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Essay: The EU Intervention on design protection (draft)

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  • The EU Intervention on design protection (draft)
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With the ambition to give registered design right holder equivalent protection across the EU states, national registered design law has been effectively harmonised by directives . The EU intervention does not go beyond some other forms of design protection modified in CDPA 1988, i.e. the artistic copyright and UK UDR remain effective. In the UK, the RDA 1949 remains, as the legislation governing register design however, it subsists only as a shell. A unitary registered design right came into force in 2003 , as to prevent the impediment of free movement of goods that may potentially created due to the inconsistent protection conferred by the various national laws. The registered design law in the UK are almost entirely determined at the community level. It is for the national court to decide the validity of infringements. Different from copyright law, thereby the IP rights being harmonised at the highest community level, including a single term of copyright and harmonisation on most exclusive rights .

Hargreaves recognise the importance of harmonisation, he lobbied to strengthen design protection and to harmonise more IP rights in the UK, thus, incentivise innovation in the design industry . On the other hand, Cornish, Llewelyn and Aplin comment that the harmonisation take effect merely on registered design has left the general design law ‘hopelessly uncoordinated’, it is unwise to leave other forms of national cumulative protection, including national UDR remain untouched, while the rights create trade distortion in the single market. In other words, a designer may receive different level of protections throughout the EU community; mala fide third parties may take advantages of this loophole to create counterfeit items and selling them in some EU states, where design protection are weakened. Interestingly, those national cumulative rights may in fact be more reliable to designers. Trimmer and Parsons argue that unregistered design may be a better alternative for design protection in cases that involve registered design, as infringement on unregistered design are in times easier to be established .

In the case of Kohler Mira Ltd v Bristan Group Ltd , the court found infringement to UK UDRs based on knowledge, even though infringement was not proven itself. The case concerned of both registered and unregistered design rights subsisting in electric shower unit. The court accepted the evidence of an independent design process provided by a designer of Bristan (defendant). Although the designer himself had no knowledge of the claimant’s design, the senior members of Bristan know about the claimant’s design but failed to stop the production. Thus, it is enough to suffice the infringements to UK UDRs of Kohler. In relation to the RCDs, no infringement to be found, there are indeed some common features shared by the products, but not enough to create the same overall impression. The Kohler case is a prime example demonstrating how far the court is prepares to go to protect the UDRs, and more importantly, to reiterate and strengthen the value of this type of IP right to designers.

Registered design right and protection

The UK registered design and EU community registered design are the two-registered design rights enforceable in the UK. Registration should be filed within 12 months of the product being first marketed, with a term of protection up to 25 years, renewal is required in every five years. Design is defined in the regulation as ‘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’. It is the graphical identifications being protected, but not the idea behind the design. A design that serves purely technical or functional purposes may rather be protected under the short-term unregistered design scheme .

A registered design is valuable to the UK designers, giving them a monopoly right to exclude both the bona fide and mala fide third party from producing products that incorporated his registered design. Otherwise, the right owner may commence infringement proceeding; given the incorporation of design by a third party was for commercial purposes, non-teaching purposes or non-experimental purposes. There is a complete list of commercial activities that constitute infringements, these are making, offering, putting the infringing product on the market; imports, exports or using a product applying the design. Stocking of the products for any these purposes is also prohibited . Since the harmonisation of registered design, there are four cases about infringement of UK registered designs and community-registered designs have been heard in the Court of Appeal, yet no infringement is found by far. A recent Supreme Court judgement handed down in the high profile case of PMS international v Magmatic limited , raises the concern of the difficulty to enforce a registered design right in the UK, and to what extend the right of a designer is protected.

Informed User

The scope of the design protection covers all other designs that failed to create a different overall impression to the informed user . Definition of an informed user could be found in the case of Samsung Electronics (UK) Ltd v Apple Inc , who is a targeted purchaser carrying knowledge of the design corpus (neither a manufacturer nor a seller of the product ), meanwhile, he must be interested in the product itself, showing a high degree of attention when using the product. When accessing the scope of protection under art 10. It is necessary to consider the proximity of the registered design to the design corpus. Recital 14 of the design regulation provides that, a larger scope of protection available to a registered design that is markedly different from the design corpus, in contrast, a narrower scope of protection to designs having very little different to the design corpus. In Procter & Gamble Co v Reckitt Benckiser (UK) Ltd, Jacob LJ had explained the rationale behind the principle; a new design that is different form any design been made available in the market, creates a greater overall visual impact to those ‘kindred prior art’, so as to create a more significant overall impression, it is less likely the differences between the registered design and the infringing product are deemed to be creating a different overall impression. The infringements are therefore being easier to be sufficed.

The degree of freedom is also vital to the scope of protection. In Dyson Ltd v Vax Ltd , Arnold J states that the scope of protection is broadened when a designer has more degree of freedom, and a narrower scope of protection where there is a little room for new creation. These impediments to the freedom of design could be created by the technical function of the product, imposing specific criteria to the design. Hence, the more unique the registered design is compared to the subsisting products in the market, the greater the scope of protection is.

Relevance of the surface decoration

A major consideration in Magmatic was whether the surface decoration of the product is taken into account when deciding its overall impression. The Supreme Court refused to determine whether the absence of surface decoration was a feature of the Trunki registered design, even if it was the reason the appeal was permitted at the first place. Lord Neuberger decided to leave this issue open, as he thinks a decision of such will not be ‘of much assistance in other cases’ . The Trunki suitcase adopted no graphical designs on its surface. This kind of design had emerged and considered in the case of P&G and Samsung. In P&G, Jacob LJ held that the proper comparison should be made with the shape of the alleged infringement, and it is irrelevant to consider the graphics on the product . Whereas the Samsung case suggests the absence of ornamentation on the Apple registered design was an important feature, the trademark on the Samsung infringing product was taken into consideration. This is also considered in Kohler , the Counsel for Bristan argued their allegedly infringing shower unit created a different impression to the Kohler’s registered design, as it featured the trademark and the markings (indication) around the control, while the registered product designed to be free of ornamentation. Nevertheless, His Honour Judge Birss QC disregarded the markings when accessing overall impression, he believe ‘an informed user would expect markings of some kind on the front face even though they are not shown in the design’ .

In Magmatic, High Court judgement, Arnold J asserts the community registration design was ‘evidentially for the shape of the suitcase’ , so the surface decoration of the Kiddee suitcase was disregarded. This approach was rejected; the Supreme Court noted that the High Court judge has overlooked the distinctive horned animal impression of the community-registered design. The Court of Appeal added that the Trunki suitcase looks like a horned animal with a nose and a tail; these designs are adopted to interact with the shape of the suitcase, while its flanks and front adorned with no imagery. Therefore, the Court of Appeal held the community-registered design was ‘clearly intended to create the impression of a animal’ . Similar approach taken in Samsung, the surface decoration of the alleged infringing product was relevant to overall impression. The law on the absence of ornamentation developed significantly since the Samsung case, where Jacob LJ affirms that if the absence of ornamentation is ‘contended and undisputed’ as an important obdurate feature of a design, the surface decoration would not be considered by the informed user . This principle has been expanded in Magmatic, the current rule is, if the surface decoration on a registered design influence the overall impression created by the shape of the product, the surface decoration on the alleged infringement could be relevant.

Colour Contrast

The Supreme Court held it is not just the shape included by Magmatic’s CRD, but the shape in association with a particular tonal contrast, so the colour contrast adopted in the designs should be included in the comparison of overall impression. It is another factor that largely narrowed the scope of protection conferred by the registered design.

Novelty and individual character

The validity of a registered design is subject to conditions of novelty and individual character . Although the Magmatic’s CRD was found valid by the Supreme Court, the scope of protection

Judicial development of UK RD, with the intension to incentivise innovation

The creation of design law was to incentivize innovation . A number of statues enacted in the early 19th century intended to grant property right to mental labour, it is one of the most distinctive characteristics of modern intellectual property law. Calico Printer’s Act of 1787 is the first statue conferring explicit legal protection to design, as to encourage the arts of textile design and printing. Section 1 of the Calico Printer’s Act of 1787, provided every person ‘who shall invent, design, and print… any new and original Pattern or Patterns… for printing Linens, Cottons, Calicos, or Muslins’ with the right to produce the same design for the term of two months. Legal measures were adopted to induce a better legal environment, giving designers and innovator confidences to bring out more good designs, knowing that their IP right to the products are sufficiently protected. Kusamitsu explains that the scope of design protection can be varied in law to align with the social economic changes .

The determination to protect design right in the pre-modern IP law was the particular response to the industrial revolution. At the time of the revolution, the appearances of the British goods were deemed not as appealing as those produced else where, the one great rival was France. To tackle such divergence in trade, attentions were given not only to the implementation of new public policies, but also to the improvement of the legal regime. These public policy including the establishment of design schools to improve skills of UK designers, and the opening of a museum to improve standard taste of design. Unarguably, the old design law was not flawless. Bently and Sherman criticised the scope of protection in pre-modern IP law being too ‘subject specific’ and ‘reactive in nature’, leaving the scope of design protection in times unrealistically hard to control. The law was being too focused on individual rights, property rights were granted to ‘everyone who shall invent, design and print’ . O’Brien adds that the protections lay rather in the labour and production costs of the design , which is another characteristic of the old design law. Being compared to the pre-modern law, Bently and Sherman describe the modern IP law as being more ‘forward looking’. Such description could be contentious in the context of the current judicial development, it is questionable whether the fundamental purpose or values of design law (to incentivise innovation) is being forgotten or degraded.

In the modern society, mental labour are highly valued, design form the largest contribution to overall intangible investment in the UK economy, contributing over 1.5 per cent of Gross Domestic Product (GDP) . Hargreaves has warned the government about the economic importance of UK designs, suggesting a stronger legal protection is required to enable the design industry to grow at a healthy rate. The main argument that emerges from Magmatic is whether the ruling has failed to protect British innovator. Dids Macdonald, the CEO of Anti Copying In Design, describe the Magmatic judgement as ‘a sad day of design’ and a distortion ‘plunging design law into an abyss’ . Ashby argued that the Supreme Court has missed the opportunity to seek guidance from the CJEU for the proper interpretation regarding the absence of surface decoration in Magmatic, leaving the matter in mysteries, thereby creating more uncertainties to the scope of design protection. Compare the recent judicial development in design law to the ‘luxuriant jungle of design rights’ available in the past, it is highly worrying that this tendency being further continued. The consequences of deprivation of design protection could be disastrous.

Public accessibility

Exhibition is a way to pay attribute to good design works, the Victoria and Albert Museum was first opened in the nineteenth century, exhibiting outstanding designs to the general public, with a view to improve standard taste of design in Britain . Yet, there are potential risks that the imitator could take advantages from the exposure of designs. A design copier may incorporate the design ideas that he picked up in the exhibition, more importantly, under the current legal regime, the original designer’s right to acquire a registered designs in the EU may be jeopardised. Although the 12 months of “grace period” will then be triggered, the original designer will be prevented from registering a design, once the copyist releases the rival product in the EU market. At least, even if the copyist had registered the rival products he produced, it will hardly be recognised as a valid registered design. The only person or party that entitled to register for a design is the original designer himself, given that he was not commissioned and paid for the design work , or working under an employment contract. Otherwise the commissioner or the company thereby is able to register for the design. According to the rule set out in Woodhouse UK v Architectural Lighting , when deciding the validity of a registered design right, the mental elements should not be taken into account, even though the person genuinely have no knowledge about the original design, his registration can not be valid. Therefore, the registered design of the copyist cannot be valid; he has no entitlement to all the protection conferred by the registered design right, which should instead be enjoyed by the original designer.

Public display is not the only challenge that UK designers are encountering. In the digital world, the pioneer technologies like 3D printing skills have further threatened designs being counterfeited

Price…

• Scared SMEs….

Impact of Brexit

Conclusion

Magmatic v PMS has reveal that the scope of protection conferred by registered design is not inevitably commensurate to the inventiveness.
The modern designer and innovator confront challenges

Note3

Scope of protection

The scope of protection of a registered design is now more settled and refined.

In order to cease the ‘luxuriant jungle of design rights’ , the UK registered design partly substituted the artistic copyright that emerged in the 1960s to 1980s, The CDPA 1988 being used to curtail the intrusion of artistic copyright into the industrial design, by constraining protection to 3D objects which themselves could be copyright work, including sculptures and works of artistic craftsmanship.

Extended the duration of protection from 15 to 25 years

The modern design law is rather ‘abstract and forward looking’ .

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10.1.2017

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