Fundamentals of IP Law, HANKEN, September 2015 EU Industrial Designs Law: Overview Prof. Dr. Martin Senftleben VU 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) CJEU, 20 October 2011, case C-281/10P, PepsiCo/Mon Graphic

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

concept of ‘freedom of the designer’ ‘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.’ GCEU, 9 October 2011, Kwang Yang Motors/Honda

concept of ‘freedom of the designer’ ‘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.’ GCEU, 9 October 2011, Kwang Yang Motors/Honda

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 exclusion from protection ‘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 exclusion from protection ‘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

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

Technology Trade Culture patent law trademark 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

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