Design Principles Flashcards
(37 cards)
What types of protection can one obtain for design and which rights fall under such protection?
Monopoly-based rights
- UKRD
- RCD
Copyright-based rights.
- UKUDR
- URCD
Which design rights protect shape (3D) and which protect decoration (2D)?
Shape and Decoration
- UKRD
- RCD
- URCD
Shape Only
- UKUDR
How long does the term of protection last for UKRD, UKUDR, RCD and URCDs?
UKRD = 25 years
UKUDR = 10-15 years
RCD = 25 years
URCD = 3 years
What additional class of rights comes under UKUDR and what’s so special about it?
Semiconductor Topography rights. They are the allowed to be purely functional!
UKUDR begins where ‘what’ ends?
Copyright.
CDPA 51 defines the upper limit of copyrights at the copyright/design boundary and CDPA 213 defined the lower limit of UKUDR from the boundary.
What does ‘configuration’ refer to in CDPA 213(2)? Are there any limits to this?
Configuration = The relative arrangement of an article’s elements. [Mackie Designs v Behringer]
The relative arrangement of colours does not constitute configuration, however. [Lambretta v Teddy Smith]
What is a ‘design document’?
A design document is any record of a design, whether by drawing, written description, photograph, data, ort otherwise.
What criteria might a document meet in order to be considered a ‘design document’?
At the material time, it must have been intended to form the basis for making the article.
However, this remains contraversial
How has CDPA 213(2) changed over time and what have been the implications?
CDPA 213(2) used to define a design as ‘any aspect of’ a design or configuration, external or internal, in whole or in part.
‘any aspect of’ has now been removed.
The impact of the removal was discussed in DKH Retail v H Young and Whitby Specialist Vehicles v Yorshire Specialist Vehicles. In these cases they discussed distinguishing the ‘merely recognisable’ features from the ‘concrete’ parts of the design. Ultimately, the change meant abstract designs were removed from protection under UKUDR, as noted in Action Storage v G-Force.
What do we mean by ‘surface decoration’?
- Neptune v Devol Kitchens*: Surface decorations includes surface features
- Lambretta v Teddy Smith*: Surface decoration includes decoration that runs through the article
- Dyson v Qualtex: Surface decoration *does not include functional deatures.
What bit of caselaw relates to CDPA 213(3)(a)?
CDPA 213(3)(a) tells us that design right does not subsist in methods/prinicples of construction.
The most relevant caselaw is Bailey v Haynes which was about a mesh bag that could only be produced by a particular knitting pattern. UKUDR protection of such a design would monopolise on a method of construction, but just like the idea/expression copyright dichotomy we need clarity and boundaries.
The second most relevant caselaw is Magmatic v PMS, who were able to use multiple UKUDRs to protect internal features, but the external shape of the case was rejected on the grounds that it would confer protection to a method/principle of construction.
Discuss the reasoning behind CDPA 213(3)(b)(i)
CDPA 213(3)(b)(i) says that any features of a shape or configuration of an article that serves a functional purpose, that is to enable it to connect with, be place in, around or against, another article such that either article can perform its function cannot be conferred a design right.
This is commonly referred to as the ‘must fit’ criteria
One effect of this is to ensure that spare parts can be made for designs that are protected as a whole without such spares constituting design right infringement. Relevant caselaw is Dyson v Qualtex, where the courts clarify that any intention for an interface fit excludes design rights.
Discuss the reasoning behind CDPA 231(3)(b)(ii)
CDPA 231(3)(b)(ii) says that design rights do not subsist in features of a shape or configuration that are dependent on the appearance of another article for which it is intended to be an integral part of.
This is commonly referred to as the ‘must match’ criteria.
The effect is to exclude spares, which do not neccessarily include fitting interfaces but do need to match the overaching design, from design right protection. In Dyson v Qualtex, the courts concluded that one would have to consider whether the appearance of the overarching article would look radically different if the spare part did not match in shape.
How is originality assesed in accordance with CDPA 213(1)?
Originality used to follow the EW court’s approach to copyright originality, requiring labour, skill and/or judgement. This was how the Bailey v Haynes method of construction bait bag desgn was assessed. However, in light of the EU’s approach to copyright originality there has been some differences in approach to originality of UKUDRs. In Whitby Specialist Vehicles v Yorkshire Specialist Vehicles, they applied the AOIC test, however in Action Storage v G-Force, the courts felt that the use of the UK or EU test was still to be determined and might yet yield the same result.
In addition, minor incremental changes to a design do not make the overarching design wholly original again (Neptune v Devol Kitchen).
Finally, orginality does not require novelty, which has not place in UKUDR.
How does one assess whether or not a design is common place?
Prior to October 2014, commonplaceness was only judged by the UK. It now extends to qualifying countries, as per CDPA 213(4).
In Farmers Build v Carrier Bulk, the courts provided a method for determining commonplaceness.
- Compare it with other articles in the same field at the date of creation.
- Compare each aspect of the similarities and differences with other aticles in the field.
- Be careful to filter out similarities due to direct copying or functional design constraints.
What do we mean by ‘design field’ as in CDPA 213(4)?
A design field includes fields in which the type of design would be familiar.
See Lambretta v Teddy Smith
What are the advantages to holding parallel registered and unregistered design rights?
UKUDR has no novelty requirement, only a ‘not commonplace’ requirement. Therefore a parallel UKUDR may serve to sustain protection in a design that would lack the novelty and individual character requirements for a registered design.
How may a design qualify for UKUDR protection?
CDPA 231(5) says by reference to:
- the designer
- an employer
- the circumstances of 1st marketing
Qualifying person = an individual habitually resident in a qualifying country or a legal body formed under law of a qualifying country OR has a place of business that carries out substantial business activity in a qualifying country.
Qualifying country = UK, EU and former British colonies.
Not Qualifying Countries = USA, CN, KR, JP
How long does a UKUDR confer protection for?
Either 10 years from 1st sale, or 15 years from first recordal in a design document or manufacture. Measured from the end of the calendar year
However, in the last 5 years anyone can apply for a licence of right, where royalties are determined based on what the willing parties would have agreed to.
Do UKUDRs have any compulsory licensing provisions?
Yes, in the last 5 years of the term of protection, anyone can apply for a licence of right.
It’s possible to get a licence earlier than this if:
(a) conditions in licences restricting the proprieter from granting licences or restricting the use of the design.
(b) the proprietor refuses licences with reasonable terms.
Does infringement of UKUDRs depend on the defendant’s knowledge?
Yes.
If the defendent can prove the did primary infringement but didn’t have reason to believe UKUDR subsisted, then damages are not available, other remedies are.
In the case of secondary infringement, if the defendant can show they acquired the design document innocently, remedies are not available, only royalties are.
However if the infringer has just been a total cocky bastard then damages, bitch, damages.
What is the definition of a design for UKUDRs and for UKRDs/CRDs/CURDs?
UKUDR: A design is any shape or configuration, internal or external, of the whole or part of article
UKRD/CRD/CURD: A design is the appearance of a whole or part of a product resulting from the features: lines, contours, shape, texture, materials, ornamentation
‘Appearance’ means external visual quality. If a design relates to a part that will not be visible in normal use, it can’t get RD protection. ‘Product’ means artificially produced.
What provisions are there for ensuring UKRDs and CRDs don’t ovelap with patent protection or unfairly limit the spare parts market?
RDA 1C states that a design right shall not subsist in a design solely dictated by technical function.
[New:Doceram, Old:Amp v Utilix, Phillips v Remington]
CDR 10: Tech innovation shouldn’t be hampered by granting design protection to features dictated soley by a technical function.
There are a number of tests for whether a design is purely functional and it’s all very controversial:
‘Multiciplicity of forms’ test
If there are 2 or more ways to make something, it’s not purely functional and can be protection. [Philips v Remington] [CJEU disapprove]
‘Zero design freedom’ test
Assess design freedom available to the designer (similar to multiplicity of forms) [Asstec v Blech]
‘Designer’s intention’ test
Dictacted by function if the design was attributable to functional needs, irrespective of how many shapes were available [Amp v Utilix UK]
‘Purchaser’s impression’ test
A design which serves functional requirements may also be appealing to the eye, even if the later was not the designer’s intention [Amp v Utilix UK]
‘Reasonable observer’ test
Would the reasonable ovserver see the design and perceive it to be anything other than purely functional? [Lindner Recycling, Samsung v Apple]
Is there an originality requirement for UKUDRs and UKRDs?
UKUDRs: There’s a requirement that the design isn’t common place in the field, in the qualifying country at the time of creation. There is no novelty requirement.
UKRDs: A design must be ‘new’ and have ‘individual character’
Novelty
- ‘New’ means there is no identical design or no design with immaterial differences available to the public before the relevant date.
- Comparing one available design at a time, no mosaicking [Karen Millen v Dunnes].
- Any design may anticipate the design in suit, even across fields [Green Lanes v PMS]
Individual Character
Assess the overall impression on the informed user, the infromed user knowing the design corpus and degree of freedom.
The Informed user is:
- aware of existing desgins but doesn’t remember everything, like the PSA in patents.
- more discriminating that the average consumer
- less susceptible to imperfect recollection
- alert to design issues.
according to Proctor & Gamble v. Reckitt Benckiser
