The Design/Copyright Overlap: Is there a Resolution?

Sam Ricketson1 and Uma Suthersanen2

Introduction

Designs laws, and discussions about designs laws, have become fashionable in recent
years, particularly in the European Union and my own country, Australia. So, the
question of “what is the future of design law” is both a challenging and interesting one.
As a first step, however, some discussion of terminology is necessary.

The meaning of “design”

This is not an easy term to define: there is both a broad (lay) meaning and a more
technical (legal) meaning. The broad meaning takes in many activities, ranging from
“industrial design, urban planning, graphic design and stage design through to costume
design, fashion design, product design and packaging design”. 3 [To incorporate Locarno
classification as well]

An expert Australian committee that reported in the early 1990s had this to say about the
function of design in the Australian economy:

3.3 Well designed products are of substantial economic importance to Australia.

The tradeable manufacturing industries, which include the production of major
appliances, cars and trucks, industrial manufacturing, office furniture and
components of all kinds, can compete in both domestic and export markets, either
by having lower unit costs based on technological or other factors, or by creating
a superiority or uniqueness of product quality, allowing them to demand premium
prices. Adequate protection for designs must be given to provide an incentive to
invest in the time and skill which gives rise to better product design.

1
Professor of Law, University of Melbourne, Victoria, Australia, and Barrister, Victoria.
2
Professor of International Intellectual Property Law, Queen Mary, University of London.
3
L Bently and B Sherman, Intellectual Property Law, Oxford, University Press, 2001, p 563.

1
 3.4 The design spectrum embraces a wide range of activity which has grown with
the developments in mechanically-based production technology. Because this
transition from the artist-craftsman of the late 19th century to the industrial
designer of today was a slow process, there exists much misunderstanding as to
what ‘design’ is and where it fits within the intellectual property system. The
difficulty in reaching any understanding of these issues today is that the legal
concepts applied in the protection of designs, and the work of the artist-craftsman
(‘works of artistic craftsmanship’) have their origins in the middle to late 19th
century when the design was seen essentially as the ‘artistic’ component of a
useful product.

3.6 The interest of the industrial designer is primarily in the relationship between
the product and the user, and his or her work embodies such considerations as
ergonomics, safety and convenience, as well as visual and expressive values. The
skills embodied within the practice of industrial design frequently overlap those
of related disciplines, not only architecture and graphic design, but also
engineering design. On some projects it is almost impossible to distinguish
between the work of the industrial designers and that of the engineering designers.
This blurring of the lines of demarcation and overlapping of design skills is a
significant factor in the development of design practice. In another sense, the
design spectrum spans a range of design factors from aesthetics to ergonomics, to
mechanics and electronics.4

At this broad level, “design” covers both the way things work and are made, as well as
the way they look and feel. Legally, however, the term is more limited, at least so far as
the application of a specific title of protection is concerned. Thus, “workings” and
mechanical matters have usually been left to the province of the patent system (if they are
to be protected at all), with sui generis design laws being confined to just matters of

4
Quoted in the Report of the Inquiry into Intellectual Property Protection for Industrial Designs, Report to
the Senator the Hon John Button, Minister for Industry, Technology and Commerce, September 1991, p 23,
par 3.2 (the “Lahore Committee”).

2
appearance. Historically, this division was well reflected in the definition of “design” that
was originally adopted in the Registered Designs Act 1949 (UK):

‘…“design” means features of shape, configuration, pattern or ornament applied

to an article by any industrial process or means, being features which in the
finished article appeal to and are judged solely by the eye, but does not include a
method or principle of construction or features of shape or configuration which
are dictated solely by the function which the article to be made in that shape or
configuration has to perform.

But matters of “appearance” give rise to further questions as to the appropriate form of
protection to be applied. Copyright law has long given protection to appearance in the
case of artistic works which can exist in both two and three dimensions; there is also the
possibility of appearance (get-up and shape) fulfilling the function of indicating source or
origin, matters more generally governed by the laws of trade marks and passing off or
unfair competition. Sui generis designs laws, therefore, sit somewhat uneasily between
these larger and more traditional heads of protection. Aesthetics, consumer appeal,
functionality and source are all potential components of any separate design system, and
national laws have often had difficulty in deciding which elements belong, and, if so, to
what degree they should be recognised, in such laws. It is unsurprising to find that this is
an area of law in which many national variations are to be found, with limited uniformity
across borders. Particular issues on which differences arise include:

1. The extent to which aesthetics should play a role;

2. The corresponding question as the role, if any, of functional considerations;

3. Whether there should be differing levels of protection, depending upon the

resolution of the roles of aesthetics and functionality respectively; and, most
importantly

4. the way in which overlaps with other forms of protection (copyright, patents,
trade marks) are to be handled.

The last of these is, perhaps, the most difficult question of all: should cumulative
protection be allowed, or should clear areas of operation be defined and applied (with the

3
possibility of loss of protection where limits are exceeded)? National (and regional) laws
excel in their disparate approaches: from the UK with five separate regimes (copyright,
registered and unregistered design, national and EC) protecting designs5 to Australia,
which attempts to place a partial boundary between two regimes (copyright and
registered designs), with other countries such as New Zealand allowing cumulative
protection where it arises under both copyright and sui generis designs law.

Complexity, therefore, is a feature of this part of intellectual property law. A starting

point, therefore, is to investigate the guidance on these matters that is to be gained from
the relevant international conventions. In chronological order, the following instruments
fall to be considered:

1. The Berne Convention for the Protection of Literary and Artistic Works 1886 (but
really only from 1908)

2. The Paris Convention for the Protection of Industrial Property 1883 (but really
only from 1958)

3. The Agreement on Trade-Related Intellectual Property Rights 1994.

Berne Convention

The Berne Convention, as we all know, is concerned with the protection of works of
“authorship”. These works must fall within the “literary, scientific and artistic domain”,
as revealed by the following definition of “literary and artistic works” in art 2(1):

(1) The expression “literary and artistic works” shall include every production in the literary, scientific and
artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other
writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical
works; choreographic works and entertainments in dumb show; musical compositions with or without words;
cinematographic works to which are assimilated works expressed by a process analogous to cinematography;
works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which
are assimilated works expressed by a process analogous to photography; works of applied art; illustrations,
maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or
science.

Of this inclusive list, the underlined sub-category of “works of applied art” is most
relevant for our present purposes. This entered the list at the time of the Brussels revision
of the Convention that occurred in 1948, but the question of whether “works of art

5
M Howe, Russell-Clarke and Howe on Industrial Designs, Thomson Sweet & Maxwell, London, 7th ed
2005, p 1.

4
applied to industrial purposes” should be included within the scope of the Convention
had been a matter of some contention at the two preceding revisions conferences in
Berlin (1908) and in Rome (1928).6

This issue arose in two ways: the extent to which authors’ rights in their artistic works
should be protected where these works were used for industrial purposes, and the related
issue of the extent to which objects made by ordinary industrial processes for purely
utilitarian purposes should be protected as artistic works, insofar as they embodied
artistic elements such as features of design and shape. Instances of the first occurred
where works of ‘pure’ art, such as drawings, paintings or sculptures, were applied to, or
incorporated in, utilitarian objects, such as wallpaper, curtains, cutlery, crockery or the
base of a lamp. Examples of the second included such everyday objects as furniture,
electrical fittings and motor parts which might still display some ‘artistic’ element in their
general shape or appearance. These are not absolutely opposed situations, although it is
true that in the first instance the ‘pure’ work of art precedes the industrial application,
while in the second the artistic element is found in the industrial application itself. Rather,
they represent the extreme poles of a vast continuum of articles or products in which
artistic and industrial elements intermingle in differing degrees. In each instance,
however, the problem is the same: should the fact that art is applied in the production of
objects which also serve a utilitarian purpose deprive the maker of the status of author,
and consequently of the legal protection that is otherwise accorded to authors?

Prior to the Berne Convention, various approaches to this question were to be seen at the
national level. Many accorded some kind of limited protection to designs which were
applied to articles, the earliest examples being found both in the UK7 and France8 in
relation to textiles and other materials. This protection was usually distinct from
copyright, and was closer to an industrial property right such as a patent. Novelty and/or

6
For a detailed examination of this history, see S Ricketson and J Ginsburg, International Copyright and
Neighbouring Rights: The Berne Convention and Beyond, Oxford University Press, 2006, pars 8.59 and
following.
7
The Designing and Printing of Linens Act 1787 (27 Geo 3, c 38); the Designing and Printing of Linens
Act 1794 (Geo 3, c 23); the Designs Copyright Act 1839 (2 & 3 Vict c 17).
8
French Law of 1806 (Bulletin des Lois, 4th ser, IV, 352, 354). For the background to this law, see G
Finniss, ‘The Theory of “Unity of Art” and the Protection of Designs and Models in French Law’ (1964) 46
JPOS 615, 516 (‘Finniss’).

5
some element of originality were usually required, and the duration of protection was
generally for a more limited term.9 At the same time, it seemed anomalous that many
applications of artistic works in the industrial sphere should be denied copyright
protection where they quite obviously displayed artistic elements. Thus, in France, the
view came increasingly to be held during the course of the nineteenth century that the
makers of such objects were entitled to copyright protection under the Law of 1793, and
likewise that an artist did not lose the protection which he enjoyed in relation to his ‘pure’
work simply by reason of the fact that it was turned to an industrial use, for instance, by
using it as a design for a utilitarian object. In other words, there occurred a total
assimilation of all works of art, however they were manifested or applied, to full
copyright protection.10 So far as the separate designs laws were concerned, these
continued to exist, but the possibility of cumulative protection under these as well as the
copyright law was accepted. While this development did not occur overnight, it became
recongised as the doctrine of ‘unity of art’, which has been explained by one
distinguished commentator as follows:

‘The theory of “unity of art” has its basis in the refusal to make any distinction between “pure art” and
“industrial art”. It extends protection insured by the copyright law to all creations of form, even the most
modest, those which, on the “lower” frontier of applied art, depend on what is called “industrial aesthetics”.
If finds its explanation—and, we think, its justification—in the idea that an adequate distinction is impossible
between “major art” and “minor art”, all criteria to which one may have recourse to this effect being subject
to the accusation of subjectivity or being powerless, in other ways, to solve the borderline cases.’ 11

While this may be thought to be an extreme view in its all-embracing nature, 12 it had the
virtue of being logical and avoiding the manifold difficulties that arise when an attempt is

9
See, for example, the Designs Copyright Act 1839 (UK), s 1, under which it was required that the design
be ‘new and original’, and protection was accorded for only 12 months.
10
See Finniss, 616ff. See further J H Reichman, ‘Design Protection in Domestic and Foreign Copyright
Law: From the Berne Revision of 1948 to the Copyright Act of 1976’ [1983] Duke Law Journal 1143,
1153ff (‘Reichman I’); Y Gaubiac, ‘La théorie de l’unité de l’art’ (1982) 111 Revue internationale du Droit
d’auteur 2, 42ff (‘Gaubiac’); K M Mott, ‘Analysis of the “unity of art” concept in European legal systems’
(1964) 11 Bull Cop Soc USA 242, 243ff (‘Mott’). See further, S P Ladas, Patents, Trademarks and Related
Rights: National and International Protection (1975) (‘Ladas’), 827ff; M A Perot-Morel, Les Principes de
Protection des Dessins et Modèles Droit d’auteurs les Pays de Marché Commun (1968), 15ff; Desbois,
112ff.
11
Finniss, 615. The chief theorist was Eugène Pouillet: see E Pouillet, Traité Théorique et Pratique de
Propriété Littéraire et Artistique et du Droit de Représentation (2nd ed, 1894) and Traité Théorique et
Pratique des Dessins et Modèles (5th ed, 1911).
12
Reichman I, 1159ff.

6
made to fix a boundary beyond which works of industrial art will not be protected. 13 At
the other end of the spectrum, however. was the UK which maintained a far more rigid
separation between artistic and industrial endeavours, and which, in the Copyright Act
1911, denied copyright protection altogether in the case of an artistic work which was
‘industrially applied’ (defined to mean the multiplication of more than 50 objects to
which the work was applied).14 At the same time, UK law after that date did accord an
unprecedented form of artistic copyright protection to three-dimensional objects which
came within the undefined and somewhat uncertain sub-category of ‘works of artistic
craftsmanship’.15 The latter was problematic in that, among all the other sub-categories of
artistic work protected by the 1911 Act, it was the only one to be qualified by the express
requirement that it be “artistic”.16

From the above, it will be seen that, in the early years of the Berne Convention, there
were great differences in the approaches taken by member countries to the question of
protection of artistic works in the industrial sphere. Accordingly, the question was not
discussed at the early conferences of the Berne Convention, and was not raised until the
time of the Berlin Revision. At this Conference, the German Administration and the
International Office proposed the inclusion of ‘works ... of art applied to industry’
(‘oeuvres ... d’art appliqué à l’industrie’) in the enumeration of works in article 4(1) (the
predecessor to art 2(1)), arguing in support that these works had recently been assimilated
to artistic works in some important countries, and that:

‘... the artificial boundaries established between pure art and art used in everyday life can no longer be
maintained, neither from a doctrinal point of view nor from that of practical necessity.’ 17

13
This was the case in some other European countries, including Italy and Germany, where their respective
laws sought to exclude the more ‘industrial’ kinds of work from protection: see the commentaries on these
laws in [1909] Droit d’auteur 114 and 128.
14
Copyright Act 1911, s 22(1), and Design Rules 1932, r 92. As to the position before the 1911 Act, see the
commentary in [1909] Droit d’auteur 125ff and Laddie, Prescott and Vitoria, The Modern Law of
Copyright and Designs (2d ed. 2000) 175ff.
15
Copyright Act 1911, s 35(1).
16
Copyright Act 1911, s 35(1): “artistic work” includes works of painting, drawing, sculpture and artistic
craftsmanship, and architectural works of art and engravings and photographs”. The absence of any need of
artistic quality is even clearer in successors to this definition, such as in s 10(1) of the Copyright Act 1968
where all sub-categories of artistic work, except for works of artistic craftsmanship, are protected whether
“…of artistic quality or not”.
17
Actes de la Conference de Berlin 1908, International Office, Berne, 1909, p 42.

7
This proposal was supplemented by a French proposition to add the words ‘whatever
their merit or purpose’ immediately after the words ‘works ... of art applied to industry’. 18
Nevertheless, while there was strong support for these proposals from a number of
delegations,19 there was ‘irreducible opposition’ on the part of certain others, in particular
the English and Swiss.20 No amendment was therefore made to article 4 (now article 2(1)
in the Berlin Act), but works of art applied industrially were dealt with in a separate
paragraph (article 2(4)) which provided simply for the application of national treatment,
without any requirement of reciprocity, in the following terms:

‘Works of art applied to industry are protected to the extent permitted by the internal legislation of each
country.’

There were obvious imbalances in this provision, as authors of artistic works from ‘unity
of art’ Berne countries would be denied protection in ‘non-unity of art’ countries, while
authors from the latter would receive, in the former, the benefit of protection which they
did not enjoy in their own countries of origin. On the other hand, it met the objections of
the British and Swiss delegations, and so far as the former was concerned left the UK
‘free to determine if they [works of art applied industrially] should be protected as works
of art or as industrial designs and models’. 21 Furthermore, as an accommodation of two
directly opposed points of view, it commanded fairly general acceptance: only two
countries (France and Tunisia) felt strongly enough about this lack of reciprocity to make
reservations in relation to this when ratifying the Berlin Act. 22 The effect of these
reservations was that both countries declared, in accordance with article 27 of that Act,
that they would continue to apply article 4 of the Berne Act in place of article 2(4) of the
Berlin Act so far as works of art applied to industry were concerned. As article 4 had
made no mention of these works in the list of literary and artistic works, both France and

18
Ibid, 188.
19
Actes de la Conference reunie a Rome du 7 mai au 2 juin 1928, International Office, Berne, 1929 (‘Actes
1928’), pp 231, 233 (report of Renault, rapporteur). See further the commentary in [1909] DROIT
D’AUTEUR 113, 114.
20
Ibid, pp 233.
21
These were the comments made by the British delegates to the Conference (G R Askwith and J de Salis)
in their report to the Foreign Secretary, Sir Edward Grey: see Miscellaneous No 2 (1909), Correspondence
respecting the Revised Convention of Berne for the Protection of Literary and Artistic Works, signed at
Berlin, November 13, 1908, C -4467, HMSO, London 1900,,p 8.
22
[1910] Droit d’auteur 115 (France); [1911] Droit d’auteur 29 (Tunisia).

8
Tunisia were therefore under no obligation to extend the benefit of their generous ‘unity
of art’ laws to artistic works from other Union countries.

The ‘unity of art’ advocates, however, returned to the fray at the Rome Conference with
proposals in the programme for the Conference prepared by the Italian Government and
the International Office of the Berne Union to accord full protection under the
Convention to ‘works of art industrially applied’. These involved the deletion of article
2(4), the inclusion of these works in the enumeration in article 2(1), and the amendment
of article 2(3) so as to read: ‘The above mentioned works enjoy protection in all countries
of the Union whatever their merit or purpose.’ 23 While there was strong support for these
proposals from a number of delegations, 24
there was still opposition or hesitations from
others, leading to various compromise proposals which sought to take account of these
conflicting views.25 A sub-committee which was appointed to consider the matter failed
to reach a firm proposal,26 and, finally, although a reasonably equitable compromise

proposal based on reciprocity (to be known as article 2 ter)27 was worked out in
negotiations between the French, British and Norwegian delegations, this also failed to

23
Actes 1928, pp 65, 67.

24
In particular, the French, Danish, Polish, Czech, German, Austrian and Belgian delegations, Actes 1928
227 (summary of proposals and discussions).
25
In particular, the French objection to the lack of reciprocity under the Berlin provision and the British
insistence that, if works of applied art were to be protected, the definition of these works should be left to
national legislation: see generally Actes 1928, 227–228.
26
Actes 1928, 190. See further Ladas, 249.

27
This read as follows:
‘Works of art applied industrially are to be protected to the extent permitted by the internal
legislation of each country. Nevertheless, it is reserved to the legislation of the country where
protection is claimed to determine the conditions under which protection is to be accorded to these
works. But the countries of the Union are not obliged to accord to these works a longer period of
protection than they enjoy in their country of origin. And these works will only be protected by the
present article if they are protected without formality by the law of their country of origin.’
See Actes 1928, p 229, and for the views of one of the participants in this exercise, see Raestad, La
Convention de Berne révisée à Rome 1928 ..., Editions internationals, Paris, 1931, p 140.

9
achieve consensus.28 As amendments to the Convention required unanimity, 29 the result
was that the Rome Revision made no changes to the Convention text with respect to
works of applied art, and the position under the Berlin Act therefore continued. In
particular, France, which was frustrated by the fiasco of these proceedings, declared that
it would maintain its reservation under the Berlin Act, inviting other Union countries to
enter into a restricted Union with it on the basis of reciprocity in relation to industrially
applied works of art.30

The failure of the Rome Revision Conference to achieve anything as regards these kinds
of works is a useful illustration of both the strengths and weaknesses of the Berne
Convention, with its requirement of unanimity for the purposes of amendment. 31 At the
same time, it was clear that the time was not yet ripe for the adoption of even a
compromise proposal, as there were still fundamental divisions between member
countries as to how works of applied art should be treated.

This question was finally revisited, and with more success, at the Brussels Revision
Conference in 1948, which saw the adoption of the provisions which continue in
substance today under the Stockholm, Paris Acts. In their programme proposals, the
International Office and Belgian Government, 32 repeated those that had been originally
put to the Berlin and Rome Conferences for the inclusion of ‘works of art applied to
industry’ in article 2(1), the deletion of article 2(4), and its replacement by a general
paragraph providing that the works mentioned in the article should be protected in all

28
According to the records of the Conference, these countries were Italy and Japan: ibid, 287. However, it
appears that Australia was also prepared to apply its veto, but withdrew this after being convinced that the
proposed art 2ter did not threaten the established system under Australian law, which was very similar to
that of the UK: International Copyright Conference, Rome, May and June 1928. Report of the Australian
Delegate (Sir W Harrison Moore) (1928). It appears also that the veto by Italy and Japan caused some
animosity on the part of other delegations, such as that of France: Actes 1928, 288 (Maillard).
29
This was contained in article 24 of the Berlin Act of the Convention, but remains under art 27(3) of the
Stockholm/Paris Acts, with the exception of amendments to the administrative and financial provisions of
arts 22-26 (which can be made by ¾ of the Berne Assembly).
30
Ibid, 288–289 (Maillard).

31
See note above.
32
Documents 1948, 141–144.

10
countries of the Union ‘whatever their merit or purpose’. 33 Once again, this proposal
received the predictable support of the French,34 but as in 1928 it failed to secure
unanimous support35 from countries such as Italy 36 and the UK37 which were reluctant to
adopt such a provision if its effect was to remove or reduce the capacity of national law
to define the notion of a work of applied art. 38 These countries also argued that account
should be taken of the views of those countries which were opposed to the possibility of
cumulative protection for works of applied art under copyright and registered designs
laws.39 In this regard, however, the French delegation insisted on the need for reciprocity
in relation to the conditions, extent, nature and duration of protection. 40 Following
consideration by a special sub-committee, the following amendments were proposed and
approved by the Conference:41

1. ‘Works of applied art’ were added to the enumeration in article 2(1) after
‘photographic works and those produced by process analogous to photography’.
The reference to ‘industry’ was deleted following an objection by the British

33
Ibid, 146–147.

34
Ibid, 148.

35
Ibid, 158.

36
In 1941, the Italian Government had enacted a new copyright law under which artistic works were
protected even where they were industrially applied, but this was subject to the condition that the ‘artistic
value’ of the objects thus produced could be distinguished from their ‘industrial character: Italian Law of
22 April 1941, art 2(4). See further Reichman I, 200; Ladas, Patents ..., op cit, 842, and V de Sanctis,
‘Lettre d’Italie’ [1956] Droit d’auteur 127ff.
37
The Copyright Act 1911 still remained in force in the UK, and its provisions concerning industrial
applications of artistic works were replicated in many Commonwealth countries, for example, in the
Australian Copyright Act 1912, which simply adopted the UK Act.
38
Documents 1948, 158.

39
Ibid, see also 122 (report of sub-committee on applied works of art).

40
Ibid, 158–159.

41
Ibid, 159.

11
 delegation that this was restrictive, as it was possible to envisage the application
of artistic works in domains other than industry.42

2. Article 2(4) of the Berlin and Rome Acts was replaced by the following paragraph
(which now became article 2(5)):

‘It shall be a matter for legislation in the countries of the Union to determine the extent of the
application of their laws to works of applied art and industrial designs and models, as well as the
conditions under which such works, designs and models shall be protected. Works protected in the
country of origin solely as designs and models shall be entitled in other countries of the Union only
to such protection as shall be accorded to designs and models in such countries.’ 43

Apart from renumbering (art 2(5) is now art 2(7) – see further below), this provision
remains substantially the same in the Stockholm/Paris Acts. On the one hand, works of
applied art had finally attained promotion to ‘list status’ as literary and artistic works in
article 2(1). On the other hand, it was left to member countries to determine the extent to
which such works would be protected under their laws on copyright or their laws on
industrial designs and models. This reservation was in turn subject to a condition of
reciprocity: where one member country only protected a particular work of applied art as
a design or model, the author of that work would only be entitled to receive, in other
countries of the Union, the protection that the laws of those countries accorded to designs
and models. This removed the principal French objection to article 2(4) of the Berlin and
Rome Acts, and enabled that country to withdraw its reservation in relation to that
provision. The result of this was that works of applied art of Union authors would now be
entitled to full copyright protection in France, as long as their protection in their country
of origin was not restricted to that available under special designs or models laws. The
reciprocity allowed under this paragraph only came into operation where the sole
protection for a work of applied art in its country of origin was under designs or models
legislation. If country A (the country of origin) accorded both copyright and designs
protection to such works, country B (the country where protection was claimed) could not
restrict the protection available to that work under its laws. In other words, if country B
also accorded cumulative protection, it could not limit the foreign work to designs
protection, but would have to grant full copyright protection.

42
Ibid, 158.

43
Brussels Act, art 2(5).

12
On the other hand, the new provision had a significant gap, in that there was no
stipulation as to what was to happen where a work of applied art was only entitled to
designs or model protection in country A, but there was no equivalent protection
available in country B, eg because country B had no designs legislation, 44 or because the
work in question did not qualify for such protection for such reasons as lack of novelty,
failure to register in time, and so on. In these situations, the implication to be drawn from
article 2(5) was that these works were not entitled to any protection in country B. Another
problem arose where the definition of what was an applied artistic work was not to be
found in national legislation, but was determined on a case-by-case basis by national
tribunals. If the jurisprudence of country A took a more restrictive view than the
jurisprudence of country B, could courts in country B limit the protection available to
works emanating from country A accordingly? In other words, did article 2(5) allow for
the application of reciprocity at this level? The answer to this seems to be that a
restriction of this kind could not be made for the following reason: member countries
were obliged to protect works of applied art under article 2(1), but it was left to each to
determine the extent to which their copyright and designs laws applied to such works.
However, it was only where copyright protection was excluded in country A by reason of
the sole application of designs legislation that copyright protection in country B could be
refused. Accordingly, if the only restriction of protection in country A was to be found in
the jurisprudence of that country, the courts in country B were not entitled to adopt a
corresponding reduction in protection.45

As stated above, apart from renumbering, art 2(5) of the Brussels Act was essentially
retained in the same form by the Stockholm and Paris Revision Conferences, and the only
programme proposals concerning applied works of art related to the duration of their
protection, providing that this was to be a minimum of 25 years from their making (see
now article 7(4)), and a consequential amendment to article 2(5) that made it subject to

44
This was the case in the Netherlands, which had no specific designs legislation until 1975; see generally,
H Cohen Jehoram ‘Specific Design Protection in Benelux and Dutch Law’ in Cohen Jehoram (ed) Design
Protection (1976), 21; Cohen Jehoram, ‘Designs Laws in Continental Europe and their Relation to
Copyright’ [1981] EIPR 235, 237; J H Reichman, ‘Designs Protection after the Copyright Act 1976: A
Comparative View of the Emerging Interim Models’ (1984) 31 Jo Cop Soc USA 267, 289 (‘Reichman II’).
45
See further, ‘Sur l’interpretation de l’article 2, alinéa 5, de la Convention de Berne revisée à Bruxelles’
[1951] Droit d’auteur 111, 112–114.

13
this provision.46 A far more radical proposition by Denmark47 for the deletion of article
2(5) altogether (leading to the consequence that it would henceforth be obligatory for
member states to protect applied works of art without qualification) was ultimately
defeated,48 and the only other change made to article 2(5) came from an Italian
proposition to fill the gap referred to above as regards works which enjoyed industrial
designs protection only in their country of origin and therefore had no protection in those
Union countries which did not have industrial designs laws. 49 Accordingly, the last
sentence of article 2(5) (which now became article 2(7)) was reworded as follows:

‘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 protection is granted in that country, such works shall be protected as artistic works.’ 50

This now permits an imbalance in protection to arise as between different countries of the
Berne Union. For example, an artistic work which is registered as an industrial design in
country A which has non-cumulative designs protection will be entitled to full copyright
protection in country B which has no special designs law. However, while there was a
significant likelihood of this situation arising immediately after the Stockholm Revision,
this likelihood has steadily diminished with the adoption in recent years of special
designs laws by the great majority of Union countries (whether these are exclusive of, or
cumulative with, artistic copyright protection). 51 The real problem under the present
Berne text is that, in the case of countries where convention obligations are capable of
direct application, it may become necessary for the courts of such countries to satisfy
themselves as to the applicable law in the country of origin of the applied artistic work
for which protection under the Convention is now claimed. This is always a difficult
46
Records of the Intellectual Property Conference of Stockholm, June 11 to July 14, 1967, WIPO, Geneva,

1971 (‘Records 1967’), Vol I, p 88 (Doc S/1).

47
Records 1967, 696 (Doc S/99).

48
Records 1967, 897.

49
Records 1967 (Doc S/161, Vol I, 702).

50
See further Records 1967, 1152 (Report of Main Committee I).

51
See generally Reichman II, and Ladas, 844ff.

14
process, and one that is avoided where the principle of national treatment is adopted in an
unqualified fashion.

It will be clear from the above that attempts to bring industrial designs and models under
the umbrella of full artistic copyright protection under the Berne Convention really came
to an end with the Brussels Revision Conference of 1948. From this time on, more
emphasis has come to be placed on the provision of separate, sui generis protection for
these works through laws on industrial models and designs. 52 At the risk of over-
generalisation, it is now possible to discern the following three broad national approaches
to the protection of works of applied art that are consistent with the Berne Convention:

1. Cumulative protection of works of applied art under both artistic copyright

and designs laws: Under this approach, if designs protection is unavailable
(for example, because of lack of novelty, prior user, etc) or is not obtained, the
artist can fall back on copyright protection. Perhaps the leading example of
this approach is to be found in France under the ‘unity of art’ doctrine.
Significantly, though, Berne (article 7(4)) now permits a limitation of the term
of protection to 25 years from making.

2. Partial cumulative protection: under this approach, cumulative protection

may be accorded, but not for all works of applied art. 53
Thus, national
copyright laws may provide that if an industrial design or model is to receive
copyright protection it must display some additional quality, for example, it
must manifest some ‘marked artistic character’ (as under the Benelux Law) 54
or ‘artistic character’ simpliciter (as under the UK and Australian concept of a
work of artistic craftsmanship) or fulfil the requirements necessary for an
artistic work (as under German Law). 55 At the Community level, cumulative
design and copyright protection, whether total or partial, is now expressly
52
Ibid.

53
This seems to be the minimum required by the EC Designs Directive. While Article 17 of the Directive
and Article 96(2) of the Regulation require Member States to adopt a policy of cumulation of copyright,
they leave it to Member States to determine 'the extent to which, and the conditions under which, such
protection is conferred, including the level of originality required.'
54
Uniform Benelux Designs Law 1975, art 21(1) and (2). See further Cohen Jehoram (ed), Design
Protection, Reports at an International Symposium Held in Amsterdam, May 20-21, 1975, 21ff.

15
 provided in art 96(2) of the 2001 Regulation, which specifies further that “The
extent to which, and the conditions under which, such protection is conferred,
including the level of originality required, shall be determined by each
Member State.”56 The fact that the Regulation and other national laws
recognise the possibility of cumulative protection to some degree is an
acknowledgement of the ‘vagueness of the frontier between designs and
works of art’.57

3. Non-cumulative protection: This approach seeks to distinguish more precisely

between artistic works ‘properly speaking’ and industrial designs, clearly
excluding or restricting copyright protection in the case of the latter. The
criteria for drawing this distinction vary considerably; for example, in
Australia, copyright protection is essentially limited in relation to three-
dimensional applications to products once an artistic work has been registered
as an industrial design or the work is industrially applied, 58 while in the U.S.,
the design elements of a ‘useful article’ are protected by copyright ‘only if,
and only to the extent that, such design incorporates pictorial, graphic or
sculptural features that can be identified separately from, and are capable of
existing independently of, the utilitarian aspects of the article.’59

There are, of course, a multitude of variations within each approach, but for present
purposes it suffices to note that each is compatible with the parameters set by the
compromise formula established under the Brussels and Stockholm/Paris Acts of Berne..
Otherwise, however, Berne remains silent on the subject of designs laws and what such

55
German Law of 1965, art 2(1). On the way in which the German courts approached the issue of
copyright protection for such designs, see A Dietz, ‘Letter from the Federal Republic of Germany’ in
[1974] Copyright 87 and [1980] Copyright 90.
56
Regulation on the Community Design, 6/2002 of 12 December 2001. See further, on the Regulation, C.-
H. Massa & A. Strowel, Community Design: Cinderella Revamped [2003] EIPR 68; M. Schlotelburg, The
Community Design: First Experience with Registrations [2003] EIPR 383.
57
Ladas, Patents ..., op cit, 840. On the Regulation, see, e.g., C.-H. Massa & A. Strowel, Community
Design: Cinderella Revamped [2003] EIPR 68; M. Schlotelburg, The Community Design: First Experience
with Registrations [2003] EIPR 383.
58
Copyright Act 1968, ss 74–77.

59
U.S. Copyright Act, 17 U.S.C. sec. 101 (definition of “pictorial, graphic and sculptural work”).

16
laws might cover. The latter have usually been regarded as belonging to the sphere of
‘industrial property rights’ rather than authors’ rights, but as the next section indicates
designs (and models) have, until recently, been largely ignored under international
instruments concerned with industrial property.

The Paris Convention for the Protection of Industrial Property

The Paris Convention, of course, has three years seniority over the Berne Convention,
dating back to 1883. However, references to ‘industrial designs’ and ‘utility models’ only
came into the Convention text in 1925 at the Hague Revision Conference of that year
when they were included in the following general provision in art 1(2):

(2) The protection of industrial property has as its object patents, utility models, industrial designs,
trademarks, trade names, indications of source or appellations of origin, and the repression of unfair
competition.

Industrial designs, along with all the other ‘objects’ of protection under art 1(2), are
subject to the general obligation of national treatment under art 2(1), and enjoy rights of
priority under arts 4A(1), 4C(1) and entitlement to a grace period for their maintenance
under art 5bis. They are also to be accorded temporary protection for the purposes of
exhibition at official or officially recognized international exhibitions under art 11, and
no marking of the goods can be required as a condition of the right to protection under art
5D. More curiously, there is a prohibition in art 5B against forfeiture of industrial designs
by reason of either failure to work or by reason of importation of articles corresponding
to those which are protected (added in the Hague Revision of 1925 and the London
Revision of 1934).60 These provisions, however, actually predate any specific
requirement under the Convention to protect industrial designs in the first place. This was
not added until the Lisbon Revision Conference of 1958 which adopted art 5quinquies:

Industrial designs shall be protected in all countries of the Union.

It appears that this was the sole survivor of a series of proposed amendments that
contained a definition of ‘design’, a requirement of novelty, and a minimum term of
protection.61 However, there was no agreement among delegates on any of these matters,

60
See further G Bodenhausen, Guide to the Application of the Paris Convention for the Protection of
Industrial Property as revised at Stockholm in 1967, BIRPI, 1967, pp 73-74 (‘Bodenhausen’).
61
Bodenhausen, p 86.

17
although there was agreement to explore these issues in conjunction with the relevant
bodies of the Berne Union and UNESCO. Concerns expressed at the Lisbon Conference
about the problems of cumulative protection under both copyright and special designs
laws were downplayed by the International Study Group on the Protection of Works of
Applied Art and Designs (representing the Berne and Paris Unions and UNESCO) which
followed the Lisbon Conference and which reported in 1959. This Group agreed that
while it might be desirable to make a distinction between the appropriate realms for both
forms of protection, this was not easy to do, and that cumulative protection did not really
involve any practical difficulties.62 A similar view is implicit in a resolution adopted by
the Congress of AIPPI in 1966,63 as well as in the WIPO Model Law on Designs which
was published in 1970.64 Accordingly, despite the requirement to protect industrial
designs under Paris, it seems clear that member of both Unions (Paris and Berne) remain
free to determine whether, to what extent, and under what conditions, they will protect
works of applied art under separate designs laws or copyright. Indeed, the following
comment on art 5quinquies by Bodenhausen indicates the flexibility that countries have
in this regard:

Nothing is said about the means of providing such protection, so that countries may comply with that
provision not only through special legislation for the protection of designs, but also through the grant of such
protection, for example, in their laws on copyright or their provisions against unfair competition. What is
necessary, but at the same time sufficient, is that, whenever the competent authorities of a member State
define or recongize an object as being an “industrial design”, for example in view of its registration as such in
the country itself or internationally, protection in some form be given to it. 65

For sake of completeness, it should be added that, although there is a special agreement
under art 19 of Paris on the subject of designs (the Hague Agreement of 1925 concerning

62
[1959] Droit d’auteur 108. See also UNESCO Copyright Bulletin [1959], no XII, no 1.

63
AIPPI Annuaire [1966], Part II, Tokyo Congress, 22. For further background to this, see Ladas,
Patents ..., op cit, 868.
64
Model Law on Designs for Developing Countries, WIPO (1970), art 1(2). For further reading on the
international protection of industrial designs, see F Hepp, ‘La protection internationale des arts appliqués’
(1957) 14 RIDA 115; J-L Duchemin, ‘La protection internationale des oeuvres des arts appliqués’ (1956)
12 RIDA 85; G Bolla, ‘Oeuvres des arts appliqués et dessins ou modèles industriels: vers une solution
internationale nouvelle’ (1959) 24 RIDA 55; R Plaisant, ‘La protection des arts appliqués. Besoins
nouveaux, ideés nouvelles’ [1957] Droit d’auteur 160, 192.
65
Bodenhausen, p 86. Bodenhausen goes on to note that, while art 5quinquies does not require a state to
legislate specifically on the matter of designs, the article could be considered as addressed to judicial
authorities in those states where provisions such as this could be regarded as self-executing, with the result
that interested parties could directly invoke the provision in those courts. .

18
the International Deposit of Industrial Designs, revised London 1934, the Hague 1960
and Geneva 1999), this is concerned primarily with application and registration
procedures and does not address questions of definition, novelty requirements, term or
scope of protection. In particular, it does not affect in any way the protection accorded to
works of art and applied art by international copyright treaties and conventions, or the
protection accorded to industrial designs under the TRIPS Agreement66 (see further
below).

TRIPS Agreement

The only substantive requirements with respect to industrial designs arise under the
TRIPS Agreement, where they are dealt with in their own Section (Section 4) of Part II of
that instrument.67 Unlike Paris or Berne, the requirements here are quite specific.

Article 25
Requirements for Protection
1. Members shall provide for the protection of independently created industrial designs that are new
or original. Members may provide that designs are not new or original if they do not significantly differ from
known designs or combinations of known design features. Members may provide that such protection shall
not extend to designs dictated essentially by technical or functional considerations.
2. Each Member shall ensure that requirements for securing protection for textile designs, in particular
in regard to any cost, examination or publication, do not unreasonably impair the opportunity to seek and
obtain such protection. Members shall be free to meet this obligation through industrial design law or
through copyright law.
Article 26
Protection
1. The owner of a protected industrial design shall have the right to prevent third parties not having
the owner’s consent from 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.
2. Members may provide limited exceptions to the protection of industrial designs, provided that such
exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do
not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the
legitimate interests of third parties.
3. The duration of protection available shall amount to at least 10 years.

66
Geneva Act of the Hague Agreement 1999, art 2(1).
For commentary on the background and scope of these provisions, see D Gervais, The TRIPS Agreement:
67

Drafting History and Analysis, Sweet & Maxwell, London, 2nd ed 2003 (‘Gervais’), pp 210-217.

19
These provisions are, of course, additional to those already provided for in Berne and
Paris, which are, in any event, incorporated into the TRIPS Agreement.68 The following
comments can be made:

1. As under art 5quinquies of Paris, there is no requirement that these rights should
be granted pursuant to a system of registration, deposit or some other formality:
in other words, both registered and unregistered rights can be accommodated
under art 25(1).

2. Given that they do not prescribe a registration system, they therefore provide no
guidance as to the form that a registration system must take, if adopted by a
TRIPS country, in particular, whether a system of substantive or formal
examination is required.

3. The criterion of ‘independently created designs’ accords with the low threshold
requirement of originality in some common law copyright laws, such as those of
Australia and the UK, where ‘originality’ has been seen as requiring simply that
something has not been copied from elsewhere. 69 On the other hand, the
requirements of novelty or originality appear to add something further, although
the second sentence of art 25(1) is only permissive in so far as providing
guidelines on what these requirements may mean. There were arguments in the
TRIPS negotiations as to the terms to be used here, including proponents of ‘and’
rather than ‘or’ on the basis that a design could still be original in some
circumstances even where it was not new. The final adoption by negotiators of
‘and’ indicates that novelty and originality are cumulative not separate
requirements.70

4. The last sentence of art 25(1) leaves countries with the option of denying
protection in the case of functional designs, although the word ‘essentially’ may
not have the same precision as ‘solely’ or ‘only’.

68
TRIPS Agreement, arts 2(1) and 9(1).
69
For a striking example of this in Australian law, see Interlego AG v Croner Trading Pty Ltd (1992) 25
IPR 165, where the Full Federal Court held there was sufficient originality in the case of a drawing that had
been traced from an earlier drawing of the same copyright owner.
70
Gervais, p 213.

20
 5. The special case of textile designs suggests that copyright protection, without any
formalities, may be the best way of meeting the obligation under art 25(2). In the
case of Australia, this is met by a provision that seeks to preserve full artistic
copyright protection in the case of two-dimensional applications of designs
derived from artistic works.71

6. The exclusive rights to be conferred (art 26(1)) are of a copyright kind, rather
than an industrial property type monopoly right. The reference to ‘substantially a
copy’ also brings in familiar copyright–type principles, at least in common law
systems where infringement of copyright can occur where an unauthorised act is
done in relation to the whole or a substantial part’ of a protected work. 72 One
commentator has suggested that the provision does not require that an actual
copy should be made,73 but it is difficult to see the basis for this proposition.

7. Exceptions to these exclusive rights are framed by reference to the three step
test derived from article 9(2) of Berne, with the additional gloss that these must
‘take account of the legitimate interests of third parties’. It might be possible to
argue, therefore, that in appropriate cases, this would permit the imposition of
compulsory licences.

8. The minimum term of protection is 10 years, contrasting with the 25 year from
making provided for in the case of works of applied art under article 7(4). The
starting point for the 10 year term, however, is not specified, eg whether this is
the time of first making or application of the design, publication, registration,
deposit, etc.

While significant, in so far as they are the first prescriptions at the international level as
to the content of industrial design rights, the TRIPS provisions are hardly onerous.
Consider the rich variety of national designs law that are presently TRIPS-compliant: the

71
Copyright Act 1968, s 74-77. The precise scope and application of these provisions, however, is not
altogether as a result of somewhat opaque drafting: see the definition of ‘corresponding design’ in s 74(1)
and see also the interesting discussion of these provisions, which were amended to their present form in
2003, by W Rothnie, ‘The Vexed Problem of Copyright/Design Overlap’ [2005] Intellectual Property
Forum 33-39.
72
In the case of Australia, see Copyright Act 1968, s 14(1).
73
Gervais, op cit,p 216.

21
 unregistered design right in the UK,74 lasting for a maximum of 15 years from first
recording in a design document or first making of an article to the design 75 with licences
of right available in the later years76 and the threshold requirement of originality,77 and
the registered design system requiring substantive examination pre-grant of newness or
individual character ,78 excluding designs whose appearance is “solely dictated by the
product’s technical function”,79 and lasting for up to 25 years from the date of
registration.80 In the case of Australia, our pre-2003 designs law had a system of
substantive examination for novelty or originality, 81 a maximum term of 16 years82 and
protected functional designs;83 post-2003, our new designs law no longer has substantive
examination pre-grant,84 is set at a 10 year maximum, 85 still protects functional designs,
and has elaborate exceptions relating to component parts of “complex products”.86

What does all this mean?

For all the rich diversity of national designs law options that may be accommodated
within the TRIPS/Paris/Berne framework, it is surprising to see how little use is made
(relatively speaking) of registered designs systems (by their very nature, it is impossible
to quantify the extent of usage of unregistered design rights). Some years ago and long
before the enactment of the present Australian legislation, I extracted the following
figures on Australian designs applications, comparing them with trade mark and patent

74
Copyright, Designs and Patents Act 1988, (UK) Part III.
75
Copyright, Designs and Patents Act 1988, (UK), s 216(1).
76
Copyright, Designs and Patents Act 1988, (UK), s 257.
77
Copyright, Designs and Patents Act 1988, (UK), s 215(1) and (4) (’not commonplace in the design field
in question at the time of its creation’).
78
Registered Designs Act 1949 (UK), ss 1A and 1B
79
Registered Designs Act 1949 (UK), s 1C.
80
Registered Designs Act 1949 (UK), s 8.
81
Designs Act 1906 (Cth), s 23.
82
Designs Act 1906 (Cth), s 27A.
83
Designs Act 1906 (Cth), s 18.
84
Designs Act 2003 (Cth), Chapter 4, Part 3; post-grant examination must take place before any
infringement proceedings are launched: see generally Chapter 5.
85
Designs Act 1906 (Cth), s 46.
86
Designs Act 1906 (Cth), s 72.

22
 applications and registrations.87 As at 1991, the last year for which figures were then
available, there were 21,800 applications for trade marks, 27,672 applications for patents
and 3,945 designs applications.88

Australia’s usage of the registered design protection was therefore only modest at this
time, but the same was generally true of most other countries, with the striking
exceptions of Japan and Republic of Korea which had large numbers of designs
applications lodged.89 Given the amount of legislative reform water that has passed under
the bridge in both Australia and elsewhere since this time, interest in obtaining registered
designs protection does not seem to have increased greatly. Below is a table that sets out
the numbers of designs applications and registrations in Australia from 1961 to 2002:

Year Applications Granted

1961 1413 1522

1971 2742 2336

1981 3012 1957

1991 3945 3200

2002 4111 3842

2004-2005 5759 4615

By contrast, by 2004-2005, the numbers of Australian trade mark applications and

registrations were 53,319 and 50,123 respectively and patent applications and

87
S Ricketson, ‘Towards a Rational Basis for the Protection of Industrial Designs in Australia” (1994) 5
Australian Intellectual Property Journal 193, 194-195.
88
These figures were taken from the 1991 Industrial Property Statistics published by WIPO in [1993] No 2
Industrial Property.
89
The figures were as follows: UK (8074), USA (13,061), Spain (3420), France (8383), China (5335),
Canada (2600), Austria (3668), Benelux (2808), Japan (40,123), Republic of Korea (22,097), Mexico
(621), Switzerland (978), India (1,506) and Brazil (61). See further Ricketson, op cit, p 194.

23
 registrations were 22,530 and 12,235 respectively. 90 Filing and registration statistics for
designs in the UK have increased only modestly since 1991: there were 9506 filings and
9192 registrations in 2004-2005 compared with 8074 and 6271 respectively in 1991. On
the other hand, design filings have increased dramatically in Europe with the impact of
the Community Design and new national designs laws.91

Statistics can always be used in different ways, and I should confine my comments to the
particular experience of Australia with which I am most familiar. In the years since 1992,
we have had several major inquiries into design protection,92 including a most significant
one by our national law reform agency (the Australian Law Reform Commission or
‘ALRC’), a number of protracted infringement and invalidity proceedings, and the
ultimate passage of a new designs law in 2003. Despite this extensive use of ink, paper
and other resources, the ultimate result has been only a small increase in the use of the
system, and a continuing disconnect between users’ expectations of the designs system
and what this can actually provide. In this regard, it is noteworthy that the ALRC
conducted a survey of industry users and ascertained that a large number of respondents
wanted something further from the protection that was granted, ie protection for technical
and functional elements rather than just features of appearance. 93 The following summary
of responses is instructive:

Of those who wanted protection for something more than just the appearance of
the article bearing the design:

 51% wanted protection for the actual article bearing the design (ie both the
article's appearance and function)

 58% wanted protection for the uniqueness of the article bearing the design.

90
These figures are derived from the IP Australia website at www.ipaustralia.gov.au
91
For example, in Germany there were 50,070 registrations in 2005, in France there were 5444 for the same
period and 617 in the Benelux Office; the OHIM for the same period reported 8375 applications and
67,881 registrations: Italy: http://oami.europa.eu/en/office/stats.htm.
92
Report of the Inquiry into Intellectual Property Protection for Industrial Designs, Report to the Senator
the Hon John Button, Minister for Industry, Technology and Commerce, September 1991, p 23, par 3.2 (the
“Lahore Committee”); Australian Law Reform Commission, Designs Report No 74, 1995.
93
The findings of the survey are summarised in Appendix C of ALRC, Report No 74, Designs (1995)
p 383.

24
  41% wanted protection for the way the article worked

 31% wanted protection for one specific functional feature of the article
bearing the design.94

The relatively low level of applications under the new law suggests that this reluctance
still persists and brings its utility – at least, from the perspective of would-be users - into
question.

The problem of trade marks and unfair competition

A further issue concerns the overlap between designs and trade marks and, more
generally, unfair competition laws. Common law actions for passing off have long
protected such matters as shape and get-up where these have been used as indications of
source and origin.95 The same now applies in the case of registered trade marks in many
national laws.96 Is this something that should be avoided?

At one level, protection arising in this collateral way may be thought undesirable: if
successful passing off actions can be mounted, then the need for specific registered
designs protection is avoided, with the consequence that protection for design features
can be obtained on an indefinite basis, long after the statutory period of designs
protection has expired.

In response, it can be equally cogently argued that the object of trade marks and passing
off actions is quite different from that of designs law: to protect indications of origin, and
that to deny protection that would incidentally give protection to features of appearance
would be unfair. Furthermore, it will only be in the exceptional cases that such protection
will be available. Registered trade marks, however, provide another source of
complexity, to the extent that registration may be achieved on the basis of inherent, rather
than just factual, distinctiveness. But is this ever going to be likely? It will be a rare case
94
Ibid.
95
See, for example, William Edge & Sons Ltd v William Niccolls & Sons Ltd [1911] AC 693; Reckitt &
Colman Ltd v Borden Inc (1990) 17 IPR 1

96
Trade Marks Act 1995 (Cth), s 6 (definition of “sign” includes “aspect of packaging” and “shape”). For
an Australian case in which these issues were explored, see Koninklijke Philips Electronics NV v
Remington Products Australia Pty Ltd (2000) 48 IPR 257.

25
indeed in which a shape or aspect of packaging is so unusual and striking that it will
satisfy the requirements for registration in the absence of demonstrated factual
distinctiveness. And, if such a shape or aspect of packaging is capable of fulfilling a trade
mark function quite distinct from any other condition of novelty or originality it may
display for the purposes of design protection, there is no reason in principle why trade
mark/passing off protection should be denied: in either of the last two cases, the owner
will need to work hard to establish its entitlement to protection. The fact that there might
be incidental protection for design features is beside the point.

The problem of overlapping protection in this area has not been without judicial
comment. In the old case of Edge v Niccolls,97 there was no design protection in place 98
and the successful plaintiff had also failed to obtain a valid patent for its bag of ‘laundry
blue’ with a stick. However, the undesirability of obtaining this protection in a de facto
way through a passing off action was dismissed by the court in view of the fact that
‘differentiation [of the Defendant’s product] within reasonable and economical limits was
undoubtedly possible’, but instead of doing this the Defendants had sought to adopt the
Plaintiffs’ ‘design’ with the effect that ‘customers believed that the Defendants were the
same people as the Plaintiffs’.99 The question of gratuitous monopoly protection
concerned some members of the House of Lords in Reckitt & Colman v Borden, but Lord
Oliver of Aylmerton crystallised the question for the court as follows:

In the end, the question comes down not to whether the respondents are entitled to a monopoly in the sale of
lemon juice in natural-size lemon-shaped containers but whether the appellants, in deliberately adopting, out
of all the many possible shapes of container, a container having the most immediately striking feature of the
respondents’ get-up, have taken sufficient steps to distinguish their product from that of the respondents. As
Romer LJ observed in Payton & Co v Snelling, Lampard & Co (1900) 17 RPC 48 at 56: ‘When one person
has used certain leading features, though common to the trade, if another person is going to put goods on the
market, having the same leading features, he should take extra care by the distinguishing features he is going
to put on his goods, to see that the goods can be really distinguished . . .’ 100

In Australia, the same issues have arisen, in the related area of consumer protection
legislation, where traders utilise the misleading and deceptive conduct provisions under

97
[1911] AC 693.
98
It appeared, in fact, that the Defendant had obtained a design registration but this had been expunged:
ibid, 591 (Lord Gorrell).
99
Ibid, 596 (Lord Robson), His Lordship nonetheless acknowledged ‘any differentiation might possibly
have involved some expense’.
100
(1990) 17 IPR 1, 15.

26
Part V of the Trade Practices Act 1974 (Cth) to prevent rivals adopting similar marks and
insignia, including shapes and get-up. Thus, in Puxu v Parkdale,101 to the objection that
such protection might enable a trader to gain protection that might otherwise be available
(or not, as the case may be) under designs or patents legislation, the court saw no
objection so long as the consumer protection object of the legislation was being served.
Mason J (as he then was) said:

Mr Staff QC for the respondent submits that the Patents Act and the Designs Act are directed to a field of
obligations and rights quite different from s 52. In one sense this is so. It is the object of the two statutes to
create private property rights. They confer exclusive or monopoly rights in patents and designs respectively
and prescribe the conditions according to which these rights come into existence. With s 52 it is different. Its
primary purpose is not to create private property rights but to regulate the conduct of traders by prohibiting
them from engaging in conduct which misleads or deceives consumers. Enforcement of this statutory
prohibition may enable trader A to prevent trader B from manufacturing or marketing goods which closely
resemble those of trader A because the marketing of them will mislead or deceive the public, but this result, if
it occurs, will be incidental to the enforcement of the prohibition—it is an unavoidable consequence of
protecting the public from misleading or deceptive conduct. When s 52 is viewed in this light, there is no
very strong reason for saying that the generality of its language should be restricted on the ground that it runs
counter to the policy and purpose of the Patents Act and the Designs Act. 102

In the area of registered trade marks, it is noteworthy that some laws have sought to place
limits on what can be registered, such as article 7(1)(e) of the Community Trade Mark
Regulation 1999 which provides:

1. The following shall not be registered:

…
(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods themselves; or
(ii) the shape of goods which is necessary to obtain a technical result; or
(iii) the shape which gives substantial value to the goods;

The last sub-paragraph may be thought to be the one that cuts closest to design
considerations, but, again, if this is the element that denotes the provenance of the goods
(through factual distinctiveness) this will now the source of the ‘substantial value’ rather
than the design aspects in themselves. In this regard, it is interesting to note that such a
provision was omitted from the ‘new’ Australian trade marks legislation that was enacted
in 1995.103 The need for such a provision is not immediately apparent, and, more

101
(1982) 149 CLR 191
102
Ibid, 206.
103
Trade Marks Act 1995 (Cth). However, it is noteworthy that an earlier version of the trade marks law
that was passed in 1994, but which never came into operation, contained a similar provision (s 39) which
provided:

27
generally, there is no compelling reason to exclude trade marks and passing off/statutory
unfair competition protection for design features where there is deception or confusion as
to the provenance of those goods.

What should be done?

If trade marks and the like can be safely left aside, the difficult issue of the relationship
between copyright and designs laws remains. We now have elaborate legislative solutions
in different jurisdictions, and international uniformity seems further away than it was
even a decade ago. This is the case even after TRIPS, but is permissible under the present
international framework provided by that agreement and the Paris and Berne
Conventions. Let me suggest, however, that there is a simpler and more straightforward
approach that is consistent with this framework. It is couched with respect to current
Australian law, but I believe that it can be transplanted elsewhere.104

The starting point is artistic copyright, and the fact that ‘works of applied art’ are
included within the scope of ‘literary and artistic works’ in article 2(1) of the Berne
Convention. ‘Work of applied art’ is a flexible concept which is capable of embracing
artistic works that are exploited in a two-dimensional fashion (‘two-dimensional
designs’) through application to surfaces and materials, such as wall paper, clothing, tea
towels, carpets and the like, as well as works that are exploited in three dimensions where
designs are applied to the shape or configuration of useful articles, such as chairs, tables,
headlights, water tanks, coffee percolators and the like (‘three-dimensional designs’).
Artistic copyright will generally come into play in the case of three-dimensional designs
because of some pre-existing two-dimensional artistic work (a drawing, a plan, etc)

39. An application for the registration of a trade mark in respect of goods

must be rejected if the trade mark consists wholly or principally of:
(a) the shape, or some other characteristic, possessed, because of their
nature, by the goods; or
(b) a shape, or some other characteristic, that the goods must have if a
particular technical result is to be obtained.
104
This is not a new proposal: see S Ricketson, ‘Towards a Rational Basis for the Protection of Industrial
Designs in Australia” (1994) 5 Australian Intellectual Property Journal 193. It should also be added that
these proposals were considered by the Australian Law Reform Commission in its 1995 Report on Designs
but were rejected.

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where products made according to that design can be regarded as three-dimensional
reproductions of the two-dimensional design.

On the assumption that all such works are to be protected as ‘works of applied art’
(leaving aside, for the moment, the question of originality), Berne requires only that this
be done for a term of protection of 25 years from their making. Countries can, of course,
go further than this, and Australia is a prime example: we now allow a term of the life of
the author plus 70 years to the two-dimensional design artist and the same term to three-
dimensional designs where these fit the description of a ‘work of artistic craftsmanship’.
or a ‘building.’105 In the case of other three-dimensional designs, the legislative policy is
that copyright protection is restricted, at least in the industrial sphere, once a
‘corresponding design’ that would result in a three-dimensional reproduction of the work
has been registered or has been ‘industrially applied’. 106 It should also be added that entry
to the safe harbour provided by works of artistic craftsmanship has usually proved
difficult because such cases typically arise at the borderline: the works of the artist-
craftsman (the jeweller, the goldsmith, the silversmith, the leatherworker, the maker of
ornate cast iron gates) usually pass in without any particular contention, while the
designers of a corkscrew in the shape of a rabbit’s ears 107 or of cable knitted jumpers108
have met far more resistance. A maximum term of 25 years for all works of applied art,
whether applied in two or three dimensions, might therefore make the dividing line
between art and industry an easier, and far less contentious, one to draw: if all such works
could be protected, the push to establish the near impossible, ie that something is a work
of artistic craftsmanship (or even a ‘building’109), would disappear, but there would be no
yawning lack of protection for those designers who have failed to seek a registered
design. On this basis, there would be no need to remove the protection already provided
105
See generally Copyright Act 1968 (Cth), ss 33(1) and 77(1)(a).
106
Copyright Act 1968, ss 74-77.
107
Sheldon and Hammond Pty Ltd v Metrokane Inc (2004) 61 IPR 1.
108
Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) 41 IPR 593 (although the Applicant did
succeed in this case in establishing that the cable knit constituted a work of artistic craftsmanship, it failed
in showing that there was infringement where different ‘colourways’ were used by the Respondent).
109
Copyright Act 1968 (Cth), s 77(1)(a)(i): see further Darwin Fibreglass Pty Ltd v Kruhse Enterprises Pty
Ltd (1998) 41 IPR 649, where the Supreme Court of the Northern Territory held that moulds and ‘plugs’
used for the manufacture of fibreglass swimming pools were held to be ‘models’ of ‘buildings’ within the
definition of ‘artistic work’ in s 10(1) of the Copyright Act 1968.

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for the true artist craftsman, who could continue to be protected in the same way as
sculptors and architects/builders. The requirement of originality would remain, but this
could be set at the usual low Anglo-Australian level of independent creation and sweat of
the brow or higher, depending upon national preference or tradition (Berne, of course, has
no particular stipulations here as to the level of originality required for any particular
category of work, and it would be open to a country to prescribe something additional, if
this was thought necessary).

What would this mean for registered design laws? They could, of course, be left just
where they are, as monuments to past endeavours and as object lessons in unhelpful
legislative drafting. On the other hand, what need would there be for their continuance,
unless there is something in our international obligations that precludes this? In this
regard, Paris provides no problem: art 5quunquies simply requires that countries protect
‘industrial designs’ and says nothing as to whether these need to be registered rights or
not. Priority periods would also not be a problem, in that protection would be
automatically available without formality so long as the relevant Berne points of
attachment were satisfied. National copyright laws, however, might have to be
specifically amended to provide for the temporary international exhibition defence
provided under article 11.

TRIPS might provide some difficulties, but again these do not appear insurmountable: as
noted above, registration systems are not required (accommodating existing national
unregistered design rights) and the criteria for protection under art 25(1) could be readily
accommodated under existing or modified copyright originality requirements, on the
basis that Berne allows here for a significant degree of national variation. In other
respects, the TRIPS provisions reflect a copyright-type approach, eg in relation to the
rights to be protected under art 26(1), while, in other respects again, it is merely
permissive, eg as to defences. Accordingly, it is submitted that it would be open to any
Berne/Paris/TRIPS country to accord protection for designs purely as ‘works of applied
art’ under Berne, and not to contravene any of these agreements so long as the minimum
term granted was 25 years from the making of the work in question.

Two further implications/consequences of the approach outlined above should be noted.

30
 1. The continuance of unregistered design rights will need attention, although this
really only appears to be an issue for EC countries. In so far as these are a more
limited alternative form of protection to a registered design, it is difficult to see
what role would remain for them if more general copyright protection for works
of applied art were to be available. On the other hand, it is unlikely that the
TRIPS Agreement presently precludes such rights, even where their term is
shorter than the prescribed 10 year minimum term under article 26(3) (as in the
case of the present 3 year Community unregistered design). This is on the basis
that art 26(3) does not exclude additional forms of protection for industrial
designs so long as there is otherwise protection available for a minimum of 10
year: under my proposed system, this would be for 25 years under copyright.
Unregistered design rights, however, might play a useful role in providing for a
default form of protection where a putative work of applied art fails to meet the
originality requirement for copyright protection. In other words, a short term
form of unfair copying protection might well be justified, although strictly there
is nothing in the TRIPS Agreement or elsewhere to require this as it would fall
outside the scope of copyright or designs protection and it is difficult to infer
such an express requirement in the terms of art 10 bis of the Paris Convention (as
incorporated by art 2(1) of the TRIPS Agreement.)

2. The matter of defences has been lightly glossed over above, but one continuing
saga for national designs systems has been in the area of spare parts and repairs.
How would this be dealt with under the proposed approach? While art 26(2) of
the TRIPS Agreement provides for defences that take account of “the legitimate
interests of third parties”, any copyright solution would attract the operation of
art 13 which does not have such a proviso. Indeed, as any spare part defence
would inevitably implicate the reproduction rights in works of applied art, the
relevant provision would be art 9(2) of Berne which, arguably, has a more
narrow application than art 13 of TRIPS. Three-step analyses are always
complicated and nuanced exercises, but is there any reason to suppose that the
present limited defences provided under national designs laws 110 would not pass

110
Consider here the Registered Designs Act 1949 (UK), s 7A(5) and the Designs Act 2003 (Cth), s 72.

31
 each of the three steps in art 9(2)? There is also the consideration that where a
defence or exception is motivated by competition or ant-trust considerations, this
is not inconsistent with Berne obligations.111

The solution proposed in this article may be far from perfect, but consider the
complexity and uncertainty that it would replace if it were to be adopted. Furthermore, it
has the unusual characteristic that it is readily permitted by the present international
framework which, more often than not, is restrictive rather than facilitative when it
comes to the adoption of different solutions in the intellectual property area. In
particular, mandatory terms of protection often make copyright solutions unattractive.
Here, however, the international system works in favour of a single and relatively
simple solution. At the very least, a single 25 year term of protection for works of
applied art would remove the current range of terms that run from 3 years to life plus 70
years and would provide industry with a certainty that it presently lacks, certainly in my
own country.

The proposition, I submit, is worth considering.

See further Ricketson and Ginsburg, International Copyright and Neighbouring Rights: The Berne
111

Convention and Beyond, Oxford University Press, Oxford, 2006, 13.91 and 13.92.

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