no order should be made under this regulation, the person in whose possession, custody or control the article or other thing was before being delivered up is entitled to its return. (5) References in this regulation to a person having an interest in an article or other thing include any person in whose favour an order could be made in respect of it— (a) under this regulation; (b) under section 24D of the Registered Designs Act 1949; (c) under section 114, 204 or 231 of the Copyright, Designs and Patents Act 1988; or (d) under section 19 of the Trade Marks Act 1994 1D MEANING OF “INFRINGING ARTICLE” (1) In these Regulations “infringing article,” in relation to a design, shall be construed in accordance with this regulation. (2) An article is an infringing article if its making to that design was an infringement of a supplementary unregistered design. (3) An article is also an infringing article if— (a) it has been or is proposed to be imported into the United Kingdom, and (b) its making to that design in the United Kingdom would have been an infringement of a supplementary unregistered design or a breach of an exclusive licensing agreement relating to that supplementary unregistered design. (4) Where it is shown that an article is made to a design which is or has been a supplementary unregistered design, it shall be presumed until the contrary is proved that the article was made at a time when the right in the supplementary unregistered design subsisted. (5) Nothing in paragraph (3) shall be construed as applying to an article which may be lawfully imported into the United Kingdom by virtue of anything which forms part of retained EU law as a result of section 3 or 4 of the European Union (Withdrawal) Act 2018. 2 UNJUSTIFIED THREATS: THREATS OF INFRINGEMENT PROCEEDINGS (1) A communication contains a “threat of infringement proceedings” if a reasonable person in the position of a recipient would understand from the communication that— (a) a supplementary unregistered design exists, and (b) a person intends to bring proceedings (whether in a court in the United Kingdom or 341

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elsewhere) against another person for infringement of the supplementary unregistered design by— (i) an act done in the United Kingdom, or (ii) an act which, if done, would be done in the United Kingdom. (2) References in this regulation and in regulation 2C to a “recipient” include, in the case of a communication directed to the public or a section of the public, references to a person to whom the communication is directed. 2A UNJUSTIFIED THREATS: ACTIONABLE THREATS (1) Subject to paragraphs (2) to (5), a threat of infringement proceedings made by any person is actionable by any person aggrieved by the threat. (2) A threat of infringement proceedings is not actionable if the infringement is alleged to consist of— (a) making an article for disposal, or (b) importing an article for disposal. (3) A threat of infringement proceedings is not actionable if the infringement is alleged to consist of an act which, if done, would constitute an infringement of a kind mentioned in paragraph (2)(a) or (b). (4) A threat of infringement proceedings is not actionable if the threat— (a) is made to a person who has done, or intends to do, an act mentioned in paragraph (2)(a) or (b) in relation to an article, and (b) is a threat of proceedings for an infringement alleged to consist of doing anything else in relation to that article. (5) A threat of infringement proceedings which is not an express threat is not actionable if it is contained in a permitted communication. (6) In regulations 2C and 2D an “actionable threat” means a threat of infringement proceedings that is actionable in accordance with this regulation. 2B UNJUSTIFIED THREATS: PERMITTED COMMUNICATIONS (1) For the purposes of regulation 2A(5), a communication containing a threat of infringement proceedings is a “permitted communication” if— (a) the communication, so far as it contains information that relates to the threat, is made for a permitted purpose; (b) all of the information that relates to the threat is information that— (i) is necessary for that purpose (see paragraph (5)(a) to (c) for some examples of necessary information), and 342

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(ii) the person making the communication reasonably believes is true. (2) Each of the following is a “permitted purpose”— (a) giving notice that a supplementary unregistered design exists; (b) discovering whether, or by whom, a supplementary unregistered design has been infringed by an act mentioned in regulation 2A(2)(a) or (b); (c) giving notice that a person has a right in or under a supplementary unregistered design, where another person’s awareness of the right is relevant to any proceedings that may be brought in respect of the supplementary unregistered design. (3) The design court may, having regard to the nature of the purposes listed in paragraph (2)(a) to (c), treat any other purpose as a “permitted purpose” if it considers that it is in the interests of justice to do so. (4) But the following may not be treated as a “permitted purpose”— (a) requesting a person to cease doing, for commercial purposes, anything in relation to an article made to a design, in which a design is incorporated or to which it is applied, (b) requesting a person to deliver up or destroy an article made to a design, in which a design is incorporated or to which it is applied, or (c) requesting a person to give an undertaking relating to an article made to a design, in which a design is incorporated or to which it is applied. (5) If any of the following information is included in a communication made for a permitted purpose, it is information that is “necessary for that purpose” (see paragraph (1)(b)(i))— (a) a statement— (i) that a design is protected as a supplementary unregistered design; (b) details of the supplementary unregistered design, or of a right in or under the supplementary unregistered design, which— (i) are accurate in all material respects, and (ii) are not misleading in any material respect; and (c) information enabling the identification of the article that is alleged to be infringing an article in relation to the design. 2C UNJUSTIFIED THREATS: REMEDIES AND DEFENCES (1) Proceedings in respect of an actionable threat may be brought against the person who made the threat for— (a) a declaration that the threat is unjustified; (b) an injunction against the continuance of the threat; (c) damages in respect of any loss sustained by the aggrieved person by reason of the threat. (2) It is a defence for the person who made the threat to show that the act in respect of which 343

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proceedings were threatened constitutes (or if done would constitute) an infringement of the supplementary unregistered design. (3) It is a defence for the person who made the threat to show— (a) that, despite having taken reasonable steps, the person has not identified anyone who has done an act mentioned in regulation 2A(2)(a) or (b) in relation to the article which is the subject of the threat, and (b) that the person notified the recipient, before or at the time of making the threat, of the steps taken. 2D UNJUSTIFIED THREATS: PROFESSIONAL ADVISERS (1) Proceedings in respect of an actionable threat may not be brought against a professional adviser (or any person vicariously liable for the actions of that professional adviser) if the conditions in paragraph (3) are met. (2) In this section “professional adviser” means a person who, in relation to the making of the communication containing the threat— (a) is acting in a professional capacity in providing legal services or the services of a trade mark attorney or a patent attorney, and (b) is regulated in the provision of legal services, or the services of a trade mark attorney or a patent attorney, by one or more regulatory bodies (whether through membership of a regulatory body, the issue of a licence to practise or any other means). (3) The conditions are that— (a) in making the communication the professional adviser is acting on the instructions of another person, and (b) when the communication is made the professional adviser identifies the person on whose instructions the adviser is acting. (4) This section does not affect any liability of the person on whose instructions the professional adviser is acting. (5) It is for a person asserting that paragraph (1) applies to prove (if required) that at the material time— (a) the person concerned was acting as a professional adviser, and (b) the conditions in paragraph (3) were met. 2F UNJUSTIFIED THREATS: SUPPLEMENTARY: PROCEEDINGS FOR DELIVERY UP ETC. In regulation 2(1)(b) the reference to proceedings for infringement of the supplementary unregistered design includes a reference to— (a) proceedings for an order under regulation 1B (order for delivery up), and 344

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(b) proceedings for an order under regulation 1C (order as to disposal of infringing articles). 4 PRIVILEGE FOR COMMUNICATIONS WITH THOSE ON THE SPECIAL LIST OF PROFESSIONAL DESIGN REPRESENTATIVES (1) This regulation applies to communications as to any matter relating to the protection of a supplementary unregistered design. (2) Any such communication— (a) between a person and his professional designs representative, or (b) for the purposes of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing his professional designs representative, is privileged from, or in Scotland protected against, disclosure in legal proceedings in the same way as a communication between a person and his solicitor or, as the case may be, a communication for the purpose of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing his solicitor. (3) In paragraph (2) “professional designs representative” means a person whose name appears on the special list of professional representatives for design matters maintained by the European Union Intellectual Property Office referred to in Article 78(4) of Council Regulation (EC) 6/2002 of 12 December 2001 on Community designs as it had effect immediately before IP completion day. 5 USE OF SUPPLEMENTARY UNREGISTERED DESIGN FOR SERVICES OF THE CROWN The provisions of the Schedule to these Regulations shall have effect with respect to the use of supplementary unregistered designs for the services of the Crown and the rights of third parties in respect of such use. 5A APPLICATION TO SCOTLAND AND NORTHERN IRELAND (1) In the application of these Regulations to Scotland— “accounts” means count, reckoning and payment; “claimant” means pursuer; “declaration” means “declarator”; “defendant” means defender; “delivery up” means delivery; “injunction” means interdict. (2) In the application of these Regulations to Northern Ireland, “claimant” includes plaintiff.

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SCHEDULE—USE OF SUPPLEMENTARY UNREGISTERED DESIGNS FOR SERVICES OF THE CROWN Use of supplementary unregistered design for services of the Crown

1.—(1) A government department, or a person authorised in writing by a government department, may without the consent of the holder of a supplementary unregistered design— (a) do anything for the purpose of supplying products for the services of the Crown, or (b) dispose of products no longer required for the services of the Crown; and nothing done by virtue of this paragraph infringes the supplementary unregistered design. (2) References in this Schedule to “the services of the Crown” are limited to those which are necessary for essential defence or security needs. (3) In this Schedule— “Crown use,” in relation to a supplementary unregistered design, means the doing of anything by virtue of this paragraph which would otherwise be an infringement of the supplementary unregistered design; and “the government department concerned,” in relation to such use, means the government department by whom or on whose authority the act was done. (4) The authority of a government department in respect of Crown use of a supplementary unregistered design may be given to a person either before or after the use and whether or not he is authorised, directly or indirectly, by the holder of the supplementary unregistered design to do anything in relation to the design. (5) A person acquiring anything sold in the exercise of powers conferred by this paragraph, and any person claiming under him, may deal with it in the same manner as if the Crown was the holder of the supplementary unregistered design.

Settlement of terms for Crown use

2.—(1) Where Crown use is made of a supplementary unregistered design, the government department concerned shall— (a) notify the holder of the supplementary unregistered design as soon as practicable, and (b) give him such information as to the extent of the use as he may from time to time require, unless it appears to the department that it would be contrary to the public interest to do so or the identity of the holder of the supplementary unregistered design cannot be ascertained on reasonable inquiry. (2) Crown use of a supplementary unregistered design shall be on such terms as, either before or after the use, are agreed between the government department concerned and the holder of the

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supplementary unregistered design with the approval of the Treasury or, in default of agreement, are determined by the design court. (3) In the application of sub-paragraph (2) to Northern Ireland the reference to the Treasury shall, where the government department referred to in that sub-paragraph is a Northern Ireland department, be construed as a reference to the Department of Finance and Personnel. (4) In the application of sub-paragraph (2) to Scotland, where the government department referred to in that sub-paragraph is any part of the Scottish Administration, the words “with the approval of the Treasury” are omitted. (5) Where the identity of the holder of the supplementary unregistered design cannot be ascertained on reasonable inquiry, the government department concerned may apply to the design court who may order that no royalty or other sum shall be payable in respect of Crown use of the supplementary unregistered design until the holder agrees terms with the department or refers the matter to the design court for determination.

Rights of third parties in case of Crown use

3.—(1) The provisions of any licence, assignment or agreement made between the holder of the supplementary unregistered design (or anyone deriving title from him or from whom he derives title) and any person other than a government department are of no effect in relation to Crown use of a supplementary unregistered design, or any act incidental to Crown use, so far as they— (a) restrict or regulate anything done in relation to the supplementary unregistered design, or the use of any model, document or other information relating to it, or (b) provide for the making of payments in respect of, or calculated by reference to such use; and the copying or issuing to the public of copies of any such model or document in connection with the thing done, or any such use, shall be deemed not to be an infringement of any copyright in the model or document. (2) Sub-paragraph (1) shall not be construed as authorising the disclosure of any such model, document or information in contravention of the licence, assignment or agreement. (3) Where an exclusive licence is in force in respect of the supplementary unregistered design— (a) if the licence was granted for royalties— (i) any agreement between the holder of the supplementary unregistered design and a government department under paragraph 2 (settlement of terms for Crown use) requires the consent of the licensee, and (ii) the licensee is entitled to recover from the holder of the supplementary unregistered design such part of the payment for Crown use as may be agreed between them or, in default of agreement, determined by the design court; (b) if the licence was granted otherwise than for royalties— 347

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(i) paragraph 2 applies in relation to anything done which but for paragraph 1 (Crown use) and sub-paragraph (1) would be an infringement of the rights of the licensee with the substitution for references to the holder of the supplementary unregistered design of references to the licensee, and (ii) paragraph 2 does not apply in relation to anything done by the licensee by virtue of an authority given under paragraph 1. (4) Where the supplementary unregistered design has been assigned to the holder of the supplementary unregistered design in consideration of royalties— (a) paragraph 2 applies in relation to Crown use of the supplementary unregistered design as if the references to the holder of the supplementary unregistered design included the assignor, and any payment for Crown use shall be divided between them in such proportion as may be agreed or, in default of agreement, determined by the design court; and (b) paragraph 2 applies in relation to any act incidental to Crown use as it applies in relation to Crown use of the supplementary unregistered design. (5) Where any model, document or other information relating to a supplementary unregistered design is used in connection with Crown use of the design, or any act incidental to Crown use, paragraph 2 applies to the use of the model, document or other information with the substitution for the references to the holder of the supplementary unregistered design of references to the person entitled to the benefit of any provision of an agreement rendered inoperative by subparagraph (1). (6) In this paragraph— “act incidental to Crown use” means anything done for the services of the Crown to the order of a government department by the holder of the supplementary unregistered design in respect of a design; “payment for Crown use” means such amount as is payable by the government department concerned by virtue of paragraph 2; and “royalties” includes any benefit determined by reference to the use of the supplementary unregistered design.

Crown use: compensation for loss of profit

4.—(1) Where Crown use is made of a supplementary unregistered design, the government department concerned shall pay— (a) to the holder of the supplementary unregistered design, or (b) if there is an exclusive licence in force in respect of the supplementary unregistered design, to the exclusive licensee, compensation for any loss resulting from his not being awarded a contract to supply the products to which the supplementary unregistered design is applied or in which it is incorporated. 348

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(2) Compensation is payable only to the extent that such a contract could have been fulfilled from his existing manufacturing capacity; but is payable notwithstanding the existence of circumstances rendering him ineligible for the award of such a contract. (3) In determining the loss, regard shall be had to the profit which would have been made on such a contract and to the extent to which any manufacturing capacity was under-used. (4) No compensation is payable in respect of any failure to secure contracts for the supply of products to which the supplementary unregistered design is applied or in which it is incorporated otherwise than for the services of the Crown. (5) The amount payable shall, if not agreed between the holder of the supplementary unregistered design or licensee and the government department concerned with the approval of the Treasury, be determined by the design court on a reference under paragraph 5; and it is in addition to any amount payable under paragraph 2 or 3. (6) In the application of this paragraph to Northern Ireland, the reference in sub-paragraph (5) to the Treasury shall, where the government department concerned is a Northern Ireland department, be construed as a reference to the Department of Finance and Personnel. (7) In the application of this paragraph to Scotland, where the government department referred to in sub-paragraph (5) is any part of the Scottish Administration, the words “with the approval of the Treasury” in that sub-paragraph are omitted.

Reference of disputes relating to Crown use

5.—(1) A dispute as to any matter which falls to be determined by the design court in default of agreement under— (a) paragraph 2 (settlement of terms for Crown use), (b) paragraph 3 (rights of third parties in case of Crown use), or (c) paragraph 4 (Crown use: compensation for loss of profit), may be referred to the design court by any party to the dispute. (2) In determining a dispute between a government department and any person as to the terms for Crown use of a supplementary unregistered design the design court shall have regard to— (a) any sums which that person or a person from whom he derives title has received or is entitled to receive, directly or indirectly, from any government department in respect of the supplementary unregistered design; and (b) whether that person or a person from whom he derives title has in the design court’s opinion without reasonable cause failed to comply with a request of the department for the use of the supplementary unregistered design on reasonable terms.

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(3) One of two or more joint holders of the supplementary unregistered design may, without the concurrence of the others, refer a dispute to the design court under this paragraph, but shall not do so unless the others are made parties; and none of those others is liable for any costs unless he takes part in the proceedings. (4) Where the consent of an exclusive licensee is required by paragraph 3(3)(a)(i) to the settlement by agreement of the terms for Crown use of a supplementary unregistered design, a determination by the design court of the amount of any payment to be made for such use is of no effect unless the licensee has been notified of the reference and given an opportunity to be heard. (5) On the reference of a dispute as to the amount recoverable as mentioned in paragraph 3(3) (a)(ii) (right of exclusive licensee to recover part of amount payable to holder of supplementary unregistered design) the design court shall determine what is just having regard to any expenditure incurred by the licensee— (a) in developing the design, or (b) in making payments to the holder of the supplementary unregistered design in consideration of the licence (other than royalties or other payments determined by reference to the use of the design).

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ANNEX 6 PROVISIONS ON CONTINUING UNREGISTERED COMMUNITY DESIGNS UNOFFICIAL VERSION1 COUNCIL REGULATION (EC) NO 6/2002 OF 12 DECEMBER 2001 (CUCD VERSION) Note: the UK SIs do not deal with the Recitals – I have left some of them in place with minor edits where they seem to clarify the Articles.

Whereas: (7) Enhanced protection for industrial design not only promotes the contribution of individual designers to the sum of Community excellence in the field, but also encourages innovation and development of new products and investment in their production. (8) Consequently a more accessible design-protection system adapted to the needs of the internal market is essential for Community industries. (9) The substantive provisions of this Regulation on design law should be aligned with the respective provisions in Directive 98/71/EC. (10) 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. (11) The mechanical fittings of modular products may nevertheless constitute an important element of the innovative characteristics of modular products and present a major marketing asset, and therefore should be eligible for protection. (12) Protection should not be extended to those component parts which are not visible during normal use of a product, nor to those features of such part which are not visible when the part is mounted, or which would not, in themselves, fulfil the requirements as to novelty and individual character. Therefore, those features of design which are excluded from protection 1

Prepared using material from legislation.gov.uk under the Open Government Licence v3.0 and from the EU Commission under Commission Decision 2011/833/EU.

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for these reasons should not be taken into consideration for the purpose of assessing whether other features of the design fulfil the requirements for protection. (13) Full-scale approximation of the laws of the Member States on the use of protected designs for the purpose of permitting the repair of a complex product so as to restore its original appearance, where the design is applied to or incorporated in a product which constitutes a component part of a complex product upon whose appearance the protected design is dependent, could not be achieved through Directive 98/71/EC… Under these circumstances, it is appropriate not to confer any protection as a continuing unregistered Community design for a design which is applied to or incorporated in a product which constitutes a component part of a complex product upon whose appearance the design is dependent and which is used for the purpose of the repair of a complex product so as to restore its original appearance, until the Council has decided its policy on this issue on the basis of a Commission proposal. (14) 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. (15) A continuing unregistered Community design should, as far as possible, serve the needs of all sectors of industry in the Community. (16) Some of those sectors produce large numbers of designs for products frequently having a short market life where protection without the burden of registration formalities is an advantage and the duration of protection is of lesser significance… (17) This calls for two forms of protection, one being a short-term continuing unregistered Community… (19) A continuing unregistered Community design should not be upheld unless the design is new and unless it also possesses an individual character in comparison with other designs. (21) … It is appropriate that the unregistered Community design should, however, constitute a right only to prevent copying. Protection could not therefore extend to design products which are the result of a design arrived at independently by a second designer. This right should also extend to trade in products embodying infringing designs. (25) Those sectors of industry producing large numbers of possibly short-lived designs over short periods of time of which only some may be eventually commercialised will find advantage in the continuing unregistered Community design. 352

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(31) This Regulation does not preclude the application to designs protected by Community designs of the industrial property laws or other relevant laws of the Member States, such as those relating to design protection acquired by registration or those relating to unregistered designs, trade marks, patents and utility models, unfair competition or civil liability.

HAS ADOPTED THIS REGULATION: TITLE I

GENERAL PROVISIONS ARTICLE 1 CONTINUING UNREGISTERED COMMUNITY DESIGN 1. A design which complies with the conditions contained in this Regulation is referred to as a “continuing unregistered Community design.” 2. A design shall be protected as a continuing unregistered Community design, if made available to the public in the manner provided for in this Regulation;

TITLE II

THE LAW RELATING TO DESIGNS Section 1 Requirements for protection ARTICLE 3 DEFINITIONS For the purposes of this Regulation: (a) “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; (ab) “European Union” means the countries that were part of the European Union immediately before IP completion day;2 (b) “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; (c) “complex product“ means a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product.

This is in error—it should read “exit day.”

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ARTICLE 4 REQUIREMENTS FOR PROTECTION 1. A design shall be protected by a continuing unregistered Community design to the extent that it is new and has individual character. 2. A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character: (a) if the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter; and (b) to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character. 3. “Normal use” within the meaning of paragraph (2)(a) shall mean use by the end user, excluding maintenance, servicing or repair work. ARTICLE 5 NOVELTY 1. A continuing unregistered Community design shall be considered to be new if no identical design has been made available to the public: (a) before the date on which the design for which protection is claimed has first been made available to the public. 2. Designs shall be deemed to be identical if their features differ only in immaterial details. ARTICLE 6 INDIVIDUAL CHARACTER 1. A continuing unregistered Community 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 a user by any design which has been made available to the public: (a) before the date on which the design for which protection is claimed has first been made available to the public. 2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration. ARTICLE 7 DISCLOSURE 1. For the purpose of applying Articles 5 and 6, a continuing unregistered Community design shall be deemed to have been made available to the public if it has been published, or exhibited, used in trade or otherwise disclosed, before the date referred to in Articles 5(1)(a) and 6(1)(a) except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union. A design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.

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ARTICLE 8 DESIGNS DICTATED BY THEIR TECHNICAL FUNCTION AND DESIGNS OF INTERCONNECTIONS 1. A continuing unregistered Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function. 2. A continuing unregistered Community design shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function. 3. Notwithstanding paragraph 2, a continuing unregistered Community design shall under the conditions set out in Articles 5 and 6 subsist in a design serving the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system. ARTICLE 9 DESIGNS CONTRARY TO PUBLIC POLICY OR MORALITY A continuing unregistered Community design shall not subsist in a design which is contrary to public policy or to accepted principles of morality.

Section 2 Scope and term of protection ARTICLE 10 SCOPE OF PROTECTION 1. The scope of the protection conferred by a continuing unregistered Community design shall include any design which does not produce on the informed user a different overall impression. 2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration. ARTICLE 11 COMMENCEMENT AND TERM OF PROTECTION OF THE CONTINUING UNREGISTERED COMMUNITY DESIGN A1. design which meets the requirements under Section 1 shall be protected by a continuing unregistered Community design for a period of three years as from the date on which the design was first made available to the public within the European Union. 2. For the purpose of paragraph 1, a design shall be deemed to have been made available to the public within the European Union if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the European Union. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.

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Section 3 Right to the continuing unregistered Community design ARTICLE 14 RIGHT TO THE CONTINUING UNREGISTERED COMMUNITY DESIGN 1. The right to the continuing unregistered Community design shall vest in the designer or his successor in title. 2. If two or more persons have jointly developed a design, the right to the continuing unregistered Community design shall vest in them jointly. 3. However, where a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to the continuing unregistered Community design shall vest in the employer, unless otherwise agreed or specified. ARTICLE 15 CLAIMS RELATING TO THE ENTITLEMENT TO A CONTINUING UNREGISTERED COMMUNITY DESIGN 1. If a continuing unregistered Community design is disclosed or claimed by a person who is not entitled to it under Article 14, the person entitled to it under that provision may, without prejudice to any other remedy which may be open to him, claim to become recognised as the legitimate holder of that design. 2. Where a person is jointly entitled to a continuing unregistered Community design, that person may, in accordance with paragraph 1, claim to become recognised as joint holder. 3. Legal proceedings under paragraphs 1 or 2 shall be barred three years after the date of disclosure of a continuing unregistered Community design. This provision shall not apply if the person who is not entitled to the design was acting in bad faith at the time when such design was disclosed or was assigned to him.

Section 4 Effects of the continuing unregistered Community design ARTICLE 19 RIGHTS CONFERRED BY THE CONTINUING UNREGISTERED COMMUNITY DESIGN 1. A continuing unregistered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes. 2. A continuing unregistered Community design shall, however, confer on its holder the right to prevent the acts referred to in paragraph 1 only if the contested use results from copying the protected design. 356

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The contested use shall not be deemed to result from copying the protected design if it results from an independent work of creation by a designer who may be reasonably thought not to be familiar with the design made available to the public by the holder. ARTICLE 20 LIMITATION OF THE RIGHTS CONFERRED BY A CONTINUING UNREGISTERED COMMUNITY DESIGN 1. The rights conferred by a continuing unregistered Community design shall not be exercised in respect of: (a) acts done privately and for non-commercial purposes; (b) acts done for experimental purposes; (c) acts of reproduction for the purpose of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source. 2. In addition, the rights conferred by a continuing unregistered Community design shall not be exercised in respect of: (a) the equipment on ships and aircraft registered in a third country when these temporarily enter the territory of the United Kingdom; (b) the importation in the United Kingdom of spare parts and accessories for the purpose of repairing such craft; (c) the execution of repairs on such craft. ARTICLE 21 EXHAUSTION OF RIGHTS The rights conferred by a continuing unregistered Community design shall not extend to acts relating to a product in which a design included within the scope of protection of the continuing unregistered Community design is incorporated or to which it is applied, when the product has been put on the market in the United Kingdom or the Community by the holder of the continuing unregistered Community design or with his consent.

Section 5 Invalidity ARTICLE 24 DECLARATION OF INVALIDITY 2. A continuing unregistered Community design may be declared invalid even after the Community design has lapsed. 3. A continuing unregistered Community design shall be declared invalid by a design court on application to such a court or on the basis of a counterclaim in infringement proceedings. ARTICLE 25 GROUNDS FOR INVALIDITY 1. A continuing unregistered Community design may be declared invalid only in the following cases: 357

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(a) if the design does not correspond to the definition under Article 3(a); (b) if it does not fulfil the requirements of Articles 4 to 9; (c) if, by virtue of a court decision, the right holder is not entitled to the design under Article 14; (e) if a distinctive sign is used in a subsequent design, and the law governing that sign confers on the right holder of the sign the right to prohibit such use; (f) if the design constitutes an unauthorised use of a work protected under copyright law; (g) if the design constitutes an improper use of any of the items listed in Article 6ter of the “Paris Convention” for the Protection of Industrial Property hereafter referred to as the “Paris Convention,” or of badges, emblems and escutcheons other than those covered by the said Article 6ter and which are of particular public interest in the European Union. 2. The ground provided for in paragraph (1)(c) may be invoked solely by the person who is entitled to the continuing unregistered Community design under Article 14. 3. The grounds provided for in paragraph (1)(e) and (f) may be invoked solely by the holder of the earlier right. 4. The ground provided for in paragraph (1)(g) may be invoked solely by the person or entity concerned by the use. ARTICLE 26 CONSEQUENCES OF INVALIDITY 1. A continuing unregistered Community design shall be deemed not to have had, as from the outset, the effects specified in this Regulation, to the extent that it has been declared invalid. 2. Subject to claims for compensation for damage caused by negligence or lack of good faith on the part of the holder of the continuing unregistered Community design, or to unjust enrichment, the retroactive effect of invalidity of the continuing unregistered Community design shall not affect: (a) any decision on infringement which has acquired the authority of a final decision and been enforced prior to the invalidity decision; (b) any contract concluded prior to the invalidity decision, in so far as it has been performed before the decision; however, repayment, to an extent justified by the circumstances, of sums paid under the relevant contract may be claimed on grounds of equity.

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TITLE III

CONTINUING UNREGISTERED COMMUNITY DESIGNS AS OBJECTS OF PROPERTY ARTICLE 27 PROPERTY RIGHT A continuing unregistered Community design is personal property (in Scotland, incorporeal moveable property) which subsists in accordance with this Regulation. ARTICLE 32 LICENSING 1. A continuing unregistered Community design may be licensed. A licence may be exclusive or non-exclusive. 2. Without prejudice to any legal proceedings based on the law of contract, the holder may invoke the rights conferred by the continuing unregistered Community design against a licensee who contravenes any provision in his licensing contract with regard to its duration, the form in which the design may be used, the range of products for which the licence is granted and the quality of products manufactured by the licensee. 3. Without prejudice to the provisions of the licensing contract, the licensee may bring proceedings for infringement of a continuing unregistered Community design only if the right holder consents thereto. However, the holder of an exclusive licence may bring such proceedings if the right holder in the continuing unregistered Community design, having been given notice to do so, does not himself bring infringement proceedings within an appropriate period. 4. A licensee shall, for the purpose of obtaining compensation for damage suffered by him, be entitled to intervene in an infringement action brought by the right holder in a continuing unregistered Community design.

TITLE IX

JURISDICTION AND PROCEDURE IN LEGAL ACTIONS RELATING TO CONTINUING UNREGISTERED COMMUNITY DESIGNS Section 2 Disputes concerning the infringement and validity of continuing unregistered Community designs ARTICLE 81 JURISDICTION OVER INFRINGEMENT AND VALIDITY 1. In this Regulation, “design court” means— (a) in England and Wales, the High Court; (b) in Scotland, the sheriff court and the Court of Session; and 359

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(c) in Northern Ireland, the county court and the High Court. 2. The design courts shall have exclusive jurisdiction: (a) for infringement actions and actions in respect of threatened infringement of continuing unregistered Community designs; (b) for actions for declaration of non-infringement of continuing unregistered Community designs, if they are permitted under national law; (c) for actions for a declaration of invalidity of a continuing unregistered Community design; (d) for counterclaims for a declaration of invalidity of a continuing unregistered Community design raised in connection with actions under (a). ARTICLE 82 PENDING PROCEEDINGS CONCERNING A CONTINUING UNREGISTERED COMMUNITY DESIGN 1. This paragraph applies where on IP completion day a continuing unregistered Community design is the subject of proceedings which are pending (“pending proceedings”) before a court in the United Kingdom designated for the purposes of Article 80 of the Design Regulation as it had effect immediately before IP completion day. 2. Subject to sub-paragraphs (3) and (4), the provisions contained or referred to in Title IX of the Design Regulation (with the exception of Articles 86(2), (3), (4) and (5) and 91) shall continue to apply to the pending proceedings as if the United Kingdom were still a Member State with effect from IP completion day. 3. Where the pending proceedings involve a claim for infringement or for threatened infringement of a continuing unregistered Community design, without prejudice to any other relief by way of damages, accounts or otherwise available to the proprietor of the design, the design court may grant an injunction to prohibit unauthorised use of the continuing unregistered Community design. 4. For the purposes of this paragraph proceedings are treated as pending on IP completion day if they were instituted but not finally determined before IP completion day. ARTICLE 83 EFFECT OF INJUNCTION PROTECTING A CONTINUING UNREGISTERED COMMUNITY DESIGN 1. This paragraph applies where immediately before IP completion day an injunction is in force prohibiting the performance of acts in the United Kingdom which infringe or would infringe a continuing unregistered Community design (a “relevant injunction”). 2. Subject to any order of the court to the contrary, a relevant injunction will continue to have effect and be enforceable to prohibit the performance of acts which infringe or would infringe the right in a continuing unregistered Community design to the same extent as before IP completion day. 360

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ARTICLE 84 ACTION OR COUNTERCLAIM FOR A DECLARATION OF INVALIDITY OF A CONTINUING UNREGISTERED COMMUNITY DESIGN 1. An action or a counterclaim for a declaration of invalidity of a continuing unregistered Community design may only be based on the grounds for invalidity mentioned in Article 25. 2. In the cases referred to in Article 25(2), (3), and (4) the action or the counterclaim may be brought solely by the person entitled under those provisions. 3. If the counterclaim is brought in a legal action to which the right holder of the continuing unregistered Community design is not already a party, he shall be informed thereof and may be joined as a party to the action in accordance with the laws applying to the design courts. 4. The validity of a continuing unregistered Community design may not be put in issue in an action for a declaration of non-infringement. ARTICLE 85 PRESUMPTION OF VALIDITY—DEFENCE AS TO THE MERITS 2. In proceedings in respect of an infringement action or an action for threatened infringement of a continuing unregistered Community design, the design court shall treat the continuing unregistered Community design as valid if the right holder produces proof that the conditions laid down in Article 11 have been met and indicates what constitutes the individual character of his continuing unregistered Community design. However, the defendant may contest its validity by way of a plea or with a counterclaim for a declaration of invalidity. ARTICLE 86 JUDGEMENTS OF INVALIDITY 1. Where in a proceeding before a design court the continuing unregistered Community design has been put in issue by way of a counterclaim for a declaration of invalidity: (a) if any of the grounds mentioned in Article 25 are found to prejudice the maintenance of the design, the court shall declare that design invalid; (b) if none of the grounds mentioned in Article 25 is found to prejudice the maintenance of that design, the court shall reject the counterclaim. ARTICLE 89 SANCTIONS IN ACTIONS FOR INFRINGEMENT 1. Where in an action for infringement or for threatened infringement a design court finds that the defendant has infringed or threatened to infringe a continuing unregistered Community design, it shall, unless there are special reasons for not doing so, order the following measures: (a) an order prohibiting the defendant from proceeding with the acts which have infringed or would infringe that design; (b) an order to seize the infringing products; (c) an order to seize materials and implements predominantly used in order to manufacture the infringing goods, if their owner knew the effect for which such use was intended or if such effect would have been obvious in the circumstances; 361

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(d) any order imposing other sanctions appropriate under the circumstances which are provided by law. ARTICLE 90 PROVISIONAL MEASURES, INCLUDING PROTECTIVE MEASURES 1. Application may be made to the courts, including design courts, for such provisional measures, including protective measures, in respect of a continuing unregistered Community design as may be available. 2. In proceedings relating to provisional measures, including protective measures, a plea otherwise than by way of counterclaim relating to the invalidity of a continuing unregistered Community design submitted by the defendant shall be admissible. Article 85(2) shall, however, apply mutatis mutandis. 3. A design court shall have jurisdiction to grant provisional measures, including protective measures.

Section 3 Other disputes concerning continuing unregistered Community designs ARTICLE 94 OBLIGATION OF THE DESIGN COURT A design court which is dealing with an action relating to a continuing unregistered Community design other than the actions referred to in Article 81 shall treat the design as valid. Articles 85(2) and 90(2) shall, however, apply mutatis mutandis.

TITLE XII

FINAL PROVISIONS ARTICLE 110 TRANSITIONAL PROVISION 1. Protection as a continuing unregistered Community design shall not exist for a design which constitutes a component part of a complex product used within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance.

ARTICLE 110A PROVISIONS RELATING TO THE ENLARGEMENT OF THE COMMUNITY 1. As from the date of accession of Bulgaria, the Czech Republic, Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta, Poland, Romania, Slovenia and Slovakia (hereinafter referred to as “specified countries”), a continuing unregistered Community design protected pursuant to this Regulation before the date of accession shall be extended to the territory of those specified countries. [SPENT] 3. A continuing unregistered Community design as referred to in paragraph 1 may not be declared 362

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invalid pursuant to Article 25(1) if the grounds for invalidity became applicable merely because of the accession of one or more specified countries. [SPENT] 4. The holder of an earlier right in one or more specified countries may oppose the use of a continuing unregistered Community design falling under Article 25(1)(e) or (f) within the territory where the earlier right is protected. For the purpose of this provision, “earlier right” means a right acquired or applied for in good faith before accession. [SPENT] 5. Pursuant to Article 11, a design which has not been made public within the territory of the European Union shall not enjoy protection as a continuing unregistered Community design. ARTICLE 111 ENTRY INTO FORCE 1. This Regulation shall enter into force on the 60th day following its publication in the Official Journal of the European Communities.3

Date of entry into force: 6.3.2002

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THE COMMUNITY DESIGN REGULATIONS 2005 (CUCD VERSION) 1 INTRODUCTORY AND INTERPRETATION (1) These Regulations may be cited as the Community Design Regulations 2005 and shall come into force on 1 October 2005. (2) In these Regulations— “design court” has the meaning given by Article 81 of the Design Regulation; “Design Regulation” means Council Regulation (EC) 6/2002 of 12 December 2001 on Community Designs as amended by regulation 4(1) of, and Part 1 of Schedule 1 to, the Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2018; and “continuing unregistered Community design” has the meaning given by Article 1 of the Design Regulation. 1A INFRINGEMENT PROCEEDINGS (1) This regulation and regulations 1B to 1D are without prejudice to the duties of the design court under the provisions of Article 89(1)(a) to (c) of the Design Regulation. (2) Subject to paragraph (5), in an action for infringement of a continuing unregistered Community design all such relief by way of damages, injunctions, accounts or otherwise is available to the holder of the continuing unregistered Community design as is available in respect of the infringement of any other property right. (5) In an action for the infringement of a continuing unregistered Community design, damages shall not be awarded against a person who proves that at the date of the infringement that they were not aware, and had no reason to believe, that the design to which the action relates was protected as a continuing unregistered Community design 1B ORDER FOR DELIVERY UP (1) Where a person— (a) has in his possession, custody or control for commercial purposes an infringing article, or (b) has in his possession, custody or control anything specifically designed or adapted for making articles to a particular design which is a continuing unregistered Community design, knowing or having reason to believe that it has been or is to be used to make an infringing article, the holder of the continuing unregistered Community design in question may apply to the design court for an order that the infringing article or other thing be delivered up to him or to such other person as the court may direct. (2) An application shall not be made after the end of the period specified in the following provisions of this regulation; and no order shall be made unless the court also makes, or it appears to the 364

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court that there are grounds for making, an order under regulation 1C (order as to disposal of infringing articles, &c.). (3) An application for an order under this regulation may not be made after the end of the period of six years from the date on which the article or thing in question was made, subject to paragraph (4). (4) If during the whole or any part of that period the holder of the continuing unregistered Community design— (a) is under a disability, or (b) is prevented by fraud or concealment from discovering the facts entitling him to apply for an order, an application may be made at any time before the end of the period of six years from the date on which he ceased to be under a disability or, as the case may be, could with reasonable diligence have discovered those facts. (5) In paragraph (4) “disability”— (a) in England and Wales, has the same meaning as in the Limitation Act 1980; (b) in Scotland, means legal disability within the meaning of the Prescription and Limitation (Scotland) Act 1973; (c) in Northern Ireland, has the same meaning as in the Statute of Limitations (Northern Ireland) 1958. (6) A person to whom an infringing article or other thing is delivered up in pursuance of an order under this regulation shall, if an order under regulation 1C is not made, retain it pending the making of an order, or the decision not to make an order, under that regulation. (7) The reference in paragraph (1) to an act being done in relation to an article for “commercial purposes” are to its being done with a view to the article in question being sold or hired in the course of a business. (8) Nothing in this regulation affects any other power of the design court. 1C ORDER AS TO DISPOSAL OF INFRINGING ARTICLES, &C (1) An application may be made to the design court for an order that an infringing article or other thing delivered up in pursuance of an order under regulation 1B shall be— (a) forfeited to the holder of the continuing unregistered Community design, or (b) destroyed or otherwise dealt with as the design court may think fit, or for a decision that no such order should be made. (2) In considering what order (if any) should be made, the design court shall consider whether other remedies available in an action for infringement of the right in a continuing unregistered Community design would be adequate to compensate the holder and to protect his interests. 365

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(3) Where there is more than one person interested in an article or other thing, the design court shall make such order as it thinks just and may (in particular) direct that the thing be sold, or otherwise dealt with, and the proceeds divided. (4) If the design court decides that no order should be made under this regulation, the person in whose possession, custody or control the article or other thing was before being delivered up is entitled to its return. (5) References in this regulation to a person having an interest in an article or other thing include any person in whose favour an order could be made in respect of it— (a) under this regulation; (b) under section 24D of the Registered Designs Act 1949; (c) under section 114, 204 or 231 of the Copyright, Designs and Patents Act 1988; or (d) under section 19 of the Trade Marks Act 1994. 1D MEANING OF “INFRINGING ARTICLE” (1) In these Regulations “infringing article,” in relation to a design, shall be construed in accordance with this regulation. (2) An article is an infringing article if its making to that design was an infringement of a continuing unregistered Community design. (3) An article is also an infringing article if— (a) it has been or is proposed to be imported into the United Kingdom, and (b) its making to that design in the United Kingdom would have been an infringement of a continuing unregistered Community design or a breach of an exclusive licensing agreement relating to that continuing unregistered Community design. (4) Where it is shown that an article is made to a design which is or has been a continuing unregistered Community design, it shall be presumed until the contrary is proved that the article was made at a time when the right in the continuing unregistered Community design subsisted. (5) Nothing in paragraph (3) shall be construed as applying to an article which may be lawfully imported into the United Kingdom by virtue of anything which forms part of retained EU law as a result of section 3 or 4 of the European Union (Withdrawal) Act 2018. 2 UNJUSTIFIED THREATS: THREATS OF INFRINGEMENT PROCEEDINGS (1) A communication contains a “threat of infringement proceedings” if a reasonable person in the position of a recipient would understand from the communication that— (a) a continuing unregistered Community design exists, and (b) a person intends to bring proceedings (whether in a court in the United Kingdom or 366

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elsewhere) against another person for infringement of the continuing unregistered Community design by— (i) an act done in the United Kingdom, or (ii) an act which, if done, would be done in the United Kingdom. (2) References in this regulation and in regulation 2C to a “recipient” include, in the case of a communication directed to the public or a section of the public, references to a person to whom the communication is directed. 2A UNJUSTIFIED THREATS: ACTIONABLE THREATS (1) Subject to paragraphs (2) to (5), a threat of infringement proceedings made by any person is actionable by any person aggrieved by the threat. (2) A threat of infringement proceedings is not actionable if the infringement is alleged to consist of— (a) making an article for disposal, or (b) importing an article for disposal. (3) A threat of infringement proceedings is not actionable if the infringement is alleged to consist of an act which, if done, would constitute an infringement of a kind mentioned in paragraph (2)(a) or (b). (4) A threat of infringement proceedings is not actionable if the threat— (a) is made to a person who has done, or intends to do, an act mentioned in paragraph (2)(a) or (b) in relation to an article, and (b) is a threat of proceedings for an infringement alleged to consist of doing anything else in relation to that article. (5) A threat of infringement proceedings which is not an express threat is not actionable if it is contained in a permitted communication. (6) In regulations 2C and 2D an “actionable threat” means a threat of infringement proceedings that is actionable in accordance with this regulation. 2B UNJUSTIFIED THREATS: PERMITTED COMMUNICATIONS (1) For the purposes of regulation 2A(5), a communication containing a threat of infringement proceedings is a “permitted communication” if— (a) the communication, so far as it contains information that relates to the threat, is made for a permitted purpose; (b) all of the information that relates to the threat is information that— (i) is necessary for that purpose (see paragraph (5)(a) to (c) for some examples of necessary information), and 367

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(ii) the person making the communication reasonably believes is true. (2) Each of the following is a “permitted purpose”— (a) giving notice that a continuing unregistered Community design exists; (b) discovering whether, or by whom, a continuing unregistered Community design has been infringed by an act mentioned in regulation 2A(2)(a) or (b); (c) giving notice that a person has a right in or under a continuing unregistered Community design, where another person’s awareness of the right is relevant to any proceedings that may be brought in respect of the continuing unregistered Community design. (3) The design court may, having regard to the nature of the purposes listed in paragraph (2)(a) to (c), treat any other purpose as a “permitted purpose” if it considers that it is in the interests of justice to do so. (4) But the following may not be treated as a “permitted purpose”— (a) requesting a person to cease doing, for commercial purposes, anything in relation to an article made to a design, in which a design is incorporated or to which it is applied, (b) requesting a person to deliver up or destroy an article made to a design, in which a design is incorporated or to which it is applied, or (c) requesting a person to give an undertaking relating to an article made to a design, in which a design is incorporated or to which it is applied. (5) If any of the following information is included in a communication made for a permitted purpose, it is information that is “necessary for that purpose” (see paragraph (1)(b)(i))— (a) a statement— (i) (ii) (iii) that a design is protected as a continuing unregistered Community design; (b) details of the continuing unregistered Community design, or of a right in or under the continuing unregistered Community design, which— (i) are accurate in all material respects, and (ii) are not misleading in any material respect; and (c) information enabling the identification of the article that is alleged to be infringing an article in relation to the design. 2C UNJUSTIFIED THREATS: REMEDIES AND DEFENCES (1) Proceedings in respect of an actionable threat may be brought against the person who made the threat for— (a) a declaration that the threat is unjustified; (b) an injunction against the continuance of the threat; (c) damages in respect of any loss sustained by the aggrieved person by reason of the threat.

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(2) It is a defence for the person who made the threat to show that the act in respect of which proceedings were threatened constitutes (or if done would constitute) an infringement of the continuing unregistered Community design. (3) It is a defence for the person who made the threat to show— (a) that, despite having taken reasonable steps, the person has not identified anyone who has done an act mentioned in regulation 2A(2)(a) or (b) in relation to the article which is the subject of the threat, and (b) that the person notified the recipient, before or at the time of making the threat, of the steps taken. 2D UNJUSTIFIED THREATS: PROFESSIONAL ADVISERS (1) Proceedings in respect of an actionable threat may not be brought against a professional adviser (or any person vicariously liable for the actions of that professional adviser) if the conditions in paragraph (3) are met. (2) In this section “professional adviser” means a person who, in relation to the making of the communication containing the threat— (a) is acting in a professional capacity in providing legal services or the services of a trade mark attorney or a patent attorney, and (b) is regulated in the provision of legal services, or the services of a trade mark attorney or a patent attorney, by one or more regulatory bodies (whether through membership of a regulatory body, the issue of a licence to practise or any other means). (3) The conditions are that— (a) in making the communication the professional adviser is acting on the instructions of another person, and (b) when the communication is made the professional adviser identifies the person on whose instructions the adviser is acting. (4) This section does not affect any liability of the person on whose instructions the professional adviser is acting. (5) It is for a person asserting that paragraph (1) applies to prove (if required) that at the material time— (a) the person concerned was acting as a professional adviser, and (b) the conditions in paragraph (3) were met. 2F UNJUSTIFIED THREATS: SUPPLEMENTARY: PROCEEDINGS FOR DELIVERY UP ETC. In regulation 2(1)(b) the reference to proceedings for infringement of the continuing unregistered Community design includes a reference to— 369

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(a) proceedings for an order under regulation 1B (order for delivery up), and (b) proceedings for an order under regulation 1C (order as to disposal of infringing articles). 4 PRIVILEGE FOR COMMUNICATIONS WITH THOSE ON THE SPECIAL LIST OF PROFESSIONAL DESIGN REPRESENTATIVES (1) This regulation applies to communications as to any matter relating to the protection of a continuing unregistered Community design. (2) Any such communication— (a) between a person and his professional designs representative, or (b) for the purposes of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing his professional designs representative, is privileged from, or in Scotland protected against, disclosure in legal proceedings in the same way as a communication between a person and his solicitor or, as the case may be, a communication for the purpose of obtaining, or in response to a request for, information which a person is seeking for the purpose of instructing his solicitor. (3) In paragraph (2) “professional designs representative” means a person whose name appears on (a) the special list of professional representatives for design matters maintained by the European Union Intellectual Property Office referred to in Article 78(4) of Council Regulation (EC) 6/2002 of 12th December 2001 on Community designs as it had effect immediately before IP completion day. 5 USE OF CONTINUING UNREGISTERED COMMUNITY DESIGN FOR SERVICES OF THE CROWN The provisions of the Schedule to these Regulations shall have effect with respect to the use of continuing unregistered Community designs for the services of the Crown and the rights of third parties in respect of such use. 5A APPLICATION TO SCOTLAND AND NORTHERN IRELAND (1) In the application of these Regulations to Scotland— “accounts” means count, reckoning and payment; “claimant” means pursuer; “declaration” means “declarator”; “defendant” means defender; “delivery up” means delivery; “injunction” means interdict. (2) In the application of these Regulations to Northern Ireland, “claimant” includes plaintiff.

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SCHEDULE—USE OF CONTINUING UNREGISTERED COMMUNITY DESIGNS FOR SERVICES OF THE CROWN Use of continuing unregistered Community design for services of the Crown

1.—(1) A government department, or a person authorised in writing by a government department, may without the consent of the holder of a continuing unregistered Community design— (a) do anything for the purpose of supplying products for the services of the Crown, or (b) dispose of products no longer required for the services of the Crown; and nothing done by virtue of this paragraph infringes the continuing unregistered Community design. (2) References in this Schedule to “the services of the Crown” are limited to those which are necessary for essential defence or security needs. (3) In this Schedule— “Crown use,” in relation to a continuing unregistered Community design, means the doing of anything by virtue of this paragraph which would otherwise be an infringement of the continuing unregistered Community design; and “the government department concerned,” in relation to such use, means the government department by whom or on whose authority the act was done. (4) The authority of a government department in respect of Crown use of a continuing unregistered Community design may be given to a person either before or after the use and whether or not he is authorised, directly or indirectly, by the holder of the continuing unregistered Community design to do anything in relation to the design. (5) A person acquiring anything sold in the exercise of powers conferred by this paragraph, and any person claiming under him, may deal with it in the same manner as if the Crown was the holder of the continuing unregistered Community design.

Settlement of terms for Crown use

2.—(1) Where Crown use is made of a continuing unregistered Community design, the government department concerned shall— (a) notify the holder of the continuing unregistered Community design as soon as practicable, and (b) give him such information as to the extent of the use as he may from time to time require, unless it appears to the department that it would be contrary to the public interest to do so or the identity of the holder of the continuing unregistered Community design cannot be ascertained on reasonable inquiry. (2) Crown use of a continuing unregistered Community design shall be on such terms as, either before or after the use, are agreed between the government department concerned and the holder 371

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of the continuing unregistered Community design with the approval of the Treasury or, in default of agreement, are determined by the design court. (3) In the application of sub-paragraph (2) to Northern Ireland the reference to the Treasury shall, where the government department referred to in that sub-paragraph is a Northern Ireland department, be construed as a reference to the Department of Finance and Personnel. (4) In the application of sub-paragraph (2) to Scotland, where the government department referred to in that sub-paragraph is any part of the Scottish Administration, the words “with the approval of the Treasury” are omitted. (5) Where the identity of the holder of the continuing unregistered Community design cannot be ascertained on reasonable inquiry, the government department concerned may apply to the design court who may order that no royalty or other sum shall be payable in respect of Crown use of the continuing unregistered Community design until the holder agrees terms with the department or refers the matter to the design court for determination.

Rights of third parties in case of Crown use

3.—(1) The provisions of any licence, assignment or agreement made between the holder of the continuing unregistered Community design (or anyone deriving title from him or from whom he derives title) and any person other than a government department are of no effect in relation to Crown use of a continuing unregistered Community design, or any act incidental to Crown use, so far as they— (a) restrict or regulate anything done in relation to the continuing unregistered Community design, or the use of any model, document or other information relating to it, or (b) provide for the making of payments in respect of, or calculated by reference to such use; and the copying or issuing to the public of copies of any such model or document in connection with the thing done, or any such use, shall be deemed not to be an infringement of any copyright in the model or document. (2) Sub-paragraph (1) shall not be construed as authorising the disclosure of any such model, document or information in contravention of the licence, assignment or agreement. (3) Where an exclusive licence is in force in respect of the continuing unregistered Community design— (a) if the licence was granted for royalties— (i) any agreement between the holder of the continuing unregistered Community design and a government department under paragraph 2 (settlement of terms for Crown use) requires the consent of the licensee, and (ii) the licensee is entitled to recover from the holder of the continuing unregistered Community design such part of the payment for Crown use as may be agreed between them or, in default of agreement, determined by the design court; 372

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(b) if the licence was granted otherwise than for royalties— (i) paragraph 2 applies in relation to anything done which but for paragraph 1 (Crown use) and sub-paragraph (1) would be an infringement of the rights of the licensee with the substitution for references to the holder of the continuing unregistered Community design of references to the licensee, and (ii) paragraph 2 does not apply in relation to anything done by the licensee by virtue of an authority given under paragraph 1. (4) Where the continuing unregistered Community design has been assigned to the holder of the continuing unregistered Community design in consideration of royalties— (a) paragraph 2 applies in relation to Crown use of the continuing unregistered Community design as if the references to the holder of the continuing unregistered Community design included the assignor, and any payment for Crown use shall be divided between them in such proportion as may be agreed or, in default of agreement, determined by the design court; and (b) paragraph 2 applies in relation to any act incidental to Crown use as it applies in relation to Crown use of the continuing unregistered Community design. (5) Where any model, document or other information relating to a continuing unregistered Community design is used in connection with Crown use of the design, or any act incidental to Crown use, paragraph 2 applies to the use of the model, document or other information with the substitution for the references to the holder of the continuing unregistered Community design of references to the person entitled to the benefit of any provision of an agreement rendered inoperative by sub-paragraph (1). (6) In this paragraph— “act incidental to Crown use” means anything done for the services of the Crown to the order of a government department by the holder of the continuing unregistered Community design in respect of a design; “payment for Crown use” means such amount as is payable by the government department concerned by virtue of paragraph 2; and “royalties” includes any benefit determined by reference to the use of the continuing unregistered Community design.

Crown use: compensation for loss of profit

4.—(1) Where Crown use is made of a continuing unregistered Community design, the government department concerned shall pay— (a) to the holder of the continuing unregistered Community design, or (b) if there is an exclusive licence in force in respect of the continuing unregistered Community design, to the exclusive licensee, compensation for any loss resulting from his not being awarded a contract to supply the products to which the continuing unregistered Community design is applied or in which it is incorporated. 373

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(2) Compensation is payable only to the extent that such a contract could have been fulfilled from his existing manufacturing capacity; but is payable notwithstanding the existence of circumstances rendering him ineligible for the award of such a contract. (3) In determining the loss, regard shall be had to the profit which would have been made on such a contract and to the extent to which any manufacturing capacity was under-used. (4) No compensation is payable in respect of any failure to secure contracts for the supply of products to which the continuing Community design is applied or in which it is incorporated otherwise than for the services of the Crown. (5) The amount payable shall, if not agreed between the holder of the continuing unregistered Community design or licensee and the government department concerned with the approval of the Treasury, be determined by the design court on a reference under paragraph 5; and it is in addition to any amount payable under paragraph 2 or 3. (6) In the application of this paragraph to Northern Ireland, the reference in sub-paragraph (5) to the Treasury shall, where the government department concerned is a Northern Ireland department, be construed as a reference to the Department of Finance and Personnel. (7) In the application of this paragraph to Scotland, where the government department referred to in sub-paragraph (5) is any part of the Scottish Administration, the words “with the approval of the Treasury” in that sub-paragraph are omitted.

Reference of disputes relating to Crown use

5.—(1) A dispute as to any matter which falls to be determined by the design court in default of agreement under— (a) paragraph 2 (settlement of terms for Crown use), (b) paragraph 3 (rights of third parties in case of Crown use), or (c) paragraph 4 (Crown use: compensation for loss of profit), may be referred to the design court by any party to the dispute. (2) In determining a dispute between a government department and any person as to the terms for Crown use of a continuing unregistered Community design the design court shall have regard to— (a) any sums which that person or a person from whom he derives title has received or is entitled to receive, directly or indirectly, from any government department in respect of the continuing unregistered Community design; and (b) whether that person or a person from whom he derives title has in the design court’s opinion without reasonable cause failed to comply with a request of the department for the use of the continuing unregistered Community design on reasonable terms. 374

ANNEXES

(3) One of two or more joint holders of the continuing unregistered Community design may, without the concurrence of the others, refer a dispute to the design court under this paragraph, but shall not do so unless the others are made parties; and none of those others is liable for any costs unless he takes part in the proceedings. (4) Where the consent of an exclusive licensee is required by paragraph 3(3)(a)(i) to the settlement by agreement of the terms for Crown use of a continuing unregistered Community design, a determination by the design court of the amount of any payment to be made for such use is of no effect unless the licensee has been notified of the reference and given an opportunity to be heard. (5) On the reference of a dispute as to the amount recoverable as mentioned in paragraph 3(3) (a)(ii) (right of exclusive licensee to recover part of amount payable to holder of continuing unregistered Community design) the design court shall determine what is just having regard to any expenditure incurred by the licensee— (a) in developing the design, or (b) in making payments to the holder of the continuing unregistered Community design in consideration of the licence (other than royalties or other payments determined by reference to the use of the design).

375

INDEX Acceptance Period, 90, 91, 95, 114, 163 Account of Profits, 242, 288, 297, 298 Address for Service, 78, 80, 147, 155 Aesthetic considerations, 7, 36, 48, 67, 121 Agent, 53, 78, 79, 80, 88, 136, 140, 143, 144, 146, 157, 273, 278, 279, 280, 305, 307 Amendment, 18, 21, 27, 30, 31, 33, 38, 39, 72, 81, 92, 93, 94, 98, 104, 106, 117, 132, 146, 148, 157, 168, 171, 175, 176, 177, 178, 180, 182, 183, 184, 186, 189, 212, 219, 229, 230, 239, 243, 255, 258, 259, 265, 272, 284, 294, 304, 308 Appeal, 27, 41, 42, 47, 48, 54, 56, 58, 60, 61, 64, 77, 82, 84, 103, 112, 113, 114, 115, 116, 117, 118, 121, 127, 149, 155, 156, 197, 198, 206, 208, 210, 215, 219, 223, 226, 227, 236, 244, 251, 260, 261, 276, 284, 288, 303 Appealable, 112, 114 Applicant, 77, 78, 80, 82, 83, 86, 89, 90, 91, 92, 94, 95, 98, 99, 102, 106, 107, 108, 110, 111, 115, 123, 130, 133, 134, 135, 136, 140, 141, 142, 143, 144, 146, 147, 148, 149, 150, 151, 152, 153, 154, 163, 243, 260, 261, 262, 263, 265, 266, 284, 310, 314 Applied Art, Works of, 25, 160, 186, 187, 188, 190, 192, 195 Appointed Person, 39, 74, 110, 112, 113, 114, 115, 116, 117, 118, 155, 243, 244, 302 Artistic Craftsmanship, work of, 30, 188, 191, 192, 193, 195, 208, 209, 210, 239, 248 Artistic work, 20, 30, 36, 129, 186, 187, 190, 191, 192, 193, 194, 195, 197, 198, 199, 201, 202, 203, 204, 207, 208, 210, 214, 239, 240, 248, 249, 252 Assignment, 82, 201, 253, 258, 260, 261, 262, 263, 264, 265, 280

Associated designs, 161, 162 Author, 30, 56, 65, 126, 148, 190, 192, 195, 202, 224, 248, 249, 250, 251, 252, 274, 285, 305 Authorising, infringement by, 80, 95, 100, 196, 236, 270 Availability to the Public, 51, 53, 55, 56, 62, 63, 68, 76, 95, 108, 166, 169, 173, 174, 176, 177, 183, 312 Average Consumer, 33, 49, 58, 59 Banal feature, 61, 66 Berne Convention, 19, 25, 186, 187, 188, 189, 190, 192, 193, 203, 213, 214, 239 Brexit, 23, 33, 78, 103, 114, 165, 168, 169, 176, 184, 201, 230, 249, 254, 259, 271, 306 Cancellation, 111, 112, 119, 123, 130, 151, 201 China, 133, 142, 143, 160, 163, 164, 232 Circles specialised in the sector concerned, 54, 55, 173, 174, 176, 177, 178, 179 Closed List (of works), 192, 193, 208 Commissioning, 253, 254, 268 Commonplace, 61, 193, 211, 224, 225, 226, 227, 228 Complex products, 39, 41, 43, 44, 72, 75, 171 Component part, 21, 43, 70, 72, 84, 122, 123, 134, 158, 171, 207, 213, 220, 222, 223, 278 Component parts, 39, 41, 43, 44, 72, 75, 167, 171, 172 Confidential disclosures, 52, 53, 128, 173, 174, 276 Continuing Unregistered Community Design, 2, 27, 28, 29, 33, 54, 71, 72, 164, 165, 166, 167, 168, 169, 170, 171, 172, 173, 174, 175, 176, 177, 178, 179, 180, 181, 182, 183, 228, 229, 248, 249, 250, 251, 252, 253, 254, 255, 256, 258, 259, 260, 262, 274, 275, 286, 288, 289, 290, 294, 297, 298, 304, 306 377

NAVIGATING DESIGN LAW

Contributory infringement, 196 Copying, 14, 15, 21, 29, 30, 31, 46, 69, 158, 161, 162, 163, 166, 167, 169, 170, 194, 195, 197, 198, 199, 200, 203, 204, 208, 212, 220, 222, 226, 235, 236, 237, 239, 240, 241, 248, 278, 307 Correction, 19, 92, 99, 100, 101 Costs, 7, 8, 14, 22, 87, 110, 114, 117, 278, 279, 301, 302 Criminal offence, 262, 271, 288, 308 Crowded field, 5, 61, 66 Crown Use, 98, 258, 273, 274, 275, 276, 277, 292 Cumulation. Principle of, 187, 189, 191 Customs, 24, 34, 55, 134, 152, 308 Damages, 22, 242, 261, 277, 286, 288, 290, 291, 292, 293, 294, 296, 297, 298, 299, 305 User principle, 292 Declaration of non-infringement, 66, 72, 303, 307 Defences, 22, 70, 167, 202, 239, 262 Section 51, 203, 207, 233, 235 Section 53, 201 Deferred publication, 106, 133, 137, 139, 141, 142, 145, 156, 157, 158, 160, 161, 163, 164, 183 Delivery Up, 238, 242, 287, 299, 300 Description, 20, 78, 79, 84, 88, 103, 122, 137, 138, 139, 160, 194, 195, 203, 208, 217, 233, 284 Brief Description, 79, 138, 139 Design Corpus, 57, 58, 59, 61, 66, 67 Design document, 196, 197, 199, 203, 204, 207, 208, 210, 214, 232, 233, 235, 238, 239, 240, 241, 248, 277 Design Freedom, 46, 47, 60, 62, 66, 67, 222, 223 Design Law Treaty, 23 Designation, 22, 132, 137, 138, 140, 141, 144, 145, 149, 151, 152, 153, 155, 156

Designer, 4, 8, 12, 46, 47, 48, 49, 52, 53, 55, 57, 58, 59, 60, 66, 68, 69, 81, 126, 138, 139, 169, 179, 190, 200, 222, 224, 227, 229, 230, 231, 248, 249, 250, 251, 252, 254, 265, 268, 269 Destruction, Delivery Up And, 15, 300 Details, 12, 25, 27, 30, 31, 33, 39, 46, 59, 74, 84, 86, 119, 288, 312 Disclaimers, 66, 79, 84, 85, 88, 91, 103, 120 Disposal, 238, 287, 299, 300 Divisional, 75, 125, 127, 223 Drawing, 20, 76, 101, 103, 137, 149, 161, 162, 191, 200, 203, 207, 208, 233, 276 Duration, 15, 18, 19, 20, 21, 22, 25, 28, 33, 41, 42, 43, 57, 69, 70, 71, 83, 96, 112, 129, 132, 135, 143, 145, 146, 148, 150, 151, 152, 166, 169, 173, 176, 177, 180, 181, 183, 187, 188, 190, 192, 195, 196, 206, 210, 212, 213, 215, 227, 232, 233, 242, 243, 244, 269, 280, 298, 304 Emblems, 19, 24, 127, 167 Embodiments, 140, 156, 157 Emergencies, 160, 275 End user, 44, 59, 69 Entitlement, 83, 130, 136, 261, 265, 266 Evidence, 6, 7, 16, 17, 19, 34, 49, 60, 80, 85, 97, 98, 99, 107, 108, 109, 110, 112, 113, 116, 117, 170, 218, 227, 237, 285, 313 Examination, 18, 22, 26, 47, 52, 56, 62, 74, 75, 76, 89, 107, 109, 110, 113, 114, 133, 138, 143, 146, 147, 148, 156, 157, 158, 160, 161, 170, 263 Examining Office, 134, 137, 138, 140, 141, 143, 146, 149, 150, 279 Exhibition, International, 103, 128, 139 Expression, 190, 193, 217, 224, 238 Extensions of time, 90, 100, 101, 306 Fees, 88, 94, 97, 133, 136, 137, 138, 140, 141, 145, 149, 152, 153, 157, 158, 259, 279, 280, 301, 302 First disclosure, 31, 33, 158, 167, 176, 179, 180, 277, 298

378

INDEX

First Marketing, 21, 31, 229, 230, 231, 242, 254, 255, 277, 298 Flags, 65, 127 Freedom to operate searches, 87, 135, 271, 311, 313, 314 Functionality, 9, 10, 12, 17, 19, 20, 25, 28, 31, 35, 36, 42, 45, 46, 47, 48, 49, 60, 62, 66, 67, 68, 75, 90, 92, 122, 126, 147, 156, 161, 167, 190, 200, 208, 212, 213, 219, 222, 223, 232, 278 Future copyright, assignment of, 253 Future design right, assignment of, 42 Grace Period, 20, 24, 52, 55, 81, 97, 128, 140, 153, 156, 157, 158, 160, 161, 163, 164, 167 Hague Agreement, 22, 26, 30, 75, 76, 77, 78, 79, 81, 105, 132, 133, 134, 135, 136, 137, 138, 139, 140, 141, 142, 144, 145, 146, 147, 148, 149, 150, 151, 152, 153, 154, 155, 156, 157, 158, 160, 161, 163, 164, 186, 252, 254, 263, 265, 266, 279, 280, 310 Idea, 3, 6, 40, 42, 52, 65, 169, 193, 194, 207, 216, 217, 233, 237, 249, 250 Indication of product, 34, 64, 77, 88, 103, 130, 136, 137, 144, 265, 284, 297, 311 Indirect copying, 199, 200, 203, 235 Individual Character, 40, 43, 51, 52, 55, 56, 57, 58, 61, 62, 63, 66, 81, 89, 91, 92, 93, 108, 166, 167, 173, 190, 228, 312 Informed User, 58 Infringement, 18, 19, 22, 25, 30, 31, 38, 46, 58, 60, 64, 66, 67, 69, 70, 74, 77, 83, 86, 96, 103, 111, 119, 124, 132, 150, 156, 160, 163, 166, 169, 172, 194, 195, 196, 197, 198, 199, 200, 201, 202, 203, 204, 205, 206, 208, 210, 214, 215, 216, 218, 227, 228, 233, 234,235, 236, 237, 238, 239, 240, 241, 242, 263, 264, 269, 273, 274, 276, 277, 286, 288, 289, 292, 293, 294, 296, 297, 299, 304, 305, 307, 308, 311, 314 Primary, 195, 234, 235, 236, 297, 305 Secondary, 195, 196, 236, 237, 238, 297

Injunction final, 290, 294 interim, 42, 72, 94, 110, 112, 193, 290, 291 interlocutory, 242, 290 International Application, 81, 82, 105, 106, 134, 136, 139, 141, 142, 143, 144, 145, 146, 150, 151, 152, 265 National Phase, 140, 141, 143, 146, 148, 149, 150 International Design, 2, 22, 23, 26, 29, 30, 38, 102, 105, 132, 133, 134, 145, 146, 148, 151, 153, 154, 155, 158, 163, 201, 252, 254, 255, 265, 266, 310, 311, 313 Invalidation, 78, 103, 104, 105, 107, 108, 111, 112, 119, 155, 156, 201 IPO Opinions, 39 Japan, 26, 30, 133, 134, 137, 140, 141, 143, 144, 149, 150, 152, 153, 161, 164, 232, 279 Joint authors/designers, 251 Joint Ownership, 258 Jurisdiction, 18, 74, 78, 118, 168, 182, 243, 269, 287, 289, 299, 303 Kit of parts, 216 Korea, Republic of, 30, 133, 134, 137, 140, 142, 143, 144, 149, 150, 153, 154, 155, 162, 164, 232, 279, 280 Licence compulsory, 242, 272, 296 Licences of Right, 113, 242, 243, 244, 245, 273, 291, 292 Licensing, 25, 253, 258, 269, 270, 273 Locarno Classification, 103, 137, 140, 150, 157, 158, 162, 310, 311, 312 Logo, 64, 85, 86, 312 Mandatory Content, 136 Marking, 18, 19, 24, 270, 297, 298 Method or principle of construction, 19, 36, 45, 123, 125, 200, 216, 217, 218, 219, 224, 237, 285 Monitoring, 309, 310 Moral rights, 196, 248, 290, 293

379

NAVIGATING DESIGN LAW

Morality and public order, 18, 19, 50, 90, 92, 130, 147, 148, 167 Multiple Design Application, 84, 110, 134, 138, 140, 141, 145, 148, 156, 157, 158, 160, 161, 162, 163, 265, 279 Multiplicity of Forms, 46, 47, 48 National Security, 135 Novelty, 7, 13, 20, 21, 22, 25, 26, 30, 31, 33, 36, 40, 41, 43, 51, 52, 54, 55, 56, 63, 74, 75, 83, 86, 89, 92, 108, 113, 119, 120, 123, 128, 129, 138, 143, 145, 156, 160, 161, 162, 164, 166, 167, 174, 180, 188, 210, 225, 228, 232, 254, 278, 311, 312 Obviousness, 150, 156, 160, 161 Open List, of copyright works, 192 Optional Content, 139, 140 Originality, 15, 17, 20, 25, 26, 33, 57, 72, 91, 93, 115, 133, 155, 156, 161, 162, 166, 170, 171, 172, 177, 178, 186, 187, 189, 190, 191, 193, 195, 197, 204, 214, 219, 220, 222, 223, 224, 225, 226, 227, 228, 234, 235, 249, 250, 261, 263, 293, 294, 304 Ornamentation, 18, 39, 40, 42, 57, 58, 83, 85, 86, 119, 120, 121, 157, 158, 205, 311 Overall Impression, 56, 57, 58, 59, 60, 61, 62, 65, 67, 68, 83, 170 Ownership, 262, 265 first, 229, 231, 243, 244, 245, 248, 252, 253, 254, 262 Part of a product, 39, 40, 41, 75, 84, 122, 161, 203, 205, 207, 208, 211, 215, 216, 225, 228, 234, 313 Pattern, 15, 18, 36, 42, 85, 119, 120, 121, 125, 160, 161, 193, 198, 205, 217 Person skilled in the art, 16, 58, 59 Portfolio management, 133, 152, 277, 280 Presumption of validity, 172 Prior Design, 29, 61, 63, 67, 108, 147, 150, 157, 160, 161, 167, 227 Prior Rights, 35, 63 copyright, 65, 104

Prior Use defence, 20, 73, 167 Priority, 19, 24, 55, 63, 73, 74, 75, 80, 81, 82, 83, 88, 92, 93, 94, 97, 102, 103, 104, 106, 108, 139, 140, 141, 142, 143, 144, 147, 148, 149, 153, 157, 158, 163, 167, 180, 260, 261, 263, 265, 279, 310, 312, 314 Privilege, 166, 306, 307 Proof of subsistence, 166 Publication, 18, 77, 91, 95, 106, 129, 133, 137, 139, 141, 142, 143, 145, 148, 149, 150, 151, 153, 154, 156, 157, 158, 160, 161, 163, 174, 188, 231, 277, 297, 301, 310, 311 prior, 18, 44, 52, 54, 55, 57, 58, 60, 61, 62, 63, 66, 67, 68, 86, 92, 138, 140, 143, 146, 150, 156, 167, 178, 179, 180, 227, 228, 250, 311, 312, 313 Purchaser, 47, 48, 264 Qualification, 21, 31, 54, 129, 173, 174, 176, 183, 214, 225, 228, 229, 230, 231, 232, 245, 254 Reciprocity, 212, 213, 225, 228, 232 Register of Designs, 108, 201 Registered Community Design, 22, 27, 39, 43, 44, 46, 50, 51, 52, 55, 56, 57, 62, 63, 64, 65, 68, 69, 73, 75, 76, 77, 78, 79, 80, 87, 88, 89, 90, 91, 93, 94, 96, 102, 104, 105, 106, 112, 141, 148, 156, 167, 201, 248, 272, 274, 284, 286, 287, 288, 289, 290, 291, 293, 294, 296, 299, 300, 303, 311, 312 Registration, 2, 16, 17, 18, 19, 22, 24, 25, 26, 29, 30, 33, 34, 35, 39, 40, 41, 43, 51, 56, 62, 63, 64, 65, 66, 68, 69, 71, 72, 73, 75, 77, 78, 80, 81, 83, 86, 87, 88, 89, 90, 91, 92, 93, 94, 95, 96, 97, 98, 99, 101, 102, 103, 104, 106, 112, 122, 124, 125, 128, 130, 132, 133, 145, 148, 149, 151, 152, 154, 157, 158, 160, 161, 162, 163, 166, 172, 174, 186, 201, 216, 234, 253, 264, 265, 278, 279, 280, 313 Related designs, 140, 161, 162 Renewal, 24, 96, 97, 98, 99, 104, 133, 152, 153, 155, 259, 270, 280, 313

380

INDEX

Repair, 43, 44, 69, 70, 72, 167, 171, 172, 202, 220, 234, 235, 239 Representations, 74, 76, 77, 79, 84, 85, 86, 88, 90, 92, 94, 95, 103, 105, 119, 120, 130, 136, 138, 151, 157, 158, 248, 284, 311 Reproduction, 20, 42, 70, 76, 124, 138, 139, 169, 172, 185, 195, 196, 197, 204, 221, 224, 236, 239, 284, 290 Re-registered Designs, 29, 30, 82, 102, 103, 104, 105, 106, 112, 285, 310, 313 Restoration, 24, 75, 96, 97, 98, 99, 100, 151, 152 Revocation, 107, 108, 110 Royalties, 242, 244, 269, 270, 273, 292, 297 Saturation, 61, 62 Searches, 55, 87, 157, 309, 310, 312, 313 Sector, 14, 34, 52, 54, 55, 59, 61, 66, 68, 167, 173, 174, 176, 177, 178, 179, 269, 312, 314 Sets, 5, 25, 26, 28, 42, 44, 47, 51, 58, 83, 90, 94, 98, 108, 109, 115, 116, 118, 123, 124, 128, 133, 136, 138, 140, 141, 145, 146, 148, 156, 158, 160, 162, 163, 183, 192, 210, 214, 216, 222, 232, 256, 275, 279, 284, 290, 291, 301 Shape-only design, 85 Specimen, 18, 75, 76, 77, 87, 92, 130, 136, 137, 151, 154 Standing, 114, 219, 292 Statement of Novelty, 84, 119, 120, 130 Succession and Transmission, 82 Supplementary Unregistered Design, 2, 27, 28, 29, 33, 36, 39, 43, 44, 46, 50, 51, 52, 54, 55, 56, 62, 63, 64, 65, 68, 69, 71, 72, 96, 164, 166, 167, 168, 169, 170, 171, 172, 173, 174, 175, 176, 177, 178, 183, 184, 220, 228, 248, 249, 250, 251, 252, 253, 254, 255, 256, 258, 259, 260, 262, 272, 274, 275, 286, 287, 288, 289, 290, 291, 293, 294, 296, 297, 298, 299, 300, 304, 306 Surface Decoration, 21, 30, 34, 121, 188, 203, 205, 206, 215, 216, 218, 219, 240, 279, 311 Textile, 15, 16, 17, 18, 85, 128, 192, 193, 198, 206, 210, 250

Threats, 166, 304, 305 Topography Right, 21, 29, 31, 70, 213, 225, 226, 227, 229, 232, 233, 239, 245 Trade Mark, 2, 3, 7, 18, 19, 23, 24, 26, 29, 33, 34, 35, 38, 47, 54, 57, 58, 59, 64, 74, 75, 93, 94, 97, 99, 101, 102, 104, 107, 109, 110, 113, 114, 115, 116, 117, 118, 124, 129, 130, 146, 157, 158, 160, 161, 162, 168, 172, 176, 177, 182, 250, 262, 268, 269, 278, 286, 299, 302, 304, 305, 306, 307, 308, 311, 312, 313, 314 Transactions, 19, 154, 253, 264 TRIPS, 25, 50, 51, 163, 186, 187, 193, 223, 234, 245, 284, 286, 288, 289, 290, 291, 294, 296, 299, 300, 301 UK Unregistered Design Right, 2, 21, 22, 27, 29, 31, 36, 44, 45, 69, 70, 112, 113, 115, 121, 122, 125, 126, 127, 130, 164, 169, 178, 189, 194, 196, 197, 203, 205, 206, 207, 211, 212, 213, 214, 215, 216, 218, 219, 220, 221, 224, 225, 226, 227, 228, 229, 230, 231, 232, 233, 234, 235, 236, 237, 238, 239, 240, 241, 242, 245, 249, 250, 251, 252, 253, 254, 255, 256, 258, 259, 260, 262, 263, 271, 272, 274, 275, 277, 286, 287, 288, 289, 290, 291, 293, 296, 297, 298, 299, 300, 304, 314 United States, 13, 19, 21, 30, 31, 55, 75, 82, 133, 134, 135, 137, 138, 140, 141, 142, 143, 144, 149, 150, 151, 152, 153, 154, 155, 156, 157, 164, 188, 193, 213, 226, 229, 232, 245, 265, 279, 280, 311, 312, 313 Unity, 92, 140, 141, 145, 147, 149, 150 Unregistered Community Design, 22, 28, 31, 72, 158, 164, 165, 166, 167, 168, 169, 170, 173, 174, 175, 178, 179, 180, 182, 184, 255, 259, 262, 299, 304 Utility Model, 17, 24, 33, 82, 103, 142, 163 Visibility, 28, 40, 43, 44, 62, 75, 86, 139, 167, 171, 199, 251 Watching, 309

381