Industrial Design PDF

LESSON 8 INDUSTRIAL DESIGN 1. Introduction 2. International, regional and national rules 3. Concept and connection with other IPR 4. Requirements for protection...

LESSON 8 INDUSTRIAL DESIGN 1. Introduction 2. International, regional and national rules 3. Concept and connection with other IPR 4. Requirements for protection 5. Right to a design 6. Procedure for registration 7. Rights of the owner of a registered design 8. Protection of “Unregistered community design” 1  1. Introduction During the industrial revolution, producers focused mainly on 3 competition parameters: Price Quality Functionality In mature markets, competitors have further competition areas (added value to differentiate themselves from others): design of the product: appealing appearance to consumers might be even more important than price Intellectual and artistic movements started concern with the appearance of products: 1851 Universal exposition Arts and Crafts movement Modernism Aesthetic and functional design: Bauhaus To protect the investment and prevent competitors to free ride on the valuable design: need for design protection 2  1. Introduction Rationale for regulation Industrial design meets different kinds of interests: entrepreneurs: they invest in creating designs as a part of their industrial policy designers: they contribute to increase the added value of products, and the realm of aesthetic forms applied to industry consumers: they can purchase a wider variety of products, according to their taste, needs and possibilities market: favoured both by the promotion of investments aimed at introducing new products having design as a factor of industrial policy, and by the respect of free and fair competition related to aesthetic appearance applied to industry Accordingly, industrial design has a double foundation: subjective: to protect the mere act of creating a new form à recognition to the creator objective: to increase the variety of forms applicable to industry à introduction of a new aesthetic form into the heritage of "industrial aesthetics”, which is positive for consumers who have more possibilities of choosing products with aesthetically attractive appearances Economic function: economic value linked to the appearance of the products, which will stimulate the contributions of creators, encourage innovation and the creation of new products, and encourage investments in their production 3  2. International, regional and national rules INTERNATIONAL General: Paris Convention for the Protection of the industrial property (1883) and WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) Specific: The Hague Agreement Concerning the International Registration of Industrial Designs (1925) and Locarno Agreement Establishing an International Classification for Industrial Designs REGIONAL: EUROPEAN UNION COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001 on Community Designs Regulation (EU) 2024/2822 of the European Parliament and of the Council of 23 October 2024 amending Council Regulation (EC) No 6/2002 on Community designs and repealing Commission Regulation (EC) No 2246/2002 à new name: “E.U. Design” art. 1.3 RCD: It has unitary character; It shall have equal effect throughout the EU (one single IPR = EU trademarks) art. 1.2: there are 2 options of protection: a) Registered Community Design: registration office is the EUIPO; protection up to 25 years (5 x 5 years) b) Unregistered Community Design (but public): more limited content of protection, and valid only for 3 years https://guidelines.euipo.europa.eu/2213908/2199801/designs-guidelines/1-introduction NATIONAL: e.g. Spain, Ley 20/2003, de 7 de julio, de Protección Jurídica del Diseño Industrial à Directive (EU) 2024/2823 of the European Parliament and of the Council of 23 October 2024 on the legal protection of designs: need for transposition 4  3. Concept and connection with other IPR A) Concept The term “industrial design” refers to the appearance or ornamentation of a product that makes it visually different from another, regardless of any technical or functional features (aesthetic appearance only, not functional) Art. 3.1. REUD: “design” means the appearance of the whole or a part of a product resulting from the features, in particular the lines, contours, colours, shape, texture and/or materials, of the product itself and/or of its decoration, including the movement, transition or any other sort of animation of those features” Art. 3.2. REUD: “product” means any industrial or handicraft item, other than a computer program, regardless of whether it is embodied in a physical object or materialises in a non-physical form, including: (a) packaging, sets of articles, spatial arrangements of items intended to form an interior or exterior environment, and parts intended to be assembled into a complex product; (b) graphic works or symbols, logos, surface patterns, typographic typefaces, and graphical user interfaces; Beauty is not a requirement: “aesthetic” doesn’t refer to a pleasant looking of the product 5  3. Concept and connection with other IPR (…) Terminology Civil Law tradition: dibujos y modelos industriales “drawings” (dibujos industriales, 2-dimension designs) “models” (modelos industriales, 3-dimension designs) à used in 19th century Conventions (Paris 1883 and Berne 1885) and until recently in continental Europe (e.g. Spain, France, Italy, Portugal…) Common Law tradition: industrial design (global concept for all types of designs) à more used nowadays There is only one type of protection (= one right): “protected industrial design” Industrial design: not only industrial, but artisanal designs as well 6  3. Concept and connection with other IPR B) Connection with other IPR Designs (aesthetic creations) can be protected through different legal options, provided they meet the requirements of each field of regulation: Protection is possible through : industrial design, trademarks, intellectual property (authors’ rights), unfair competition Protection is NOT possible through: utility models (or patents) (i) Trademarks: in particular 3D trademarks different requirements: “distinctive character” for TM à sign registered as TM allows the consumer to identify the commercial origin of the product or service “visibility, novelty and singular character” for Design cumulative protection is possible: a creation can have both forms of protection if it fulfils both sets of requirements (common in packaging) BUT different duration of protection: unlimited renewal for TM ≠ maximum of 25 years for registered design 7  3. Concept and connection with other IPR B) Connection with other IPR (cont.) (ii) Intellectual Property (authors’ rights: copyright ©) Two types of design: Ordinary design: protected by Design Law Creative and original design (artistic value, work of art applied to industry): meeting also the requirements of © legislation (artistic value) à © protection: from the moment of creation up to 70 years after death of author (Berne Convention: minimum 50 years after death of author); registration not compulsory but possible in some countries (e.g. Spain). Two protections (independent and cumulative): © + Design (iii) Unfair Competition Law: Complementary protection that can be used in certain cases if the design is not protected by an exclusive right (IPR): connected to specific conducts E.g. in Spain: arts. 13 and 11 Unfair Competition Act (Ley 3/1991 de competencia desleal) divulgación o explotación de un diseño secreto, sin autorización del titular, realizada por quien haya tenido acceso legítimamente, pero con deber de reserva, o ilegítimamente a consecuencia de un espionaje industrial o induciendo a una infracción contractual (art. 13 LCD) imitación del diseño que resulte idónea para crear confusión, comporte un aprovechamiento indebido de la reputación o el esfuerzo ajeno, o se haga sistemáticamente para impedir que la empresa cuyos diseños se imitan consolide su posición en el mercado y con su clientela (art. 11 LCD) 8  3. Concept and connection with other IPR B) Connection with other IPR (cont.) (iv) Utility models (field of inventions): Designs may be ornamental or functional à for the latter, in theory there could be a dilemma between protection under Utility models’ Law (invention) or Design Law BUT there is no possible free choice for the inventor/author: if the design is necessary to fulfil the function (the shape is technically necessary), there is no protection via Design Law (art. 8 RCD; art. 11 LPDI) à protection via utility model (technical solution) 9  4. Requirements for Protection A) Previous considerations: Art. 4.1 REUD (art. 5 LPDI) establishes 2 requirements for protection: the design must be new and have an individual character Additional requirement of “visibility” à Article 18a REUD (new): “Protection shall be conferred for those features of the appearance of a registered EU design which are shown visibly in the application for registration”. especially important in connection with complex products, ex. art. 4.3 REUD: “complex product” means a product that is composed of multiple components which can be replaced, permitting disassembly and reassembly of the product.’ Art. 4.2 REUD (art. 8 LPDI ): Parts (components) of complex products can be protected by Design right if they are visible during the “normal use” of the product, and they fulfil themselves the protection requirements à art. 4.3: “normal use” means “use by the end user, excluding maintenance, servicing or repair work” correct interpretation of the visibility requirement: design of components can be protected if they are visible (and fulfil themselves the protection requirements), even if only partially visible and/or not visible all the time 10  4. Requirements for Protection B) Requirements for protection Novelty: art. 5 REUD (art. 6 LPDI) “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 an unregistered EU design, before the date on which the design for which protection is claimed has first been made available to the public (b) in the case of a registered EU design, before the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority 2. Design shall be deemed to be identical if their features differ only in immaterial details” 11  4. Requirements for Protection art. 7.1 REUD (art. 9 LPDI): “available to the public” means: published, exhibited, used in trade or otherwise disclosed before the date of filing of the application for registration, or the date of priority if claimed (wide concept) BUT some disclosures are not taken into consideration (i.e. they don’t destroy ”novelty”): art. 7.1: 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 EU (there was no “professional disclosure” à “professional novelty” required) design disclosed to a third person under explicit or implicit conditions of confidentiality art. 7.2 and 7.3: certain disclosures during the period of grace (12 months before filing the application or date of priority) 7.2: disclosure as a result of information provided or action taken by the designer or the successor in title art. 7.3: if the design has been made available to the public as a consequence of an abuse in relation to the designer or his successor in title 12  4. Requirements for Protection B) Requirements for protection (cont.) Individual character: art. 6 REUD (art. 7 LPDI: singular character) 6.1: 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 before the date of filing of the application for registration or the claimed priority date (for registered designs), or before the date on which the design for which protection is claimed has first been made available to the public (for unregistered designs) 6.2: In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration Assessment of the individual character: features to take into account (next slide) Overall impression Impression on the “informed user” Freedom of the designer: 13  4. Requirements for Protection Overall impression: on the identity, similarity or differentiation of the design with prior designs Comprehensive or global assessment (not comparison of every specific feature) degree of differentiation required: not huge but not insignificant à differentiation connected with the double foundation for protection (slide 3): act of creation (subjective) + increase of the realm of aesthetic forms applied to industry (objective) differentiation ≠ “distinctive character” of trademarks à the latter is connected with the protection of consumers against the risk of confusion Impression on the “informed user”: concept between an average consumer and an expert “informed user is neither a manufacturer nor a seller of the products in which the designs at issue are intended to be incorporated or to which they are intended to be applied. The informed user is particularly observant and has some awareness of the state of the prior art, that is to say the previous designs relating to the product in question that had been disclosed on the date of filing of the contested design” (Judgement of the GC, 18 March 2010, T-9/07, § 62) Freedom of the designer: Connected with the limitations re the shapes necessary for the product: the more limitations, the less differentiation can be required (and vice versa) Also with trends and fashions on a certain industry/market (some similarities are admitted) 14  4. Requirements for Protection C) Prohibition of registration and grounds for refusal Prohibition: design which is contrary to public order or to accepted principles of morality (art. 9 REUD) Public order: legal, political and economic constitutional principles, especially democratic principles and respect of human dignity principles of morality: social ethics in each historical moment ≠ ugly or unpleasant (beauty is not a requirement for design protection) Grounds for refusal: designs dictated solely by their technical function and designs of interconnections (art. 8 REUD) à next slide Also: general grounds for refusal (Spain: art. 13 LPDI) design that does not match the legal definition of design (à art. 1.2.a) LPDI) that does not fulfil the requirements for protection (established in art. 5 to 12 LPDI) the applicant has not the right to the design according to art. 14 and 15 LPDI incompatible with a prior design, or TM, or other IP right 15  4. Requirements for Protection Art. 8.1.: designs dictated solely by their technical function design cannot protect appearance creations that are technically necessary: they are inventions à protection as utility models VIP: “solely”, i.e. appearance that additionally (not solely) improves function can be protected: functional design can be protected (if it fulfils the requirements for protection: visibility, novelty and individual character) à assessment: à if a technical result can only be obtained with a specific form, the form cannot be protected as design (could be as utility model if it fulfils those requirements), and if a technical result can be obtained with multiple forms any of these can be protected as design (if they fulfil design requirements) Art. 8.2: designs of interconnections (must-fit) features of appearance which must necessarily be reproduced in their exact form and dimensions in order to permit the product to be mechanically connected to or placed in, around or against another product so that either product may perform its function Rationale: need to enable interoperability between products of different brands in order to avoid closed markets Exception (art. 8.3): design serving the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system à design protection possible (e.g. Lego case, T 515/2019, JGC of 24 March 2021) 16  5. Right to a design Right to a design: art. 14 REUD (art. 14 to 16 LPDI) art. 14 REUD (art. 14 LPDI ): this right belongs to the author of the design possible co-authorship à co-ownership; ≠ same design by independent authors à prior tempore art. 14.3 REUD (art. 15 LPDI): employee’s design criteria to attribute ownership of the design: if the design was created in execution of duties or following instructions of the employer à ownership of the employer Registration by a person not entitled to: arts. 15 and 16 REUD (art. 16 to 18 LPDI) the person entitled can claim to become recognised as the legitimate holder of the design Right of the author/designer to be mentioned as such: art. 18 REUD (art. 19 LPDI) 17  6. Procedure for registration A) Community design (arts. 35 to 50 REUD) Application at EUIPO (art. 35-40 REUD) Right of priority (arts. 41-44 REUD): 6 months from the date of filing an application in any Sate party of the Paris Agreement or WTO agreement = prior application for international design: this date will be maintained The Office checks only formal requirements and prohibitions of registration Formal requirements: art. 45 REUD à art. 36 and 37 on the application Grounds for non-registrability (art. 47.1 REUD) does not correspond to the definition in Article 3, point (1), of this Regulation is contrary to public policy or to accepted principles of morality constitutes an improper use of any of the items listed in Article 6ter of the Paris Convention, or of badges, emblems and escutcheons other than those covered by Article 6ter of that Convention and which are of particular public interest in a Member State 18  6. Procedure for registration A) Community design (cont.) Novelty or individual character are not checked ex officio, nor there is a specific procedure for opposition by third parties, BUT possible application for invalidity during the proceedings at EUIPO, before the procedure is finished (art. 54 REUD), and appeal to decisions of the Office (after proceedings are finished), filed at the Office within 2 months after the date of notification of the decision appealed from (arts. 55-60 REUD) Procedure ends with registration at the Community design Register (art. 48 and 72 REUD), and publication at the Community Designs Bulletin (49 REUD and 73 REUD) Possibility to defer publication 30 months (art. 50 REUD): protection from the date of registration, but not publicity à gives the designer the opportunity to work on a marketing strategy and ultimate production arrangements away from competitors (common in fashion and automobile industry) 19  6. Procedure for registration B) Spanish design (arts. 20-31 LPDI) Submission of application at OEPM (art. 20) Examination of admissibility and of form (art. 27): the Office checks formal requirements of the application and payment of fees Examination of substance, ex officio (art. 29) the Office checks compliance with legal definition of Design, ex art. 1.2.a) LPDI, and whether the Design is “contrary to public order or accepted principles of morality” The Office does NOT check novelty or individual character, BUT opposition by third parties is possible (art. 33 LPDI) 20  6. Procedure for registration B) Spanish design (cont.) Procedure ends with registration at the Design Register and publication at the BOPI (OEPM) Deferred publication (art. 32): Design is registered but not published Maximum of 30 months from application date Function: strategic marketing considerations… 21  7. Rights of the owner of a registered design A) Content of the right Art. 19 REUD (art. 45 LPDI ) 19.1: right to use it and to prevent any third party not having the consent of the holder from using the design 19.2: this includes, in particular: making, offering, placing on the market, importing or exporting, stocking a product in which the design is incorporated or to which the design is applied; and creating, downloading, copying and sharing or distributing to others any medium or software which records the design for the purpose of enabling a product referred to in point (a) to be made Rights are acquired by registration Duration of the right: 5 years; with further 5-year renewals up to a maximum of 25 years (art. 12 REUD; art. 43 LPDI) 22  7. Rights of the owner of a registered design B) Limitations of the right Art. 20 REUD acts carried out privately and for non-commercial purposes; for experimental purposes; reproduction for the purpose of making citations or of teaching; for the purpose of identifying or referring to a product as that of the design right holder; for the purpose of comment, critique or parody; specificities for ships and aircrafts… Art. 21 REUD: Exhaustion “The rights conferred by an EU design shall not extend to acts relating to a product in which a design included within the scope of protection of the EU design is incorporated or to which it is applied, when the product has been placed on the market in the European Economic Area (EEA) by the holder of the EU design or with the holder’s consent” C) Transfer and Licencing Arts. 28-33 REUD 23  7. Rights of the owner of a registered design D) Actions for the protection of the right EU Design (art. 89 RCD): “Where an EU design court finds that the defendant has infringed or threatened to infringe an EU design, it shall issue an order prohibiting the defendant from proceeding with the acts which infringed or would infringe the EU design. It shall also take such measures in accordance with its national law as are aimed at ensuring that that prohibition is complied with”. Each Member State determines the courts that will be competent for matters related to EU Design (an EU design court) à e.g. in Spain, the Commercial Courts of Alicante) Spanish Design: civil actions (art. 53 LPDI) cessation; compensation for damages; measures to avoid the continuation of an infringement; destruction or transfer of goods for humanitarian purposes; attribution of the property of the goods; publication of the judgment Available 5 years after the day in which they could be brought (art. 57 LPDI) 24  8. Protection of “Unregistered Community Design” Spanish Law does not provide for a protection of unregistered designs. However, EU Law does apply in this case: Design can be protected under the REUD without registration, for a period of 3 years as from the date on which the design was first made available to the public within the EU (art. 11 REUD) “available to the public”: 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 Community Protected throughout the whole EU Duration: 3 years A design can first be protected under the “unregistered community design” provision and later on, if registered in Spain or in the EUIPO, protected under the Spanish or the European design Law Protection is sequential, not cumulative 25  8. Protection of “Unregistered Community Design” Scope of protection: more limited than for registered design à art. 19.4 REUD Same exclusive right as registered design (19.1 and 19.2) BUT “only if the contested use results from copying the protected design” (art. 19.4 REUD) à e.g. use of same design resulting from independent creation cannot be prohibited 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, WHILST in the case of registered design the scope of protection conferred includes any design which does not produce on the informed user a different overall impression Protection not against similarity, but only against identity Must bear the use of others in good faith 26