Lecture 8 - Design Law and Unfair Competition
Industrial designs are technical and many countries have a designed law to protect technical designs.
IP rights to protect such a design is in fact a small patent, so you’re more in the field of patents here.
We will talk about non-utilitarian designs, so what it looks. The shape and outer appearance of a
product, not the technical stuff. It can also go together with a patent, so the outer shape is protected
by an ornamental design but embodies a patent also. This is because the invention was in the
combination of in general, the non-symmetrical shape and the invention that was patented.
Such designs are very much parallel to protection to trademarks. Just like trademarks that are
governed by one law (EU Regulation), designs are: you can obtain a European design right valid for
the whole EU. One right and one same material right for the whole EU. The European Design
Directive aims to harmonize the national laws and obliges the member states to harmonize their laws
in accordance with the directive. The protection of designs looks very much the same. You can obtain
a EU design in Alicante and for the Benelux design you can do so as well. We also know unregistered
designs: even if you don’t do anything, you can obtain a design right. If you put something on the
market that qualifies as a design, you have the right for three years.
A part of a product can also be a design although it must be intended to be assembled. 2D patterns
such as Burberry’s, the special type face of letters or graphic symbols can be designs as well.
Aluminium rough surface could be protected as design. You can only protect what is visible in use
since it’s about the outer appearance. So, a gutter of which a part is under the ground cannot be
protected since it’s not visible.
Requirements valid design
I. Registration
II. Novel
III. Individual character
Something is novel if no identical model has been made available to the public before the priority
date or the date that the unregistered design has been put on the EU market. Made available to the
public means the same as in patent law with the exception that if it could not have become known to
people who work in the relevant sector in the EU. E.g. a new toy is introduced on an exhibition in
Germany. The persons working in the relevant sector are those making these types of toys and they
are supposed to know is as they are in the EU and it’s public, everyone can visit. The same exhibition
in San Francisco and it’s national: if you can’t visit it, then you can prove that persons working in this
field in the EU could not have known this and novelty is not destroyed. E.g. application for design in
the EU on 7th September and one day earlier in China for the same design. It was public but there was
no internet to the Chinese patent office. You had to go there yourself to ask for a search with respect
to designs in scooters. This one day was not known to the interest in the EU. Very insignificant
changes would also be novelty destroying, so it doesn’t have to be 100% identical. If it at first glance
looks the same, it can also be novelty destroying.
It should have individual character. It means that the general impression of the design should be
different from what was already known for the informed user. The informed user v the consumer v
the skilled person. The informed user is a person who is particularly observant with knowledge of the
sector. There was a question about whether Flippo’s have an individual character and who the
informed user was. The CJEU said that it’s the marketing manager who uses the Flippo’s for publicity
and children from five to ten years (the users). For both users, the general impression should be
different to what was already known. This was decided in PepsiCo v Grupo Promes case. If you forget
Industrial designs are technical and many countries have a designed law to protect technical designs.
IP rights to protect such a design is in fact a small patent, so you’re more in the field of patents here.
We will talk about non-utilitarian designs, so what it looks. The shape and outer appearance of a
product, not the technical stuff. It can also go together with a patent, so the outer shape is protected
by an ornamental design but embodies a patent also. This is because the invention was in the
combination of in general, the non-symmetrical shape and the invention that was patented.
Such designs are very much parallel to protection to trademarks. Just like trademarks that are
governed by one law (EU Regulation), designs are: you can obtain a European design right valid for
the whole EU. One right and one same material right for the whole EU. The European Design
Directive aims to harmonize the national laws and obliges the member states to harmonize their laws
in accordance with the directive. The protection of designs looks very much the same. You can obtain
a EU design in Alicante and for the Benelux design you can do so as well. We also know unregistered
designs: even if you don’t do anything, you can obtain a design right. If you put something on the
market that qualifies as a design, you have the right for three years.
A part of a product can also be a design although it must be intended to be assembled. 2D patterns
such as Burberry’s, the special type face of letters or graphic symbols can be designs as well.
Aluminium rough surface could be protected as design. You can only protect what is visible in use
since it’s about the outer appearance. So, a gutter of which a part is under the ground cannot be
protected since it’s not visible.
Requirements valid design
I. Registration
II. Novel
III. Individual character
Something is novel if no identical model has been made available to the public before the priority
date or the date that the unregistered design has been put on the EU market. Made available to the
public means the same as in patent law with the exception that if it could not have become known to
people who work in the relevant sector in the EU. E.g. a new toy is introduced on an exhibition in
Germany. The persons working in the relevant sector are those making these types of toys and they
are supposed to know is as they are in the EU and it’s public, everyone can visit. The same exhibition
in San Francisco and it’s national: if you can’t visit it, then you can prove that persons working in this
field in the EU could not have known this and novelty is not destroyed. E.g. application for design in
the EU on 7th September and one day earlier in China for the same design. It was public but there was
no internet to the Chinese patent office. You had to go there yourself to ask for a search with respect
to designs in scooters. This one day was not known to the interest in the EU. Very insignificant
changes would also be novelty destroying, so it doesn’t have to be 100% identical. If it at first glance
looks the same, it can also be novelty destroying.
It should have individual character. It means that the general impression of the design should be
different from what was already known for the informed user. The informed user v the consumer v
the skilled person. The informed user is a person who is particularly observant with knowledge of the
sector. There was a question about whether Flippo’s have an individual character and who the
informed user was. The CJEU said that it’s the marketing manager who uses the Flippo’s for publicity
and children from five to ten years (the users). For both users, the general impression should be
different to what was already known. This was decided in PepsiCo v Grupo Promes case. If you forget
