DESIGN AND EUROPEAN LAW Two texts - Firstly a directive 98/71 in order to create a convergence between national laws - secondly a european protection : the community design (Council regulation of 12 th december 2001

Why a directive ? The national laws were too different in order to create immediately a common protection Some countries had a cumulative protection (title with registration and protection by copyright without registration). This is due to lack of complete harmonisation This plural protection was under condition in Germany, or free as in France, In Germany plurality for aesthetic creation, but only registration for non aesthetic creation, such as a a salad-bowl In some countries no plurality but the only way of a registration : USA, Italy, spain, United Kingdom

The directive has established a cumulative protection (art 17) According copyright the creation, aesthetic or non aesthtic, has to fulfill the conditions of copyright, generally originality (subjective approach) According the registrated title the creation has to be new and reveal an individual character (objective approach) Art 5 « 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

Moreover a design right shall not subsist in features of appearance of a product which are solely dictated by its technical function. (art 9) A design right shall not subsist in a design which is contrary to public policy or to accepted principles of morality (art 8)

Term of protection shall be protected by a design right for one or more periods of five years from the date of filing of the application. The right holder may have the term of protection renewed for one or more periods of five years each, up to a total term of 25 years from the date of filing.(art 10)

Art 11 : Invalidity (main questions) If it is not new or has no individual character If there is a previous design protected by copyright in any country member of UE If there is a previous sign (for example a three- dimensional trademark) in any country member of UE

Rights conferred by the design right the exclusive right to use it and to prevent any third party not having his consent from using it. (art 12) Limitations of the right (art 13) (main examples) (a) acts done privately and for non-commercial purposes (b) acts done for experimental purposes; (c) acts of reproduction for the purposes of making citations or of teaching,

Article 15 Exhaustion of rights The rights conferred by a design right upon registration shall not extend to acts relating to a product in which a design included within the scope of protection of the design right is incorporated or to which it is applied, when the product has been put on the market in the Community by the holder of the design right or with his consent.

Remark 1 : nothing common regarding disputes and infringement Remark 2 : a design can be original and protected by copyright or, if not, protected by registration if it is new and reveals an individual character

The council regulation act of 12 december 2001 It creates two titles with european territory protection One with registration One without registration

The unregistered community design Why ? « 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” (whereas 14). How ? An automatical european protection without registration (as for copyright) if the design fulfill the conditions of protection such as a registrated design, The lawyer can juggle with the rules, He can choose between national copyright if the creation is original, or community unregistered design if it has a individual character

The unregistered community design In compensation the scope of protection is less important than for a registrated design Term is only three years, but for fashion for example, it is enough, because it is a seasonal activity The infringement is restricted. Similarities are not sufficient (this is logical because there was no disclosure by registration). It needs a copy

The registered community design Why ? To get a unified form of protection A better protection for industrial design To avoid a division of internal market and to prevent from distort competition in EU A registered Community design requires the creation and maintenance of a register in which will be registered all those applications which comply with formal conditions (and not substantial conditions) To get a single place for procedure of validity for community designs. This will prevent costs and time. For disputes and infringements to prevent forum shopping between the States

The registered community design Relations with other forms of protection under national law (art 96) The provisions of this Regulation shall be without prejudice to any provisions of Community law or of the law of the Member States concerned relating to unregistered designs, trade marks or other distinctive signs, or patents. So for a design you can have several protections. It was already the case for community trademark. Idem for protection by copyright in a national country

Owner of the title * The right to the Community design shall vest in the designer or his successor in title. The employer is a successor in title, This means also that the owner will be the employer and not the creator employee (art14). * This a difference with copyright in some countries * For a freelance he will be the owner excepted if the contract with the firm established that the owner will be the firm and not the designer

Owner of the title bis There is a presumption of ownership in favour of the registered holder of the design (art 17) If registered holder makes an abuse (for example an employee making a registration for his personal name) the person entitled to it under that provision may claim to become recognized as the legitimate holder of the design Moral right : right of the designer to be cited in the register.

Registration, substantial conditions Novelty (art 5). A design shall be considered to be new if no identical design has been made available to the public, even in a country non UE member OHIM Invalidity Division aff It is still new in case of disclosure during the 12-month period preceding the date of filing of the application. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality or if abuse (art 7). It won’t be new If there is a previous claim registration or a right of priority (registration in a State member of EU art 41). Right of priority is for 6 months after filing for a national or community design in a national office.

Individual character (art6). 1) It means something different 2) To measure it three factors are involved 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. The overall impression has to be appreciated on the design but also on the product CJEU 20th oct 2011, aff Pepsico On a user. This one can be a professional or a consumer, but in any case somebody familiar with the product The degree of freedom of the designer in developing the design shall be taken into consideration. For example for a salad-bowl this degree is small. So small differences in the shape can be sufficient. But if freedom is important the difference has to be more obvious.

Registration procedure As for trademark everybody can make a registration, without condition of nationality or housing Registration can be done, either in an national office which will transfer, either directly in OHIM in Alicante (art 35) A formal control of validity is made by the examiners (art25). The control is limited : existence of a design according the definition of art 3 Invalidity If there is a previous right such as a design, a trademark or other distinctive sign, a copyright, or an improper use, or a design contrary to public policy or morality

Registration procedure bis The applicant must join a representation of the design and indicate the products in which the design is intended to be incorporated (art 32) As for trademark the classification of the products concerned must be indicated Taxes are to be paid Use of an official language of the Union In case of need the examiner will ask for correction (art 46) Because there is no full control there is no possibility of opposition for the third paries, but only the way of invalidity procedure Office shall register the application in the Community design Register as a registered Community design. (art 48)

Registration procedure ter Some special articles for seasonal products such as fashion and toys Several designs may be combined in one multiple application for registered Community designs. But the disclosure is a in incitement to infringement. How to have a monopoly while keeping the designs secret ? The applicant for a registered Community design may request, when filing the application, that the publication of the registered Community design be deferred for a period of 30 months from the date of filing the application or, if a priority is claimed, from the date of priority (art50)

Term 5 years with renewal (taxes to be paid) possible from 5 to 5 to the maximum of 25 years (art13)

Effect : Monopoly (art 19) A registered Community design shall confer on its holder the exclusive right 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.

Limitations to monopoly (art20) acts done privately and for non-commercial purposes acts done for experimental purposes acts of reproduction for the purpose of making citations or of teaching Exhaustion of right (art 21)

Contracts upon the rights Transfer of the registered Community design (art28) License A registered Community design may be given as security or be the subject of rights in rem (given for guarantee). A registered Community design may be levied in execution (art30). Theses acts have to be registered (art28)

Litigations Invalidity A registered Community design shall be declared invalid on application to the Office (examiners or invalidity division) in accordance with the procedure… An appeal shall lie from decisions of the examiners, the Administration of Trade Marks and Designs and Legal Division and Invalidity Divisions. It shall have suspensive effect (art 55). The appeal shall be remitted to the Board of Appeal. Then there is an appeal before the CJ court of first instance and then before CJ Any third party who proves that proceedings for infringement of the same design have been instituted against him can argue for invalidity Such procedure doesn’t exist for un unregistered community design, The national courts will therefore be competent

Litigations Invalidity bis Mainly reasons of invalidity : prior right, lack of novelty or individual character, previous copyright, abuse of the applicant (art25) Effects : invalidity is retroactive but with exceptions (decision of infringement and effects of contracts concluded before the invalidity

Litigations Infringement * The national courts are competent, including for provisional measures * Each State has to designate a small number of courts specialized