The UK and EU Unregistered Design Rights - Essay Example

UK AND EU UNREGISTERED DESIGN RIGHTS Introduction Unregistered design rights are rights that are used to prevent unauthorized copying of original designs. For instance, there are two types of such rights that is, the one that deals with English rules while the other deals Community unregistered design that covers European Community. These rights co-exist but sometimes differ from each other where the two rights can protect some designs depending on the issues at hand. European Union provides Benelux countries with a uniform protection laws. This unified system is designed to obtain a community design that is protected by uniform protection. This protection has uniform effect in the entire territory as laid down by the agreement. UK rights come into existence automatically, and the Community Unregistered design come into existence when the design is first made available. In addition, both rights do not always register their rights but for purposes of evidence in court they keep verified records when the design were created and by whom. Moreover, they both protect the appearance of articles but not its technical functions. Some features are excluded from UK and EC rights protection. They include design features that enable the article to connect with another that are dependent on the appearance of a complete article where the components are located. Comparably, UK and EU rights identify that design rights are not subsisted in principle of construction, shape and configuration of the article, surface decoration and are dependent on the appearance of another. Besides, design rights are not subsisted if the design has a controlled representation and the design is not recorded in a document or either through an article. In addition, unregistered rights in both the UK and EU are only applicable within a given territory. For instance, reciprocal protection is limited within specific territories. In UK the rights are designed to affect the countries within the United Kingdom while the European Union rights affect the nations that are registered with the union. This essay analyses the EU and UK systems and the clashes between the two. It uses case laws to give a clear picture of this. In addition, it also offers solutions on how to deal with each clash. In doing so the paper will have fully cover legislations that protect unregistered design right. Legislations that Protect Unregistered Design Right Fisher defines a design as a product according to its shape or either ornamentation.1 Definition of a design varies among different types of legal protection. It relates to technical principles of its operation and construction. UK UDR stipulates that the owner of the right be given the right against unauthorized copying of their design. The owner has the mandate to avoid unauthorized dealing by importation, sale, and possession. Additionally, it does not involve any formal registration since it comes into existence automatically when it has been created. At the same time, design rights usually protect the appearance of a product but not how it works or its construction. However if products are visible in normal use of the said product they can be protected. Unregistered design rights protect against copying of the original design. The EU part of the right expires in three years from first disclosure that is done publicly. The UK protection however lasts longer than this. The CDPA of 1988, which is known as CDPA, an act of UK and gives statutory basis for copyright law which by then was governed by Copyright Act of 1956. This act gives a way for unregistered design right and has a lot of modifications in the law of Registered Design and patents. While the CDPA 1988 plays an important role in the UK, there is an unofficial consolidation of the Part three of it, which is The Intellectual Property Act 2014. The IP Act of 2014 covers unregistered design law. UK law on unregistered design is changing with effect when it came into force. Monseau notes for purposes of UK unregistered designs a design is defined as aspects in form of the external and internal part of its product.2 UK unregistered design right is available if the design is not commonplace when it was created. In the UK, the designer owned law design a design only when the designer was commission to produce the design. The IP Act has some specific activities where someone can use another person’s design without infringing the unregistered design right.3 Such exceptions are when it is used for private or non-commercial purposes or either for teaching and experimental purposes. These changes to the law are harmonized with the EU system in the position of copyright infringement and make it uniform and easy to use and understand. UK Intellectual Property offices give opinion service for patents where issues of validity are discussed that relates to inventive steps and novelty. Furthermore, UK exclusive rights regarding designs are established through unregistered design protection that entails both EU and national UK unregistered rights. Joffe states that legislations in the UK consist of the Registered Act 1949 for registered designs and CDPA for unregistered designs.4 With unregistered designs, a design is protected by the UK legislation if it has been recorded in an article. In Farmers Build Ltd v Carrier bulk Materials Ltd5 the Court of Appeal stated that the article must not have copied and not found in another design in the same field or be in commonplace. According to the CDPA 1988, designs qualify for protection if qualified person creates them in the course of employment. A qualified person is a person, bodies cooperate, or habitual residence that has a legal personality that is created in the place of business that is carried out in UK or any other qualifying country. Such qualifying countries include Isle of Man, all EU member states, the British Indian Ocean Territory and New Zealand and other qualifying states. In the UK, for instance, design rights lasts for 15 years when they were first created in form of a design document. The IP Act of 2014 has brought about changes to the UK law about unregistered design rights. Beltrametti 6 notes that some of the changes are in section 1(1) that limits unregistered design protection to matters of the shape or the whole of an article where commonplace specifically means commonplace that is in a qualifying country7. Likewise, Section 2 of the IP Act 2014 changes the position for designed that are commissioned where it stipulates that the designer is the first owner. This amendment is for purposes of UK registered designs and unregistered designs align EU law and UK copyright law. Subsection (1) of the IP Act amends RDA section 2 for the purpose where there is absence of any contract and a design has been commissioned the designer becomes the initial owner of the design and not the person who initially commissioned it. Derclaye also notes that it aligns the UK law with the EU law and aligns the treatment of UK designs with how works that are commissioned are treated in Copyright law in UK.8 This means that the default position of the initial owner of related rights does not end up with parties that are different. Moreover, subsection (2) of IP Act amends section 3 of RDA where it removes requirements of the applicants in registration for designs who claims to be the proprietor of the design in question. Myers claims this also aligns the UK and EU law in dealing with applications for such registered designs.9 An exclusively unauthorized requirement is defined by section 220 CDPA that states it refers to any authorization by a person is the first owner of a design or employer of the design and to exclusivity that is capable of enforcement in legal proceedings in the UK10. Analysis of clash using case laws and Legislation Difference in infringement rights, Kohler Mira Ltd v, Bristan Group Ltd In Kohler Mira Ltd v, Bristan Group Ltd11 the appellant filed a claim in court of law for infringement of two-registered Community Design (RCDs) and three UK unregistered design rights. The British claimed infringing products has features common with RDCs but the court found out the product lacked features that contributed to the character of RDCs. It was held that they gave a different impression and was not infringed by the products UDR is infringed when third parties copy the design to produce articles exactly as the design. In enforcing UDR, it must be shown that the design is original meaning that the shape and configuration of the product is not the same like any other products to establish that it has not copied by any other article. It sometimes proves onerous but courts use a pragmatic view that if similarities are, marked then it can be considered reasonable in assuming that copying has occurred but if the defendant establishes it is an independent article then it becomes another case. This case shows that UK UDR infringement is based on the knowledge of any product alleged to be infringed. It reminds parties that consider such actions for infringement that rather than relying on the design registrations they should pursue other claims in relation to unregistered design rights. Sometimes a non-EU manufacturer may distribute products in EU using local distributors and being the only distributor of the design to EU12. This manufacturer becomes a de facto exclusive distributor and it can be argued that the distributor is the sole distributor without having cause of action against any non –EU. According to Loucks13 Industrial, design rights protected in EU law provide the Community by community design in the national level using individual national laws. Designs that are protected as discussed above must be of novel and must have an individual character. Unregistered designs are protected under EU legislation under the EU Regulation 6/2002 and it provides a unitary right that covers the European Community .Its time lapse be up to 25 years with renewal payments after every five years. When it is publicized and any infringement would occur if the design were copied. Regulation No 6/2002 on community designs came into force in 2002.It was a culmination that took over 10 years following the publication of the Green Paper on legal protection in industrial designs. It protected unregistered design against copying that is unauthorized. The European Council used the Directive 98/71/EC in protecting designs. The Design Protection Directive harmonizes registered protections for designs14. Difference in Directive Provisions, Oakley Inc v Animal Ltd Both the UK and the EU have been forced to align their laws to comply with e Directive provisions that has resulted in amendment of the Registered designs Act of 1949. In Oakley Inc v Animal Ltd15 Appeal court of UK held that the Registered Design Regulation was validly applied by the government of UK and did not breach EC law. Member states protect unregistered designs in their national laws that are not covered by the Directive. The law of TRIPS protects industrial designs together with European Union is a party to it16. The Regulation on Community designs recognizes the priority of an application for such designs by countries that are signatories to WTO or if the members are signatories to the Convention on industrial property for the Paris Convention. Disclosure is a term used to refer to making design available to the entire public to make interested parties in the EU to be reasonably aware of the design in question. When it comes to disclosure, the date and means are key components. Disclosure creates the unregistered community design but can also destroy its novelty if not applied within 12 months17. Such disclosure takes place in the EU territory that creates the unregistered community design right. Bently18 notes that unregistered Community designs are effective since March 2002. Nationality does not hinder obtaining a design protection where if disclosed in Europe with laid out conditions of disclosure and protection that vest a right in the person regardless of their nationality. Gielen19 elaborates that there are a number between EU and UK design law that causes problems for applicants. There is need to harmonies the laws since design law creates big business around the globe. It has a lot of economic importance but it has remained underused. It is very difficult and complicated in the UK where it is protected by four overlapping intellectual property rights that cover the UK and the EU. In unregistered design rights that have different scopes and terms of protection. Design law is considered as being very wide in that covers industries and fashion companies together with architecture. UK law and EU law protect these rights of designs20. This proves to be complex and rights that are valid are protected when they become public or by registration. Most stakeholders in the industry state that the law especially UK law does not fir its purpose where some laws create an imbalance of rights especially in matters of freedom to innovate and rights to proprieties. Additionally, Joffe 21 explains that the definition of the term design in CDPA is not clear enough especially since it does not exclude minor features of the design rights. This makes claimants to turn their claims unfairly by focusing on copied items or a part of it. The law favors owners and therefore traders are not sure what they are supposed to do or not to do. This causes a negative effect to stakeholders especially to innovation and results in many disputes that can be avoided. The UDR clearly stipulates that a design to be covered it must be original this means it must have some skill from the designer or not copied. It states that commonplace is not original and this is available in UK law especially upon application. This law is not in line with the RDA where novelty covers the entire Europe22. Changes to defenses in UK designs where there are no existing defenses in the two systems especially to parties who act in good faith during an application or registration of a design.RCD has such defence especially for patents and this causes problems especially when the two laws are aligned together. The current system leaves businesses vulnerable and can face legal action from parties like proprietress who have rights from unfair business trading of designs. The EU system on protection and copyright provides certain actions to third parties for purposes of public interest who use the design for commercial purposes. UK UDR does not provide for such regulations and does not allow it. It is therefore vital that the CDPA be amended to resolve such issues. Differences in Infringement exemption, Choo v Towerstone Infringement rights differ coherently in the UK and EU. For instance, in UK infringement occurs due to unauthorized dealing, copying the design with knowledge of that article involves infringement. However, in EU case no knowledge is necessary. In Choo v Towerstone it was held, an infringer in UK registered design could avoid damages for infringements that they were not aware of but the infringing exemption is not available in EU registered designs and therefore infringement of EU laws are liable. In UK and EU the employer Rights in EU that are created by the designer are retained by the designer but in UK rights of such are owned by the commissioner of the design owns design rights23. The Intellectual Property Act of 2014 was aimed at strengthening design protection and ensured that the UK Intellectual Protection would be able to operate effectively in line with the EU system. This act unlike the previous version maintains the principle of qualification and makes it to align with the EU .It ensures states do not offer reciprocal recognition in design rights that cannot benefit from UK right. The IP Act 2014 of UK exempts certain acts from infringement of unregistered designs and this mirror in exemption offered in the EU system and therefore brings them closer under copyright law. The exemption that applies to the UK system in using a design In the EU is possible without being held liable unlike previously. Third parties can be able to use the design if they have effective preparations without risk of acting in bad faith. This harmonizes both UK and EU systems in equal measure. This Act established that UK law needed to change to be harmonized with EU law for purposes of simplicity and modernization24. The IP Act of 2014 creates changes in scope of protection in UK unregistered designs that removes protection of designs This law will not apply design protection if the design is commonplace in EU or UK. These laws make the owner of such designs to align with rules of copyright ownership. The CDPA 1988 are concerned with overlaps of copyrights together with designs. The effect of these provisions is litigated in a variety of cases where it stipulates that there are no infringements of copyright in designs and its definition of a design excludes surface decoration. Its infringement is negated for 25 years. In Ferans v, Anglo- Dutch 25 The court held that copyright time in surface decoration is limited to 25 years. Where a work includes unregistered design, right UK law states that it is not an infringement of the design if it is an infringement of the design work.26 This is because some situations are unclear whether the copyright is in a design or its infringements that makes the protection of unregistered design right conditional and brings bout uncertainty. Difference in Copyright Protection, Flos SpA v Semeraro Casa e Famiglia SpA The case of Flos SpA v Semeraro Casa e Famiglia SpA27 complicated the legal analysis where the CJEU established that interaction of EU legislation with the EU council Directive 93/98/EEC where it established that Section 17 of the Directive requires protection for copyright be conferred to designs that are protected by the design or to Member State concerned. This case also establishes signatories face the decision whether to issue protection for such rights in designs if they meet the conditions that copyright protection confers28.This determination of copyright protection by Member States does not affect term of protection since the law has been harmonized by the EU system in the Term Directive. The UK system includes nationality that relates to copyright where the UK law protects works that originate from RBC/EEC states and this depends on whether they are members of the WTO and UCC that can provide reciprocal protection. Works from EEA give protection in UK law irrespective of rules of protection of origin of country29. According to the UK unregistered design rights, copy right protection start immediately after making the article to design or after creating the design document. However, in Community Unregistered Designs the protection start availing the design to the public in the European Union. Tods v Heyraud The Treaty30 has been interpreted by the CJEU In Tods v Heyraud 31 it was established, the UK system together with the UK courts cannot discriminate designs that originated from other Member States in the EU .It ruled that article 12 of EC must be interpreted in its essence meaning that the right of an author of a member state must not be subject to any distinguishing criteria ion basis of origin of the work. According to Gielen32 the UK, system is not satisfactory because industrial designs that are purely functional and therefore cannot obtain full copying protection. When designers have not registered their design and have to rely on copyright protection it shows that the design part of artistic artisanship and the design infringes the design article can discern three-dimensional article. Merlet v Mothercare In Merlet v Mothercare33, for instance, the court held that the owner of the design had no redress against copying since the design was not a work of such artistic craftsmanship and therefore according to the law there was no design protection. In British Leyland case the court tried to locate grounds for non- infringement in cases of repairs. This decision depended on policy rather than legal grounds. The Community design cover 2 dimensional aspects that include surface decoration that are excluded from UK UDR protection. The Community UDR is not dictated by functionality but UK UDR is based on functionality. The Community design is always visible with their components part that differs with UK UDR. Myers 34 notes that UK UDR does not consist of features of configuration that enables an article to connect to another. This exclusion limits the ability of UDR legal protection in certain monopolies. The Community design Regulation has a must fit exemption but it is a bit different in its wording 35 the wording provides that the exemption does not prevent design rights subsisting in modular systems. Mark Wilkinson Furniture, v Woodcraft Design In Mark Wilkinson Furniture, v Woodcraft Design36 it was said that exclusion to the case. The court stated that the issue was a series of matching articles that did not form any integral part. Solution to the Clashes between the two Legal Systems Enforcement of the IP ACT of 2014 has introduced a lot of changes to design law and therefore proper enforcement is required to deal with systems between the UK and the EU clash in protection in unregistered design right. UK law provides that plaintiffs can sue for infringements are independent rights that have different characteristics. The CDP prevents overlap between UDR claims and copyright actions37. It is able to do so by providing that it is not an infringement of a copyright in a document for purposes of artistic work or copying article that moved to the design. If this law does not apply to a claimant and they rely on UDR and copyright the CDPA provides that acts that infringe copyright does not also infringe UDR. The Community Design Regulation states that a design that is covered by community designs rights can also be covered by copyright that is determines by Member states.38 Some of these changes include introduction of criminal sanctions against copying of UK designs in business. It has also introduced cheaper ways for appeals in decisions from UK IPO that is consistent with the EU system of protection.39 In addition, it has provided UK IPO opinions on designs in service and supplements existing service for patents. Some solutions would to maintain the currents system where anomalies would remain. If the current system were changed then benefits and costs would be none and would not meet any objective in policy.40 However, due to so many anomalies there is need to change the systems to provide a better policy objectives. The law of UK and EU should be amended on unregistered design and registered design rights. With current inequalities of the law there is need to remove them. The system that covers registered and unregistered designs for by products can be clarified and simplified if the two systems are harmonized that is the UK system giving greater parity with the EU system. Joffe 41 states that when defining UDR the law should be amended to create certainty and ensuring its unique value is not diminished. The term commonplace should be extended so that it covers the EU system and other areas where the law exists. CDPA qualifications should be extended. These solutions create a variety of defenses that include having a law in the registered Designs Act that covers article 22 that authorizes RCD. This allows a right of prior use to be given to third parties that can be able to establish it before the date of filing of the said application. This requires good faith in all applications and in using the design. The CDPA should also be amended to fill issues that it does not cover in the current system. It should involve defenses and issues of non- infringement that is not governed by article 7A in the provided law of RDA. Such changes would clarify the law and simplify it. Affected groups due to qualification requirements will be identified as those who claim UDR especially since they could not before. This means that rights holders will tremendously increase. This will affect stakeholders and legal stakeholders especially due to change of definition and defence outlines by the law. Changes due to existing holder’s majority will not be affected because they qualify already but there may be clashes due to subsistent rights due to qualification Conclusion The UK and EU system for unregistered design rights have different protections for such rights. However its aligning the two systems sometimes is good for business but with regards to the above discussion it has a variety of problems including lack of defenses for non-infringement. Its definition of design proves to be complex. The two systems being aligned together protect copyrights and design rights for business and fashion industry and architects across its jurisdiction. However, there is need for amendment of the laws that govern both laws. The Intellectual Property Act of 2014 aims at solving issues brought by the two systems on unregistered design rights .It seek to deal with infringements claims where it clarifies and simplifies the issues in claims. In addition, it provides necessary defenses for such claims in courts and therefore reduces his increase of unnecessary disputes in courts. Read More