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5. The Position in Europe
5.1. The Harmonization Directive
5.2. The Regulation 5.3. Europe’s Answers to the Questions Posed Above In
1993, the Commission of the European Union issued proposals for harmonization
of design laws within the various countries of the EU and the creation of an EU
designs registry for granting design registrations that would be effective
throughout the EU with a design registration office located with the Trademark
Office at Alicante in Spain. However, such plans initially fell afoul of the
problem of what, if any, protection should be given to spare parts and their
use in repairs, particularly for cars, this also being the main point of
contention between Parliament and the Council having regard to the directive.
The Council wished to have them covered. Parliament wished to include
provisions that would permit the use of articles covered by a registered design
to repair "complex products" as long as the source of the repair part is
indelibly marked on it and fair compensation for use of the design has been
offered to the right holder. Thus the adoption of a Union-wide single
registration system has been delayed for at least a few years and the
harmonization directive was adopted essentially leaving the issue of the use of
component parts for the repair of a complex product to national law until at
least 2004.
[31]
However, agreement was ultimately reached on a regulation to establish an
EU Design Right and this was published in the Official Journal on January 5,
2002. Both the directive and the regulation are discussed below.
5.1. The Harmonization DirectiveFor
the reasons noted above, the first step towards European integration with
respect to designs was the adoption of the directive for harmonization of
national laws. Such harmonization was for the most part effected by the due
date of October 28, 2001 or shortly thereafter.
The
directive provides for protection for designs by way of registration. However,
it is specifically stated that this protection is without prejudice to other
forms of rights, such as unregistered design rights, trademarks, patents,
utility models, unfair competition laws and copyrights.
[32]
No distinction is drawn between aesthetic and functional designs, the only
requirements for protection being that the design is new, has individual
character and does not subsist in features which are dictated solely by
technical function.
[33]
Additionally, design protection shall not, with the exception of units intended
to form part of a modular system, subsist in features of a product which must
necessarily be reproduced exactly to permit the product to which the design is
applied to be "mechanically connected to or placed in, around or against
another product so that either product may perform its function.
[34]
On the other hand, the definition of "design" specifically provides that this
can refer to the appearance of the whole or of a part of a product.
[35] In
order to meet the requirement that a design must be new and have individual
character,
[36]
there must have been no disclosure of the design such that it could reasonably
have become known in the normal course of business to the circles specialized
in the sector concerned, operating within the Community before the filing date
of the application for protection or where appropriate the priority date of
such an application.
[37]
Disclosures in confidence do not destroy the novelty of the design.
Furthermore, a one-year grace period is provided for disclosures made by the
designer, his successor in title or a third person as a result of information
provided by the designer or his successor in title or is the result of "an
abuse in relation to the designer or his successor in title".
[38]
This grace period runs back from the filing date of the application or where
priority is claimed from the priority date. Designs differing from the prior
art in "immaterial details" may not be protected.
[39]
To have individual character, the design must differ from prior designs in "the
overall impression it produces on the informed user", taking into consideration
"the degree of freedom of the designer in developing the design."
[40]
Initial
protection is to be for a five-year period from the date of filing the
application for protection, renewable by further five-year periods up to a
maximum duration of twenty-five years.
[41] The
owner of a registered design secures the exclusive right to use the design
including making, offering, putting on the market, importing, exporting or
using a product into which the design is incorporated or to which it is applied.
[42]
Such rights do not, however, apply to any product that was put on the market
by the owner of the right or with the owner's consent anywhere within the
European Union.
[43]
Additionally the rights cannot be used to control acts done privately for
non-commercial purposes, experimental acts and acts done for citation or
teaching purposes as long as these are compatible with fair trade practices and
do not unduly prejudice the normal exploitation of the design and that in such
uses mention is made of the source of the design.
[44] Matters
as to ownership of rights in designs are left to national law.
[45] 5.2. The RegulationThe
regulation
[46]
was adopted on December 12, 2001 and published on January 5, 2002.
[47]
It provides for unitary design right protection throughout the European Union,
although not precluding national rights and has several similarities with the
Community Trade Mark Regulation, including use of the same office in Alicante,
Spain.
The
Regulation has clearly been influenced not only by the international
developments discussed above but also by prior European developments, such as
the Community Trademark Regulation (the Design Regulation makes use of the EU
agency for the filing of Community trademark and Community design applications)
and the still-to-be-adopted Community Patent Convention on which some of the
infringement provisions appear to be modeled.
The
regulation creates two distinct Community design rights which are directly
applicable throughout the European Union: 1) a right obtained by registration
at the Office for Harmonization of the Internal Market (Trade Marks and
Designs) (OHIM) at Alicante in Spain which will have a maximum duration of
twenty five years from filing an application for it
[48]
and 2) an unregistered right which will have a duration of three years from the
date on which the design was first made available to the public within the EU.
[49]
The provisions relating to the unregistered right came into effect on March 6,
2002. Those relating to the registered right will only come into effect after
the adoption of implementing regulations. It is expected that the implementing
regulations will be adopted in the summer of 2002 and that the first filing of
applications for the registered community design right will take place in the
spring of 2003.
The
reason given for the two types of right is that:
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. On the other hand, there are sectors of industry which value the
advantages of registration for the greater legal certainty it provides and
which require the possibility of a longer term of protection corresponding to
the foreseeable market life of their products.
[50]
Whereas
a registered design right will give rights similar to those given by a patent,
the unregistered right will be infringed only if copying is proved.
[51]
These two rights will co-exist with national design rights and other relevant
national rights such as copyright, unregistered design rights, trademarks,
patents, utility models, typeface rights and rights under unfair competition law.
[52] Designs
capable of protection by either of the Community Design Rights relate to
the appearance of the whole or a part of a product [53] resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. [54] Whether
registered or unregistered, he basic requirement for protection is that the
design is new and has an “individual character”.
[55]
Novelty is defined in slightly different terms from many national statutes in
that designs, which differ in only immaterial details from a prior disclosure,
will not be regarded as being new. Individual character means that the
overall impression of the design is such that “it produces on the
informed user” a different overall impression from that of any prior
design that has been made available to the public. OHIM officials have
indicated that what is meant by an “informed user” is someone
intermediate between an ordinary user and an expert. For some types of product
it has been suggested that such a person might be a retailer of the product in
question. In making a determination of overall impression “the degree of
freedom of the designer in developing the design shall be taken into
consideration.”
[56]
Despite
the apparently broad definition of what is protectible, there is a specific
prohibition on protection for “features of appearance of a product which
are dictated solely by its technical function” or by features which must
be exactly reproduced to permit the product in question to fit with another
product to enable either of these products to perform its function. This
prohibition does not apply, however, to mutually interchangeable products that
are to be used in a modular system.
[57] The
dates at which the requirements of novelty and individual character are to be
determined are the dates of filing or validly claimed priority
[58]
with respect to registered design rights and the date on which the design
itself was first made available to the public for the unregistered right.
[59]
In considering questions of novelty and individual character, all designs made
available to the public prior to the relevant dates are to be taken into
account, whether by publication, use or otherwise except for 1) situations
where the events in question “could not reasonably have become known in
the normal course of business to the circles in the sector concerned operating
within the” EU and 2) for registered rights only where the disclosure
was by the designer him or herself or someone obtaining the design from him or
her within the twelve month period prior to the filing of the application for
the registered right.
[60]
The effect of these provisions is to allow a designer a one year period within
which a newly launched design is protected by the unregistered right before he
or she has to incur the costs of registration. Furthermore, the first
exclusion goes beyond the provision in the European Patent Convention which
discounts a disclosure if made in confidence or, for a six month period only if
made in evident abuse of the applicants rights, and apparently excuses, for
example chance oral disclosures at dinner parties etc, particularly if they
occur outside the EU.
The
scope of protection afforded by both registered and unregistered design rights
is defined in similar terms to the definition of individual character, giving
rise to speculation that no right can infringe any other right, an issue which
the courts will decide in due course. The definition of the scope of
protection is
any design which does not produce on the informed user a different overall impression. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration. [61] It
should be noted that this definition is not tied to any particular product.
Thus despite that fact that for registered protection a product will have to be
indicated, it appears that protection will extend to all products incorporating
the design. For example, a design originally produced for a car would be
infringed by a tea-cozy of the same shape.
Applications
for a registered design right will be able to be filed at OHIM or at the
central industrial property office of any of the member states or at the
Benelux Design Office.
[62]
The application will be able to be in the language of any member state but the
applicant will have to specify a second language which he or she accepts as a
possible language of the proceedings.
[63]
At present the possible second languages are English, French, German, Spanish
and Italian. Provision is made for the filing of a description explaining the
design and in some cases for the supply of a sample at the applicant’s
option.
[64]
Applications covering multiple designs will be permitted, in general subject
to all of the designs being classified in the same class.
[65]
Such multiple designs may, however, be dealt with separately for purposes of
licensing and certain other matters.
[66]
Examination will be confined to formal matters and questions of whether that
for which protection is sought complies with the definition of a
“design” or whether protection for it is contrary to public policy
or accepted principles of morality only.
[67] Normally,
once examination is completed, the design will be registered and published.
[68]
However, the applicant may request that publication be deferred for a period
of thirty months from its filing date. In such a case a party who can show
that the right holder “has taken steps with a view to invoking against
him” a Community design right shall have right of access to the file and
in any case, institution of legal proceedings for infringement of an
unpublished right is subject to the defendant being given “the
information contained in the register and in the file”.
[69]
Once
registered, protection will run initially for a period of five years and will
be subject to the possibility of renewal for four further five year periods
providing for a possible maximum duration of twenty-five years.
[70]
As
noted previously, registered rights give protection against anyone using the
design in question, even if the publication of the design has been deferred,
whereas unregistered rights give protection only against copying. The
protection given by registered rights is itself subject to some limitations.
These include:
(a)
acts done privately and for non-commercial purposes;
Enforcement
of design rights will be by certain designated courts in each member state,
which will be designated as “Community Design Courts”.
[72]
Such courts will have the power to revoke a community design right if its
validity is successfully challenged in the course of an infringement action.
Otherwise, challenges to the validity of Community design rights will have to be
brought before OHIM.
[73]
Any decision on such an issue is subject to an appeal to an OHIM Board of
Appeal and ultimately to the European Court of First Instance and, if a
question of law is involved to the European Court of Justice in Luxembourg.
The Regulation does not preclude simultaneous national and Community protection
for the same design. It does, however, contain provisions relating to attempts
to enforce such rights. These are that if an action is brought between the
same parties on a national right that is for protection of the same design that
has already been the subject of litigation on the basis of a Community design
(apparently registered or unregistered), the court shall reject the action
based on the national right and that where actions on national rights and
community rights are brought before courts of different countries, the second
court to be seized of its action shall of its own motion decline jurisdiction.
[74] 5.3. Europe’s Answers to the Questions Posed AboveIn
attempting to answer the questions noted above therefore, Europe has responded
to the question of how creative must a design be to be entitled to protection
by a design right by opting for the creation of a new requirement that the
design must be of an “individual character” and has not drawn any
distinction between functional and ornamental articles with the exception of
requiring that there can be no protection for “features of appearance of
a product which are dictated solely by its technical function” or for
features which must be exactly reproduced to permit the product in question to
fit with another product to enable either of these products to perform its
function. There is no requirement for “special appearance” as was
proposed in BIRPI’s model law.
On
the question of the type of protection, it has opted for both a long-term
patent like protection and a short-term copyright-like protection.
On
the question of whether there should be different protections for different
types of designs it has answered “no”.
On
the question of spare parts, it has deferred final judgment for a little
longer, although the provision of the design regulation that would prevent the
use of a design right to control repair of an article in which that spare part
is used seems to be likely to become permanent..
On
the question of the novelty test Europe has deviated strongly from
BIRPI’s model law which would have imposed a universal novelty
requirement by providing for exceptions for 1) situations where the events in
question “could not reasonably have become known in the normal course of
business to the circles in the sector concerned operating within the”
EU and 2) for registered rights disclosures by the designer him or herself or
someone obtaining the design from him or her within the twelve month period
prior to the filing of the application for the registered right.
The
EU has therefore moved further away from the norms that were contemplated
twenty years ago than have the other countries we have considered in this
paper. In view of the intense lobbying to which the EU institutions were
subjected during the legislative process, this is not surprising. However, it
remains to be seen whether the rest of the world will follow.
[31]
Articles 14 and 18. Article 14 confines the rights of countries to amend
their national laws on the spare parts issue to amendments whose "purpose is to
liberalize the market for such parts."
[32]
Article 16. Article 17 specifically provides that questions of whether
there can be dual protection for the same design under a design protection law
and copyright is to remain a matter for national law.
[33]
Article 7(1).
[34]
Article 7(2).
[35]
Article 1:
'design' means the appearance of the whole or 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;
'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.
[36]
Article 3.
[37]
Article 6(1).
[38]
Article 6(2).
[39]
Article 4.
[40]
Article 5.
[41]
Article 10.
[42]
Article 12. The Article includes a provision to permit continuation of
acts that were lawful prior to the amendment of national law to comply with the
directive even if they become unlawful after the directive is implemented.
[43]
Article 15.
[44]
Article 13.
[45]
Article 11(1)(c).
[46]
Council Regulation (EC) 6/2002.
[47]
OJ L3/1.
[48]
Design Regulation Article 12.
[49]
Design Regulation Article 11. It has been hypothesized that the actual
disclosure need not be in the EU if it has the effect of making the design
available to the public in the EU, for example at a trade show outside the EU
which large numbers of interested parties from the EU attend.. It remains to
be seen whether the courts take this view.
[50]
Design Regulation Recitals 15 and 16.
[51]
Design Regulation Article 19.
[52]
Design Regulation Article 96, it being specifically required that “a
design protected by a Community design shall also be eligible for protection
under the law of copyright of Member States, recital 32 specifically noting
that “in the absence of complete harmonization of copyright law, it is
important to establish the principle of cumulation of protection under the
Community design and under copyright laws ...”. This apparently means
that there will, for example, be two separate unregistered rights in existence
tin the United Kingdom: the UK right with a term of ten years from first sale,
but only if the design is owned by a “qualified person” and the EU
right for a period of three years open to everybody.
[53]
The term “product” is itself defined broadly as “any
industrial or handicraft item” including parts intended to be assembled
into a multi-component product of which the “components ... can be
replaced permitting disassembly and reassembly”. Such component parts
are, however, only capable of protection if they remain visible during the
normal use of the product within which they are incorporated and as so seen
meet the requirements for novelty and individual character discussed below.
[Article 4(2)] Recital 13, after noting that the Commission was given a period
of three years after the implementation of the Design Directive to provide a
recommendation on how to solve the “spare parts” issue which
delayed the implementation of both the Design Regulation and the design
Directive, addresses the issue in the following terms:
Under
these circumstances, it is appropriate not to confer any protection as a
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 dependant and which is used for the purpose of repair of a
complex product so as to restore its original appearance, until the Council has
decided its policy on the issue on the basis of a Commission proposal.
This
is implemented in Article 110 which states: Until
such time as amendments to this Regulation enter into force..., protection as a
Community design shall not exist for a design which constitutes a component
part of a complex product ... for the purpose of the repair of a complex
product so as to restore its original appearance.
The
result seems to be therefore that the designer of, say, a new bumper for an
automobile has the right to prevent competing automobile manufacturers from
using such a bumper in their products without authorization but not to stop the
production and use of such bumpers to repair its own automobiles.
[54]
Design Regulation Article 3.
[55]
Design Regulation Article 4(1).
[56]
This provision was apparently included to enable designers in crowded
fields, such as textiles, to obtain protection for designs that might have
relatively small differences from the prior art as well as to take account of
issues relating from technical requirements for the products.
[57]
Design Regulation Article 9.
[58]
Design Regulation Article 41 provides for a six month priority period from
applications filed in a Paris Convention or World Trade Organization country on
normal Paris Convention terms.
[59]
Design Regulation Articles 5 and 6.
[60]
Design Regulation Article 7.
[61]
Design Regulation Article 10. This definition focusing on overall
impression has caused some concern about the scope of protection of the
unregistered right since in this case, it may be difficult to focus the court
on individual features of design, which in the case of a registered right might
themselves for the subject of individual registrations.
[62]
Design Regulation Article 35. [63]
Design Regulation Article 98. [64]
Design Regulation Article 36. [65]
Current thinking is to allow up to 100 designs in such a multiple
application, possibly providing a way to deal with the problem of what to do
about component parts in a single article.
[66]
Design Regulation Article 37. [67]
Design Regulation Article 47. [68]
Design Regulation Articles 48 and 49. OHIM officials have indicated that
they hope that, except in cases where delay in publication of the design has
been requested, publication ill occur within three months of filing.
[69]
Design Regulation Articles 50 and 74(2). The reason for providing for
deferred publication is given in Recital 26 as being that: The
normal publication following registration of a Community design could in some
cases destroy or jeopardize the success of a commercial operation involving the
design. The facility of a deferment of publication for a reasonable period
affords a solution in such cases.
It
is understood that this provision is regarded as being particularly important
by fabric designers.
[70]
Design Regulation Articles 12 and 13.
[71]
Design Regulation Articles 20, 21 and 22. The prior user right is
personal, confined to the purpose for which the use had been effected or for
which the preparations were made, does not permit the granting of licenses and
is transferable only with the business or part of the business in connection
with which the prior use occurred or the preparations were made.
[72]
Design Regulation 82 provides that if the defendant is domiciled or
resident in a member sate, the action shall normally be brought before the
Community Design Court (CDC) in that country, if this is not the case and the
defendant has an “establishment’ in member state then tin the CDC
in that country, if none of these apply then jurisdiction is in the CDC in
country in which the plaintiff is domiciled, resident or established and if
none of these apply, in the CDC in Spain. An additional option is to bring the
action in the court of the country in which the infringement occurred. Under
Article 90, provisional relief may be requested of any court in a member state,
but the relief may be confined to what is available under national law.
[73]
Design Regulation Articles 24, 80 and 81.
[74]
Design Regulation Article 95.
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