Fundamentals of IP Law, HANKEN, September 2015 EU Industrial Designs Law: Overview Prof. Dr. Martin...

Fundamentals of IP Law,HANKEN, September 2015

EU Industrial Designs Law: Overview

Prof. Dr. Martin SenftlebenVU University Amsterdam

Bird & Bird, The Hague

Industrial design

• definition of “design”

‘…means 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 itself and/or

its ornamentation;…’

• Art. 3(a) Community Designs Regulation

(CDR)

Industrial design

• definition of “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;…’

• Art. 3(b) CDR

Can be 2D…

Can be 3D…

Examples

Rationale

freedom of competition

protected designs

Reconciling divergent interests

‘natural’ period of market exclusivity

advantage of being first in the market

‘extended’ period of market exclusivity

industrial designs protection: 5x5 years

Incentive for aesthetic innovation

• stimulation of investment

• enhanced possibility of amortization

Legislation

• WIPO: Paris Convention

(1883/1967)

• WIPO: The Hague System for the

International Deposit of Industrial Designs

(1928, London Act 1934, The

Hague Act 1960, Geneva Act 1999)

• WTO: TRIPS Agreement (1994)

International

• Community Designs Regulation No. 6/2002

(2001)

– unitary right covering EU territory

– short-term unregistered design right

• Designs Directive 98/71/EC (1998)

– harmonization of industrial designs legislation in

EU Member States

European Union

Protection requirements

novelty

(common law tradition)

individual character

(civil law tradition)

Two basic requirements (Art. 4(1) CDR)

Novelty: specific characteristics

• ‘… if no identical design has been made available to the public.’ (Art. 5(1) CDR)

• identical ‘…if their features differ only in immaterial details.’ (Art. 5(2) CDR)

• relevant moment of assessment

– registered Community designs: filing date or

priority date (Paris Convention)

– unregistered Community designs: date of first

making available to the public

Paris Union

filing a design application in one

country of the Union

6 months

subsequent filings in

other Union countries

Priority right (Art. 4 of the Paris Convention)

Individual character: global comparison

• ‘…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.’ (Art. 6(1) CDR)

• taking into account ‘…the degree of freedom of the designer in developing the design…’ (Art. 6(2) CDR)

• same rules as in the case of novelty concerning the moment of assessment

• concept of ‘informed user’

– no designer or technical expert

– knows the designs in the relevant sector

– knows the individual design elements

– is particularly observant, either because of

personal experience or extensive knowledge of

the sector

CJEU, 20 October 2011, case C-281/10P, PepsiCo/Mon Graphic

average consumer

technical expert

position between these two poles

‘… lying somewhere between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise.’ (para. 53)



• informed user?

– kid of five to ten years

– marketing specialist dealing with these kind of

gadgets for advertising purposes

GCEU, 21 November 2013, case T-337/12, El Hogar Perfecto del Siglo

• informed user?

– waiter or sommelier

– private person using corkscrews at home

GCEU, 22 June 2010, case T-153/08, Shenzhen Taiden/OHIM (Bosch)

• informed user?

– person who often visits conferences

• concept of ‘freedom of the designer’

‘The greater the designer’s freedom in developing

the challenged design, the less likely it is that minor

differences between the designs at issue will be

sufficient to produce a different overall impression

on an informed user.’

GCEU, 9 October 2011, Kwang Yang Motors/Honda


‘Conversely, the more the designer’s freedom in

developing the challenged design is restricted, the

more likely minor differences between the designs

at issue will be sufficient to produce

a different overall impression on an

informed user.’



‘Therefore, if the designer enjoys a high degree of

freedom in developing a design, that reinforces the

conclusion that the designs which do not have

significant differences produce the same overall

impression on an informed user.’


Also relevant?

production costs,

consumer demand,

ergonomic factors?

novelty

micro perspective (zoom in)

objective test

individual character

macro perspective (zoom out)

subjective test

Difference between the two requirements?

Disclosure

Making available to the public

• publication

• exhibition

• putting on the market

• or other ways of disclosing the design

‘... except 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 Community ...’

(Art. 7(1) CDR)

absolute (worldwide)

relative (domestic)

position between these two poles

• worldwide scope: disclosure somewhere on the

globe can destroy novelty

• but nonetheless limited: decisive whether relevant

circles in the EU could have obtained knowledge

Neither absolute nor relative concept

Town market in China?

Newspaper in Africa?

by the designer herself

(grace period of 12 months prior to filing date/

priority date)

as a result of acts in bad faith

(abuse during 12 months prior to filing date/

priority date)

Irrelevant disclosure (Art. 7(2) and (3) CDR)

Exclusions

Technical functionality

• exclusion from protection

‘A Community design shall not subsist in features

of appearance of a product which are solely

dictated by its technical function.’

• Art. 8(1) CDR

Same approach as in trademark law?

Benelux examples

• line drawn with

trademark

decisions

• in particular:

alternatives

irrelevant

Must-fit features


‘A Community design shall not subsist in features

of appearance of a product which must necessarily

be reproduced in their exact form and dimensions

in order 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.’

• Art. 8(2) CDR

“Lego” exception

• no exclusion in case of modular systems

‘Notwithstanding paragraph 2, a Community

design shall under the conditions set out in Articles

5 and 6 subsist in a design serving the purpose of

allowing the multiple assembly or connection of

mutually interchangeable products within a

modular system.’

• Art. 8(3) CDR

Must-match features


‘Until such time as amendments to this Regulation

enter into force on a proposal from the

Commission on this subject, protection as a

Community design shall not exist for a design

which constitutes a component part of a complex

product used within the meaning of Article 19(1)

for the purpose of the repair of that complex

product so as to restore its original appearance.’

• Art. 110(1) CDR

Complex product

• defined in the legislation itself

‘…means a product which is composed of multiple

components which can be replaced permitting

disassembly and re-assembly of the product.’

• Art. 3(c) CDR

protection not only for the product as such but also for component parts…

Example

• market not liberalized in all Member States

• Art. 14 Designs Directive leaves room for maintaining traditional domestic rules

• Commission report recommended further liberalization already in 2004

• ongoing discussion, unresolved issue

• NOTE: Art. 110 CDR is no ground for invalidity in the sense of Art. 25 CDR

• spare parts can thus be registered even though they do not enjoy protection

Spare parts discussion

At least some liberalization

• specific requirements for component parts

• only novelty and individual character if

‘…once it has been incorporated into the complex

product, [the component part] remains visible

during normal use of the latter…’

• in this context, normal use

‘shall mean use by the end user, excluding

maintenance, servicing or repair work.’

• Art. 4(2) and (3) CDR

must-fit

interoperability

mechanical connections

must-match

repairability

restoring original appearance

Different conceptual contours

Interoperability

Repairability

safeguarding

competition

But same objective

Registration

national or regional route

OHIM: Community

Design

covering entire EU

territory

System of The Hague: international deposit

Different strategies

• acquisition of exclusive rights

• term of protection: 5 years

• four renewals possible

• maximum term: 25 years

• without registration: 3 years

• as from the date of first making available

to the public within the Community (Art.

11(1) CDR)

Result of registration

Scope of protection

Exclusive right

• registered Community design

‘…to use it and to prevent any third party not

having his consent from using it. The

aforementioned use shall cover, in particular, the

making, offering, putting on the market, importing,

exporting or using of a product in which the design

is incorporated or to which it is applied, or stocking

such a product for those purposes.’

• Art. 19(1) CDR

Scope of protection

• overall impression decisive

‘The scope of the protection conferred by a

Community design shall include any design which

does not produce on the informed user a different

overall impression .’

• Art. 10(1) CDR


• not necessarily direct comparison

‘…it cannot be ruled out that such a comparison

may be impracticable or uncommon in the sector

concerned, in particular because of specific

circumstances or the characteristics of the devices

which the designs at issue represent.’ (para. 55)

• in practice: court not bound to base its assessment on perfect recollection of all details

• acts done privately and for non-commercial

purposes

• acts done for experimental purposes

• acts of fair reproduction for the purpose of

making citations or of teaching

• ships and aircraft registered in a third

country when these temporarily enter the

territory of the Community

• exhaustion after first sale in the Community

Limitations (Arts. 20 and 21 CDR)

Cumulation of rights

TechnologyTrade

Culture

patent lawtrademark law

copyright

industrial designs

Overview

But also more grounds for invalidity

• Art. 25(1) CDR

• for instance: prior trademark rights

• CJEU 18 October 2012, cases C-101/11P and C-102/11P, Neuman / Baena Grupo

• in this case: no conflict found because of difference in face expression

The end. Thank you!

contact: [email protected]

Fundamentals of IP Law, HANKEN, September 2015 EU Industrial Designs Law: Overview Prof. Dr. Martin...

Documents

Transcript of Fundamentals of IP Law, HANKEN, September 2015 EU Industrial Designs Law: Overview Prof. Dr. Martin...