Comparison and Analysis of Unregistered Design Right and Community Unregistered Design Right - Coursework Example

COMPARISON AND ANALYSIS OF UNREGISTERED DESIGN RIGHT (UDR) AND COMMUNITY UNREGISTERED DESIGN RIGHT (CUDR) by COMPARISON AND ANALYSIS OF UNREGISTERED DESIGN RIGHT (UDR) AND COMMUNITY UNREGISTERED DESIGN RIGHT (CUDR) Introduction As a great number of product designs are with a short life span, the unregistered design law plays a significant and increasing role in our lives, without the burden of registration. Basically, an unregistered design right (UDR) can be defined as a right used to bar the unauthorized imitation or copying of an otherwise original design. There are two types of unregistered design right. The first type covers and is applicable in the United Kingdom while the second type is the community unregistered design right (CUDR) that is applicable throught the European community. Although both types of unregistered design right co exist, they tend to display stark differences. Therefore, some designs can be protected by only one or both rights. These protections are influenced by the relevant circumstances. Comparing the differences between the provisions of UDR and CUDR in many respects----such as the subject matter of protection, exclusions, criteria of protection, ownership and infringement, some problems may occur. Therefore, this essay discusses the title question by comparing the subject matter of protection, exclusions, criteria of protection, ownership and infringement between these two design rights to analyze whether UDR and CUDR are well aligned. In the next section, the latest changes of UDR in the Intellectual Property Act 2014 (“IP 2014”) will be explained to show that the United Kingdom amends her law in the design field to harmonize with the EU system. Finally, the question of whether the regime clashes of unregistered design right in UK and EU would occur is examined. The UK UDR comes into force automatically when a design which is original is recorded or created in the UK or Ireland. On the other hand, the CUDR comes into force or existence when an original new design is availed first to the general public residing within the EU. A new design is made publicly available when it is disclosed to the public in various ways such as a sale or publication. Nevertheless, the right does not come into existence automatically if the disclosure to the public could not have reasonably become known by the people working in the relevant field within the EU. In both the UK UDR and the CUDR, it is not important or necessary to register the designs or right. Nonetheless, it is vital to keep verifiable records and evidence on by whom and when the designs were created since design disputes require evidence when they are presented to the courts. Because the United Kingdom is the only country providing the national unregistered design law, the design proprietor in the United kingdom will be faced with the choice of the United Kingdom Unregistered Design right (“UDR”) or the Community unregistered Design Right (“ CUDR”) . In fact, the Unregistered Design right was included in the Copyright, Designs and Patents Act (“CDPA”) and added into the traditional intellectual property rights in 19881. The Regulation on Community designs (the “Regulation”) became enforceable on March, 6 2002, which took the UDR as a model in many parts. NATURE AND SUBJECT-MATTER A. UDR The unregistered design right is a property right which automatically comes into existence when a new original design is recorded or created in a number of relevant or qualifying nations including Ireland.2 As such, just like trademarks, copyright and patents, the UDR is an intellectual property right. Similarly, the UDR comes into force automatically just like copyright. This implies that there are no documents or formalities needed for the right to come into force. Since a design legally refers to the appearance of a part or the whole product the UK UDR protects the configuration or shape of a part or the whole article whether in functional or aesthetic nature. in simple terms, a design is the legal protection of the way or how a product looks. Hence, the UDR is only applicable to products exhibiting three dimensional features or characteristics. B. CUDR Just like the UDR, the community unregistered design right (CUDR) is an intellectual property right just like the trademarks, copyright and patent. The CUDR automatically comes into force or starts when a design is presented to the general public living within the EU. As earlier stated in the text, a design is availed to the European Union public/ community through sales or a publication. The CUDR safeguards the appearance of a part or the whole product due to its unique features emanating from the product’s contours, shape, lines, colour, ornamentation or materials. The protected product might be a handicraft product or an industrial item.3 Also, get up, packaging, typefaces and graphic symbols are protected by the CUDR. However, computer programs are excluded from this protection. C. Comparison Since both the UDR and CUDR protect the functional and aesthetic designs, they are intellectual property rights. However, the CUDR’s subject matter is both narrower and broader when compared to the UDR. The subject matter of CUDR is narrower as a result of the use of the term product whereas the UDR uses the term article. A product under this circumstance is any handicraft or industrial item. This definition does not encompass plant parts, or human body parts. Thus, human or plant parts do not have any exception when interpreted by the courts in regard to CUDR. The CUDR is wider than UDR because it includes two dimensional aspects or features. This means that the CUDR encompasses almost anything. For example, the configuration and shape that characterize the UK unregistered design right. As a result, it is more advantageous for right holders to prefer CUDR to UDR.4 EXCLUDED SUBJECT-MATTER A. UDR Unregistered design law fails to protect four key areas. These are must fit and must match elements, principles or methods of construction and surface decoration. In Kestos v.Kempat, it was argued that an unregistered design right holder is accorded only a single right for one particular appearance of an article. The UDR holder cannot be given more than one right simply because the features will be too general amounting to a mode of construction if all the diverse appearances embody the claimed general features. For instance, the method or art of stitching mobile phones case seams is an example of a method of construction. The must match and must fit omissions or limitations in UDR were meant to reduce limitations on spare parts especially for vehicles.5 Recital 13 of the regulation implies that no UDR protection will not be offered for a good which forms a component part of an otherwise complicated product upon which the design relies on the product. Also, it is inappropriate to offer protection for a product that is used solely for the purpose of repair. The UK courts have further defined the terms employed in the must fit UDR exception.6 For instance, the courts have defined the term article to include human, plant and animal body parts. The article has not given meaning or defined the term. Also, the must fit feature applies to articles which are used to enable one article fit into another article. Lastly, UDR does not protect the surface decoration aspect. Since this term has no legal definition, the courts have construed its meaning. The court in Mark Wilkinson stated that the term surface decoration encompassed the decorative elements placed on a product’s surface such as engraving or beading. Also, the term refers to decoration which is basically placed on an article’s surface for example painting. B. CUDR Articles 8, 9 and 25 of the regulation outline CUDR’s excluded matter. Whereas article 8 states that the right will not solely depend on the appearance of the product which is determined by its technical function, article 9 excludes designs which contravene public policy or go against morality principles. As such, immoral designs such as racial hatred designs, pornographic designs, and torture instrument designs are excluded. Lastly, article 25 of the regulation excludes CUDR in three instances. First, if the right holder of a design is given powers by the member state to prohibit use of the distinctive design on a product. Secondly, when the design encompasses an unauthorized use of work which is safeguarded by the relevant member state copyright law. Third, if the design involves of the use of items outlined in the Paris convention for the protection of industrial property’s article 6, and emblems, escutcheons and badges.7 C. Comparison In both the CUDR and UDR, principles or methods of construction are excluded. The degree of the must fit exceptions contained in article 8 (1) tend to be equal. Additionally, the interconnection exception has some similarity with the must fit exception. Nonetheless, there are some differences. First, the UDR exception is broader than the the CUDR exception since the wordings tend to imply that the clause is not applicable to interconnecting aspects which are bale to be made in alternative forms which subsequently enable connection to another product or can be reproduced. This is advantageous for right holders to prefer CUDR to UDR. Another benefit of the CUDR in relation to UDR is that features within a modular system are not affected by the interconnection exclusion. Therefore, whereas the connecting parts in UDR are excluded by the must fit exception, they are protected by the community unregistered design right. The UDR law does not enforce public policy limitation ot morality limitation. Thus, an immoral design has the potential to benefit from the immorality exclusion. The CUDR does not exclude surface decoration since design is made up of both two and three dimensional features. Therefore, CUDR in this instance accords more protection to right holders than the UDR. Limitations outlined in article 25 apply to the UDR. This is mainly because they clash with intellectual property rights, and also because an international convention of which the UK is a member has restricted the use of emblems and flags. PROTECTION REQUIREMENTS A. UDR A design must first be recorded in a document before it is protected. The document can be in many or various forms such as a written description, a drawing, computer data or a photograph. Next, the new design has to be original for it to be protected. Furthermore, since the unregistered design right is a new law which has not been contained in most international agreements, qualification criteria determines its protection. The act explicitly requires a product to be original for it to fulfil the protection requirements. A design is deemed to be original only if it is independently designed by the designer and is thus not copied. Hence, the originality concept is assessed in two primary steps. Firstly, is the design deemed to be original? And secondly, is the design common in the relevant design field? This test makes it more strict than the copyright law test but less lax than patent law test. The test’s first step is to compare the article design of the UDR with other similar articles in the relevant field. Secondly, the level of similarity between the article design and others in the relevant field is determined. Its then up to the courts to determine the originality and commonplace of the design of the article in light of the facts drawn from the test. The court of appeal gave vital guidelines for determining the level of commonality of a design. The court stated that if the similarity between designs is more, then its most probably because the design is commonplace. Also, a design will not be commonplace if the new design works better than the older design.8 B. CUDR The design under the CUDR is not needed to be recorded for evidence. Also, anyone can be a beneficiary of the CUDR and thus it is not necessary for the right holder to qualify.9 This makes it more preferable than the UDR.unlike UDR which requires a design to not be commonplace but original, a CUDR design rather has to possess individual character while being novel. Additionally, designs under CUDR must be visible so as to warrant protection. Visibility The CUDR requires that a component of a product must be visible when the product is being used . Moreover, its features have to be novel while having individual character.10 Novelty Under article 5, it is stated that the design is deemed new if only no similar design or form has been availed to the general public prior to the time the unregistered design was first publicly made available.11 On the other hand, designs are similar or identical if they differ in immaterial aspects only. Therefore, a novel design must be different from other similar designs in material aspects. Individual character The concept of individual character considers the level and extent of freedom enjoyed by the designer in coming up with the design. Thus, a design possesses individual character if the impression it elicits from an informed and knowledgeable user is different from an impression elicited from the user by any other design that has been availed to the general public before the time the design was made available to the general public. COMPARISON Visibility The UDR can be visible either with or without the aid of a design. The UDR design will remain solid provided the requirements are met. CUDR is trickier than UDR since it excludes various functional designs. The CUDR cannot therefore be relied on design of invisible parts. The designer preference would be the UDR. Three crucial points emanate from distinguishing UDR and CUDR. These include; novelty and individual character, originality and commonplaceness, UDRs originality and CUDRs principal of individual character.12 Comparison between novelty and individual character Individual character requirement is more challenging than novelty. The requirements between the two differ in that the novelty test is performed by a specialist while the individual character test is conducted by the well-versed user. In Samsung v Apple [2012] EWCA1339, the EU court of Appeal implied that an informed user must be a user of the product and not a technical expert, designer , seller or a manufacturer. The nature of the test is the other distinguishing aspect. While Novelty is measured via the eye, individual character is measured by both eye and touch. However, the design may lack originality due to the difference in people’s sense in touch. But sight is only used in novelty thus making it dissimilar to individual character. Individual Character and Novelty Compared To Commonplaceness And Originality It is challenging to distinguish the concepts of novelty in the CUDR and of non-commonplaceness in the UDR due to their similar. These concepts are objective tests and unqualified in patent law. The concepts of non-commonplaceness and comparative novelty are deemed to have little resemblance of each. Designers may opt for CUDR rather than UDR if CUDR is molded to those of England. Numerous interpretations emanate from comparisons of individual character and non-commonplaceness. Sight can assess individual character. However, it is not clear whether a similar test is also applicable to UDR.13 However, recent case laws give green light tests like to the one under the UDR to be used. In UDR, the test of non-commonplaceness engages a comparison of the extent of correspondence between the designs under scrutiny and other article’s design in a similar field seems to reflect the essential assessment involved in determining the individual character of a design in CUDR. In the UDR as in the CUDR, the evaluation must be undertaken objectively. Individual Character Novelty in CUDR Law and Originality In copyright law There are clear differences between CUDR protection requirements and copyrights. Individual character calls for more impartiality than originality. Individuality is defined by disparities of the product when compared with pre-existing products viewed by a knowledgeable user. In copyright law, Individual character and originality have both different impacts at the infraction stage. The particular UDR and CUDR tests of non-commonplaceness and individual character are similar. However, both are secluded from the equivalent principles contained in copyright law. OWNERSHIP A. UDR Section 215 implies that the designs are owned by the designer. Custom-built designs belong to the designer. Equally, employees’ designs are the property of their employer B. CUDR Article 14 of the Regulation adopts section 215 of the CDPA which states that the title is vested in the designer of the design or his/her successor. C. Comparison In regard to ownership, there exist no differences between both the CUDR and the UDR. As such, regulations concerned with initial and employer ownership are similar in both UDR and CUDR.14 TERM A. UDR In summary, Section 216 sets the term limits at a minimum of ten years and a maximum of sixteen years. Right licenses are obtainable for anyone during the UDR’s last 5 years. B. CUDR The duration of the CUDR is three years from the time it was made avalibel to the public for the first time. C. Comparison The design rights lasts for only five years. RIGHTS A. UDR In UDR, the design right owner possesses the exclusive right of reproducing the design for sale.15 B. CUDR The holder of a CUDR has the right to use it. Additionally, the holder is entitled to bar any third party from using it without using it if the party does not have the holder’s consent. C. Comparison Rights given under CUDR are identical to those in the UDR but more detailed since they encompass all the uses of the design, even if it is used for non-commercial purposes. LIMITATIONS A. UDR There are no exceptions to the Unregistered Design Right. Despite this lack of exceptions to UDR rights, there exists a limitation on the concept of protection. B. CUDR Article 20 of the Regulation provides limitations. These are; a) Private acts and non-commercial acts exception. b) Experimental acts are not considered as infringements c) Reproduction actions solely for teaching or citation purposes are not viewed as infringements.16 C. Comparison The Regulation has more exceptions than the CDPA. The private use exception is the only similar aspect both regimes have or share. The UDR is superior to CUDR for the right for provides less exceptions. INFRINGEMENT A. UDR Section 226(2) incorporates the test of infringement. The test follows these two primary steps. First, copying has to have transpired. Secondly, the alleged infringing article design must be similar to the design which is protected. Also, the test has to be subjective and the infringing design has to be contrasted with the protected design. Thereafter, the resemblance and the variations between the two designs must be considered. It is highly recommended for the visual test to be used if only the design’s features are appreciated by sight. On the contrary, functional designs should be tested as to whether the infringing design does a similar purpose as the protected design. However, a microscope has to be used for invisible designs to determine the design shapes and hence claim the visual test sufficient, or the designs’ similarity must be weighed or determined by comparing the material proportions.17 However, if the design is deemed to be invisible since the article cant be taken to pieces, then the functional test can be used. B. CUDR The 10th Article imitates the needs of individual character. The CUDR test involves two steps. Was copying carried out? Thereby, in evaluating the scope of protection, the alleged infringement design must generate an idea on the user that is different from the protected design. an infringement occurs if the idea generated is similar. C. Comparison The CUDR infringement test mirrors the equivalent test in UDR law. If there is a lack of copying, infringement does not occur. Both tests utilize a similar idea of overall impression: the two designs have to be considered an entirety in UDR objectivity must characterise the comparison; the same applies in the CUDR for the test signifies the individual character assessment. The infringing design in UDR has to be substantially similar or identical to the protected design. this is different from the requirements of the copyright test, which states that a considerable piece of the design must be copied. Since CUDR and UDR infringement tests are equivalent, the same difference is visible between the relevant CUDR and copyright infringement tests.18 Harmonizing the Law (IP 2014) Unregistered design law in the UK was altered from October 2014 when the Intellectual Property Act 2014 was enforced.19 The law attends to aspects of the law on registered designs. The primary changes underline certain exceptions from infringement of unregistered designs and the ownership of designs. Definition of a design The law changed the definition of a design in the UK that applies to unregistered design right. A design is now defined as the configuration or shape of a part or of the whole Article. The unregistered design ceases to exist in some small and minor detail of that part. Moreover, UK unregistered design right is only accessible if a design is uncommon in the relevant design field specifically at the time of its design. This definition has been advanced and will outline the commonplaceness in a qualifying country. These territories include the UK, EU and other countries with mutual measures with UK protection rights embodied in their laws. Ownership of designs: commissioned designs The UK previous design law stipulated that a designer owned a newly created design, except if the designer was employed or commissioned to produce the design. An employer will own a design created by its employees as an element of their job. For commissioned designs, ownership of the design stays with the designer apart from where there is a contract in place to reassign the rights to the commissioner. This will apply to both UK registered and unregistered designs as per with EUs designs. Additionally, anyone who commissions a self-governing designer to create a design for them ought to ascertain that ownership is discussed at the beginning a contract is set out for and any transfer of the design to the commissioner. Design ownership The Act simplifies and broadens the eligibility requirements.20 In new law, those who are regularly resident or economically active in the UK or the EU can claim UK unregistered design right, not-withstanding their nationality. Infringement of UK unregistered design right: exceptions Specific activities in which any use of a person’s design is acceptable without infringing the unregistered design right have been introduced by he Intellectual Property Act . these include; privately used designs, experimental or educational designs and non-commercially created designs Designs opinion service The UK Intellectual Property Office provides an opinion service for patents whereby opinions can be demanded on questions of legitimacy of a patent involving novelty or imaginative step, and on inquiries on infringement of a patent. Conclusion The different rights accorded to UDR and CUDR designs present a major problem of regime clashes. The concept of regime clashes emanates from the application of different rules and regualtions to the same object, product, design or subject matter. As such, it becomes impossible to apply both UDR and CUDR regulations/ rules to the same design since they lead to conflicting outcomes. Thus, the concept of regime clashes tends to occur only in areas which experience simultaneous overlaps. Normally, regime clashes occur at the rights, ownership and exception levels and not at the subject matter level. This is mainly because subject matter and excluded subject matter are cumulative in nature. In relation to ownership, provisions in UDR and CUDR do not give ownership rights to the same person. Thus, rules of ownership differ at this level. Additionally, regime clashes are experienced at the rights level. Rights at the UDR and CUDR have different and varying infringement tests as discussed in the text above. Moreover, at the exception level, some concepts are allowed in UDR but disallowed in CUDR and vice versa. This situation creates a regime clash. Unlike in an unregistered community design where the term of protection arises automatically and lasts for a three year duration form the time the design was availed publicly, the UK unregistered design right expires after a 15year period from the time the design was first documented. Additionally, unlike the CUDR, there are qualification requirements. Therefore, specific and relevant parties can only own a UDR. From the above analysis and comparison, it is evident that regime clashes of unregistered design right in UK and EU would occur in the areas of ownership, rights and exceptions. References Bently, L., & Sherman, B. (2014). Intellectual property law. Oxford University Press. Derclaye, E. (2003). British Unregistered Design Right: Will It Survive Its New Community Counterpart to Influence Future European Case Law, The. Colum. J. Eur. L., 10, 265. Derclaye, E. (2008). French Supreme Court rules fashion shows protected by copyright–what about the UK?. Journal of Intellectual Property Law & Practice, 3(5), 286-287. Derclaye, E. (2012). Decade of Registered and Unregistered Design Rights Decisions in the UK: What Conclusions Can We Draw for the Future of Both Types of Rights, A. IP Theory, 3, xii. Fryer, W. T. (2002). European Union (EU) revolutionizes general industrial design protection. Journal of the Patent and Trademark Office Society, 84(11), 899-904. Lestrade, D. (2008). European Union Design Protection Law and Design Protection in Europe. European Newsletter, Thomson/Reuters, June. Monseau, S. (2011). European Design Rights: A Model for the Protection of All Designers from Piracy. American Business Law Journal, 48(1), 27-76. Posner, B. (1994). Protection of Car Designs and Component and Spare Part Designs under Future Community Law. Intl Bus. Law., 22, 108. Suthersanen, U. (2011). Function, Art and Fashion: Do We Need the EU Design Law?. Queen Mary School of Law Legal Studies Research Paper, (88). Ward, M. (2015). Has UK Design Law been Given a New Lease of Life?. Business Law Review, 36(1), 2-4. Read More