1. Professor: Marnie Brown Welcome

2. My email address is mlbrown@konkuk.ac.krmlbrown@konkuk.ac.kr

3. This course assumes that students have little or no background experience or knowledge of Intellectual Property Law. All class materials and instruction are in English. The grade for the course is based on a paper, a presentation and class performance/attendance. Paper - 30% Presentation in pairs 50% Class performance and attendance - 20%

4. This Week Designs – Registered Designs

5. Contemporary Intellectual Property (Law & Policy) The international background to the current law Unlike copyright law, with its long-established Berne convention, there is no international treaty setting out the minimum substantive content of protection for industrial designs. The Paris Convention does provide that ‘industrial designs shall be protected in all countries of the Union but leaves open how that protection is to be given. Thus designs may be protected through a registration system or not; or indeed through a combination of the two. The Berne Convention opened up the possibility of copyright protection for industrial designs, referring to works of applied art and to industrial designs and models; but this merely gave its members freedom to determine the application (or not) of their copyright laws to such works and to decide the term of ‘protection for ‘works of applied art in so far as they are artistic works’, subject to a minimum of 25 years from the making of the work.

6. The Berne Convention adds the following, however, ensuring that a distinction is drawn between copyright and design protection where systems for the latter exist: ‘Works protected in the country of origin solely as designs and models shall be entitled in another country of the Union only to such special protection as is granted in that country to designs and models; however, if no such special protection is granted in that country, such works shall be protected as artistic works’ Thus international law allows copyright protection for industrial designs, but tends to exclude it for foreigners in countries where special non-copyright rules exist.

7. Question: in what ways does international law allow designs to be protected?

8. Consistently with its general approach to industrial property protection based on registration (national treatment for non- nationals), the Paris Convention also requires its member states to allow foreigners access to national design registration systems, with an application in one Union country giving a priority in the others (that is, meaning that the applicant was to be treated as the first applicant in all Paris states and not just one in which the application happened to be made.) The Hague Agreement concerning the international Deposit of Industrial designs (1925, revised 1960) simply provided a means whereby a deposit in Geneva gave rise to protection in the Agreement’s member States, and contained no substantive provision on the content of design protection.

9. The Geneva Act a new act of the Hague Agreement enhances the international registration system by making it more compatible with the systems in countries where, as in the UK, applications are subject to examination before registration. Countries must process international registration according to their own legislation within a period of six months which may be extended by a further six months for those countries whose law requires examination. The Act also modifies the fee system, and gives the possibility of deferring publication of a design for up to 30 months as well as the ability to file samples of the design rather than photographs or other graphic reproductions.

10. In 1968 the Locarno Agreement Establishing an international Classification for industrial Designs (The Locarno Classification) was concluded. The classification currently consists of 32 classes and 223 sub-classes of design together with a list of over 6,800 kinds of goods incorporating industrial designs indicating into which class or sub-class they fall. The lists are updated every five years. The latest should have came into effect on 1 January 2010. Designs registries of the contracting states must include in the file for the deposit or registration of industrial designs the numbers of the classes and sub-classes of the Classification into which the goods incorporating the designs belong. The UK is one of the contracting parties, along with 42 other states.

11. TRIPS contains two Articles on design protection (Articles 25, 26). These deal with substantive maters of design law in a little more detail than previous instruments, and may be taken to reflect a degree of international consensus as to the minimum content of design law. States are to provide for the protection of independently created industrial designs that are new or original. They may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features. It may also be provided that protection is not to extend to designs dictated essentially by technical or functional considerations.

12. The costs and requirements for obtaining protection should not unreasonably impair the opportunity to seek or obtain such protection. Members are free to meet this last obligation through industrial design law or copyright. The owner of a protected industrial design must have the right to prevent unauthorised others making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes. There may be limited exceptions to design rights, so long as they do not unreasonably conflict with normal exploitation or unreasonably prejudice the legitimate interests of the owner. However this adoption of the Berne formula for restricting the scope of exceptions is qualified, because account must also be taken of the legitimate interests of third parties. Finally, the protection must be for at least 10 years.

13. Key Points on international framework of designs law The international framework of designs law has had, until relatively recently, very little substantive content Individual states have considerable discretion as to how to protect industrial designs Protection may be by means of copyright, although the Berne Convention then imposes some possible limits as to the term of protection Alternatively states may adopt a special system for the special protection of designs

14. Key Points on international framework of designs law There is no need for that system to be one of registration; but where a registration system exists non-nationals must be given access to it, and in general its costs and procedural requirements must not be such as to deter applicants TRIPS has increased the minimum content of designs protection, without limiting the options as to whether it is achieved through registration, a non-registration system, copyright or some combination of these.

15. The essence of the minimum content as found in TRIPS can be put like this: Designs to be new/original/independently created Designs dictated by technical/functional considerations do not have to be protected Exclusive right is to manufacture/sell/import commercially articles bearing/embodying the design Exceptions allowed if consistent with normal exploitation/do not prejudice owner’s legitimate interests Exceptions can take account of legitimate interests of third parties Duration at least 10 years (note also Berne minimum of 25 years for works of applied art in so far as works of art)

16. The low demands made of states by international law in the field of design protection led to very variable national protection, with each country tending to develop its own idiosyncratic system. However, the relatively recent achievement of the minimum standard set down in the TRIPS Agreement may be the first step towards a better harmonised global picture. EU system is also harmonised and offers protection for designs similar to that now found in each of the member states. Search the UK search the EU.

17. UK law: history Design law was invented in the UK and traces its origins back to Calico Printers Act 1789. That Act gave two months’ protection against imitation to persons producing ‘any new and original pattern…for printing linens, cottons, calicos and muslins’ At this stage there was no need for registration, and the focus was merely on the two dimensional and the textile industry. Fifty years later, however, inspired by a desire to improve the competitiveness of British Industry in general by the adoption of better and more effective product design, the scope of the 1787 Act was extended to include patterns on other forms of fabric (Copyright of Designs Act 1839)

18. At almost the same time another Act created the first register of designs, in which not only fabric patterns, but also the three-dimensional shape and configuration of any article of manufacture, could be registered for a period of protection lasting between one and three years In the 1840’s further statutes extended the range of designs that could be registered for protection, but also created a distinction between designs which were ornamental and those which were of utility.

19. As the law and practice developed through the remainder of the 19 th century and into the early years of the 20 th, however, the approach of allowing registration of both ornamental and utilitarian designs was reversed. In 1919 the patents and designs act provided that registration would be granted to new and original designs for the pattern, ornament, shape, and configuration of articles of manufacture if the designs were for features which in the finished article ‘appealed to and were judged solely by the eye’. The Act also excluded from the definition of design ‘any mode or principle construction, or anything which is in substance a mere mechanical device’ The utilitarian was therefore clearly on its way out of the scope of protection.

20. The routes to protecting a design Today a design can be protected in the UK by one, or more, of the following: The design right “unregistered designs” next class (CDPA 1988 ss 213-264) Registered designs (Registered Designs Act 1949) Copyright, often termed “artistic copyright” (CDPA 1988 s.51-53).

21. Registered Designs Act 1949 The process of excluding the utilitarian or functional design from registration was completed by the Registered Designs Act 1949, which recast the exclusion of the 1919 ACT so that features of the design ‘dictated solely by the function’ to be performed by the article to be made in that shape or configuration were not designs and were not registerable.

22. The result of UK developments in the 20 th century, therefore, was that to be registrable, industrial designs had to have ‘eye appeal’, while designs that were ‘functional’ were excluded from registration. The distinction thus made seems to cut across what product designers were coming to see as valuable in a design. Their view was increasingly that ornament, pattern and design not associated with function were to be abjured; the object of good design was to produce articles fit for purposes. Art and utility were not in conflict; art lay in finding the form and materials appropriate to the function the object was to perform. In the meantime however, designs legislation was laying increasing emphasis on protecting only the non-functional elements in a design.

23. Other important elements of the law under the Registered Designs Act 1949 were: The designs had to be new and original; The designs had to be applied industrially, meaning ‘applied to more than fifty articles’ Registration gave the owner of the design an exclusive right for up to three successive periods of five years from the date of registration. The exclusive right given by registration was to sell, make and import articles to which the design has been applied.

24. 1988 amendments to the Registered Designs Act 1949 The Copyright, Designs and Patents Act 1988 made several significant amendments to the Registered Designs Act 1949, with a view to making registration of designs more attractive to users. To be registrable a design still had to have eye appeal and not be functional. The Amp decision, that the eye in question was the eye of the customer, was reinforced by a further test for registration, namely whether the article to which the design was to be applied was one where appearance was not material. Appearance was not material ‘if aesthetic considerations are not normally taken into account to a material extent by persons acquiring or using articles of that description and would no be so taken into account if the design were to be applied to the article.

25. Key Points on historical development The UK has had a registration process for the legal protection of product designs for a very long time. For most of the 20 th century, the legislation sought to exclude purely functional designs from registration The period of protection was much shorter than copyright. The rights conferred by registration were essentially those of a commercial monopoly of the exploitation of the design; it was not necessary to show that an infringer had copied from the registered design.

26. The registered designs regime underwent substantial reform in December 2001 in order to implement the Directive on the Legal Protection of Designs. The directive is intended to harmonise the laws of the EU member states and it paves the way for further Community design harmonisation

27. Key points on EU developments The intervention of the EU in designs law came about to prevent differences in national laws creating an obstacle to the single European market by preventing the free movement of goods. There are two major European instruments: The 1998 Directive, harmonising the registered design laws of the EU member states The 2001 Regulation, setting up an EU wide register, but using the same rules as the Directive The result is that there are are EU wide and member state systems of registered designs running in parallel

28. Designs that can be protected by registration Before a product design can be registered, it must meet the following criteria: The design must fall within the definition of design given by the legislation The design must be new and have individual character; Features of the design’s appearance which are solely dictated by the product’s technical function cannot be protected by registration; Design rights do not subsist in designs contrary to public policy or to accepted principles of morality.

29. The first two features mentioned above are positive requirements – features that a design must have to be registered – while the other two or exclusionary in character – either the design should be refused registration or should not have been registered or, if a registered design consists in part of such features, the right conferred by registration does not extend to those features. It is important to note that the Registrar is effectively obliged to accept applications for registration unless the Act’s requirements are not met, or the applicant is not the owner of the design, or the application has otherwise not followed the correct procedures.

30. Definition of design 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 or materials of the product or its ornamentation’ The essence of this definition is that design is about the appearance of a product. The lawyer is at once led to two questions: What is a product? Does appearance mean that design is confined to what is visible in a product, and what does that mean”? Product is defined as: ‘any industrial handicraft item other than a computer program; and in particular includes packaging, get-up, graphic symbols, typographic typefaces and parts intended to be assembled into a complex product.

31. Key points on the meaning of product ‘Product’ extends to the two as well as the three dimensional. Product also includes items of handicraft This mean that these are issues about overlap with the subject matter of copyright, apart from computer programs, which are excluded from registration

32. Appearance Appearance is the second essential element in the definition of design. The old law’s rather absurd ‘eye appeal’ test has happily disappeared, while its ‘shape and configuration, pattern and ornament’ are either replaced or elaborated by the new law’s. The argument that ‘appearance’ concentrates on what can be seen and not at all upon what can be touched (or heard, smelled or tasted) may be supported by: The ordinary meaning of the word, not only in English but also in the versions found in the other language versions of the underlying Directive; Protection upon design features shown visibly in an application Focus on ‘the overall impression produced on an informed user viewing the design

33. The requirements of novelty and individual character The determination of whether a design has the required novelty and individual character for registration is made by way of a comparison with other designs that have been made available to the public before the date on which the application for the registration of the design was made. A design is new if “no identical design, or no design whose features differ only on immaterial details, has been made available to the public before the date of application” A design is novel where, at the application date, it could not have been known to commercial persons in the European Economic Area, specialising in the relevant sector. This is subject to a 12 month grace period

34. Important cases regarding novelty NY Inc v I-Feng Kao, OHIM Invalidity Division, 8 May 2006 Le May v Welch (1884) 28 Ch D 24 Re Vlisco BV’s Application [1980] RPC 509 Pitacs Ltd v Kamil Korhan Karagulle, OHIM Invalidity Division, 26 April 2006 Cook and Hurst’s Design Application [1979] RPC 197 Clarke v Julius Sax & Co Ltd [1896] 2 Ch 38 (CA)

35. Individual character In addition to novelty, a design must have individual character if “the overall impression it produces on the informed user differs from the overall impression it produces on the informed user differs from the overall impression produced on a user by an earlier design” In assessing whether the design has this quality, the degree of freedom of the designer in developing the design is to be taken into consideration.

36. Important cases regarding individual character Built NY Inc v I-Feng Kao. OHIM Invalidity Division, 8 May 2006 Rodi Commercial SA v Vuelta International sPa, OHIM Invalidity Division 20 December 2005 Aktiebolaget Design Rubens Sweden v Marie Ekman Backlund, OHIM Invalidity Division, 20 December 2005

37. What designs are ‘available to the public’? Assessing novelty and individual character is about comparing the design for which registration is sought with designs already available to the public (the state of the art, in patent terms). Designs are already available to the public if they have been previously: Published (whether or not registered) Exhibited Used in trade ( for example, design has already been applied to a product which is available in the commercial marketplace) Otherwise disclosed.

38. Key points on novelty, individual character, and previous disclosure to the public Previous design: (1) disclosed; (2) for more than 12 months (unless disclosure in confidence); (3) in such a way that it could reasonably be known about; (4) in the relevant industry/business/trade sector; (5) within the European economic area, and (6) later design lacks either or both novelty and individual character in relation to that previous design-application refused.

39. Exceptions/Exclusions to registration The main exceptions are as follows; (a) Component parts of a complex product that are not visible during normal use may not be registered. “Complex product” is defined as a “product composed of at least two replaceable parts permitting the dis-assembly and re-assembly of the product”. In effect, s.1b(8) provides that spare parts not visible during normal use (eg. Car engine parts) are not registrable, but those which are visible during normal use (e.g. car panels or bumpers) may be registered;

40. (b) Features that are solely dictated by technical function are not registrable. Purely functional designs are, therefore, not registrable; (c) “Must fit” designs are not registrable. This is a limited “must fit” provision, similar to, but not the same as that for the design right. In registered designs “features of shape that are required for 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” may not be registered. This exclusion does not extend to modular systems,, e.g. stacking chairs to Lego bricks (d) Designs contrary to public policy or the accepted principles of morality are not registrable

41. Functionality cases PB Cow v Cannon [1959] RPC 347 Bailey v Haynes [2006] EWPCC 5 Ampel 24 Vertriebs-GmbH & Co KG v Daka Research Inc, OHIM Invalidity Division, 1 December 2005 Public policy and morality case Masterman’s Design [1991] RPC 89

42. Key Points on designs capable of registration: Designs are the appearance of all or part of products (itself a concept of wide scope for these purposes) Such designs can gain legal protection against unauthorised commercial use by virtue of registration To be registered, a design must be different in detail and in general impression from previous product designs Features of the design’s appearance solely dictated by the product’s technical function are not protected by registration; but this is probably only a very limited exclusion Design rights do not subsist in designs contrary to public policy or to accepted principles of morality; but this too is not a very far-reaching exclusion from protection

43. Next Week – No class 19 th April 2010 Exams Following Week – 26 th April 2010- Registered Designs continued & Unregistered Designs