Fundamentals of IP Law, HANKEN, September 2015 EU Industrial Designs Law: Overview Prof. Dr. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague
Dec 31, 2015
Fundamentals of IP Law,HANKEN, September 2015
EU Industrial Designs Law: Overview
Prof. Dr. Martin SenftlebenVU 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
Examples
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
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
TechnologyTrade
Culture
patent lawtrademark 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
The end. Thank you!
contact: [email protected]