2. The International Legislative Frame-work and a Period of Experimentation

Patents / US and Foreign Patent Practice / EU Design Regulation / International Legislative Framework

2. The International Legislative Framework and a Period of Experimentation

It is interesting to note that WIPO’s predecessor, BIRPI, proposed a model design law for developing countries as long ago as 1970 in which designs were defined as:

Any combination of lines or colors or any three dimensional form, whether or not associated with lines or colors, provided that such composition or form give special appearance to a product of industry or handicraft and can serve as a pattern for a product of industry or handicraft.

This definition was, however, subject to a provision that protection should not extend to anything in an industrial design which serves solely to obtain a technical result. [2]

The model law also proposed that novelty should be determined by a patent-like test and required that the design had not been made available to the public in any way anywhere or at any time before the application was filed, even when the disclosure was by the author himself, unless this was at an officially recognized international exhibition. [3]

Since then, and especially over the past twenty years, there has been a period of legislative experimentation in a number of countries seeking to define exactly what purpose design protection was intended to serve. [4] The proposals in the BIRPI law having been subject to considerable variation as this was done. At the beginning of this period there seemed to be four major questions to be answered.

1) What should be protectible - To what extent is it "fair" that anyone's original work should be copied, however trivial or functional that work may seem; to what extent should society be forced to pay for the privilege of using a particular design if it has no artistic or technical merit just because somebody else first designed it? This is essentially the dispute that has gone on for years in this country between the automobile industry and the insurance companies and has delayed revision of U.S. design law.

2) If some form of protection is appropriate, what form should it take-statutory monopoly of the patent type, copyright or quasi-copyright or unfair competition (slavish imitation as in European continental laws or a broadened version of Section 43(a) of the U.S. Lanham Act) and should protection be possible by more than one means for a given article or should the different types of protection be mutually exclusive? If cumulation is possible what should be the position after the expiration of one of the protection types?

3) Should all designs be treated equal or should surface ornamentation be viewed in a different light from designs that relate to the shape of an article?

4) Should protection be granted for parts of articles, for example spare parts for automobiles; if so should the rules that apply be the same as those for other types of design? For example, should a part be protectible only if it is sold separately so that it is an article of commerce in its own right.

Experimentation on these issues probably began with the Australian Designs Amendment Act of 1981. Among other things, this amended the definition of what could be protected from "any article or substance" having features of shape configuration, pattern or ornamentation ... being features that in the finished article can be judged by the eye, to "any article of manufacture and includes a part of such article if made separately". [5] The 1981 Amendments additionally sought to address the functionality issue by retaining the prior requirement that registered design protection should not extend to methods or principles of construction but adding the following:

An application for registration of a design shall not be refused, and a registered design is not invalid, by reason only that the design consists of, or includes, features of shape, or configuration that serve or serve only a functional purpose.

This clearly pointed Australian law away from case law which had developed in the United Kingdom which had construed the U.K.'s provision that design protection did not extend to that which was dictated solely by function which had tended to preclude the use of registered design protection for articles whose shape was functional. [6]

The U.K. itself attempted to deal with this issue in the Copyright Designs and Patents Act 1988 provides for four different vehicles for which design protection can be obtained. These are differentiated based upon the degree of "artistry" involved.

1. Artistic works are the subject of copyright and have protection for a period up to 50 years after the death of the author, [7] although this term may be limited to 25 years from first marketing if copies of the work have been made "by an industrial process" and marketed. [8]

2. Non-artistic aesthetic works were made the province of Registered Designs and as capable of protection for a period of 25 years from the date of application for registration. The limitation to "aesthetic articles" was effected by excluding from registration articles of which "the appearance is not material, that is where aesthetic considerations are not normally taken into account to a material extent by persons acquiring or using articles of that description and would not so be taken into account if the design were to be applied to the article". [9] This requirement for an aesthetic appearance was, however, removed by law changes made in 2001 to implement the EU’s Design Directive. [10] The Act as amended by the 2001 changes precludes protection for features that are "dictated solely by the product's technical function” [11] or, except in the case of modular designs, for “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”. [12]Under the 1988 legislation, parts of articles were protectible if "made and sold separately." [13] To qualify for protection under this definition, the House of Lords has held that the design must be applied to an article that has "an independent life as an article of commerce and not merely an adjunct of some larger article of which it forms a part." [14] The changes made in 2001 may alter this by providing that the design must be applied to a product, which is defined as:

any industrial or handicraft item other than a computer program; and, in particular, includes packaging, get-up, graphic symbols, typographic type-faces and parts intended to be assembled into a complex product (i.e. a product which is composed of at least two replaceable component parts permitting disassembly and reassembly of the product).

3. Under the 1988 Act, all new designs that are not "commonplace" [15] whether or not they qualify for Registered Design protection are the subject of the new unregistered design right unless the shape of articles embodying the design is dictated solely by function although protection is subject to the same "must fit" and "must match" provisions as designs protected under the registered right. [16] Such designs are subject to protection for a period of 10 years from first sale of an article embodying the design anywhere in the world subject to a maximum of 15 years from the date of the first drawing of the design. However, protection of this type is confined to "qualified persons" which requires consideration of whether the originator of the design or the place of first marketing is such as to qualify the design for protection under the Act. These requirements are set out in some detail in Section 217 to 221 of the Act.

[2] Section 2 of the Model Law. See Stephen P. Ladas “Patents, Trademarks, and Related Rights”, Harvard University Press 1975, pages 871 et seq. The definition of a design in the model law was originally used in the Algerian Designs Ordinance of 1966.

[3] Model Law Section 4.

[4] See for example the South African Act of 1993 setting up separate registers for aesthetic and functional designs, the U.K. Copyright, Patent and Designs Act of 1988 effectively setting up for different types of protection for designs depending on the degree of functionality of the design and the Australian Act of 1981.

[5] Australian Designs Act, as amended by the 1981 Amendment Act, S4(1). The specific reference to parts was apparently adopted from the U.K. Act of 1949, but is broader than that U.K. Act in not requiring that the part be sold separately as was required by Section 44(1) of the U.K. Registered Designs Act 1949.

[6] By construing this provision broadly, the English courts created the anomalous situation that drawings of a purely functional nature retained their copyright protection for a period of the life of the author plus fifty years and were infringed by three dimensional reproductions of the drawings whereas, because copyright protection was lost if the design was registrable as a registered design, more ornamental designs had protection for a period of only fifteen years. See, for example, Dorling v. Honor Marine [1964] RPC 160 (CA) and AMP Inc. v. Utilux Pty [1972] RPC 103 (HL).

[7] This is the practical effect of s 51 of the Copyright, Designs and Patent Act 1988 which removes from the scope of copyright infringement articles made by copying a design for anything other than an artistic work or a typeface.

[8] Copyright, Designs and Patents Act 1988 s. 52.

[9] Registered Designs Act s 1(3) added by s 265 of Copyright, Designs and Patents Act 1988.

[10] Registered Designs Regulation 2001 s.2.

[11] A similar phrase “dictated by the function which the article has to perform" was included in the previous legislation and considered by the House of Lords in Amp Inc. v. Utilux Pty Ltd [1972] RPC 103 where the term "dictated” was criticized by Lord Reid as being "a metaphorical word out of place in a statutory definition" and referred back to a case in which it had been used prior to its incorporation in the statute, Kestos v. Kempat (1936) 53 RPC 139, to conclude that meant features that were present for a functional purpose, apparently irrespective of whether other features could perform the same function.

[12] Registered Designs Act S1C as amended by the Design Regulation 2001. The previous version of the Act contained prohibitions on protection for features of shape or configuration which are necessary in order to ensure that the article in question can fit with other articles with which it is intended in operation to cooperate (the "must fit" exception) or features which are dependent upon the appearance of another article of which the article in question is intended by the design to form an integral part (the “must match” exception.)

[13] Registered Designs Act s 44(1), now repealed.

[14] Ford Motor Co. Ltd.'s Design Applications [1995] RPC 167. In this case, the House upheld the decisions of lower tribunals that designs for certain spare parts of cars, such as door panels, which form part of and contribute to the overall shape and appearance of the vehicle were not registrable. Lower tribunals had held that other parts such as wing mirrors, wheels, seats and the steering wheel although contributing to the appearance of the vehicle were subsidiary to its essential shape and so were "made and sold" separately and hence registrable. Ford Motor Co. Ltd.'s Design Applications [1994] RPC 545.

[15] In the case of Farmers Build Limited v. Carrier Bulk Materials Handling Limited [1999] RPC 461, the Court of Appeal has provided a test so as to determine whether this requirement has been met. According to this test, one should check that the design was not copied from an earlier article and make an objective determination of how many similar designs exist. A large number of very similar designs is evidence of the design being commonplace. Aspects of the design found only in the alleged infringement and the design right in respect of which infringement is alleged will be evidence that the design is not commonplace even though it might not be strictly "novel" as would be required by the Registered Design Act.

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