| A radical overhaul of the way
in which the law protects designs (such as product designs,
packaging, logos and so on) across the European Community
is about to have a major impact on businesses in all
sectors, throwing up new risks, but also offering some
unprecedented opportunities.
The old system of registered design protection was limited
– not least because a design registration was
limited to a specified design as applied to a specified
article, so if your registered design was applied to
a different article, your registration would not help
you – and inconsistent (since different European
countries protected designs in different ways and to
varying degrees).
Now, all this is changing dramatically. The advent of
two new, European Community-wide design rights heralds
a new era of broader and more uniform protection for
designs. The first new right, the unregistered Community
design, came into being on 6 March 2002 and, where it
applies, automatically protects designs from copying
for three years. The second, the registered Community
design (for which applications can be filed from 1 January
2003 onwards) will allow designs to be monopolised for
up to 25 years.
Broad scope
A “design” is given a broad and non-exhaustive
definition under the new regime, being “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 or its
ornamentation”.
One of the crucial innovations under the new system
is that your protection now covers your design as applied
to or incorporated in anything. This is particularly
advantageous regarding registered designs, since a single
application will now protect your design however it
is exploited (whereas previously you would have needed
separate registrations for the design as applied to
product X, product Y, and so on). This makes securing
design protection cheaper and more efficient, but it
also makes life uncertain for those planning to launch
new designs within the EU.
Searching the designs register prior to launching a
new design (to check it will not infringe a design already
registered) will now be extremely problematic, not least
because registrations will not be categorised by product
and there will be no easy way of locating comparable
designs.
Registration criteria
However, there are still some criteria to satisfy before
a design can benefit from the new Community rights.
In particular, the design in question must be new and
possess individual character. In this context, a design
is “new” if no identical design has been
made available to the public before the date on which
the application for registration is filed (for registered
designs) or the date on which the new design is first
made available to the public (for unregistered designs).
As for “individual character”, a design
will have this if it produces an overall impression
on the “informed user” (it is not yet clear
whether this is the consumer) that is different from
the overall impression produced by any design previously
made available to the public.
Both these requirements, being untested in the courts
so far, will no doubt be shaped and clarified by judicial
decisions in due course. One clear point is that, when
assessing novelty during a registered Community design
application, any disclosure of the design by or with
the consent of the designer in the 12 months prior to
the application date will not prevent a design from
being “new”. This so-called “grace
period” should give designers the chance to test
out a design to see if a registration is commercially
worthwhile.
Infringement
There is an important difference between the registered
Community design and the unregistered Community design
as regards infringement. A third party who uses your
registered Community design for, on or in their product
– or who sells, offers for sale, and so on, such
a product – without permission will therefore
be an infringer, even if they came up with the design
independently. However, to infringe an unregistered
Community design, the third party must actually copy
the design in question before using or exploiting it.
Your rights cover not just the actual design, but also
any other design that does not produce a different overall
impression on the informed user. This reinforces the
risks of launching a new design since the assessment
of whether your design produces a different overall
impression will be a very inexact science.
The remedies for infringement can include injunctions,
delivery up of the infringing products and a choice
between damages and an account of profits.
Designs vs trade marks
Now that design registrations will no longer be limited
to specified articles and can include logos, and so
on, there is scope for overlap between trade mark and
design protection. Indeed, the monopoly that a registered
Community design represents could, during its 25 year
term, be more powerful than registered trade mark rights
given that, for example, similar designs (i.e. those
which do not produce a different overall impression
on the informed user) will infringe a registered Community
design without the need to show confusion (unlike the
equivalent situation in the trade mark context). A Community
design registration may therefore help to protect your
logo during its early “life”, when its reputation
as a trade mark is still developing.
Conclusion
The two new Community design rights represent a doubleedged
sword of risk and opportunity. On the one hand, they
will allow businesses that devote time, effort and money
to developing new designs better to protect that investment
– and such businesses would be advised to consider
whether they should apply for a registered Community
design. On the other, a business planning to launch
a new product in Europe will now need to ensure that
any design embodied in or featured on that product is
not already protected as a registered Community design.
In addition, the infancy of the new Community design
rights means that many questions (both legal and procedural)
are yet to be resolved. It remains to be seen whether
the predominant view of the Courts will be that the
new regime must be taken at face value, even if that
pushes design protection into realms it has not previously
entered (and where perhaps conceptually it should not
go) or that there are already too many forms of protection
for intellectual property such as designs and that the
new system should accordingly be reined in.
Either way, the new regime is a complex and significant
evolution of the law protecting designs, placing possibilities
and pitfalls in the path of businesses across all industries.
An uncertain time lies ahead as courts, lawyers and
businesses alike assess how the new system works in
practice.
For further information, please
contact Stephen Gare,
Head of the UK Intellectual Property and IT Group
at Mayer, Brown, Rowe & Maw
11 Pilgrim Street, London, EC4V 6RW
Tel: +44 (0) 20 7248 4282
Website: www.mayerbrownrowe.com/london
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