26 August 2005

Designs: New Rules and New Case Law

Update The Regs are now published (The Community Design Regulations 2005 SI 2005 No 2339).
See Post of 1 Sept 2005 with links to OPSI and analysis by IPKat.

The "What's New" page of the Designs Index of the Patent Office website rarely has much to report. This week it has two items of interest to practitioners.

The first are two recent decisions, one by Mr Barford under s.246 of the Copyright Designs and Patents Act 1988 relating to unregistered design rights, the other by Mr McGillivray on an application for invalidation of a registered design. The second item is a summary of the Community Designs Regulations 2005 which will come into force on 1 Oct 2005.

For the benefit of readers outside the UK, it is perhaps worth mentioning that there are at least 5 (and if one counts semiconductor chip protection separately 6) ways of protecting designs in this country:-
(1) designs of products that are new and have individual character may be registered as registered designs for the UK only with the Designs Registry of the Patent Office under the provisions of the Registered Designs Act 1949 as amended;
(2) alternatively, designs of products that are new and have individual character may be registered with OHIM (the Office for Harmonization in the Internal Market) (the Community designs and trade marks registry) for the whole EC as registered Community designs under the provisions of the Community Designs Regulation (COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001 on Community designs);
(3) designs that could be registered either as UK registered designs or as registered Community designs are protected automatically from copying throughout the EC for 3 years by the Community Designs Regulation as unregistered Community designs;
(4) original designs of aspects of shape or configuration of an article or part of an article (and that part can be as minute as the shape of a contact lens) with certain exceptions are protected automatically from reproduction in the UK by a new intellectual property right peculiar to us British called "unregistered design right" pursuant to Part III of the Copyright, Designs and Patents Act 1988;
(5) fabric designs, wallpaper and works of artistic craftsmanship that are excluded from unregistered design right protection by s.213 (3) (c) of the 1988 Act are protected indirectly by artistic copyright.

It sounds very complicated but in fact it works quite well in practice. These several IPR overlap to give monopoly protection through registration of designs of things that sell on appearance such as crockery or consumer durables but not their innards unless they are visible and a design feature in themselves. The manifold of the Morgan motor car (reputedly Sir Hugh Laddie's favourite conveyance) could have been so protected had it been introduced to the British or European market now. Unregistered design right, however, does protect components and other purely functional product designs from copying. Unregistered design right is, incidentally, the way in which we protect semiconductor topographies though the Part III has had to be modified quite substantially by special regulations to give effect to our obligations under the Washington Treaty.

The design right case, Justwise Group Ltd v Magis SpA, is a delicious case for English IP lawyers though it will probably make no sense at all to anyone else. Before the Copyright Designs and Patents Act 1988 came into force engineering drawings were regarded as artistic works which meant that the simplest design of the humblest component could be protected by copyright for the life of the designer plus 50 years. This produced all sorts of anomalies which resulted in the House of Lords' concocting a defence of an implied licence to repair in order to prevent vehicle manufacturers from holding the public to ransom whenever they needed to replace an exhaust pipe. There was a lot of argument among academics and practitioners as to how product designs should be protected. The course eventually chosen was to introduce unregistered design right for product designs and allow artistic copyright to revert to its original function of protecting fine arts such as drawings, paintings and sculpture.

For historical reasons, Parliament did not want any overlap between copyright and unregistered design right. Copyright now protects works of art for life plus 70 years. Design right by contrast lasts only 10 years if a design is marketed and in the last 5 anyone in the world including an infringer can apply for a licence to make articles to the design. This issue in this case was whether a stool specially commissioned from the celebrated designer Stefano Giovanni at a cost of £500,000 (approx US$900,000) was a work of art or simply an article of furniture not substantially different from something one could pick up from Ikea. If it were the former it would be protected for the rest of Mr Giovanni's life plus 70 years and would not be subject to a licence of right. If the latter, anyone in the world could seek a licence to reproduce it. Not surprisingly, the hearing officer held that the stool was a work of artistic crafstmaship. As such it was protected by copyright and not by design right. His jurisdiction under the Act applies only to design right. Drawing an analogy to CPR 3.4 he struck out the statement of case.

The case before Mr McGillivray, McBride v Garnett, was an application for invalidation of a registered design on the ground of anticipation and want of individual character. It is perhaps worth pointing out that there is no substantive examination of design applications in this country. Challenges, if they are to come at all, will follow after grant. In this case the challenger alleged invalidity but adduced no evidence to support his claim. Not surprisingly he was thrown out on his ear.

The summary of the new regulations isinterestingg because there is as yet no draft of the regulations. However, there was a consultation last year in which the government set out its thinking. The net effect of the changes is to extend some of the provisions that apply to national registered designs to registered Community designs. Thus, there will be a "threats action" which will be a relief to the garment trade and it will be an offencefalselyy to claim a registered design.
This isbasicallyy levelling the playing ground and it is long overdue. I for one will welcome the new law.

Related News Item
TIPLO Dinner Meeting Tuesday 18 Oct 2005 Richard Arnold QC "Design Right: Is it working?"

Richard Arnold QC (a London patent silk) will give a talk entitled "Design Right: Is it working?" at Gray's Inn on 18 Oct 2005 after drinks and dinner. Richard sits as an appointed person on appeals from hearing officers in the Trade Marks Registry. I've been against him in court several times and he is very good. The evening is arranged by TIPLO (The Intellectual Property Lawyers Organization) so enquiries should be addressed to Ms Renata SIEBRASSE, c/o MEDTAP Instituute, 20 Bloomsbury Square, London WC1A 2NS, Tel +44 (0)20 7289 4552, siebrasse@unitedbiosource.com. Tickets costs £95 (US$170) for members (£120 (US$216) for non-members) which seem a big steep to my North Country eyes but then it is being held in London and, as I have said, Richard is good. I would have gone but for a conference at the WIPO in Geneva, which I plan to attend.

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