Fundamentals of IP Law,
HANKEN, September 2015
EU Industrial Designs
Law: Overview
Prof. Dr. Martin Senftleben
VU University Amsterdam
Bird & Bird, The Hague
Industrial design
• definition of “design”
‘…means the appearance of the whole or a part of
a product resulting from the features of, in
particular, the lines, contours, colours, shape,
texture and/or materials of the product itself and/or
its ornamentation;…’
• Art. 3(a) Community Designs Regulation
(CDR)
Industrial design
• definition of “product”
‘… means any industrial or handicraft item,
including inter alia parts intended to be assembled
into a complex product, packaging, get-up, graphic
symbols and typographic typefaces, but excluding
computer programs;…’
• Art. 3(b) CDR
Can be 2D…
Can be 3D…
Examples
Examples
Examples
Rationale
Reconciling divergent interests
protected
designs
freedom of competition
Incentive for aesthetic innovation
• stimulation of investment
• enhanced possibility of amortization
‘natural’ period of market exclusivity
advantage of being first in the market
‘extended’ period of market exclusivity
industrial designs protection: 5x5 years
Legislation
International
• WIPO: Paris Convention
(1883/1967)
• WIPO: The Hague System for the
International Deposit of Industrial Designs
(1928, London Act 1934, The Hague Act
1960, Geneva Act 1999)
• WTO: TRIPS Agreement (1994)
European Union
• Community Designs Regulation No. 6/2002
(2001)
– unitary right covering EU territory
– short-term unregistered design right
• Designs Directive 98/71/EC (1998)
– harmonization of industrial designs legislation in
EU Member States
Protection
requirements
Two basic requirements (Art. 4(1) CDR)
novelty
(common law
tradition)
individual
character
(civil law
tradition)
Novelty: specific characteristics
• ‘… if no identical design has been made
available to the public.’ (Art. 5(1) CDR)
• identical ‘…if their features differ only in
immaterial details.’ (Art. 5(2) CDR)
• relevant moment of assessment
– registered Community designs: filing date or
priority date (Paris Convention)
– unregistered Community designs: date of first
making available to the public
Paris Union
Priority right (Art. 4 of the Paris Convention)
filing a design
application in one
country of the Union
6 months
subsequent
filings in
other Union
countries
Individual character: global comparison
• ‘…if the overall impression it produces on the
informed user differs from the overall
impression produced on such a user by any
design which has been made available to the
public.’ (Art. 6(1) CDR)
• taking into account ‘…the degree of freedom
of the designer in developing the design…’
(Art. 6(2) CDR)
• same rules as in the case of novelty
concerning the moment of assessment
CJEU, 20 October 2011, case C-281/10P,
PepsiCo/Mon Graphic
• concept of ‘informed user’
– no designer or technical expert
– knows the designs in the relevant sector
– knows the individual design elements
– is particularly observant, either because of
personal experience or extensive knowledge of
the sector
CJEU, 20 October 2011, case C-281/10P,
PepsiCo/Mon Graphic
‘… lying somewhere between that of the average
consumer, applicable in trade mark matters, who need
not have any specific knowledge and who, as a rule,
makes no direct comparison between the trade marks in
conflict, and the sectoral expert, who is an expert with
detailed technical expertise.’ (para. 53)
average
consumer
technical
expert
position between these two poles
CJEU, 20 October 2011, case C-281/10P,
PepsiCo/Mon Graphic
• informed user?
– kid of five to ten years
– marketing specialist dealing with these kind of
gadgets for advertising purposes
GCEU, 21 November 2013, case T-337/12,
El Hogar Perfecto del Siglo
• informed user?
– waiter or sommelier
– private person using corkscrews at home
GCEU, 22 June 2010, case T-153/08,
Shenzhen Taiden/OHIM (Bosch)
• informed user?
– person who often visits conferences
GCEU, 9 October 2011, Kwang Yang
Motors/Honda
• concept of ‘freedom of the designer’
‘The greater the designer’s freedom in developing
the challenged design, the less likely it is that minor
differences between the designs at issue will be
sufficient to produce a different overall impression
on an informed user.’
GCEU, 9 October 2011, Kwang Yang
Motors/Honda
• concept of ‘freedom of the designer’
‘Conversely, the more the designer’s freedom in
developing the challenged design is restricted, the
more likely minor differences between the designs
at issue will be sufficient to produce
a different overall impression on an
informed user.’
GCEU, 9 October 2011, Kwang Yang
Motors/Honda
• concept of ‘freedom of the designer’
‘Therefore, if the designer enjoys a high degree of
freedom in developing a design, that reinforces the
conclusion that the designs which do not have
significant differences produce the same overall
impression on an informed user.’
Also relevant?
production costs,
consumer demand,
ergonomic factors?
Difference between the two requirements?
novelty
individual
character
micro perspective
(zoom in)
macro perspective
(zoom out)
objective test
subjective test
Disclosure
Making available to the public
• publication
• exhibition
• putting on the market
• or other ways of disclosing the design
‘... except where these events could not reasonably
have become known in the normal course of
business to the circles specialised in the sector
concerned, operating within the Community ...’
(Art. 7(1) CDR)
Neither absolute nor relative concept
• worldwide scope: disclosure somewhere on the
globe can destroy novelty
• but nonetheless limited: decisive whether relevant
circles in the EU could have obtained knowledge
absolute
(worldwide)
relative
(domestic)
position between these two poles
Town market in China?
Newspaper in Africa?
Irrelevant disclosure
(Art. 7(2) and (3) CDR)
by the designer as a result of acts
herself
in bad faith
(grace period of
12 months prior
to filing date/
priority date)
(abuse during
12 months prior to
filing date/
priority date)
Exclusions
Technical functionality
• exclusion from protection
‘A Community design shall not subsist in features
of appearance of a product which are solely
dictated by its technical function.’
• Art. 8(1) CDR
Same approach as in trademark law?
Benelux examples
• line drawn with
trademark
decisions
• in particular:
alternatives
irrelevant
Must-fit features
• exclusion from protection
‘A Community design shall not subsist in features
of appearance of a product which must
necessarily be reproduced in their exact form and
dimensions in order to permit the product in which
the design is incorporated or to which it is applied
to be mechanically connected to or placed in,
around or against another product so that either
product may perform its function.’
• Art. 8(2) CDR
“Lego” exception
• no exclusion in case of modular systems
‘Notwithstanding paragraph 2, a Community
design shall under the conditions set out in Articles
5 and 6 subsist in a design serving the purpose of
allowing the multiple assembly or connection of
mutually interchangeable products within a
modular system.’
• Art. 8(3) CDR
Must-match features
• exclusion from protection
‘Until such time as amendments to this Regulation
enter into force on a proposal from the
Commission on this subject, protection as a
Community design shall not exist for a design
which constitutes a component part of a complex
product used within the meaning of Article 19(1)
for the purpose of the repair of that complex
product so as to restore its original appearance.’
• Art. 110(1) CDR
Complex product
• defined in the legislation itself
‘…means a product which is composed of multiple
components which can be replaced permitting
disassembly and re-assembly of the product.’
• Art. 3(c) CDR
Example
protection not only for the product as
such but also for component parts…
Spare parts discussion
• market not liberalized in all Member States
• Art. 14 Designs Directive leaves room for
maintaining traditional domestic rules
• Commission report recommended further
liberalization already in 2004
• ongoing discussion, unresolved issue
• NOTE: Art. 110 CDR is no ground for
invalidity in the sense of Art. 25 CDR
• spare parts can thus be registered even
though they do not enjoy protection
At least some liberalization
• specific requirements for component parts
• only novelty and individual character if
‘…once it has been incorporated into the complex
product, [the component part] remains visible
during normal use of the latter…’
• in this context, normal use
‘shall mean use by the end user, excluding
maintenance, servicing or repair work.’
• Art. 4(2) and (3) CDR
Different conceptual contours
must-fit
must-match
interoperability
repairability
mechanical
connections
restoring original
appearance
Interoperability
Repairability
But same objective
safeguarding
competition
Registration
Different strategies
national or
regional route
OHIM:
Community
Design
covering
entire EU
territory
System of The Hague:
international deposit
Result of registration
• acquisition of exclusive rights
• term of protection: 5 years
• four renewals possible
• maximum term: 25 years
• without registration: 3 years
• as from the date of first making available
to the public within the Community (Art.
11(1) CDR)
Scope of protection
Exclusive right
• registered Community design
‘…to use it and to prevent any third party not
having his consent from using it. The
aforementioned use shall cover, in particular, the
making, offering, putting on the market, importing,
exporting or using of a product in which the design
is incorporated or to which it is applied, or stocking
such a product for those purposes.’
• Art. 19(1) CDR
Scope of protection
• overall impression decisive
‘The scope of the protection conferred by a
Community design shall include any design which
does not produce on the informed user a different
overall impression .’
• Art. 10(1) CDR
CJEU, 20 October 2011, case C-281/10P,
PepsiCo/Mon Graphic
• not necessarily direct comparison
‘…it cannot be ruled out that such a comparison
may be impracticable or uncommon in the sector
concerned, in particular because of specific
circumstances or the characteristics of the devices
which the designs at issue represent.’ (para. 55)
• in practice: court not bound to base its
assessment on perfect recollection of all
details
Limitations (Arts. 20 and 21 CDR)
• acts done privately and for non-commercial
purposes
• acts done for experimental purposes
• acts of fair reproduction for the purpose of
making citations or of teaching
• ships and aircraft registered in a third
country when these temporarily enter the
territory of the Community
• exhaustion after first sale in the Community
Cumulation of rights
Overview
Culture
copyright
industrial
designs
Technology
patent law
Trade
trademark law
But also more grounds for invalidity
• Art. 25(1) CDR
• for instance: prior trademark rights
• CJEU 18 October 2012, cases C-101/11P
and C-102/11P, Neuman / Baena Grupo
• in this case: no conflict found because of
difference in face expression
The end. Thank you!
contact: [email protected]