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INTRODUCTION

Design law is governed by:

DESIGN RIGHT

- Definition: A property right which subsists in an original design ( c.213(1) Copyright, Designs and
Patents Act 1988);
- S.213(2) – ‘design’= ‘the design of any aspect of the shape or configuration (whether internal or
external) of the whole or part of an article’.
- ‘article’ not defined;
- Requirements for a design right to apply to a shape or configuration:
 automatic, does not require registration BUT some form of tangible expression (recorded in a
design document)
 design must be ‘original’; more stringent test that copyright – design is not original if it is
commonplace in the design field in question at the time of its creation.
 Qualification requirements must be satisfied in one of three ways:
o By reference to the designer; or
o If design is created under a commission of in course of employment, by reference to
commissioner or employer; and
o By reference to person by whom and country in which articled made to the design
are first marked.
- Design right applies to any aspect of shape or configuration of the whole or part of article NOT to
article itself;
- Exceptions – prevent right from becoming too strong or disadvantage to consumers requiring spare
parts;
 Surface decoration – lies within scope of Community design and UK registered design;
- No equivalent right before 1988 in UK.
COMMUNITY DESIGN, THE UK REGISTERED DESI GN AND THE UK UNREGI STERED DESIGN
UK UNREGISTERED DESI GN AND COPYRIGHT
- Most often described as applying to functional designs;
- Design law may overlap with copyright protection – to reduce overlap -> Copyright, Design and
Patents Act 1988:
 Ss 236 – where a work consisting of or including a design, in which the unregistered design
right subsists is protected by copyright, the design right is suppressed in favour of the
copyright -> copyright and design right are mutually exclusive!
s236 Infringement of copyright.
Where copyright subsists in a work which consists of or includes a design in which design right subsists, it is not
an infringement of design right in the design to do anything which is an infringement of the copyright in that
work.
 Ss 51(1) – cancel out possibility of indirect copyright infringement by copying article
embodying the design;
o BBC Worldwide Ltd v Pally Screen Printing Ltd – making a copy of garments worn by
Teletubbies indirectly through medium of television fell with s.51 defence; purpose
of s.51 is to deny copyright protection to ‘ordinary functional commercial articles’
o Mackie designs Inc. v Berhinger Specialised Studio Equipment Ltd – defence under
s.51 available even if def made net list of components and interconnections in
claimant’s electrical mixer by reverse analysis.
s. 51 Design documents and models.
(1) It is not an infringement of any copyright in a design document or model recording or embodying a design
for anything other than an artistic work or a typeface to make an article to the design or to copy an article
made to the design.
(2) Nor is it an infringement of the copyright to issue to the public, or include in a film [F121or communicate to
the public], anything the making of which was, by virtue of subsection (1), not an infringement of that
copyright.
(3) In this section— “design” means the design of any aspect of the shape or configuration (whether internal or
external) of the whole or part of an article, other than surface decoration; and “design document” means any
record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a
computer or otherwise.
s.226 Primary infringement of design right.
(1) The owner of design right in a design has the exclusive right to reproduce the design for commercial
purposes—
(a) by making articles to that design, or
(b) by making a design document recording the design for the purpose of enabling such articles to be
made.
(2) Reproduction of a design by making articles to the design means copying the design so as to produce
articles exactly or substantially to that design, and references in this Part to making articles to a design shall be
construed accordingly.
(3) Design right is infringed by a person who without the licence of the design right owner does, or authorises
another to do, anything which by virtue of this section is the exclusive right of the design right owner.
(4) For the purposes of this section reproduction may be direct or indirect, and it is immaterial whether any
intervening acts themselves infringe the design right.

(5) This section has effect subject to the provisions of Chapter III (exceptions to rights of design right owner).




COMMUNITY DESIGN
It is not a requirement that designs have an aesthetic quality, though there are exceptions: a technical
function and a ‘must-fit’ exception. Furthermore, registration is denied to ‘under the bonnet’ parts
of complex products nor normally visible during use because design is defined in terms of
appearance.
There is a 12-month period of grace where the owner can test the design to see if it is worth
registering it, without compromising its novelty or individual character. The design is protected by
the unregistered right up to three years from the date of publication.
Registered Community design (RCD) is administered by the Office for the Harmonisation of the Internal
Market (Trade Marks and Designs) (OHIM). There have been no cases before the European Court of
Justice concerning Community Design, yet.
REQUIREMENTS FOR PROTECTION (RCD AND UCD)
The basic requirements for registered and unregistered are the same.
 Must fall within meaning of ‘design’ (for which the meanings of ‘product’ and/or ‘complex
product’ are also relevant);
Art.3 CDR:
(a) "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.
(b) "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;
(c) "complex product" means a product which is composed of multiple components which can be
replaced permitting disassembly and re-assembly of the product

 Must be new and have individual character (Art.4):
o New – no identical design has been made available to the public; available to the
public if part of prior art (across all areas); disclosure to a third party under express or implied
obligation of confidence does not count;
o Identical – if features differ only in immaterial details:
Crown Confectionary Co Ltd’s Design – design of pretzel-shaped biscuits held to be
invalid as it did not differ from well-known shape of pretzels except in immaterial details.
o Individual character (Art.6) – if ‘overall impression which it produces on the
informed user differs from the overall impression produces on such a use by any design which has been
made available to the public’.
 Informed user – someone familiar with basic features of products in question, who
will take into account any limitations on the freedom of the designer; more attention to similarities of
non-necessary features and dissimilarity of necessary ones; aware of prior art (Invalidity Division,
OHIM);
 Procter & Gamble v Reckitt Benckiser – RCD for air freshener spray; CA held:
informed use was not the average consumer of trade mark law; what matters is what stuck in mind
when looking at the design, not after – limited role of imperfect recollection; informed user would also
acknowledge limited design freedom.
o Individual character – degree of freedom of design must be taken into account;
If the design is part of a product which is a part of a complex product, it will be protected only if it
remains visible in normal use and the visible features are new and have individual character. ‘Normal
use’ excluded maintenance, servicing and repair.
EXCLUSION FROM THE COMMUNITY DESIGN – ART.8
Features of appearance dictated solely by technical function BUT other features may be protectable:
 3M Innovative Properties Co’s Designs – Invalidity Division held: informed user would
concentrate on features not dictated by technical function in determining existence of
individual character.
 Interlego AG v Tygo Industries - UK courts approach: only if all features are dictated by
function can result on exclusion of design on that basis.
 Landor & Hawa International Ltd v Azure Designs Ltd – technical function exception very
narrow; applies only if that design and no other could perform the function in question;
Art.8(2) provides for a ‘must-fit’ exclusion where features have to be reproduced identically to fit
another product so that either can perform its function.
 Features of mechanical connections where two products abut each other;
 Equivalent to exception of UK unregistered design;
 E.g. pins in an electrical plug, runners on a drawer, screw, push-fit and other connections
 Does not apply to features of a product designed to fit the human hand e.g. computer
mouse or tool handles, or brake levers on a bycicle.
 Exception: modular fittings – Unilin Beheer NV v Berry Floor NV: snap-fit connection allowing
assembly of flooring units; mechanical fittings of modular products ‘constitute an important
element of the innovative characteristics of modular products and present a major
marketing asset’
Art. 9 prohibits the presence of Community design in a design which is contrary to public policy or to
accepted principles of morality.
 No further guidance;
 Likely to shift over time.
DURATION
RCD lasts initially for 5 years from the date of filing the application to register the design: art.12 CDR.
Registration may be renewed for further 5-year periods up to a maximum of 25 years.
UCDR lasts for 3 years form the date the design was first made available to the public within the
Community.

ENTITLEMENT TO A COMMUNITY DESIGN
A Community right vests in the designer or his successor in title (art.14(1)). If a design is developed
by an employee in the execution of his duties or following instructions given by his employer, the
Community design vests automatically in the employer, unless otherwise agreed or specified under
national law (art.14(3)).
No provision for entitlement of designs where the person commissioned is not an
employee of the commissioner cf. UKRD position where person commissioning
development of design for money or money’s worth will be entitled to be the proprietor of
it (s. 2(1A) Registered Designs Act 1949). Therefore, the person entitled to be the owner
under Community law could be different from the person entitled to be the proprietor of a UKRD.
UK courts would probably find a beneficial ownership of Community design or an implied licence on
his behalf.
Fundacion Espanola para la Innovacion de la Artesania v Cul de Sac Espacio Creativo – ECJ confirmed
that, without specific assignment of right to Community design created under a commission, the
person commissioning the creation of the design will not be entitled to it; ‘employee’ cannot be
interpreted to include a person creating a design under a commission; vital that express contractual
provision is made as to the rights in commissioned designs.
Noah v Shuba – previous conduct could form basis of implied agreement that employee was entitled
to the Community design.
Challenges can be made under Art.14 in respect of UCD or RCD, but no later than 3 years from the
date was publication of an RCD or, in the case of UCD, from the date it was disclosed to the public.
However, time limit does not apply where a person not entitled to the design is acting in bad faith.
The Community design is declared to have a unitary character, so the RCD and UCD have to be
vested in the same person. However, what would happen if a designer assigns the UCD and then,
later, applies for the RCD in his own name? What would the court do if the designer claims he
intended the assignee to have rights only until the time the UCD expired?
DEALING WITH THE COMMUNITY DESIGN
A Community design right is an object of property to be dealt with in its entirely (unitary character)
and for the whole area of the Community as a national design right
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(art.27). The relevant Member
State is that in which on the relevant date:
a. The holder has his sear/domicile; or
b. In other cases, the holder has an establishment.
Otherwise, the relevant Member State is that in which the OHIM is situated, presently Spain.
The forms of dealing with Community design are:
 Assignment (referred to as transfer in CDR) – requires proof of transfer i.e. signed by both
the rightholder and successor in title; successor in title may not invoke rights until transfer is
entered on the register;
 Licensing – whole or part of the Community; exclusive or non-exclusive; formalities left to
national law: English law – should be made with full title guarantee to take advantage of
implied covenants under Law of Property (Miscellaneous Provisions) Act 1994.
 An RCD may be given as security or subject to rights in rem and may be levied in execution.
RIGHTS AND INFRINGEMENT
If unregistered, the right is limited to prevent the infringing acts only if they result from copying the
protected design. Independent creation does not infringe. Burden of proof lies with infringer to
prove that he was no familiar with the design (cf. test with copyright).
Infringing acts: not having the rightholder’s consent in making, offering, putting on the market,
importing, exporting or using a product in which the design is incorporated or to which it is applied
or stocking a product for these purposes (non-exhaustive list) – includes any design which does not
produce on the informed user a different overall impression (art.10(1)); design freedom is taken into
account (art.10(2)).
Procter & Gamble – CA held: in relation to infringement, the notional informed user is taken to be
familiar with the ‘existing design corpus’ (as in the case of registrability); Jacob LJ on the statutory
test for infringement: identify overall impression produced by registered design BUT do not descend
to a too general level of generality; appropriate level is that of informed user.
LIMITATIONS AND DEFENCES
The rights in Community design are not infringed by:

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Subject to CDR provisions.
 Acts done privately or for non-commercial purposes;
 Acts done for experimental purposes;
 Acts of reproduction for the purposed of making citations or teaching if they are compatible
with fair trade practice, do not unduly prejudice the normal exploitation of the design and
mention is made of the source.

UK REGISTERED DESIGN
Registered Designs, patents, and trade marks are all registrable under statutory schemes; protection
is lost if the relevant right is not registered, or the registration is not maintained. As for Registered
Designs, the U.K. system has recently been radically amended in order to harmonise design
protection throughout Europe.
Advantages of registration
 indicates the identity of the owner;
 the design attracts protection as soon as it is registered;
 quick and relatively inexpensive method of protecting a design;
 the public has access to the register for purposes of inspection monopoly right.
Disadvantages
 time required, expense, procedure;
 protection is lost if renewal payments are not made.
DIRECTIVE 98/71/EC
Aimed at harmonising, in particular, those aspects of registered designs that could otherwise affect
trade between Member States – level playing field in terms of registrability and exceptions.
Controversial: allowed Member States to continue to protect ‘must-match’ spare parts (e.g.
replacement panels for vehicles).
This directive amended the Registered Designs Act 1949, through the Registered Design Regulations
(SI 2001/3949). This came into force in December 2001.
The overall intention is fourfold:
1. to harmonise national systems
2. to create an EU-wide system of registered design protection
3. to create a new short-term (3-years) Community unregistered design right
4. to co-exist with existing national design protection
REQUIREMENTS FOR REGISTRABILITY
Follow those of the Community design:
 the design comes within the definition of ‘design’;
 the design is new;
 the design has individual character;
 the right is not excluded under the provisions relating to technical function or because it is
contrary to public policy or morality;
 registration is refused because the design involves the use of certain emblems etc.
Since the Regulatory Reform (Registered Designs) Order 2006, applications to register designs are no
longer examined for novelty and individual character.
MEANING OF ‘DESI GN’
Under the Registered Designs Act 1949:
s. 1(2): ―”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.‘ (non-exhaustive list)
 focus: features perceived by the human senses, e.g., sight, tactility, weight, and flexibility
 intended to establish a fully modern design protection system adapted to the reality of
design activities and to the need of the users of the system‘. (Commission Explanatory
Memorandum, OJ 1993 C345/14).
 colours and materials are not protectable per se (choice of colour or material can add to a
design).
s. 1(3): ―”Product” means any industrial or handicraft item other than a computer program; and, in
particular, includes packaging, get-up, graphic symbols, typographic type-faces and parts intended to
be assembled into a complex product.‘
 “Complex product” means a product which is composed of at least two replaceable
component parts permitting disassembly and reassembly of the product.‘
Although there is no express requirement for eye appeal or aesthetic quality it is clear that
appearance is an important requirement (reinforced in definition of ‘individual character’)
REQUIREMENT THAT THE DESIGN IS ‘NEW’ AND HAS ‘INDIVIDUAL CHARACTER’ (S. 1B)
(1) A design shall be protected by a right in a registered design to the extent that the design is new
and has individual character.
(2) For the purposes of subsection (1) above, a design is new if no identical design or no design whose
features differ only in immaterial details has been made available to the public before the relevant
date.
(3) For the purposes of subsection (1) above, a design has individual character 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 before the relevant date.
 ‘made available to the public’: s. 1B(5) and (6) RDA 1949
s.1B(5):. . . a design has been made available to the public before the relevant date if
(a) it has been published (whether following registration or otherwise), exhibited, used in
trade or otherwise disclosed before that date‘
Permissible disclosures s.1B(6): disclosure under the conditions of confidentiality (whether or
express or implied)
 disclosure made as a consequence of an abuse in relation to the designer (eg employee
publishes the design), subject to the limitation that disclosure was made during the 12
months preceding the priority date;
 disclosure by the designer or by a third party ‘in consequence of information provided or
other action taken by the designer or any successor in title‘, during the 12 months preceding
the priority date. This provision provides a grace period which enables the designer to
market test the product before embarking on the process and expense of registration. It also
covers the situation where the designer authorises a third party to manufacture the product
according to the design for the purposes of market testing.
 ‘relevant date’, see s. 1B(7) - means the date on which the application for the registration of
the design was made; ie date of filing.
NOVELTY
Laddie J in Household Articled Ltd’s Registered Design:
‘…if all the differences between the prior art and the design in suit are immaterial or common trade
variants then the design in suit is deemed not to be novel. Immaterial details are features which
make no significant visual impact on the design.’
Objective test – novelty should be judged through the eyes of the ordinary customer for, or trader
in, the relevant goods.
Prior art – Design that has been ‘made available to the public‘ (see above) – no geographical or time
limits BUT - some disclosures are ignored and will not affect prior art - there are excluded disclosures
(s.1B(6))
INDIVIDUAL CHARACTER
S 1B (3): ‘…the overall impression it produces on the informed user differs from the overall impression
on such a user by any design which has been made available to the public before the relevant date’


Who is the ‘informed user’?
 Proctor & Gamble v Reckitt Benckiser *2008+ ECDR 4 ‘for the purposes of registrability the
notional informed user is to be taken as aware of other similar designs which form part of
the ―design corpus ‘. per Jacob LJ, at para 17
 Open to design issues and will be fairly familiar with them
 ‘Informed user alert to design issues‘ – aware of constraints on design freedom and will take
this into account when assessing overall impression of the design.

 ‘overall impression‘ must be assessed;
 the designer‘s degree of freedom is important (e.g., see ss. 1B(4), and 1C)
 the nature of the product to which the design is applied/ incorporated, and the industrial
sector to which it belongs, are taken into consideration.
 Proctor & Gamble v Reckitt Benckiser [2008] ECDR 4
‘Only if the ‘overall impression’ ‘clearly differs’  from that of the ‘existing design corpus’  will the
design have an ‘individual character’ .
In this context, Jacob LJ explained that ‘clearly differs‘ indicates the need for ‘clear blue water’
between the registered design and the ‘prior art’ , otherwise there is a real risk that design
monopolies will or may interfere with routine, ordinary, minor, everyday design modifications.
(At para 19)
EXCLUSION FROM REGISTRATION
Designs dictated by technical function – s 1C(1). Features of appearance of a product solely dictated by
the product’s technical function; does not prevent registration of a design which includes such
features; only applied to exclude a design which was the only design by which a product could
perform its function; applies in very limited circumstances
Must-fit exceptions. A right in a registered design shall not subsist in features of appearance of a
product which must necessarily be reproduced in their exact form and dimensions so as 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‘.
Designs contrary to public policy or morality (s. 1D RDA 1949). Masterman’s Design
[1991] RPC 89 – Highlander doll wearing a sporran which, when lifted revealed its genitalia.
Registration (on appeal) was permitted.
‘whether the design is of such a nature that its use would offend moral principles of right-thinking
members of the public, such that it would be wrong for the law to protect it‘ (per Aldous J.)