Designs and Copyright Training Manual by CIPA Journal

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05/06/2009

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Designs and Copyright Training Manual

AUTHOR: REBECCA CHAMBERS EDITORS: KEITH FARWELL AND WILLIAM JONES

Designs and Copyright Training Manual Author: Rebecca Chambers Editors: Keith Farwell and William Jones

ÂŠ Chartered Institute of Patent Attorneys 2008

The moral rights of the author have been asserted. All rights reserved. No part of this publication may be translated, reproduced, stored in a retrieval system, or transmitted, in any form or by any means, electronic, mechanical, photocopying, recording or otherwise, without the prior permission of the author. ÂŠ Chartered Institute of Patent Attorneys, 2008 Published and placed on sale by: The Chartered Institute of Patent Attorneys 95 Chancery Lane London WC2A 1DT United Kingdom Tel: +44 20 7405 9450 Fax: +44 20 7430 0471 Website: www.cipa.org.uk

ISBN 978-0-903932-34-9 This Training Manual should be used in conjunction with the Trainerâ&#x20AC;&#x2122;s Guide. Printed and bound by Colourfast Europe Ltd, Colchester.

Contents Introduction Blue – What is a Registrable Design? Black Module – Unregistered Design Right and Industrially Produced Products Silver Module – Copyright in Literary and Artistic Works Orange Module – Introduction to Case Law Gold – Classification and Searching Platinum Module – Sources and Resources for the Community Design White – The European Designs Directive and the Community Design Grey – Making a Registered Community Design Application Scarlet Module – Examination and Publication of Registered Community Designs Lemon Module – Invalidation of Registered Community Designs Aqua Module – Appeals Procedure for Registered Community Designs Red Module – Assignments and Licences of Registered Community Designs Ivory Module – Restitutio in Integrum Jade Module – Duration and Renewal of a Community Design Green Module – Sources and Resources for UK Registered Designs Yellow Module – Filing a UK Registered Design Application Bronze Module – Examination and Publication of a UK Registered Design Application Amber Module – Duration and Renewal and Post Registration Matters in UK Registered Designs Cerise Module – Assignments and Licences of UK Designs Pink Module – Rights in, and Infringement of, Registered Designs Lilac Module – Infringement of Registered Community Designs Cream Module – Infringement of Unregistered Design Rights

Violet Module â&#x20AC;&#x201C; The Hague Agreement and International Registrations Purple Module â&#x20AC;&#x201C; Relationship between Registered Designs, Unregistered Design Right and Copyright Sources Acknowledgements

INTRODUCTION

Designs and Copyright Training Manual Introduction

INTRODUCTION

Welcome to the Designs and Copyright Training Manual.

We have designed this manual to give you a basic introduction to the law and practice relating to registered designs and unregistered design rights. At the time of writing, the most used form of design protection is the Community Registered Design, so we will be spending quite a lot of time on this. We will also deal with registered designs in the UK in some detail, and more briefly with the International Registration system and unregistered design right. This manual also provides you with an introduction to literary and artistic copyright, mainly as it impacts on the work of patent and trade mark attorneys. We also give you an introduction to the relevant legal concepts that you will be dealing with â&#x20AC;&#x201C; this is intended primarily for those who have not already studied law. This manualâ&#x20AC;&#x2122;s main aim is to help you become familiar with day-to-day law and practice, so that you can advise your clients competently and correctly in the areas it covers. It also aims to assist you in preparing for your examinations, but the aim is wider than that. The manual is divided into modules. Each module covers a different aspect of law or practice - although you will find, working through the Training Manual, that many of the aspects are closely related to each other. The modules are colour-coded so that you and your trainer can decide the order in which you will tackle them - although you will find that some modules must be worked through before others. (We will tell you at the start of a module if you need to have worked through another one first.) Your trainer will be able to tell you where to start. However, you should begin with the Blue Module, and then go on to the Black, Silver, Orange and Gold Modules. You may find that individual topics donâ&#x20AC;&#x2122;t seem to make a lot of sense until you have worked through the whole manual. Each module begins with a short general introduction to what it covers and lists objectives that you will have achieved by the time you have finished it. We also tell you what materials you must have with you to complete the module successfully. In some cases, you may need internet access. We will tell you how long, approximately, it will take for you to complete the module; some modules are longer than others. The modules will include some information, points for you to research, exercises to attempt and at the end, we give you a short quiz to give a chance to review what you have learnt.

INTRODUCTION

Symbols

We use some symbols in the manual to identify the various exercises, and the materials that you will need to complete them.

denotes a written exercise.

tells you that the next exercise is a reading one, rather than a written one. We will often ask you to read parts of given texts or source materials. Sometimes we will ask questions afterwards, sometimes not. In either case, we emphasise that the reading is designed to be useful in itself and to form part of your learning.

V lets you know that you should be thinking about something - but without needing to write anything down.

ÂŞ tells you that the answers to a written exercise are on the next page.

INTRODUCTION

lets you know that you need internet access to complete the exercise

This symbol tells you that you have almost completed the module, and should now be reviewing what you have learnt, and making notes of anything that you need to follow up. You can find the examination syllabus on the ITMA website, as well as a selection of past exam papers and examiners’ comments, which you will find useful. However, please note that only the last three years are really relevant. Prior to that law and practice differed somewhat. The person responsible for your training will have a Trainer’s Guide. This gives some information about the Sections and the contents of each module and briefs them to be ready for any questions you may ask. So prepare them by letting them know when you’re starting each module. It’s important that you do talk to your trainer at the end of each module; we’ve given trainers some suggestions as to ways they can help you to build on what you’ve just learnt.

Please begin with the Blue Module.

BLUE

Blue Module What is a Registrable Design?

BLUE

This module looks at what constitutes a registrable design. We will also think about what can’t be registered as a design.

We look briefly at the history of design law. We introduce you to the relevant Directive, and also take a brief look at UK legislation.

To complete this module, you will need

Directive 98/71/EC of the European Parliament and of the Council of the 13 October 1998 on the legal protection of designs (“the Directive”) – available from the IPO and OHIM websites Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community designs Internet access

When you have completed this module, you will have

Listed some intangible business assets

Read important articles of the Directive

Listed features from which industry considers that design results

Stated how articles are compared, to test whether they are identical for the purposes of establishing novelty.

You will need about half a day to complete this module.

BLUE

Intangible assets

Begin by imagining that you have a small manufacturing business.

There are a number of aspects of your business which you need to protect. For example, for your equipment and vehicles, you have insurance, and you have employment contracts with your staff.

But these don’t cover those areas that make your particular business special and successful.

Think about the intangible assets of your imaginary business for a moment, and then list them. (There’s no need to spend too long on this – just make brief notes.)

Then compare your list with ours, which is on the next page.

BLUE

Your intangible assets might include Your name and logo – all your customers recognise them Your business literature and mailings Your latest product ideas Your product developments and innovations Your drawings, plans and designs. Your technical and commercial knowledge and “trade secrets”

As these are important to your business, you are very likely to want to protect them, in much the same way as you protect its more tangible assets.

You are in fact more probably a trainee patent or trade mark attorney than the owner of a small manufacturing business, so you will have realised that these are mainly areas that fall within the ambit of “intellectual property”.

So, if the owner of a small manufacturing company comes to you for advice, you might well begin by advising them to

Apply to register their company name and logo as trade marks

Ensure that their relevant “artistic works” are identified with the name of the author and the date (or year) of creation, and kept, so that copyright can be enforced against unauthorised copying. They should also show the symbol © and the words “All rights reserved”

Apply for patent protection for any new inventions.

BLUE

You might also have made some notes relating to designs.

You might advise your client to

Apply to register the design of products to protect their appearance

Obtain short-term protection against the copying of designs and keeping prototypes, or other first records of their designs, together with evidence as to when and by whom they were created, by signing, dating and keeping all their drawings. They should also keep evidence of the date the product is first marketed in the UK.

In this Manual, we will look at

Registered designs

Unregistered design right

Related aspects of copyright.

Before we start looking at the technical detail, weâ&#x20AC;&#x2122;ll take a brief look at the history of our subject.

BLUE

A brief background

Copyright has, since at least the eighteenth century, provided protection against copying for original artistic works. However, designers also wish to protect designs for articles which are not purely aesthetic – articles which perform a function. And in many cases, the buyer of something that is functional is also going to take into account the appearance of the article.

The first legislation on the subject came in the Designing and Printing of Linen Act 1787, which was short-lived, and intended to protect a category of textile designs from copying, for a very limited period of two months.

The law developed throughout the nineteenth century. The concept first appeared in the Copyright and Design Act 1839 that There should be a system of registration The Board of Trade should appoint a Registrar Unlike copyright, a design could not be registered validly if it was no longer novel – that is, that it had been published before registration.

Following the Acts of 1842 and 1843, registered design protection was intended for both functional and non-functional articles. For the first time, both an article, or part of the shape or configuration, could be protected. Applicants also had to specify which parts of the design in question were not “new or original”.

Under the Copyright of Designs Act 1875, design registrations became the responsibility of the Patent Office.

Modern design law evolved from the Patents, Designs and Trade Marks Act 1883, which provided a unified system of registration for ornamental and functional designs, granting a five-year period of protection. For a registration to remain valid for this period, it was a requirement that the design was used in the UK.

This was followed by the Patents and Designs Act 1907 to 1946, the Copyright Act 1911 and the Patents and Designs Act 1919, which provided for the removal of a registration, on application by a third party, if the design had been published in the UK before the application to register it had been made, a new definition of designs and the abolition of the previous classification system.

BLUE

The Registered Designs Act 1949

The Registered Designs Act 1949 (“RDA”), which came into force on 1 January 1950 – and is still in force, although it has been amended very substantially, primarily in 1988, 2001 and 2006, as we will see. It is still important to us since the introduction of the Community Design, which is now widely used, despite UK registrations.

When you look at older registrations, you will see references to “articles” Since the implementation of European Council Directive 98/71/EC (“the Designs Directive”), which we will be looking at shortly, we now refer to “products”, rather than “articles”. Protection is no longer limited to the design as incorporated in a particular product, but now covers the design applied to or incorporated in any product.

Most recent legislation

Coming into force on 1 August 1989, the Copyright, Designs and Patents Act 1988 made amendments to Registered Designs Act 1949.

Among the changes it introduced was a new type of design protection – unregistered design right. This covers most articles, without registration. (We will look at registered and unregistered rights in much more detail in other Modules.)

UK design law was amended by the Registered Designs Regulations 2001. These brought the Designs Directive into effect in the UK on 9 December 2001, extensively amending the Registered Designs Act 1949. Further amendments came with the Regulatory Reform (Registered Design) Order 2006.

There is also Council Regulation (EC) No 6/2002 of 12 December 2001, which provides for European Community-wide unitary registered designs, and a corresponding unregistered design right. The Community unregistered right entered into force on 6 March 2002.

We will talk about unregistered rights in the Black Module.

BLUE

The European Designs Directive

One of the principal purposes of the European Union is to facilitate trade – the free movement of goods – between Member States. However, the need to register designs in each State, with differing requirements as to what can be protected, and differing protection given, would hinder this free movement.

So the EU wished to harmonise the laws of its Member States, with regard to the subject matter that could be protected by design registration.

The detail for this is set out in Directive 98/71/EC of the European Parliament and of the Council of the 13 October 1998.

You should have a copy of Directive 98/71/EC of the European Parliament and of the Council of the 13 October 1998 on the legal protection of designs with you, or you can find it online at http://oami.europa.eu/en/design/propdir.htm. Read it now.

Note the way in which it is set out, including its long “Preamble” (the sections commencing “whereas”). This style is different from legislation in this country, including the Registered Designs Act 1949. The Preamble Statements (also called “recitals”) are an extremely important aid to interpretation of the objectives of and hence the words in the Directive and thus also to many sections of our amended UK Registered Designs Act.

BLUE

Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community designs

Now please spend some time reading Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community designs, which you should have with you.

Note the importance of The role of OHIM – Art 2 The unitary, EU-wide nature of the provisions, which go beyond the Directive, governing, for example, Unregistered Community design – Art 11, Art 19(2) First ownership – Art 14 Application processes – Titles IV, VII, XI Surrender and invalidity – Title VI Jurisdiction and litigation procedures – Title IX Effects on national laws – Title X.

Definitions – design and product

Now read Article 3 of the Directive – Definitions.

Note that a “design” and a “product” are separate concepts.

BLUE

What makes a design capable of being registered?

The Registered Designs Act 1949 (RDA), as amended sets out the criteria for designs that are registrable.

Please begin by reading Sections 1, 1B – 1D, 2 and 3 and then please answer the questions below.

What “features” constitute a design for the purposes of the Act?

Which of the following might be registrable as designs (assuming that all designs are new and have individual character – we will look at these terms shortly)? i) a garden chair with a back shaped like bird wings ii) an oil painting of a garden chair iii) a tea set decorated with designs of garden furniture iv) a bird-shaped soft toy

In whose name is an application made?

Who is regarded as the author if a design is computer-generated?

The answers are on the next page.

BLUE

The answers.

The answer is in Section 1(2) and (3) – “…The appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, shape, texture or materials of the product or its ornamentation”.

i) Yes ii) Probably not iii) Yes iv) Yes

Section 3(2) – “The person claiming to be the proprietor of the design”, and see also Section 3(3) – “The person claiming to be the design right owner”.

“…The person by whom the arrangements necessary for the creation of the design are made shall be taken to be the author.” Section 2(4).

You shouldn’t have found these questions too difficult.

We will look at definitions in more detail now.

BLUE Note the definitions

A design A design, in the context of registered designs, means the appearance of the whole or part of a product resulting from features of, in particular Lines Contours Colours Shape Texture Materials of the product or its ornamentation. Note that these categories are not exhaustive.

A product A product, in the context of registered designs, means any industrial or handicraft item, other than a computer program. A product includes parts intended to be assembled into a complex product (which means a product which is composed of at least two replaceable parts). Section 1(3).

Component part of a complex product

The IPO issued a practice note in January 2003 â&#x20AC;&#x201C; DPN 1/03. You should be able to find it at http://www.ipo.gov.uk/design/d-decisionmaking/d-law/d-law-notice/ d-law-practicenotice/d-law-practicenotice-dpn103.htm Please read it carefully now.

BLUE To summarise – the law is designed to protect the appearance of a product and part of a product.

Think about what some of the terms mean for a few minutes. Then compare your ideas with some of our thoughts below. Because the definitions had very recently changed at the time of writing, we don’t have any guidance from decided cases on what will actually constitute a design, at least in the case of those terms that differ from those used before the Act was amended to take account of the Designs Directive.

Shape This appears reasonably straightforward - you can see that, for example, a teapot shaped like a song thrush would qualify. But you should also think about what might happen where the product can appear different when in use. For example, what happens if the product is flexible or elastic? A shape may also look different when an item is closed from when it is open.

Ornamentation This could be a single design applied once to the surface of an item or may be three dimensional. For example, if we use again the example of a teapot, a design that makes it look like a song thrush could be applied to the side of the pot by transfer, or the song thrush could be shown in relief on the surface of the teapot, or the song thrush could be a sculpture standing up from the teapot, for example, used as a handle for the lid. All three representations of the thrush are ornamentation.

Texture The teapot could be plain white in colour, but the bird could be indicated by feather-like texturing on the surface.

Colour The bird could be painted in naturalistic colours, or, for example, primary colours. What happens if a heat-sensitive pigment is used, so that the bird only appears when you pour boiling water into the teapot?

As you see, we haven’t looked exhaustively at the possibilities here – so make a note to discuss them with your trainer.

BLUE

Important The words “In particular” mean that the list is not exhaustive – other features of the appearance of a part or product might mean that it qualifies for design registration.

Some cases to note Make a note of the following cases to read when you have completed this module. They are old cases, but should still give you a good understanding of the concepts behind design law. Cow & Co Ltd v Cannon Rubber Manufacturers Ltd [1959] RPC 347 Kestos Ltd v Kempat Ltd [1936] 53 RPC 139.

Applying to register parts of products

The IPO issued a relevant practice note in January 2003 – DPN 2/03. You will find it at http://www.ipo.gov.uk/design/d-decisionmaking/d-law/d-law-notice/ d-law-practicenotice/d-law-practicenotice-dpn203.htm

Please look at it now, and make a note of the need for a disclaimer where the application covers only part of a product.

BLUE

You will need to become familiar with the standards applied by the UK Design Registry so that when your clients call on you to advise them whether their design may be registrable, you will be able to apply your knowledge of Registry practice in your advice and opinions.

Becoming familiar with the electronic UK Designs Journal will help you with this.

Some design features

What happens in circumstances where the design is not visible when you actually buy the article - but, when you have actually started using it, it becomes visible? (Remember our example earlier of a design that appears on the side of a teapot when you add boiling water.)

Thinking about the definitions you have looked at, make some notes on registrability under these circumstances. Then compare your ideas with ours.

BLUE

We can look to the Directive for guidance, in the Recitals 11-15.

There is no requirement that the design features should be visible in use, only that they are shown visibly in the application.

Look at Recital 11.

Not surprisingly, OHIM also defines what makes a design capable of being registered.

Go to the OHIM website, and go to the Community Design, and find the Practice Note 2/2005. You can find it by using the search box (see “Search” near the top right hand of the page), and it will open as a pdf document. This gives us OHIM’s definition of a design. Please take a brief look now. We will look at it again shortly in the Grey module.

Article 4 of the Directive

This Article defines a design that is new, and therefore qualifies for registration.

BLUE

Please read the Article, and the commentary, and then answer the questions on the next page, from memory as far as possible.

Your client, Mr Jenkins, has designed a series of puppet characters which have formed the basis of a successful series of books for pre-school children. His wife is now in the process of designing plastic cups, plates and cutlery intended for toddlers, which show the puppet characters. Can Mrs Jenkins register the design for the new products?

Another client, has produced a series of prototypes of squashy toy versions of prominent London landmarks – St Paul’s Cathedral, the Tower of London, Big Ben and so on, which he hopes can be sold as tourist souvenirs around London. Are the designs likely to be registrable?

How will articles be compared, to test whether they are “identical” for the purposes of establishing novelty?

Now check your answers.

BLUE

The answers.

No – it is likely that the designs would differ only in immaterial details, and thus not qualify for registration.

These may qualify for registration – the squashy toys are unlikely to be exact reproductions of the buildings and are likely to have material differences in appearance and to produce a different overall impression on the informed user.

By comparing a design registration and the article in question, or a photo of it. Note that it is currently unclear how differences of, for example, the way a product feels to the touch, will be assessed, although it is clear that these may form part of the appearance of the whole or part of a product which constitute the design – Article 1.

Article 5

Article 5 specifies that a new design must have individual character. Note that this is in addition to the provisions concerning novelty in Article 4.

Please now read the Article and the commentary. Note that we have yet to see how this will be interpreted in practice, and read carefully the author’s comments on how this might be interpreted.

Then read Recital 13.

BLUE

What might the areas be, where a designer has a particularly large, or small, degree of design freedom? Think about this for a moment, and make a note of any ideas. Please make a note to discuss your ideas with your trainer when you have completed this module, as it is still an area which is somewhat unclear.

Article 6

This Article expands on the requirements in Article 4 and 5 that qualifying designs must be new and have individual character.

It specifies the circumstances where an article will be deemed to have been made available to the public.

Please read Article 6 and the commentary, and then answer the questions on the next page, again from memory if possible.

BLUE

When a client shows you the design she hopes to register, you ask her if she has shown it to anyone else yet? She says she has described it in an interview on her local radio station. Under the circumstances, will she be deemed to have disclosed it?

She also tells you that she showed it to the company she proposes to use for its manufacture, but says that the company signed a confidentiality agreement before they saw it. Under these circumstances, will she be deemed to have disclosed it?

Why is a grace period allowed?

Now look at the answers.

BLUE

How many did you get right?

This is not clear, because the situation concerning oral disclosures is not defined. The question of how clear her radio description was might have to be considered. The medium of the disclosure is not an issue, but the sufficiency of the disclosure in defining the design is. (Of course, there is also the 12-month grace period to take into account – if the radio interview was recent, this would not be a problem in any case.)

No. Article 6, para 1.

To enable people to test their designs (to see whether there is a market for them) before applying for registration (with its attendant costs).

Article 7 This Article prohibits the registration of product features that are Solely dictated by technical function Dictated by the necessity for them to interconnect (also known as “must fit”). However, it does allow registration of products within a modular system – for example modular furniture or children’s building bricks.

Please read Article 7, and the commentary, now. Spend some time considering the commentary carefully. Note the potential problems in interpreting the terms – we will see in due course how OHIM and the courts interpret these.

BLUE

Article 8

This Article provides the usual exclusion from protection of designs which are “contrary to public policy or accepted principles of morality”.

Please read the Article and commentary now. The commentary suggests areas where this might be taken into consideration. Note that different Member States may have differing standards in these areas – some countries are more conservative than others.

If a design is to be registered, it must be new.

This means that it must not have “reasonably” become known (“disclosed”) to the relevant business sector in the EU before you file the application at the Design Registry (with some exceptions – which we will look at shortly. Also the design must not be too close to such known designs (meaning differing only in immaterial details).

You should advise your clients that, if they have disclosed a similar design (one which differs only in “immaterial” details) more than a year before filing, they may have lost their chance of obtaining registered design protection.

So, you should advise your clients that it is usually best to file early.

BLUE

To summarise briefly, a design will still be accepted as new if it has only been disclosed in the following circumstances:

Published or disclosed in circumstances in which it is not likely to have become known to people carrying on business in the European Economic Area, specialising in the sector in which design is utilised

In confidence and in good faith

Disclosure made by the designer (or successor in title) up to 12 months prior to the application date or priority date

Disclosure made by someone other than the designer (or successor in title) up to 12 months prior to the application date or priority date, as a result of action taken by, or information supplied by the designer (or successor in title)

Disclosure was the result of an abuse in relation to the designer (or successor in title).

Important note

Before December 2001, the 12-month grace period did not exist. There were exceptions, including disclosure of the design at certain exhibitions, or where the design had a previous existence as a copyright work.

BLUE

Individual character

The requirement that a design must have individual character is a relatively new one.

If the “informed user” is assumed to be extremely knowledgeable, and aware of the finest subtleties of design, then the standard of criteria for registrability might be lower than that assessed through the eyes of a less well-informed user. However, it is the overall impression, not design subtleties, that counts. In fact, the “informed user” is, for the purposes of the Directive, unlikely to be a great expert. And the person who is deemed to be the “informed user” may differ, depending on the sector of industry, or handicrafts, that a specific design falls into.

The concept of a differing overall impression is also not very precise, and will need further interpretation in decided cases. Decisions concerning the scope of registered design protection given under previous legislation may help us. These involve the question of whether two designs are “not substantially different”, and the tests developed involve assessment of the design as a whole, through the eyes of a consumer or customer, taking into account known designs or design freedom.

This was considered by the UK Court of Appeal in an important case. We will look in more detail at a UK Board of Appeal decision Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2008]FSR 208 in the Orange Module.

BLUE

What happens if your clientâ&#x20AC;&#x2122;s design is not novel?

Article 11

This Article provides the grounds on which applications should be refused.

Please read the Article, carefully. Note that there are absolute and relative grounds on which an application may be refused.

Will the national authorities of the EU refuse to register a design if someone else has an earlier right in that design? Write down your answer.

BLUE

Not necessarily â&#x20AC;&#x201C; it may be up to the owner of the earlier right to take action. However, national registries may opt to object on relative grounds. The UK Designs Registry does not perform official searches, and nowadays does not raise objections to registrability on relative grounds except in very obvious cases known to the Examiner.

Potential courses of action

If your clientâ&#x20AC;&#x2122;s design is not novel, is there anything you can do?

Write down your ideas, then read on.

BLUE

You may be able to

Modify the design sufficiently from the disclosed design - if the resulting design is novel, you can then file it

It may be possible to register the design as a trade mark. There is no requirement that trade marks must be novel for validity, and in some instances, the fact that a design had been in use for some time before filing may be of help in obtaining a trade mark registration.

Filing a trade mark application is not always a suitable solution. You need to be aware that the criteria for registrability as a trade mark differ from those for registering a design in many aspects, so make a note now to discuss with your trainer circumstances when this approach may be possible. It is not always feasible to try to rescue a belated design application by treating it as a trade mark â&#x20AC;&#x201C; it may not be a trade mark â&#x20AC;&#x201C; that is, a sign acting as an indication of origin.

As an example of the difference in the criteria for trade mark registrations and design registrations, in the High Court case Philips Electronics NV v Remington Consumer Products Ltd [2001] RPC 38 and [1998] RPC 283, a trade mark registration for the triangular shape of a three-headed shaver was revoked, but the registered design held to be valid (although of limited scope). This was upheld by an European Court of Justice judgment.

In circumstances where trade mark registration is possible, an advantage to your client is that a trade mark registration can be kept in force for ever (if the fees are paid and the mark is used). Compare this with the term a registered design remains in force (we discuss this in other modules).

Trade mark law is generally outside the scope of this manual. However, ask your trainer about Philips v Remington when you have finished this module, because it is a very important decision.

BLUE

You are almost at the end of this module and will shortly reach the final quiz.

Before you finish, however, donâ&#x20AC;&#x2122;t forget to spend a few minutes making notes of any points you want to discuss with your trainer.

You have seen a few areas of the OHIM website. In the Platinum Module, you will have an opportunity to look at the site in more detail, explore it, and become familiar with it.

Now move on to the quiz.

BLUE

Test yourself

Where can you find OHIMâ&#x20AC;&#x2122;s definition of a design?

What does Article 7 prohibit?

Which Article provides the grounds on which applications should be refused?

What do we say an informed user is?

Why may it not be possible to rescue an application by filing it as a trade mark application?

Check your answers.

BLUE

The answers

Practice Note 2/2005.

The registration of designs that are Solely dictated by technical function Dictated by the necessity for them to interconnect (also known as “must fit”). Note the exceptions that include modular furniture and toys that fit together, such as building bricks.

Article 11.

Someone who is neither a great expert not an ordinary customer – someone in between, such as a retail buyer.

Because it may not be an indication of origin, which is what a trade mark must be.

BLACK

Black Module Unregistered Design Right and Industrially Produced Products

BLACK

In this module, we introduce you to some unregistered rights in designs including the UK unregistered design right, the unregistered Community Design and semiconductor topography rights. In addition to the materials in this module, we strongly recommend that, when you have finished working through this module, you do read the additional recommended materials, as they will help you to build on what you have studied here.

To complete this module, you will need The Copyright, Designs and Patents Act 1988 The Design Right (Semiconductor Topographies) Regulations 1989 Access to the OHIM website

When you have completed this module, you will have Stated what the CDPA means by â&#x20AC;&#x153;designerâ&#x20AC;? Identified the duration of unregistered design right Listed the forms that a design document may take Identified the duration of an unregistered Community Design.

This module will take about a day to complete.

BLACK

The provisions of the Copyright, Designs and Patents Act 1988 relating to unregistered design right

You should have with you a copy of the CDPA. Please turn to the “Arrangement of Sections” at the front and locate the Sections that provide for design right.

You should be looking at Part III - Sections 213 to 264.

We will deal with infringement of unregistered design right in the Cream Module and with dealings with them, such as licensing and assignments, in the Cerise Module. But we’ll now take an overview of the provisions of the Act relating to design right.

Looking at Part III, please answer the questions on the next page.

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Which types of designs are excluded from unregistered design right protection?

What is meant by the term “designer”?”

What is the duration of design right?

What does “future design right” mean?

What are the exclusive rights of the owner of a design right?

Under what conditions does an import into the UK of an “infringing article” become an infringement?

Which Sections deal with exceptions to the rights of the owners of design right?

Where Crown use is made of a design, is any compensation given to the design right owner or licensee?

The Comptroller may, under Section 251, refer proceedings. To where?

The answers are on the next page.

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Designs which are not original, including commonplace designs. Methods and principles of construction. Features of shape configuration which enable the article to be connected to, or placed, around or against, another article so that either article may perform its function are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part surface decoration and other design features which are not “shape and configuration” designs which consist of or contain a controlled representation within the meaning of the Olympic Symbol, etc (Protection) Act 1995 – (S.213 5A) ”unrecorded” designs cases where the design does not qualify for protection by reference to the designer, their employer, the person commissioning the design or the country of first marketing the design Old designs recorded before the commencement of the Copyright, Designs and Patents Act 1988 on 1st August 1989 Section 213.

“The person who creates it” (the design). Section 214.

Design right lasts fifteen years from the end of the calendar year in which the design was first recorded in a design document or ten years from the end of that calendar year in which articles made to the design are made available for sale or hire, if such articles are made within five years from the end of the calendar year when the design was recorded whichever is the shorter. Section 216.

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A “design right which will or may come into existence in respect of a future design or class of designs or on the occurrence of a future event”. Section 223(2).

“The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes (a) by making articles to that design, or (b) by making a design document recording the design for the purpose of enabling such articles to be made”. Section 226(1).

When the import is for commercial reasons and/or the article is sold, hired or offered for sale/hire and the person knows or has reason to believe that the article is infringing. Section 227(1).

Section 236 to 245.

Yes, under Section 243.

To the High Court - except in Scotland, where proceedings are referred to the Court of Session.

Next, we’ll look at some of these points in more detail.

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The existence of design right Section 213 of the Copyright, Designs and Patents Act 1988 states that “Design right is a property right which subsists... in an original design”. This means that it comes into existence automatically when an original design is first created - there is no registration required.

What is protected?

If you wish, please read Section 213 now.

Note that the design features which can be protected are “any aspect of” shape configuration of the whole article part of the article and these design features can be internal external

So the protection offered by design right in effect covers the shape of an article (and not any pattern or surface decoration that the article might have).

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Internal designs

Since design right can cover both internal and external designs, and parts of articles, this means that in some instances there will be separate design rights in the inside and outside of the same object, as well as its different parts.

Please note that the Act does not require that designs should be visible in order to be protected.

Designs not visible to the eye

In Ocular Sciences v Aspect Vision Care Ltd & Ors [1997] RPC 289, it was held that contact lens designs could be protected, even though the features of the design were too small to be seen without a microscope. The judge said â&#x20AC;&#x153;The worth and ingenuity of a functional design over designs of similar overall appearance may be due to its detailed relative dimensions.â&#x20AC;?

Please make a note to read this case when you have completed this module.

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Remember that design right does not exist unless it has been recorded in a design document or an article has been made to the design.

This helps to ensure that there is a record of the design in which the designer claims to have a right it is possible to identify the date from which the term of the design right commences - provided that the drawings, article or other media recording the design can be dated.

Please make a list of all the various types of record you can think of that might constitute a design document.

Then compare your list with ours.

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Design documents can be in writing drawings photographs (although these will probably not be the earliest design document for the design in question. The thing which was photographed will also be a design document because it records the design) a computer record a prototype or model unfinished article for sale Design documents can probably also be a combination of these things. Section 263 (1).

Exclusions from unregistered design right Some designs are specifically excluded from unregistered design right protection. A method or principle of construction One of the reasons for this exclusion is so that a design right is not perceived to be a free alternative to a patent. In most cases, the design of an article is unlikely to qualify as a method or principle of construction. In Parker v Tidball [1997] FSR 680, the judge held that the stitching of seams is not a method of construction. Cases decided under the unamended Registered Designs Act 1949 may also help decide what can and can not be protected as an unregistered design, as there was a similar â&#x20AC;&#x153;method of constructionâ&#x20AC;? provision in Section 1(1)(a).

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The “must-fit” exclusion

Please look at Section 213(3)(b)(i).

This is known as the “must-fit” exclusion. You will also sometimes see people refer to it as the “interface exclusion”.

Please think about this for a few moments, and then write down what you think the reasons are for this exclusion. Whom is it intended to protect?

Then please read on.

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The exclusion is intended to protect people who make or sell articles with which to repair other articles - for example, cars.

In many instances, there will be only one possible shape of an article that will enable it to be fitted to another article - and if there were to be design right in articles which are purely functional, this would give the manufacturer of the article an unfair advantage over spare parts manufacturers.

Before the CDPA came into force, manufacturers would often try to use copyright to ensure that they had a monopoly in supplying spare parts for goods that they had made.

You can see that, although the wording of Section 213(3)(b)(i) means that it is most likely to be spare parts that fall within this exclusion, it can apply to any article that enables another article to fulfil its function.

Now read on to learn something about designersâ&#x20AC;&#x2122; intentions.

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The designer’s intention We next need to consider whether the intention of the designer is relevant, when we look at the interface between two articles.

Look at Section 213 (3)(b)(i) again. As you can see, it does not include a requirement that the designer of the article should have intended the article to interface with another. In the Ocular Sciences case, it was held that there is no requirement “… That the designer should know that the features enable the interface, it is sufficient if they do so in fact”. Must-match

Please look again at Section 213(3)(b)(ii). This Section excludes from design right protection articles which match the appearance of another article – the “must-match” exclusion. For this Section, the intention of the designer is relevant - note the wording “intended by the designer”. Also, please note the words “to form an integral part”. If they match but do not form an integral part, they are not excluded. However, parts of an article that are, for example, an intrinsic part of another or larger article, can be protected by unregistered design right – there is no requirement that they should ever even be visible in normal use – in contrast to the requirements for registration of designs for component parts of a complex product, or the requirements for Community unregistered design right.

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Surface decoration Decorations on the surfaces of articles are specifically not protected by the unregistered design right.

Originality Section 213(1) says that design right subsists in designs that are original. For a client’s design to qualify as original, a design must not be copied from another design or article, nor involve only a trivial degree of skill, labour or judgement in its creation (“unoriginal”, in the copyright sense) under Section 213(4), “commonplace in the design field in question at the time of its creation”.

Commonplace Unregistered design right does not protect designs that are commonplace. As a general rule, the best way to determine whether a design is commonplace is to look at what is already on the market. If a client asks for your advice in this area, you could well start by asking him how his design differs from what is already available in his particular field. If you are advising a client facing an infringement action, and you believe there is a “commonplace” defence, you could obtain catalogues or trade brochures to see if similar designs are common.

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Design right qualification

We saw earlier that design right only exists when a design document had been created or an article has been created to the design and the design is original.

Another condition is that the person who claims to own the design right - that is the designer or designers in the case of a joint design or designerâ&#x20AC;&#x2122;s employer or person who commissioned the design must have qualifying status or meet the first marketing provisions.

After that, special provisions apply as to ownership.

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Please read Sections 214 to 221 of the CDPA now, then answer the questions.

Who is the “designer” in the case of computer-generated designs?

What is a “qualifying person”?

A design has been jointly created by designers - which of the following can claim to own design right in the UK? i) A Scottish designer, resident in Edinburgh ii) A German designer resident in Hamburg iii) A German designer resident in Chicago iv) An American designer resident in Chicago

If the designer/commissioner/employer can not be considered a qualifying person, are there any circumstances when the design might still be protected by design right?

Check your answers.

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The answers. 1.

“The person by whom the arrangements necessary for the creation of the design shall be taken to be the designer.” Section 214(2).

“A qualifying individual or a body corporate or other body having legal personality which (a) is formed under the law of a part of the United Kingdom or another qualifying country (b) has in any qualifying country a place of business at which substantial business activity is carried on.” Section 217(1).

i), ii) and iii) provided the design was not made in the course of employment or pursuant to a commission. Section 215.

Yes - on condition that the person who first markets the articles is a qualifying person exclusive authorised to put the articles on the market in the UK and the goods are first marketed in the UK or another country falling under Section 220(1)(b) and the exclusive authorisation is by a person who would have been first owner of design right, as designer, commissioner or designer’s employer, had they been a qualifying person, or another person lawfully claiming under them. Section 220.

Important notes Please note that the person who first markets the design must be authorised to put the articles on the market - if there is no authorisation, there is not design right. Marketing can take the form of selling or hiring out the goods - or offering them for sale or hire.

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The period of design right

Design right has a limited term. It may be either 15 years from the end of the calendar year when either the design was first recorded in a design document or an article was first created to the design whichever was the earlier. Or if articles made to the design are available, by or with the permission of the design right owner, for sale or hire within five years of the end of the calendar year specified above then design right expires ten years from the end of the calendar year in which the articles were first made available.

So a design created on 1 January 2008 will qualify for design protection for almost a year longer than a design created at the end of December that year.

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Difficulties It can be difficult to identify the date when design right first arose. If you need to do this, you could try asking the design owner - who could be an assignee, rather than the original owner seeing if old copies of the ownerâ&#x20AC;&#x2122;s literature are available for the last 15 years looking in old trade catalogues finding out about old trade fairs or exhibitions - these probably had catalogues reading old newsletters. If your client quickly exploits a design and sells articles made to that design, then the term of ten years, from first making the design available for sale or hire, will apply. However, if your client has problems in actually putting it on the market - for example, if they want an order before they start an expensive manufacturing process, or something intervenes to prevent them from proceeding with the manufacture for a while, then they have the total term of a maximum of 15 years to rely on. If, within the first five years from the creation of the design, they are able to put articles onto the market, they will then benefit from the standard design right term of ten years from the date when they first make the articles available.

Licences of Right

Now read Section 237. During the last five years of the design right term, (whether calculated as 15 years from the end of the calendar year of first recordal, or ten years from the end of the calendar year of first marketing), anyone is free to use the design upon agreed terms, and usually with payment of a royalty to the design right owner. If terms cannot be agreed, the person seeking the licence can apply to the UK-IPO for settlement of terms (Section 247).

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Semiconductor topographies

What is covered?

The Design Right (Semiconductor Topographies) Regulations 1989 No 1100 are intended to protect the designs of electronic chips.

A semiconductor is a material which is neither an effective insulator nor an efficient conductor of electricity.

Silicon is the semiconductor which is the basis of microchips. Layers bearing different designs (in the form of complex networks of lines) are added to a layer of silicon. The layout of the topography of each layer of the chip is recorded, often initially in drawings. This is then photographed onto a material and the resulting product is called a mask. The mask is used in a photo-etching process to form the layers on the chips.

The Design Right (Semiconductor Topographies) Regulations 1989

These regulations provide for the protection of the designs of these articles in the UK. To qualify for design right protection under the regulations, topography designs must be original.

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Please turn to your copy of The Design Right (Semiconductor Topographies) Regulations 1989 and read it through carefully. Then answer the questions below, from memory if possible.

When did the regulations come into force?

Which regulation defines “semiconductor topography”?

What is a “qualifying country” in this context?

When a design is commissioned, who is the owner of the design right?

What is the term of design right when articles made to the topography have been sold?

Are licences of right available?

Please check your answers.

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Our answers.

1 August 1989 – the same date as the Copyright, Designs and Patents Act 1988 to which they refer.

Regulation 2(1).

The UK or a member state of the EC. And please note the schedule of additional classes of qualifying persons, including natural and legal persons from the USA and Japan, and legal persons from Norway and Switzerland, amongst others.

If there is no written agreement to the contrary, the commissioner is the design right owner – Section 215(1) Copyright, Designs and Patents Act 1988, as substituted by Regulation, paragraph 5.

Ten years from the end of the calendar year when the articles were first made available - Section 216(a) Copyright, Designs and Patents Act 1988, as substituted by Regulation, paragraph 6(1).

No – Regulation paragraph 9.

Some notes Articles can be protected by semiconductor topography rights, provided that they perform an electronic function, but they can perform other functions as well. Articles may be two-dimensional or three-dimensional. The pattern, which must appear on just one of the layers, does not have to be responsible for the electronic function. There is a separate design right in the whole of the article each layer of the article each aspect of the design each part of each pattern. Mask patterns are covered by the right because they are not surface decorations.

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Duration of design right in semiconductor topographies

Please look again at Regulation 6. There are important differences between the duration of this right and other design rights -

there is no requirement that articles should be marketed within five years of the design being created to qualify for the basic ten-year protection period, although marketing must take place within 15 years, if protection is not to be lost.

So if your client created a design in 1996, but did not actually put goods made to the design on the market until 2010 - they would still have the benefit of ten yearsâ&#x20AC;&#x2122; protection from 31 December 2010 (that is, until 31 December 20200).

The 15-year period of protection runs from the date of the creation of the design, not the end of the calendar year.

In fact, depending on how early in the calendar year the articles are first marketed, it is possible to obtain almost 26 yearsâ&#x20AC;&#x2122; protection for semiconductor topographies.

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Unregistered Community design right Although the UK already had provisions for rights in certain unregistered designs, many other Member States did not, so unregistered Community design rights were introduced along with registered rights.

Unregistered Community design right is available automatically.

Unregistered Community design right simply gives the right to prevent copying.

The unregistered Community design provides, throughout the Community, protection of products without any requirements as to their aesthetic value.

The period of protection is three years.

Protection does not require any reputation or widespread knowledge of the public of the product in question or confusion of the public.

Design owners can protect almost all aspects of the product.

The unregistered Community Design co-exists with registered designs and UK unregistered designs and with other unregistered rights such as unfair competition rights.

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The Regulation

Please go to http://oami.europa.eu/en/design/reg.htm.

Then click on Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs. In the pdf document, look at the Recitals at the beginning of the Regulation. Read Recitals 15 to 17, and recital 21.

You can see that, besides registered protection, the Regulation also aims to provide EUwide protection for unregistered designs on a short-term basis.

There is no specific definition of an unregistered Community Design in the primary legislation. It exists automatically, provided that it complies Articles 3 to 9 of Council Regulation 6/2002 and has been made available to the public as in Articles 11 and 110a(5).

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What can be covered by unregistered Community design right?

The same types of design as may be registered as Community designs also qualify to be treated as having unregistered design right. However, in the case of unregistered rights, where there is a dispute as to the validity of the right, the burden of proof is on the owner of the right to show that the right is valid.

The novelty requirements for unregistered Community designs are set out in Article 5, paragraphs 1(a) and 2. These are similar to those for registered Community designs (paragraphs 1(b) and 2), except that the “cut-off” date for the prior art is the date the design was first made available to the public, rather than the date of filing the application. Article 6, paragraphs 1(a) and 2 contains analogous provisions for the individual character of unregistered Community designs. The conditions under which a design is deemed to be “made available to the public” are otherwise the same for registered and unregistered Community designs.

Designs will be covered by unregistered rights during, for example, the 12-month grace period that is allowed from first publication before someone needs to file an application to register the design.

Note also that unregistered design right protection commences from the date on which the design was first made available to the public within the Community – Article 11, paragraph 2.

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Differences between unregistered Community Designs and UK unregistered design right

UK unregistered design rights can not protect “must match” designs (Section 213(3)(b)(ii) Copyright, Designs and Patents Act 1988), but unregistered Community Designs may, so long as they are visible in normal use (Article 4(2)(3) of the Regulation).

Unregistered design rights can not protect surface decoration (Section 213(3)(c) CDPA 1988); Unregistered Community Designs may: Article 3(b) of the Regulation.

Unregistered Community Designs require novelty and individual character (different overall impression on informed user, having regard to the degree of freedom of designer, see Articles 4-6 of the Regulation); unregistered design rights merely require “originality” and “not-commonplaceness” (see Section 213 CDPA).

Unregistered Community Designs last for three years from publication in the EU (Article 11(2) of the Regulation); unregistered design rights in the UK last 15 years from first recordal of the design or ten years from first sale (Section 216 CDPA).

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Unregistered Community Designs are not subject to a licence of right regime during their subsistence; unregistered design rights are subject to it in the final five years of their term (Section 237 of the CDPA).

Unregistered Community Designs may be owned by anyone, anywhere, of any nationality; UDR ownership is subject to nationality restrictions: Sections 217221 of the CDPA.

Disputes in connection with unregistered Community Designs belong to the jurisdiction of the Community Design Courts (Article 80 of the Regulation) while such disputes may be referred to the Comptroller of the UK Patent Office or the UK Court: Sections 246-252 of the CDPA.

Section 253 of the CDPA 1988 provides for an action/remedy for groundless threats of infringement proceedings; no such provisions exist under the Regulation.

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You are almost at the end of this module.

As with registered Community Designs, unregistered Community Designs are probably now more important to designers than UK-only rights. However, as you saw earlier, there are some differences in the protection available.

After you have finished this module, please make a note to read Chapter 14 of the Community Designs Handbook, which will tell you more about this.

You should also read Chapter 13 of Copinger and Skone James on Copyright. This deals with relevant unregistered rights.

Now try the quiz.

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Test yourself

Would a design involving a floral design embossed on the surface of a light switch qualify for design right protection?

What is sometimes said to be the primary purpose of the “must-fit” exclusion”?

Which Section of the CDPA defines designs that are original?

In the following cases, all of which relate to kitchen units, when does the design right term expire? i) A drawing of a unit with glass-panelled doors was created on 7 June 2007 - no units have been made yet and no attempts at marketing ii) A rough prototype in pine was made on 31 December 2007 and the first advertisement for the unit made in oak appeared in the manufacturer’s catalogue which was available on 3 February 1998 iii) The drawing of a unit to be manufactured in cherrywood was done on 1 May 2009 and the first sale of the resulting article was made very quickly on 1 June 2009.

How long do rights in an unregistered Community Design last?

Are there any limitations on the nationality of someone who may own an unregistered Community Design?

Check your answers.

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The answers

It is unlikely - this is more likely to be treated as a surface decoration than a feature of shape/configuration.

It is said that it is primarily to protect the manufacturers of spare parts.

Section 213(4).

i) 31 December 2022 ii) 31 December 2018 iii) 31 December 2019.

Three years from the date the design was first made available in the EU.

No.

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Silver Module Copyright in Literary and Artistic Works

SILVER

This module deals with copyright. It is a huge subject, so here we limit ourselves generally to talking about artistic and literary copyright in the UK only. In particular, copyright outside the UK is outside the scope of this manual. We introduce you to the concept of an author’s moral rights. While working through this module, you will find some useful reading exercises introducing many relevant areas of law.

To complete this module, you will need Copinger and Skone James on Copyright (Thomson Sweet & Maxwell), including the Second Cumulative Supplement The Copyright, Designs and Patents Act 1988 (reproduced in the textbook – and a useful consolidated version is also available on the IPO website).

When you have completed this module, you will have Explained what is meant by the term “artistic work” Summarised the actions that constitute secondary infringement of copyright Identified the first owner of any copyright Listed the moral rights of an author.

This module will take about half a day to complete.

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Overview

We’ll begin with a broad overview of copyright law.

You should have with you a copy of Copinger and Skone James on Copyright. Please spend a little time now reading Chapter 1. Then try to answer the questions below. 1.

What does “artistic work” mean?

What is the period of copyright protection in the UK?

What is the period of protection for published editions?

What is the purpose of performers’ rights in their own performances?

What new right was introduced by the Copyright and Related Rights Regulations 1996?

Does copyright grant to authors the right to publish their works?

Which international treaty provides for performers’ moral rights?

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Here are the answers you should have.

“A graphic work, photograph, sculpture or collage, irrespective of artistic quality, a work of architecture and a work of artistic craftsmanship.”

70 years from the end of the calendar year in which the author dies.

25 years from the end of the calendar year in which they were first published.

To protect performers against unauthorised recordings or transmissions of their performances To guarantee them control over such recordings To guarantee them remuneration for recordings.

The 25-year publication right.

No – just the right to prevent others from doing so.

The WIPO Performers and Phonograms Convention (WPPT) 1996

Well done if you got all of these right.

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The Copyright, Designs and Patents Act 1988 (“CDPA”)

You should have a copy of the Act with you. Note that this Act was amended by the Copyright and Rights in Databases Regulation 1998.

Please read Part 1, chapter I, and then answer the questions below. 1.

What is included in the term “dramatic work”?

As defined by the Act, does a database need to be accessible electronically?

Who is the author in the case of a film?

What is meant by “a work of joint authorship”?

Who is the first owner of any copyright?

What is the copyright period for a computer-generated work?

What is a Berne Convention country?

See how you got on.

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How did you get on?

“A work consisting of music, exclusive of any words or action intended to be sung, spoken, or performed with the music”.

No.

The producer and the principal director.

A work produced by the collaboration of two or more authors in which the contribution of each author is not distinct from that of the other author or authors.

The author, unless the author created the work in the course of employment – in which case the employer is the owner, provided there is no agreement to the contrary.

50 years from the end of the calendar year in which the work was first made.

A country which is party to any Act of the International Convention for the Protection of Literary and Artistic Works, signed at Berne on 9th September 1886.

Next, we will look at what the Act says about the rights of copyright owners.

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The rights of the copyright owner

Still looking at the CDPA, please read Chapter II, and then answer the questions.

How is copyright infringed?

What is meant by copying in relation to an artistic work?

Which territory is specified in connection with infringement by issue of copies to the public?

Please summarise the actions that constitute secondary infringement of copyright.

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Here are the answers. 1.

Copyright is infringed by a person who without the licence of the copyright owner does, or authorises a other to do, any of the acts restricted by the copyright.

“Reproducing the work in any material form”.

The EEA (European Economic Area).

Importing an infringing copy Possessing in the course of business, or dealing with an infringing copy Providing means for making infringing copies Permitting the use of premises for an infringing performance Providing apparatus for an infringing performance, etc.

Practical problems

V A client, Ms Emma Roberts, comes to you. She tells you that that she is an artist who has created a series of drawings of a mouse which she intends to use as illustrations for a children’s book. However, she has recently seen a series of cartoons by a Mr Eric Wood, which closely resemble her drawings. She would like to take action for infringement of her copyright. What problem in particular would she need to overcome before she could do this?

SILVER

She would need to show that her drawings had been copied. If the author of the cartoons created them independently, there is no infringement.

So you need to discuss the circumstances with Ms Roberts.

If she is personally acquainted with Eric Wood, and showed him the drawings, this is a start. However, she would then need to be able to demonstrate that she created the drawings first.

If she does not know Mr Wood, how would he have seen the drawings? If she is in the UK, and he is in New Zealand, how would he have known about them? Has Ms Roberts published them anywhere? Does she have a website on which she has published the drawings? If yes, your problem may be simplified.

And don’t forget to consider the possibility that Mr Wood’s drawings may not be as close to Ms Roberts’ as she thinks.

Is this a problem that other people in your office have encountered?

What sort of advice do they give members of the public in connection with proving that their work predated that of someone else?

Make a note to discuss this area with your trainer when you have finished this module. It is not a straightforward area.

Now move on.

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Permitted Acts

Now please read Chapter III of the CDPA, and then try to answer the questions. 1.

Which Section provides that reviewing a copyright work does not constitute infringement?

Is it an infringement to make a Braille copy of a book owned by a blind friend?

What condition must you satisfy if you wish to copy a work in order to set an exam question for a class that you are teaching?

Under Section 36, what is the maximum amount of any work that may be copied in any one quarter?

Which Section provides that actions in connection with Parliamentary proceedings donâ&#x20AC;&#x2122;t infringe copyright?

Your client is the owner of an art gallery. Is it an infringement of copyright if he takes a photo of one of the paintings in the gallery, and uses it in an advert for the work of the artist?

Which Section allows people to record TV programmes to watch later, without infringing copyright?

Now compare your answers with ours.

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You should have these answers. 1.

Section 30.

Under Section 31A, no – provided that you only make a single copy.

You must make “sufficient acknowledgement” – Section 32(2A).

One per cent.

Section 45.

Not if it is for advertising the sale of the work in question – Section 63.

Section 70.

Moral rights Earlier in this module, we mentioned moral rights.

Now please read Chapter IV of the Act to see the legislation that covers this. Please make a note also to read Chapter 11 of Copinger and Skone James on Copyright when you have finished this module.

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Dealings with copyright works

Now take a look at Chapter V of the CDPA, and then answer the questions.

By what means may copyright be assigned?

Is it possible to assign future copyright?

Under the Act, what does â&#x20AC;&#x153;exclusive licenceâ&#x20AC;? mean?

A client comes to you in some distress. His wife, a distinguished author, has died recently. She has left him copyright in her novels in her will. Now a literary magazine has published an unpleasant satirical lampoon of her work. What action might your client take?

The answers are on the next page.

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Check your answers. 1.

By Assignment Testamentary disposition (a bequest) Operation of law As personal or moveable property.

Yes (Section 91).

â&#x20AC;&#x153;A licence in writing signed by or on behalf of the copyright owner authorising the licensee to the exclusion of all other persons, including the person granting the licence, to exercise a right which would otherwise be exercisable exclusively by the copyright owner.â&#x20AC;?

Moral rights are transmissible on death. So he might take action on these grounds.

Remedies for infringement

Now please read Chapter VI of the CDPA. Then please summarise briefly the possible remedies for infringement. Compare your list with ours.

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Our list. Damages Injunctions Undertaking to take a licence of right Order for delivery up Right to seize infringing copies. See Sections 96(2) and 98. We look at this further in the Pink Module.

Criminal liability Note also the provisions in Section 107 concerning criminal liability for making or dealing with infringing articles. People found guilty under this Section may be sentenced to a term of imprisonment.

Please take time now to read Chapters VII and VIII of the CDPA.

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More reading

Now take a look at Chapter IX of the CDPA, to find out what the conditions are for qualifying for copyright protection in the UK.

Finally, to complete your reading on copyright, please read up to Section 212 of the CDPA. Although these are areas that you do not need to know about in detail at this stage, you need to understand them in outline and to be aware of the relevant provisions.

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You have almost reached the end of this module. As always, please spend a little time at this stage reviewing the topics covered in this module, and making notes of any further research you would like to do.

Chapter 3 of Copinger and Skone James on Copyright is useful. Make a note to read it when you have finished this module.

Longer term, we recommend that you find time to read all of this textbook at some stage as well.

If your office has a copyright practice, ask your trainer to show you some files relating to copyright cases when you have completed this module.

And then, when you are ready, try the quiz.

SILVER

Test yourself

How does Copinger and Skone James on Copyright define copyright?

Please list the moral rights of an author.

Which Regulation do we mention as having made relevant amendments to the CDPA?

In the case of a literary work, who is the author?

When does the author of a literary work have the moral right to be identified as the author?

Ms Roberts, the artist with the mouse drawings, has signed an exclusive licence with a greetings card company permitting them to use all her drawings. May she now sell her own separate line of greetings cards?

The greetings card company does not want to identify Ms Roberts as the artist. It asks her to assign her moral rights. Is this possible?

Your client is Mousiepics Ltd, a licensing body that deals in licences for artistic works. It now deals with licensing all Ms Robertsâ&#x20AC;&#x2122; drawings. A company, Babiplates, that makes childrenâ&#x20AC;&#x2122;s crockery and cutlery would like a licence to use the drawings on its products, but Mousiepics has been uncooperative. Where might Babiplates refer the matter?

Check your answers.

SILVER

The answers

â&#x20AC;&#x153;The term used in English-speaking countries to describe the bundle of rights that are granted by statute, for limited periods of time and subject to certain permitted exceptions, in respect of original literary, dramatic, musical or artistic works, such as novels, plays, poems, musical compositions, paintings, sculptures, as well as of sound recordings, films, broadcasts and typographical arrangements of published editions.â&#x20AC;?

Right to be identified as the author of a work Right to object to derogatory treatment of a work Right to object to false attribution of authorship or directorship Right to privacy of certain photographs or films.

The Copyright and Rights in Databases Regulation 1998.

The person by whom the arrangements necessary for the creation of the work are undertaken.

When The work is published commercially The work is performed in public The work is communicated to the public Copies of a film or sound recording including the work are issued to the public.

SILVER

No. An exclusive licence excludes everyone other than the licensee â&#x20AC;&#x201C; including the artist herself.

No â&#x20AC;&#x201C; moral rights cannot be assigned. Ms Roberts could, however, waive them.

To the Copyright Tribunal.

ORANGE

Orange Module Introduction to Case Law

ORANGE

As you work through other modules, you will see that we often refer to case law. It is the source of precedent, which is the body of law based on earlier decisions. You will find, when you are working with any form of intellectual property law, that being able to make good use of relevant cases is essential. In this module, weâ&#x20AC;&#x2122;ll be taking you through one of the formats in which reported decisions are published and introducing you to reading and interpreting case law.

To complete the Orange Module, you will need Dyson Ltd v Qualtex (UK) Ltd [2006] RPC 31 The Procter and Gamble Company and Reckitt Benckiser (UK) Limited [2007] EWCA Civ 936, [2008] FSR 208

When you have finished this module, you will have Read two important design cases Listed sources of information about decided cases Summarised some of the main points in the Dyson judgment Explained which overseas judgments are binding in the UK.

This module will take approximately half a day to complete.

ORANGE

Case Reporting and Sources

Not all Court decisions concerning designs are published. However, many are, including those of the Patents County Court High Court Court of Appeal House of Lords. Sometimes you may find useful summaries of recent cases - particularly ones which may create new precedents - in the newspaper law reports, notably in The Times (“TLRs”). The CIPA Journal also includes case summaries in its “Recent Decisions” section, and ITMA carries case reports in the ITMA “News and Information”. Recently, a new case report series, “European Design Reports” has also been started. When full reports of the decisions are published, these usually appear in Reports of Patent, Design and Trade Mark Cases – known as “RPCs” (These are the most common sources of design decisions.) Fleet Street Reports - known as “FSRs” The UK-IPO website – http://www.ipo.gov.uk The High Court website – www.courtservice.gov.uk The OHIM website - http://oami.europa.eu/. The British Library at St Pancras keeps transcripts of cases heard in the IPO, Patents Court, and any of these also heard in the Court of Appeal. There are copying restrictions on these, but they are available for consultation. The British Library is a good place to study, or make notes, away from distractions. Law reports are not limited to cases decided in the UK. You will sometimes read of decisions in the European Court. And decisions of foreign courts (particularly where the jurisdiction is derived from the English system) are often published here if the decision is likely to influence the reasoning of English courts. Note that overseas decisions, other than those of the European Court, are not binding on English courts, but now that the Harmonisation Directive is in force, decisions on registered design matters from the courts of other EU countries are considered important to us here in the UK. Appeals from the Community Designs Courts are to the European Court of Justice. Decisions of this Court in matters contained in the Directive or Regulation are binding on UK courts. European Court decisions can be found in the Common Market Law Reports (“CMLRs”).

ORANGE

We frequently refer to case law. In design matters, for example, we look to case law to give Guidance on the practical meaning of the words used in the legislation for registered designs, to help us decide what may be registrable, and whether a particular act is likely to infringe a particular design registration. Overall guidance as to what falls to be protected by design right, since we have no Registry practice to guide us.

In this module we are going to look in more detail at the format in which cases are reported, so that you will be able to refer to and interpret case law yourself. If you act for clients in design matters, you may well need to refer to cases when applying to register a design or when advising on infringement. We stress very strongly the importance of studying case law. Ready familiarity with key reported cases and the principles underlying them is essential, both generally and to pass your exams.

V Think now about how you might find out about decided cases. Who might have a duty to report them? How could you get copies for yourself? Thereâ&#x20AC;&#x2122;s no need to write anything down, but think about this for a while and discuss it with your trainer when you have finished this module.

ORANGE

Your office probably has a library of reported cases. When you have finished this module, ask your trainer to show you where it is. You’ll find it helpful to spend some time browsing through whatever is available. (If your office doesn’t have a library, talk to your trainer about how you can find copies of published decisions – and don’t forget the resources online.)

Your trainer or another colleague may be able to give you a list of useful cases. You should also be able to obtain similar lists from the Joint Examination Board, or your student representatives. However, do remember that these lists can never be exhaustive - so use them to build your knowledge, rather than relying on them exclusively. And you should also bear in mind that new decisions are reported regularly, so keep your information up to date. The IPO website is helpful.

You might like to compile your own list. (A rough guide to the significance of a case is the number of times it is referred to in text books.)

Recent cases of interest are frequently discussed in publications such as the EIPR (the European Intellectual Property Review), ITMA “News and Information” and the CIPA Journal.

When you read reported cases, you’ll frequently find that whoever is hearing the case refers to earlier case law decisions and how they interpret them in relation to the case now being heard. These references are very useful. They will not only introduce you to the names of many of the cases you will be expected to know in the future, but they will often summarize the most important aspects of the earlier decisions.

To assist your own studies, it’s a good idea to keep your own notes of the names of decided cases, the topics and the main points of the decisions.

ORANGE

Finding a reported case

Each law journal has its own indexing system, and these may change from time to time over the years. For example, RPCs adopted a new numbering system – yRPCn with effect from the first issue of 2001 (where “y” is the year and “n” is the number of the case, starting at 1 for the first reported that year. RPCs are issued as pamphlets containing one or two cases in each, with two dozen or so issues each year. They are also available as bound volumes containing a year of cases. Each issue and the bound volumes contain a cumulative index that you can use to find a given case from the year it was reported. Most other journals follow a similar pattern. You may have to familiarise yourself with the indexing system used by a particular journal at a particular period in order to find a specific case from a given citation. Cumulative indexes, for more than one year’s cases, also indexed by legal subject matter, are available. Some may cover the leading journals in a particular area of the law, such as intellectual property. These are known as “case citators”. The British Library indexes its court transcripts in the format C/nn/yy or O/nn/yy, where “C” denotes a court decision and “O” denotes an office decision, “nn” is the number of that decision in a given year and “yy” is the number of the year. You will often such decisions cited as “BL C/nn/yy” for example, in the CIPA Journal.

Reading and interpreting a reported case

You should have with you a copy of the case Dyson Ltd v Qualtex (UK) Ltd [2006] RPC 31. This is a case concerning unregistered design right. Please read it now. While you’re reading it, notice the format and how the information is presented. This is as important, at this stage in your training, as why the decision was reached. (It may also help you to become familiar with some of the commercial considerations that will also be taken into account by the clients that you will be advising in due course.) Take your time reading it, to become familiar with both the information and the presentation. This case is particularly interesting, because it is very rare for unregistered design right cases to reach the Court of Appeal.

ORANGE

Now please answer the following questions.

What were the spare parts in question known as in the trade?

How many spare parts were considered in the appeal?

What did the judge say about spacing between parts?

Did the bleed holes fall within the exception?

Is there any limit to unregistered design right in any aspect of any part of an article?

What did the judgment say about design freedom and dependency?

Were the ribs on the handle surface decoration?

Is it possible to create a new original design by combining old designs?

At what point were the parts made available for sale?

Now take a look at the answers.

ORANGE

How did you get on?

Pattern parts.

Six.

“Any working part must of course be so located so as not to interfere with the working of other parts – that does mean that any spacing between parts is a feature which enables function”.

Yes.

“There is no limitation to aspects which have no practical significance.”

“If there is, as a practical matter, design freedom for the part, then there is no dependency” And “The more there is design freedom, the less is there room for the exclusion”.

No.

Yes. However, adding an old thing onto to something else is not enough to create an original design.

At the start of production.

ORANGE

Some important points To summarise some of the most important points in this judgment – The manufacturers of spare parts must design their own details – they cannot just copy the original parts We have to construe the “must-fit” exception narrowly, to cases where the parts actually touch We have to construe the “must-match” exclusion narrowly, to cases where an alteration in the shape of the relevant part of the design would make the overall article radically different in appearance Surface decoration may be three-dimensional If three-dimensional decoration is also functional it does not fall within the exclusion from protection Designs do not necessarily become “commonplace” simply because they have become well-known. As you have seen, considering unregistered design right in spare parts in the UK is difficult, because there is no general exemption for spare parts from protection, but they are not specifically protected either.

You probably didn’t find those questions too difficult. They are intended to help you to feel comfortable with finding your way through published decisions - which are sometimes hard to digest initially.

The judge referred to various earlier cases in this reported judgment. Make a note of some of them, and find them and read them when you have finished this module.

The exercises in this module are intended to help you establish the basic facts in a given reported case. When you have done this, you will be able to work out what is important about a decision.

ORANGE

Headnotes When a decision is reported in a law report, it will have a summary at the beginning. This summary is known as the headnote. This is not written by the judge, is not part of the judgment and is not the ratio decidendi (which we talk about shortly). The headnote is a useful digest, although it is not a substitute for reading the full report.

Analysing a Reported Case You have now seen that a reported case includes a number of parts, including the headnote a summary of the arguments details of who appeared (the agents, solicitors or counsel) the reported judgment (and, sometimes, a report of the decision made by a lower court in the same matter). Of these, the judgement deserves the closest attention. It is very important to get into the habit of trying to extract the central reasoning which supports the decision - known as the ratio decidendi of a case. This is the part of the decision that is binding in law and will be referred to in other decisions. (The judgeâ&#x20AC;&#x2122;s comments which do not form part of the judgement are known as obiter dicta.) You may find that the ratio decidendi is sometimes elusive - look for what the judge considers to be the essential facts - the points necessary to his or her decision, and the legal principles applied in coming to a decision. There is often much argument later on what the ratio decidendi was, especially if later judges disagree with the decision and do not want to follow it.

Write a brief summary of what you felt to be the most important aspects of this case. What was the ratio decidendi? Discuss your ideas with your trainer after youâ&#x20AC;&#x2122;ve finished this module.

ORANGE

Useful Shortcuts in Studying and Using Case Law

As a general rule, you should avoid trying to use too many shortcuts when studying case law. However, you should bear in mind that there may be more than one published decision on a case. For example, a case may start in the Design Registry, be followed by an appeal to the Registered Designs Appeal Tribunal, then there may be a judicial review and an appeal. If this happens, all you are normally likely to need is the Report of the final decision in the highest court - which will generally include a helpful summary of the preceding actions.

Case law digests

Various case-law digests are published from time to time, including digests in the European Intellectual Property Review (“EIPR”), and by the Chartered Institute of Patent Attorneys and the Institute of Trade Mark Attorneys. There are usually a number of summaries online of various important decisions. These can be very useful for quick reference. However, beware of becoming too dependent on these; they don’t usually give the full background to a case and - occasionally - don’t include the most important part of the decision. You should use them as reminders of cases you know, not as the sole source of your knowledge!

Also available are various “digests” of cases. These contain extracts from important decided cases - but not the whole of the decision, and they include little or no interpretation. They can sometimes be helpful, if used with care, but, again, are not substitutes for reading whole cases.

ORANGE

Another case You should have a copy of The Procter and Gamble Company and Reckitt Benckiser (UK) Limited [2007] EWCA Civ 936 [2008] FSR 208 with you. This case concerns a registered Community Design. Note the slightly different format of the report.

Please read it now, and then answer the questions. 1.

In what way does the informed user of design law differ from the average consumer in trade mark law?

What does the judgment say about Art.10(2)?

What does the judgment say about the â&#x20AC;&#x153;different overall impressionâ&#x20AC;? test?

What does the judgment say about the similarities between the two products?

Compare your answers with ours.

ORANGE

You should have these answers.

The informed user of design law is more discriminating.

It is a “narrowing provision”. “Smaller differences will be enough to create a different overall impression where freedom of design is limited.”

“The test is ‘different’ not ‘clearly different’.”

“The similarities between the products are at too general a level for one fairly to say that they would produce on the informed user the same overall impression.”

You should also have noted the comments in the judgment concerning expert evidence. The judges commented that it “is unlikely to be of much assistance”.

As well as the cases you have read in this module, you will be expected to know about much earlier cases as well. These can be much less clear to read, with language that, even when you have become more familiar with the subject, will seem obscure. Apply the principles you’ve been learning in this module - and also read some of the later cases in which the earlier case is cited. You will quickly get used to making the best use of them both in preparing for your exams and in your future practice.

In other modules we refer to more reported cases, as they influence other aspects of designs law and practice. When you come to these, make a note of them - we generally only refer to them in outline, but you will find it useful, when you have time later, to read the full reports.

ORANGE

You are almost at the end of this module.

Please spend some time reviewing what you have learnt in this module, and making notes of anything you wish to research further when you have completed it, and anything you would like to discuss with your trainer. Donâ&#x20AC;&#x2122;t forget to ask your trainer about useful extra reading.

Now try the quiz.

ORANGE

Test yourself

Reported decisions often include references to decisions of lower courts in the same case. Which do we regard as the binding decision?

Imagine you are acting for a client, appealing from a decision of the Designs Registrar. You want to refer to case law precedent to support your argument. You now want to refer the person appearing for the Registrar to the part of the decision that directly supports your case. How will you refer him to this?

Which judgments made abroad may be reported in this country and are binding on the UK courts?

Please list as many sources of reported decisions as you can remember.

We summarised some important points arising from the Dyson case that you read. Please write down as many of them as you can remember.

The answers are on the next page.

ORANGE

The answers 1.

The binding decision will be that of the Court which heard it last - the highest court.

You can refer to the page number and the line number covering the chosen point in the report in question.

Decisions of the European Court of Justice are binding in the UK.

Reports of Patent, Design and Trade Mark Cases – “RPCs” Fleet Street Reports - “FSRs” The UK-IPO website – http://www.ipo.gov.uk The High Court website – www.courtservice.gov.uk The OHIM website - http://oami.europa.eu/.

The manufacturers of spare parts must design their own details – they cannot just copy the original parts We have to construe the “must-fit” exception narrowly, to cases where the parts actually touch We have to construe the “must match” exclusion narrowly, to cases where an alteration in the shape of the relevant part of the design would make the overall article radically different in appearance Surface decoration may be three-dimensional If three-dimensional decoration is also functional it does not fall within the exclusion from protection Designs do not necessarily become “commonplace” simply because they have become well-known

GOLD

Gold Module Classification and Searching

GOLD

This module talks about the searching of designs, both at OHIM and in the UK. We also look very briefly at searching in other jurisdictions. You need to be aware of, and comfortable with using, the Locarno classification. We also introduce the Vienna classification. You will have the opportunity to spend some time using the OHIM search facilities.

To complete this module, you will need Internet access The Community Designs Handbook.

When you have completed this module, you will have Explained the reason for using approved terms for describing products Explored the Eurolocarno facilities on the OHIM website Carried out sample searches using the OHIM facilities Identified the inherent limitations in a search.

It will take about a day for you to work through this module.

GOLD

Beginning a search

You have a client, Peckham Products Ltd, who is a manufacturer of ceramic gift products. The managing director, Mr Peckham, comes to you with a prototype teapot shaped like a poodle. They want to register it as a design.

You talk to Mr Peckham about it. He has extensive knowledge of the trade, attends most of the important trade fairs and is not aware of any designs already on the market that look like this particular teapot.

However, he would like you to carry out some searches before they decide to go ahead and register the design.

You need to understand that in order to search the design applied to an article, you have to decide how it is classified by OHIM and by the UK Registry. The classification used is called the Locarno system (the International Classification for Industrial Designs under the Locarno Agreement). You will see shortly that how it is divided into different categories and sub-sections.

Letâ&#x20AC;&#x2122;s look at the search facilities offered by the OHIM website. We will start by finding out about them generally.

GOLD Locarno classification of products

Go the OHIM website, and click on the “Designs” tab. Click on “databases” on the right of the page. On the left-hand menu, click on “Search classification for designs – EUROLOCARNO”. Click on “Important hints”. Click on the link to “Eurolocarno”. You should now see a link to “Search online” Click on this. You will find yourself at the search facility we looked at briefly in a previous module. Let’s spend a little more time looking at it now.

Find the classification for the following products, by typing the terms into the “Indication of products” box. 1.

Alarm clocks.

Ankle socks.

Marionettes.

Blue tooth car kits.

Now check your answers.

GOLD

Here are the answers.

10.01.

2.04

21.04

14.03.

You should have found that straightforward.

Now try typing in “teapot”.

Which class or classes do you find?

GOLD

You should have seen results including classes 7.01 and 7.02

We can look at classification from another direction as well.

Click back to the search classification Eurolocarno page.

Now click on “en”, under the list of products. You should see a pdf document, which lists classes, with the goods next to them. This is another way of searching, but it is a little more cumbersome than using the search box. But please spend a few minutes now looking at it, to get an idea of the scope of classes and their sub-classes.

Scroll down to class 7, and take a look at class 7.01. Scroll down to items beginning with “T”. You should have found “teapots”.

When you have finished, please close the document, and return to the Eurolocarno page. Please read the rest of the page. Note the importance of the indication of product when you are filing an application for a Community Design, and of using words which are included in Eurolocarno.

GOLD

The Registered Community Designs Bulletin

Click back to the main Designs page.

Click on “RCD Bulletin” on the left. You should see a “Bulletin Quick Search” box. Type in “teapot”.

You probably won’t find many results, or indeed any that are shaped like dogs, but spend a few minutes looking at the teapot designs that do result from your search. In practice, the Community Designs system is relatively new, so there are still relatively few registrations compared with national registers. You can also improve search results using Boolean logic – you will learn more about this when we move on the Community Designs Handbook.

If you are searching, you should cover the UK register as well. We will discuss the UK system shortly.

V So what has this exercise told us about the Eurolocarno classification? There is no need to write anything down unless you want to, but please think about the implications of the searches you just carried out.

GOLD

We noted in particular

The search facilities are flawed. Sometimes, the search box will not recognise the term that you enter – although this has improved recently. You may have to be creative in your approach to finding the classification of products from time to time.

Searching designs is a highly subjective matter at the best of times. It is always a good idea to ask clients how they came up with the idea for a design. They may have been influenced by someone else’s design. And remember – if the search doesn’t show any obstacles, it still doesn’t guarantee that your client is free to use or register the design. We will talk more about limitations in searches shortly.

We will talk more specifically about infringement in a later module.

Let’s look a bit more at choosing the best description.

GOLD

Choosing the best description So now you understand why OHIM wants you to use an approved Eurolocarno term. You should now realise that there is an onus on the applicant to choose exactly the right term, and decide which description best matches the products. When you were typing terms into the Eurolocarno search box, you probably noticed that some terms produce a variety of different possibilities.

As an example, go the search box, and try typing in just “clocks”, as opposed to “alarm clocks”. We got 20 possible results. Several classes, and a number of subclasses were included. (You may find that at the time you search, the results are a bit different from ours.)

Now search “book cover”.

Write down how many different classes you need to think about.

Then compare your ideas with ours.

GOLD

We thought that 19.04 – book covers is the first one you should think of. Leather book covers are also included in this class. You probably noted this one. But what about cheque book covers? These fall into class 3.01.

Sometimes, Eurolocarno does not fully understand the terminology or it thinks that you have not been accurate enough.

Try typing in “beer glass” and seeing what results you get. In this instance, we would recommend selecting “beer mug”, in class 7.01. However, Eurolocarno can be flexible in its terminology. If you type in “computer mouse”, as well as getting “computer mouse”, you should also get “optical mouse”.

V So what is the best thing to do when you are trying to decide on classifying the product? Think for a moment, but there is no need to write anything down.

The answer is – talk to your client. Explain the options to them, and make sure you understand exactly what the options are. In our earlier example, as it eventually turned out, the choice of the term “teapot” was a simple one.

GOLD

RCD-Online You can also carry out OHIM searches with more options for searching using its RCD-Online facility.

Go to http://oami.europa.eu/RCDOnline/RequestManager.

Enter “teapot” into “Indication of the product”, and look at the results. When we did this, again, we got only a few results.

However, if you were searching a product that gave you a very large number of results, this facility would be more useful because it enables you to refine the search according to various criteria.

Now try entering “car”. You should see rather more results, and you will find that it takes longer for the results to appear.

If you wish, spend a little while exploring this facility, then read on when you are ready.

GOLD

International Classification of the Figurative Elements of Marks under the Vienna Agreement

The Vienna Classification is not covered on the OHIM website.

Please go to http://www.wipo.int/classifications/vienna/en .

This page clearly explains what the Vienna classification is.

The classification index is at http://www.wipo.int/classifications/nivilo/vienna/index.htm. Please take a look now to see the scope of the classification of figurative elements.

Click on â&#x20AC;&#x153;Guidance for the Userâ&#x20AC;?, and read the page.

Now, using this information, find out which class poodles fall into. Be careful!

GOLD

You should have seen that “Animals” fall into Category 3 “Quadrupeds” fall into 3.1 “Dogs” fall into 3.1.8.

However, it doesn’t end there. There are also Auxiliary Sections. So “Poodles” in fact fall into 3.1.11.

And what if the poodle were dressed in Tudor costume? Note that there is even a further auxiliary category of “Auxiliary Sections Associated with Principal Sections 3.1.1-3.1.15” – “3.1.25 Animals of Series I in costume”.

If you wish, spend some time now taking a look at the complexities of the Vienna classification system.

You may have realised by now that Locarno seeks to classify articles by type (so all types of crockery are searched together). But the Vienna Classification classifies by design. So a place with a picture of the Tower of London on it would be classified differently under Vienna from a plate with a picture of a bird.

Now read on.

GOLD

The Community Designs Handbook

You should have a copy of the Handbook with you.

Please read chapter 2 - “Searching and Community Designs” – now, and then answer the questions below. 1.

What are the inherent limitations in the search process?

Why might you need the advice of someone with knowledge of the design field in question?

How many designs does the Handbook say that OHIM is registering each year?

Why do you need to search parts of designs, as well as the whole design?

Why must you be cautious with Vienna classification searches?

Which records should you cover, when carrying out a prior rights search?

Which office registers the largest number of designs?

What are the two OHIM databases that you can search?

To correspond approximately with Nice class 21, which Locarno classes should you search?

Now check your answers.

GOLD

How did you get on?

Searching is inherently subjective There are delays before applications are published There are mistakes in data entry.

You need to consider the scope of design freedom available to the designer in assessing search results; someone more familiar with the field in question will have a clearer idea as to whether similar features in designs that you are comparing arise because of constraints in design freedom.

40,000.

Parts of products, as well as whole products, may be registered as designs – and therefore infringed.

The classification is not always up to date.

OHIM – designs and trade marks WIPO – designs and trade marks And also, where your client’s budget permits, national databases in countries of interest.

7. 8.

The Chinese national office. RCD-ONLINE Community Designs Bulletin

7, 4 and 99.

GOLD

Still looking at Chapter 2 of the Handbook, please read about the inherent difficulties of searching all 25 databases of the Member States that have national design registrations.

The UK Now we will think about national searching in the UK.

You can search the IPO website You may file form D SAS, which is a request for a search of the UK and EU Designs Registers.

Filing the request If your office has a deposit account with the IPO, the search fee can be debited directly from the account using a fee sheet.

How long will the search take? Normally, at least a week.

GOLD

Limitations

There are number of limitations to a Registry search.

Please think about everything you have learned in this module, and then make a list of what these might be.

Then compare your list with ours.

GOLD

We thought of the following limitations.

Examiners normally only cover the classes they believe the product falls into Only registered designs are available - applications are not covered (although the Registry may send you the results of pending applications once they have been granted). You probably won’t find designs which the applicant has abandoned, or which the Registry has refused The period during which Convention priority applications may be filed Unregistered designs – which could well be novelty-destroying - are not covered.

In practice, as the search only covers the UK Designs Register, it is of very limited use. You should explain this to your clients.

We take a look at the published designs available on the UK-IPO website in the Green Module – but these have only been available since 27th February 2008.

GOLD

Information about published designs

Designs are not available to the public until they are published.

Once a design is published, you may see copies of

the representations of the designs

the application form

any evidence filed for example, in support of the proposition that the design has eye appeal (which is occasionally necessary for registration under the Act prior to its amendment by the Registered Designs Regulations 2001, and after amendment by the Copyright, Designs and Patents Act 1988).

There are also proprietary database search facilities available. We will take a brief look at this next.

GOLD

DESIGNFINDER

DesignFinder is a proprietary subscription database offered by Questel. The subscription is fairly high - ÂŁ3000 a year, at the time of writing. However, it does have its uses. The databases it covers are WIPO and Canada Germany and Japan USA and Korea UK Spain Europe France. Its advantages are You can search all the databases in one go, rather than having to search them individually It gives you a picture of the design on screen straight away. Its disadvantages are It is a fairly basic program French designs do not necessarily come with pictures It doesnâ&#x20AC;&#x2122;t distinguish proprietors very clearly The results are simply emailed to you, rather than giving you a presentable report.

GOLD

You are almost at the end of this module. As usual, we recommend that you spend a little time reviewing what you have learnt before you move on to the quiz.

And donâ&#x20AC;&#x2122;t forget to make notes of anything you want to remember or research later, or talk to your trainer about. For example, you could ask your trainer about the databases that people in your office use for searching designs, and how they utilise the Locarno and Vienna systems.

You should find that all this becomes clearer when you actually carry out some searches. Perhaps your trainer can help you with this. And if your office has them, it will be useful for you to look at some searches done in connection with design applications that your office has filed.

Now try the quiz.

GOLD

Test yourself

The Locarno classification classifies what?

The Vienna classification classifies what?

OHIM gives an important reason for using the Eurolocarno terms. What is that reason?

How does OHIM try to avoid lengthy and expensive translation procedures in connection with Community Design applications?

Does the classification you choose limit your clientâ&#x20AC;&#x2122;s infringement rights?

The Community Designs Handbook lists a number of caveats you should bear in mind when searching. What are they?

The answers are on the next page.

GOLD

The answers

Products

Figurative elements.

OHIM says that it speeds up the process of publishing a registration by one month, as the terms are already translated into all the languages of the EU.

OHIM publishes most elements with adapted INID codes (international coding system for design information developed by WIPO) in order to avoid including text which would need to be translated.

No.

Searches don’t cover applications filed, but not registered. There is a six-month priority period for filing applications already filed in Convention countries. “Deferred publication” designs may be kept secret for up to 30 months. Designs may be been incorrectly classified, so you could have missed them on the search. A design could infringe one in another class. OHIM may not have updated Vienna classification or indexed words. An OHIM search will exclude designs that are registered only nationally. An informed user may assess a design differently from a searcher. A design might infringe for example, a trade mark registration, unregistered design right or copyright, or constitute unfair competition.

PLATINUM

Platinum Module Sources and Resources for the Community Design

PLATINUM

You should work through the Blue Module before you start on this one.

In this module, we look at the resources that you will need to use in connection with the Community Design. In the Blue Module, you looked briefly at the OHIM website; in this one, you will learn much more about finding your way round it, and using it as a resource.

To complete this module, you will need Access to the OHIM website The Community Designs Handbook, published by CIPA and ITMA, with updates.

When you have completed this module, you will have Explored the relevant parts of the OHIM website Defined “article” and “product” according to Article 3(a)CDR Read Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs Listed sources of information on the Community Design.

This Module will take approximately half a day to complete.

PLATINUM

The OHIM website

We will begin at the OHIM website.

Please go to http://oami.europa.eu/. Select the designs tab. Click on “Forms and filings” on the right-hand side. You will then see options offering on-line applications for CTMs and Community Designs. Click on “Databases”, on the left. This is where you will find “Eurolocarno”, which we discuss in the Gold Module. Click on it. You will see that you can use this facility to look up the classification of a product. Enter any product that you like and click on “Search”. You should then see a list which includes the product that you entered. Click on it. A pop-up box will appear, which will show your product translated into all the languages of the EU. Now close the box. Now click back to the main Designs page. Click on “Case law”. Explore this, if you wish. When you have finished looking, click back. Click on the “Home” tab. You will see a link to “Alicante News”. This is a useful electronic publication. Take a quick look if you wish.

PLATINUM

Now select the “Designs” tab again.

Look at the left-hand menu and click on each of the options from “What is a design” to “The registration process” and read what OHIM has to say on each topic. The “FAQ” section is particularly useful. Please spend some time reading this. It is intended for non-specialists, but is most useful for those who are new to registered designs. Remember – these are matters you are going to have to explain to clients. You may find it helpful to make notes of its contents. Close the page when you have finished reading it.

When you reach “The registration process”, click on “Examination”. On the right, click on “Guidelines for the examination of Community Designs”. A pdf document will open. Please read this.

Now try to answer the questions on the next page. As far as possible, answer them from memory.

PLATINUM

According to Article 3(a) CDR, what is meant by a “design”?

And what is meant by a “product” in this context?

May fragrance be registered as a design?

May any type of plant be registrable as a design?

When the examiner notifies the applicant of grounds for non-registrability, how long is given to the applicant to respond?

Now check your answers.

PLATINUM

How did you get on?

A “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 ornamentation.

A “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.

No.

Artificial plants may, but real ones may not.

Two months.

Read the guidelines again if you wish, before carrying on. When you have finished, close the document, and return to the website page.

PLATINUM

Click on “Fees”. Scroll down and you should then see a link to “Fee calculator”. Fees paid for a Community Design depend on how many Designs the application contains Designs you want to publish immediately Designs you wish to defer publication for. These all have separate fees, and as you can imagine, working out the fees can be difficult, so the calculator is a very useful little tool.

There are some warnings, highlighted in red. Please click on them, and take a look at the contents.

Now click on “Legal texts”.

Click on “Decisions and Communications of the President”. Some of these deal with designs. Select “Communications”.

Spend a little time seeing what information is here.

PLATINUM

Click back to the menu for “Legal texts”. Click on “Regulations and related texts”.

Choose “Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs”. (You should see a consolidated version, so select that. “The Hague Agreement concerning the international registration of industrial designs” is usually referred to simply as “The Hague Agreement”. It will open as pdf document. This Regulation is very important for your exams. Please spend some time reading it now. Make notes if you wish. Close the document when you have finished.

“Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs” is known as “The Designs Rules” Please click on this and take a look now. Then close the document when you have finished reading it, and making any notes that you feel will be helpful.

Now click on the Fee Regulation. This sets out the basis on which OHIM levies fees. Close the document when you have finished looking at it.

When you are ready, click right back to the OHIM home page. Click on “Alicante News”.

Click on issue 12-2007. Then click on “Must-fit” clause kills Community Design”. This decision is important and we will look at it again later.

Other updates In addition to the Alicante News, you will also find important updates and news in the Journal of the Chartered Institute of Patent Attorneys and the Institute of Trade Marks Attorneys’ Newsletter. The Marques Newsletter is also sometimes useful.

PLATINUM

The Community Designs Handbook The Community Designs Handbook is published by Sweet & Maxwell, and produced jointly by CIPA and ITMA. It is extremely useful and you should have a copy to hand.

Take a quick look now at the contents. We will be using the Handbook in future modules. It is one of our most useful resources.

You are almost at the end of this module. Please spend some time reviewing what you have learnt in this module, and making notes of anything you wish to research further when you have completed it, and anything you would like to talk to your trainer about. Now try the quiz.

PLATINUM

Test yourself

What is the Eurolocarno classification for the following items? i. Dog bowls ii. Wallpaper iii. Fountain pens.

According to section 4.4 of the Examination Guidelines, when is a representation considered suitable, for the purpose of allocating a filing date?

What is specifically excluded from the Article 3(a) CDR definition of a product? (However, remember that screen images, icons and so on may be registrable as Community Designs.)

What are the parts of the Community Designs Bulletin?

Where can you find updates on design law?

The answers are on the next page.

PLATINUM

The answers

i. 30.03 ii. 05.06 iii. 19.06. You should have been using the Eurolocarno search facility on the OHIM website.

A representation is considered suitable for reproduction when it meets the requirements of Article 4(1)(d) and (e) CDIR. (You can find this in Examination Practice Note 1/2005.)

Computer programs.

Part A – Registrations of Community designs Part B – Entries in the Register subsequent to registration Part C – Renewals and information on expired registrations.

Alicante News Journal of the Chartered Institute of Patent Attorneys The Institute of Trade Marks Attorneys’ Newsletter Marques Newsletter.

WHITE

White Module The European Designs Directive and the Community Design

WHITE

In this module, we look at current legislation covering the Community Design. In particular, we will be talking about the Directive and the Regulation. It builds on what you learnt when working through the Blue and Platinum Modules, which you should have completed before starting this one.

You will read some important Articles from the Directive, and learn something about their implications for designers.

To complete this module, you will need Directive 98/71/EC of the European Parliament and of the Council of the 13 October 1998 Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community designs (â&#x20AC;&#x153;the Regulationâ&#x20AC;?).

When you have completed this module, you will have Defined a design Stated the term of protection Explained why design owners may wish to be protected from parallel imports Identified the Article that provides for the scope of protection of a registered design.

This short module will take about half a day to complete.

WHITE

The Directive

You should have a copy of Directive 98/71/EC of the European Parliament and of the Council of the 13 October 1998. You have already started looking at it; now we will deal with it in slightly more detail.

Spend some time now reading it through carefully.

When you have read carefully through the Directive, please try to answer the questions on the next page â&#x20AC;&#x201C; you may refer back to the Directive, if you wish, but read it first, and then answer the questions, as this will help you to become more familiar with it.

WHITE

Thinking about the recitals, please list three reasons for enacting the Designs Directive.

What should registered design protection specifically not be extended to?

The Directive is “without prejudice” to what?

What is the definition of “design”?

To which design rights does the Directive apply?

Under what circumstances is a design considered “new”?

i.Which Article specifies actions which constitute disclosure? ii. And what does not constitute disclosure to destroy the novelty of the design?

If an application for design registration has been refused, is it possible to register an amended form of the design?

What rights are conferred by the design right?

Now check your answers.

WHITE

The answers 1.

Harmonisation Protection of the economic advantage arising from a good design Defining the conditions for protection.

Component parts not visible during normal use of the product, or features of a part not visible when the part is mounted Component parts which do not themselves fulfil requirements concerning novelty and individual character Para (12).

The competition rules under Articles 81 and 82 of the Treaty (of Amsterdam); para (18).

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; Article 1(a).

Design rights registered in the central industrial property offices in Member States design rights registered at the Benelux Design Office design rights registered under international arrangements that have effect in a Member State applications for design rights as above Article 2.

If no identical design has been made available to the public before the date of filing of the application for registration (or an applicable priority date). Article 4.

i. Article 6. ii. It could not reasonably have been known in the relevant circles in the EU Breach of confidential disclosure Disclosure within the 12-month grace period by the designer or their successor in title.

Yes – Article 11.7 – note the conditions.

“The registration of a design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it.” Article 12 – and please note also the limitation of rights to which Article 13 refers.

WHITE

Article 2 of the Directive The Article refers to the design registrations that the Directive is designed to cover.

Please read Article 2.

Article 3 of the Directive This Article provides that Member States must have a system of registration for designs, and that such a system must grant exclusive rights to the proprietor of a design registration. It also provides that such protection is only available to designs that are New Have individual character.

Please read Article 3. Note the comments concerning the exclusion of parts which are not visible in normal use.

WHITE

Rights in, and infringement of, a registered design

Now weâ&#x20AC;&#x2122;ll look in outline at what the Directive says about rights in, and infringement of, a registered design. We will talk about this in more detail in a separate module.

Article 9 This Article defines the scope of protection given by a registered design.

Please read just Article 9 now. Then, when you have finished, make brief notes of what you think the most important implications are, from the point of view of someone filing an application.

Then compare your notes with ours on the next page.

WHITE

We noted these points in particular.

Protection is limited to the features shown visibly in an application. This means that it is essential to file an application which shows the features your clients wish to protect as clearly as possible, but which doesn’t include unnecessary extra material.

This requirement is a practical consideration when preparing the application documents. Don’t confuse it with the exclusion from protection of features of component parts of complex products which are not visible in the normal use of these products – take a look at Article 3, paragraphs 3 and 4.

In some cases, it is more difficult for designers in areas where there is comparatively little design freedom to steer clear of infringement.

However, the problem may be eased to some extent by Article 5, paragraph 2, which effectively narrows the scope of protection where design freedom is restricted, if the lack of design freedom results from technical requirements. This includes the “must fit” requirement), Article 7 makes similar provisions.

We have talked about this a little already, and you may have had the opportunity to chat to you trainer about this, after working through the Platinum Module.

WHITE

Article 12

In this Article, you will find the definition of the rights which the owner of a design registration has.

Please read the Article now.

Note that the right granted by a registered design is a monopoly right. This means that it can still be used against someone who has produced the same design independently â&#x20AC;&#x201C; unlike copyright, which can only be invoked against actual copying.

Now weâ&#x20AC;&#x2122;ll take a look at Article 13.

WHITE

Article 13

This Article sets out the limitations to the rights of the owner of a registered design.

Please read the Article now.

You should have noticed in particular that copying is not normally considered to be infringement when it is not intended for commercial gain.

So, you have seen that someone who copies a registered design for use, for example, only in their own home, is likely to fall under Article 13.1(a). They could also make the same item for a friend, provided this was purely non-commercial.

However, if they charged for the items they made, this would constitute infringement.

WHITE

Article 14 This Article deals with the matter of spare parts intended for repair.

Please read it now. As you can see, different countries have very different views on whether spare parts should be registrable as designs, and the Directive does not harmonise national laws in this area. Article 14 allows Member States to maintain their existing laws concerning spare parts, but any amendments made must have the effect of liberalising the spare parts market.

Now please read Recital 20. Despite the efforts of the Directive, European design law is not yet fully harmonised. It seems unlikely that it will be in the near future, because there is little political will to do so.

WHITE

Article 15 This Article covers the important principle of free circulation of goods within the European Economic Area. Someone who has put their product, bearing the registered design, onto the market in an EEA country cannot use the registration to prevent someone else from importing the product into another EEA country.

Please read Article 15 now.

But why might the owner of a registered design want to prevent someone else from importing such a product?

Make a note of your answer and then read on.

WHITE

Suppose that a product costs say €500 in Germany, but only €300 in Italy. The design owner makes a much greater profit on the German sales of exactly the same product.

Third parties could buy the item in Italy and sell it in Germany for €400 – thereby making a profit themselves, but reducing the profit made by the design owner – so the design owner would undoubtedly wish to prevent the import into Germany by third parties, if this were possible.

However, the free circulation of goods within the EEA is an important principle – and so Article 15 precludes the design owner from using the monopoly right to prevent this.

Article 10 – the term of protection This Article provides a maximum term of protection for a registered design, of 25 years from the date of filing. Initial registration is for five years, and this can be extended, if the owner wishes, up to the maximum term.

Why do you think there is a series of terms, rather than offering the possibility of a longer term of protection at the outset? Make a note of your ideas. Then read on.

WHITE

Many designs only have a relatively short-term commercial life. It might well be uneconomic for a designer to register a design for a lengthy period of time when the design’s popularity will only be short-lived.

Now read the Article.

Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community designs

Now please spend some time reading Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community designs, which you should have with you.

WHITE

You are almost at the end of this module.

As you will have realised, we have mentioned some topics here only in very brief detail. You will learn more as you work through later modules, and some things will make more sense then.

Now try the quiz.

WHITE

Test yourself

What is provided for by Article 3 of the Directive?

Which Article provides for the scope of protection of a registered design?

When is copying not normally considered to be infringement?

What is the maximum term of protection for a registered design?

Why is the term of protection broken down into shorter terms?

The answers are on the next page.

WHITE

The answers

Member States must have a system of registration for designs, and that such a system must grant exclusive rights to the proprietor of a design registration. It also provides that such protection is only available to designs that are New Have individual character.

Article 9 of the Directive.

When it is not intended for commercial gain â&#x20AC;&#x201C; Article 13.

25 years.

The lifespan of the popularity of a design may be much shorter than 25 years, so it could well be unattractive to a designer who knows this to have to pay for 25 yearsâ&#x20AC;&#x2122; protection where shorter periods are more appropriate.

GREY

Grey Module Making a Registered Community Design Application

GREY

In this module, we will talk about the process of filing an application to register a Community Design. You will have a chance to look at an application form, consider how to complete it and we will talk in detail about filing it. We will also look at the relevant fees.

Before you start this module, you should have worked through the Blue, Platinum and Gold Modules.

To complete this module, you will need Access to the OHIM website The Community Designs Handbook. Council Regulation 6/2002 (it is included in the Handbook)

When you have completed this module, you will have Explained what an application must include to receive a filing date Identified the compulsory parts of an application form Listed the fees payable Explained what is meant by a deferred publication.

This Module will take approximately one day to complete.

GREY

Reasons for choosing a Community Design registration

Firstly, the cost of filing a Community Design, given that it covers the entire European Union, compares very favourably with filing individual registrations. Also any number of different designs may be contained in an application, called a multiple application - the only condition being that they must all belong to the same Locarno class. So choosing a Community Design makes a great deal of sense economically in almost all circumstances.

You should have a copy of the Regulation with you. Please read Article 37 now. Important Note that each of the designs contained in a multiple application is autonomous. The fact that you can include them in a single application is a matter of convenience rather than anything else. In all other matters, they can be dealt with separately. Article 37(4) provides that each of these designs may be dealt with â&#x20AC;&#x201C; for example, each may individually be Enforced Licensed Surrendered Renewed Assigned The subject of deferred publication Declared invalid.

GREY

The application form

Please go to the OHIM website, and go to the Designs main page.

Click on “Forms and filings”.

Click on “Online filing”.

Click on “File a Community Design online”.

Click on the “Apply online” button. Print out the form that then opens, so that you can refer to it again. Then close this page.

Click on “Please read the help files carefully”.

Read this through carefully.

GREY

Preparing the representation The rights granted by a Community Design registration are defined by the representation that you file with the application. So this is the first thing that you need to get right. You should have a copy of the Community Designs Handbook with you. Chapter 3 deals with making an application.

Please read paragraphs 3-108 to 3-122, and then answer the following questions. 1.

Where are the formal requirements for representations set out?

What does Rule 4(1) say about the representation?

Must you stick the representation to the paper?

What is the ideal size for each view?

How should you show repeating surface patterns?

Must you show the whole of the object to which the design is applied?

What must you remember when a product is made up of multiple components to which the design is applied?

Now check your answers

GREY

Here are the answers. 1.

Rule 4.

It must be a graphic or photographic reproduction of the design, either in black and white or colour.

No – you may print in out from a computer.

8 x 16cm.

At least one full repeat of the pattern, and a “sufficient portion of the repeating surface”. Ideally, you should show a larger area to give a very clear idea of how the design is supposed to be repeated.

There is no need to do this. If the design is suitable for applying to any object, it can be shown without the product.

At least one view should show all the components assembled – otherwise OHIM may see it as several designs.

Make a note now to talk to your trainer about your office’s practice in preparing representations. Many offices ask the client to send samples of the product, where practicable, to the office. A specialist draftsman, in cooperation with the attorney, may then be the one who produces the actual representation. Remember that you may well have to show both the total appearance of the article and individual aspects or parts. You should obtain your client’s approval before you actually submit the representations to OHIM. Remember - the same design can be protected by one application irrespective of the number of products to which it may be applied

GREY

Multiple views Do not include explanatory text on the views, and do not number them. You can file up to seven views of the same design.

Photographs If you are filing photos, remember to pay attention to the background, as explained in the Handbook. Remember that you need front, side, top and bottom views. Informal views You should avoid filing the sorts of informal views that are sometimes filed in connection with UK patent applications.

Now letâ&#x20AC;&#x2122;s assume that you have your representations ready to file, and talk in more detail about the filing process.

Thinking about what you know of filing applications generally, what do you think an application should contain, at a bare minimum, to receive a filing date? Write down your answers, and then read on.

GREY

In order to secure a filing date, an application for a registered Community Design must contain a request for registration information identifying the applicant a representation of the design suitable for reproduction or, in the case of a twodimensional design that in addition contains a request for deferred publication (see below), the representation of the design may be replaced by a specimen.

These conditions are set out in Article 36(1) of the Regulation.

Electronic applications The most popular way of filing registered Community Design applications is electronically. You have already looked at an application form, and seen that it can be filled out on-line.

Go back to the â&#x20AC;&#x153;Helpâ&#x20AC;? files.

GREY

Read through all the information, and then answer the following questions.

What are the steps listed in the introduction for filing a Community trade mark online?

What are the non-optional elements when filling in the application form?

What are the levels of fees?

What is the minimum bandwidth that you need in order to file an electronic application?

GREY

Complete the basic electronic application form Press Attach the requested documents (if applicable) Press (if applicable) Complete the payment details and sign Press Please review your application before final submission Press You will then receive a confirmation of receipt of your application.

Languages First and second language. The first language may be any of the 20 official languages; the second must be either English, Spanish, German, French or Italian and different from the first language. Applicant information If the applicant is a natural person, their surname, first name and nationality If the applicant is a legal entity, such as a company, their country. And if the applicant already has an OHIM ID number, you should show that. Design information The product indication(s). You may include the Locarno class, and sub-class if you wish. If the application is for ornamentation, you must tick the relevant box. Representation of the design Representations of up to seven different views of the design for each design in the application. Payment of fees Signature

GREY

A basic fee for a single design or the first design of a multiple application, which varies depending on whether you are filing an online application or a paper one Additional fees apply where there are more than three classes of goods or services. (Registration fees are also payable later on.)

256 kbps.

More information about fees

Please go to the page http://oami.europa.eu/ows/rw/pages/RCD/FAQ/RCD3.en.do#300 and read the detailed explanation of fees there.

Now move on to learn about claiming priority at OHIM.

GREY

Convention and exhibition priority

Another “optional” feature is to claim convention or exhibition priority.

Please turn to your copy of the Handbook. Read paragraphs 3-076 to 3-091. Note that the design of the earlier priority claim must be exactly the same as the design for which registration is sought at OHIM. If they are shown in different colours (for example, one is black and white), the priority claim will be rejected. Alicante News, issue 04/08 deals with this.

Designers An application may include designs created by one designer, or by many.

Please turn to your copy of the Handbook again. Read paragraphs 3-092 to 3-096. Note that where the designer is an employee, rights in the design normally belong to the employer, so showing the designer’s details does not necessarily imply that the designer has any rights in the design applied for.

GREY

Deferred publication Designs are often commercially sensitive, and your client may not want everyone to know the details of the design while it is still in development. So there is an option to defer publication of the design. A deferred publication is a registration for which only the basic details are published. The substance of the design remains confidential for 30 months.

Please look the Handbook again, and read paragraph 3-097. You should check with your client whether they wish to defer publication before you file.

Now go to the Designs main page. Click on “The registration process”. Click on “Registration and publication”. Read the information there concerning deferred publication.

GREY

Other ways of filing Under Article 35 an application may be filed at OHIM a national Patent Office of a Member State the Benelux Design Office. If the filing is at a national or the Benelux Office, the office must then forward the application to OHIM within two weeks after filing and may charge a transmittal fee for this.

Fax filings You may also file by fax.

Would you advise a client to file a design application by fax? Make a note of your answer, with reasons.

Then compare your ideas with ours on the next page.

GREY

You should have noted that using a fax machine to send designs to OHIM is unwise (and as we shall see below, the explanatory notes accompanying the application form counsel against it). You probably realised that in a fax machine details can be lost or distorted with significant consequences.

Email filings At the time of writing, OHIM does not accept filings by email.

Fees You have already seen that there are various levels of fees.

Go the OHIM Designs page. Click on “FAQ”. Click on “Fees”. Click on “FAQ”. Scroll down and click on “Fee calculator”. This opens as a separate pop-up page and is very useful. It shows you the current level of fees, and has boxes for you to enter the details of the designs in the application, and then work out what fees are payable, so it is very useful.

GREY

Now please go back to the Handbook, and read the whole of Chapter 3 carefully, as it is full of useful information. You will probably find it helpful to make notes for your own future reference.

You are almost at the end of this module. Please spend a few minutes reviewing the information about filing applications that we have covered in the module, and making any extra notes that you wish.

Now move on to the quiz.

GREY

Test yourself

To get a filing date, what must a representation be?

If your client wishes to claim convention priority, do you have to do this at the time of filing?

May exhibition priority be claimed from any exhibition at which your client has previously shown a design?

When you are filling in the details of the designerâ&#x20AC;&#x2122;s address, what is a useful format for showing this?

What is a deferred publication?

May you file by email?

Check your answers.

GREY

The answers

Suitable for reproduction.

No â&#x20AC;&#x201C; you may add it up to a month later.

No. It must be an official exhibition falling within the terms of the Exhibition on International Exhibitions. In practice, there are very few of these.

You can show an address care of the designerâ&#x20AC;&#x2122;s employer.

A registration for which only the basic details are published. The substance of the design remains confidential for 30 months.

No.

SCARLET

Scarlet Module Examination and Publication of Registered Community Designs

SCARLET

In this module, we deal with what happens to a registered Community Design application after you have filed it, what OHIM does and what you might have to do.

Before you start this module, you should have worked through the Grey and Gold Modules.

To complete this module, you will need Access to the OHIM website The Community Designs Handbook.

When you have completed this module, you will have Read Commission Regulation 2245/2002 Identified the substantive grounds for refusing an application Listed the details shown in publication of the registration of a deferred application Explained the conditions for sending a specimen of the design applied for.

This module will take approximately one day to complete.

SCARLET

The Design Rules Article 1 is extremely important. This sets out the matters that examiners will check when you file an application to register a Community Design.

You should have a copy of The Community Designs Handbook with you. Turn to the section on secondary legislation. Pages B3 â&#x20AC;&#x201C; B58 cover Commission Regulation 2245/2002. Please read Article 1 now, then answer the few questions below.

If you give several addresses, which one will OHIM take into account?

What is required in accordance with Article 3(3)?

Who must sign?

Please check your answers.

SCARLET

Here are the answers.

The first address, unless one of them is an address for service.

An indication of the products.

The applicant, or their representative.

Turn again to Commission Regulation 2245/2002, and read Articles 2 to 11.

General provisions OHIM examines applications for formal requirements under Article 45 and Rule 11 â&#x20AC;&#x201C; have the forms been filled in correctly? OHIM examines applications for substantive grounds under Article 47 and Rule 10 â&#x20AC;&#x201C; is the design fit to be registered? It does not examine applications on relative grounds; that is, whether there are similar, or identical, earlier applications or registrations. It is left to the owners of earlier designs to take action if they wish.

SCARLET

Withdrawing or correcting an application

This is covered in Article 12.

Please read it now, then answer the questions below.

May you withdraw only some of the designs in a multiple application, or is it necessary to withdraw the entire application?

Your client has notified you that there is an error in the representation of the design. What can you do?

How many applications to correct do you have to submit if you have made mistakes in more than one application?

Now look at the answers.

SCARLET

How did you get on? 1.

You may withdraw some of the applications.

You cannot make changes to the representation of the design after filing. All you could do in these circumstances would be to withdraw the application. Check your representations carefully before filing!

Only one.

This exercise probably didnâ&#x20AC;&#x2122;t take you too long.

Speed of examination In most circumstances, a Community Design registration is quick and straightforward. If you have completed your on-line application form correctly, and the Locarno classification is correct, it is quite likely that OHIM will accept and publish the application within a month. Issue of Receipt After filing, you should receive a receipt very shortly. This will show The file number the representation an identification of the design (or of the first design in case of a multiple application) the nature and the number of the documents the date of their receipt the number of designs filed in case of a multiple application. If the examiner has not identified any deficiencies in the application, you may well find that the receipt also states that the design is accepted for registration.

SCARLET

Examination guidelines

Please go to the OHIM website, and go to the Designs main page. Click on “Legal texts” on the left-hand menu. Click on “Guidelines”. Click on “Guidelines for the examination of Community Designs”. Please read them, then try to answer the questions below.

What are the substantive grounds for refusing an application?

How long do applicants have to appeal examiners’ decisions?

What may accompany the receipt for the application?

What is necessary for an examiner to consider the background of the design reproduction to be neutral?

The examiner has notified you of deficiencies in an application, but you have been able to remedy them? How does this affect the date of filing?

Your client has claimed priority. What evidence must you provide?

SCARLET

Compare your answers with ours. 1.

The subject-matter of the application does not correspond to the definition of a design as set forth in Article 3(a) CDR The design is contrary to public policy or accepted principles of morality.

Two months from the date of receipt â&#x20AC;&#x201C; otherwise the application will expire.

An examination report, notifying you of any deficiencies.

The design must be clearly discernible on it.

The date on which OHIM receives the corrections will be the filing date.

A certified copy of the previous application or registration, issued by the authority which received the previous application and accompanied by a certificate stating the filing date of the previous application. Photocopies are acceptable, but should be in colour if the original was in colour.

Read the examination guidelines again now, if you wish.

Then read on.

SCARLET

The Community Designs Handbook

Chapter 4 of the Community Designs Handbook explains examination procedures in detail. You should have it with you.

Please read it, then answer the following questions. 1.

What happens to the filing date if you forget to sign the form?

In what circumstances do you not need to show the applicantâ&#x20AC;&#x2122;s identity?

What does OHIM do if you file more than seven views?

From what sorts of applications may you claim convention priority?

What might happen if you have filed an application that is in Irish?

You are filing electronically. How do you show a signature?

May you pay the fees by cheque?

How is a product defined?

SCARLET

Check your answers.

Nothing; it doesn’t matter at this stage, although OHIM will require a signature at some stage.

When the applicant already has an ID number.

It takes into account only the first seven.

Design or utility model applications only.

OHIM will probably send correspondence in your chosen second language, as Irish is not one of the OHIM official languages.

Type in the name; it is acceptable for electronic applications.

Yes.

“Any industrial or handicraft item, including but not restricted to parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographical symbols and typographical typefaces, but excluding computer programs”,

Note Although you cannot register computer programs, there is no barrier to registering screen icons and so on.

SCARLET

Registration and Publication

Once the examiner has decided that an application fulfils all the requirements under Article 48, the design is registered, and published in The Community Designs Bulletin.

Please go back to Commission Regulation 2245/2002, and read Articles 13 and 14.

Now please list the details that are shown in the publication if the applicant has requested deferment and paid the necessary fee. Then compare your list with ours on the next page.

SCARLET

The details are A mention of the deferment The name of the holder The name of the representative The date of filing and registration The file number.

Deferment of publication

Go back to Commission Regulation 2245/2002, and read Article 15.

V We talked in the Grey Module about why a client might wish to defer publication. Please think back for a moment about this. There is no need to write anything down, but please try to remember why this could happen.

A client might want to defer publication in order to keep details of a new product secret.

SCARLET

Please read Chapter 5 â&#x20AC;&#x153;Deferred Publicationâ&#x20AC;? in the Community Designs Handbook now. It is quite short. Note that not all countries allow deferment of all designs.

Searching Community Design Records

Now go to Chapter 2, and please read paragraph 2-016 up to the end of the chapter, to learn more about publication in the Bulletin, and how to extract information from it.

This will help you to build on what you learned when you worked through the Gold Module.

SCARLET

You are almost at the end of this module.

Please spend a few minutes now looking back through the manual and make notes of anything that still puzzles you to discuss with your trainer later on. And as usual, please note anything that you feel will be helpful to you later.

In particular, you will find it useful to look at any files your office has that include correspondence from OHIM in connection with registered Community Design applications where there have been deficiencies that they require to be remedied. Have a look at these, and the responses filed by your office to see how they are phrased. And make a note of the time scales involved, from the initial filing to the publication date.

Now move on to the quiz.

SCARLET

Test yourself

In most circumstances, how long does it take for OHIM to accept and publish an application?

What does the official receipt from OHIM include?

Under what conditions may you send a specimen of the design instead of a reproduction?

When the design is a typographic typeface, what must the representation of the design consist of?

You need to make a correction to an application. What does your application to correct need to include?

Your clientâ&#x20AC;&#x2122;s design never reaches registration. May you apply for a refund of the fees.

How might deferring publications save costs?

Check your answers.

SCARLET

The answers

One month.

This will show The file number the representation an identification of the design (or of the first design in case of a multiple application) the nature and the number of the documents the date of their receipt the number of designs filed in case of a multiple application. And often a statement that the design is accepted for registration.

the application relates to a two-dimensional design and the application contains a request for deferment.

All the letters of the alphabet, in upper and lower case, plus all Arabic numerals, as well as five lines of text in the typeface including all the letters and numerals. The size must be p16.

SCARLET

The file number of the application The applicantâ&#x20AC;&#x2122;s name and address The name and business address of the representative (your office) An indication of what needs to be corrected, and the corrected element.

No. The fees are non-refundable. Make sure that your clients understand this.

Your clients might have a number of designs, but not yet have decided on which one(s) they want to proceed with. Deferring publication means that they can abandon some of them without paying the publication fee.

LEMON

Lemon Module Invalidation of Registered Community Designs

LEMON

In this module, weâ&#x20AC;&#x2122;ll be talking about filing an application for the invalidation of the registered Community Design. We will look at the application form, how to fill it in, and at what happens after filing.

Before you start this module, you should have worked through the Scarlet Module.

To complete this module, you will need Access to the OHIM website A printer The Community Design Regulation (available in the Handbook below) The Community Designs Handbook.

When you have completed this module, you will have Explained who initially hears applications for invalidity Identified the relief available to applicants Listed the ways that you may pay the fee Identified the Article of the Regulation that sets out the grounds on which a registered Community Design may be declared invalid.

This module will take approximately one day to complete.

LEMON

When you worked through the Scarlet Module, you saw that OHIM subjects Community Design applications to only a very limited examination. Most of them become registered very easily and quickly. OHIM does not examine on relative grounds and there is no procedure for opposing Community Design applications before they are registered. The question of whether a design should actually have been registered normally only comes up when someone seeks a declaration of invalidity against it.

The Community Design Regulation

The legislation covering invalidity is set out in Section 5 of the Community Design Regulation. You should have a copy with you. Please read Articles 24, 25 and 26 now.

Please make careful notes of the grounds for invalidity.

LEMON

Now please turn to Chapter 7 of the Community Designs Handbook. Read from the beginning up to paragraphs 7-045 and then answer the following questions. 1.

Who initially hears applications for invalidity?

When are invalidity proceedings most likely to arise?

What are the grounds of invalidity available to any applicant?

Give an example of something that has been accepted as forming part of the state of the art.

What is maximum possible period of grace from first disclosure to filing an application for registered Community Design?

What does Article 25(1)(d) say about when a Community Design is invalid?

Your client has rights in the UK in a trade mark that is not registered, but which she has used widely for many years. A third party has registered a Community Design that incorporates that mark. Could you invoke the common law right to prevent passing off when seeking to invalidate the Community Design?

Now check your answers.

LEMON

How did you get on?

The Invalidity Division.

As a counterclaim in infringement proceedings.

The design does not meet the statutory definition – Article 25(1)(a) It does not meet the requirements for protection in Articles 4-9 – Article 25(1)(b).

A previously published trade mark registration.

Eighteen months – six months’ priority period, plus twelve months’ normal grace period.

It is invalid “if the Community Design is in conflict with a prior design which has been made available to public after the date of filing or, if a priority is claimed, the date of priority of the Community Design, and which is protected from a date prior to the said date by a registered Community Design, or by a registered design right of a member state, or by an application for such a right”.

Yes. You may invoke national laws. If a Community Design turns out to be invalid in one country, it is invalid throughout the EU.

LEMON

Guidelines for the Proceedings relating to a declaration of invalidity of a registered Community Design

Please go the main Designs page on the OHIM website.

Click on “Legal texts”. Click on “Guidelines”.

Click on “Guidelines for the Proceedings relating to a declaration of invalidity of a registered Community Design”. The very useful guidelines will open as a pdf document. Print the document out to refer to if you wish.

Although they do not go into as much detail as the Handbook, they are more concise.

Please read sections 1 and 2 and then try the exercise on the next page.

LEMON

Try to answer the questions from memory as far as possible. Your client, Mr Carter, has a UK registered design for covers for MP3 players, featuring an unusual design of a stretching cat. He has discovered a German designer, Herr Bauer, has registered an identical design as a Community Design. He obviously wishes to invalidate it.

What relief is available to Mr Carter?

Mr Carter has instructed you to file an application for invalidity, and you have now done so. He has then come to you with further grounds â&#x20AC;&#x201C; a trade mark registration of the stretching cat - to add to your case. Can you do this?

Herr Bauerâ&#x20AC;&#x2122;s application covered various sizes and shapes of MP3 cover, all featuring the cat design, in a multiple application. Can you likewise make a multiple application to invalidate all of them?

What is the time limit for filing an appeal?

LEMON

Compare your answers with ours.

The invalidity of the design as registered.

No. You cannot raise new grounds once you have filed the application. However, you may tell your client that it is possible to file a further application if necessary, and your client may want to do this if the first one fails. In general, however, it is obviously more cost-effective if you can obtain details of all grounds in the first place.

No. You have to file a separate application in respect of each design â&#x20AC;&#x201C; and there is a separate fee payable for each. Make sure that your client is aware of this.

Two months from the date of notification of the decision.

Next, we will look at actually filing an application for a declaration of invalidity.

LEMON

Filing an application for a declaration of invalidity

Please return to the OHIM website and the Designs page.

Click on “Forms and filing”.

Click on “Downloadable forms”.

Click on “Request for invalidity of a Community Design Download Form”.

The form will open as pdf document. Please print it out to refer to while you are working through this section. Then close the document.

Click on “Download notes” alongside the form button.

LEMON

Now please use the notes to answer these questions.

How do you state the grounds of invalidity?

Is it possible to file the application electronically?

What must you attach?

How do you decide the language in which to file the application?

LEMON

Check your answers.

By ticking at least one of the three grounds boxes.

No, not at the time of writing.

Two copies of documents substantiating the grounds.

It should be the language used in the original registration, unless that was not one of the five OHIM languages. If that is the case, you should use the second language designated in the registration.

Now please read the rest of chapter 7 of The Community Design Handbook.

LEMON

Procedures

Chapter 8 of The Community Design Handbook deals in more detail with what happens after the application has been filed, although you have already seen this in outline when you read the OHIM material. Then try to complete the exercise below.

How many times may OHIM invite the parties to submit observations?

In what circumstances might proceedings be terminated without OHIM issuing a decision?

A Community Design registration has been declared invalid. A client has come to you, explaining that her own design was previously held to have infringed the now-invalidated registration. She is aware that the effect of invalidation is retrospective, and wants to know if she can now have the infringement decision overturned. What do you tell her?

To whom can you appeal decisions?

LEMON

See how you got on.

As many times as necessary â&#x20AC;&#x201C; there is no limit.

When The applicant withdraws the application for invalidity The holder of the right surrenders the Community Design and the matter is not pursued by the applicant The design lapses and the matter is not pursued by the applicant The parties reach an amicable settlement. It is always desirable to see if you can negotiate a suitable outcome with the other side, by agreement with your client. Look again at the notes in the Handbook on amendments and disclaimers. These are matters you might be able to negotiate with the other side. You can see, however, that problems may arise with these, as they must not affect the essential identity of the design.

You must tell her that, unfortunately, the invalidity decision does not have any effect on earlier decided infringement cases.

First instance decisions may be appealed to OHIM Boards of Appeal. From there, you may appeal to the European Court of Justice.

LEMON

Some decided cases You can find a list of decided cases at http://oami.europa.eu/en/design/decispending.htm. Note that it is the language at the end that is clickable and will take you to the decisions. The decisions open as pdf documents.

Invalidity decision no 4042 In Decision No 4042 of 18/12/07 (applicant Kittrich Corporation), the Invalidity Division held that the prior design and the registered design were not identical. However, under Article 6, the overall impression produced by the prior design and the registered design on the informed user was the same. Therefore the registered design lacked individual character over the prior design. The registered design was invalidated.

Invalidity decision no 3010 In Decision No 3010 of 12/12/07 (applicant Holey Soles Holdings Limited), the registration was also held to be invalid.

Please make a note to read these cases, and discuss them with your trainer when you have finished this module.

Please think about how the fact that the owner of the Community Design registration had published pictures of shoes on its website affected the outcome of the case.

LEMON

In the CIPA Journal, March and April 2008 [see also February and March 2009], there is a series of articles by David Stone, reviewing OHIM invalidity decisions. Make a note to read these articles when you have finished working through this module.

You are almost at the end of this module.

Before you try the quiz, as usual spend a few minutes reviewing what you have learnt here, and making notes.

After you have finished the module, ask your trainer to show you any files you have in your offices dealing with invalidity proceedings.

Now move on to the quiz.

LEMON

Test yourself

Which Article of the Regulation sets out the grounds on which a registered Community Design may be declared invalid?

How many members are there of an Invalidity Division?

May you base an application for invalidity on grounds other than those in Article 21(1)?

You have filed an application for a declaration of invalidity. Unfortunately, you only filed one set. What happens now?

How does OHIM determine the date of filing of an application for a declaration of invalidity?

Under what circumstances may the filing fee be refunded?

Check your answers.

LEMON

The answers

Article 25.

Three, of whom one is a qualified lawyer.

No.

The Invalidity Division may invited you to file a second set within two months.

By the date that the fee is paid.

If it paid outside the time limit.

AQUA

Aqua Module Appeals Procedure for Registered Community Designs

AQUA

In this module, we look at procedures for filing an appeal at the Boards of Appeal. Subsequent appeal procedures to the European Court of First Instance and the European Court of Appeal are outside the scope of this module, as they are rare and likely to be handled by a specialist in the area.

Before you start this module, you should have worked through the Grey and Scarlet Modules.

To complete this module, you will need Access to the OHIM website A printer The Community Designs Handbook.

When you have completed this module, you will have Identified the time limit for filing an appeal Explained which language to file in Listed the means by which you can pay the fees Explained the circumstances when the Board of Appeal might not hear an appeal.

This short module will take about half a day to complete.

AQUA

Parties to proceedings have a right of appeal from all divisions of OHIM. Parties may initially appeal by right to the Board of Appeal, and from there to the Court of First Instance. Appeals to the Board of Appeal are very common, so you need to be aware of how they work. They are dealt with by correspondence.

We’ll start by looking at the OHIM website.

As usual, please go to the main OHIM Designs page.

Hover over “Forms and filings”. Click on “Downloadable forms”. Click on “Notice of Appeal” download button. It opens a a pdf document. If possible, please print it out to refer to.

Now close the document and click on the relevant “FAQ”. Please read these notes.

AQUA

Thinking about the application form and the explanatory notes, please try to answer these questions.

How might you avoid the need for attachments?

What is the time limit for filing an appeal?

What language must you file in?

May the person filing the appeal use an employee as a representative?

How should you identify the decision that you are contesting?

What is the time limit for filing the statement of grounds?

Now check your answers.

AQUA

See how you got on.

By using your office’s own electronic form and extending the space available (although note that OHIM recommends use of its own form).

Two months from the date of receiving the decision you wish to contest.

The language of the contested decision, or one of the five official languages plus a translation into the language of the contested decision.

Yes, subject to the rules about being within the EU.

Show the RCD number or the D number, the date of the contested decision and the service which took the decision.

Four months from the date of receiving the decision you wish to contest. You can also file them with the notice of appeal.

Payment of fees

Note that you may pay the fees by Debiting your account with OHIM Making a euro transfer to OHIM’s bank account.

At the time of writing, the appeal fee is €800.

AQUA

The Community Designs Handbook The Handbook goes into more detail on the topic of appeals. You should have your copy with you. Note that as the Handbook is not, at the time of writing, very up to date in this area. Most of the cases to which it refers are Community Trade Mark-related, rather than being Community Design cases.

Please read it, up as far as paragraph 9-044, and then answer the questions below. 1.

Are there any circumstances under which you would not be allowed to appeal?

How many Boards actually hear appeals?

Who may appeal?

May you appeal a decision not to admit evidence?

When might an appeal not actually be heard by the Board of Appeal?

How many times may the BoA invite a party to submit comments?

May you submit samples as evidence?

AQUA

Check your answers. 1.

No. Appeals are as of right.

One â&#x20AC;&#x201C; the third, at the time of writing.

A party to proceedings adversely affected by a decision. Article 56 CDR.

Generally, no, because only decisions which terminate proceedings may be appealed, under Article 55 CDR.

If the department who made the decision agrees to rectify it.

There is no limit.

There does not seem to be any reason why not.

Although further appeals are outside the scope of this manual, please now read the rest of Chapter 9, to give yourself a more complete picture of what might happen later.

AQUA

You are almost at the end of this module.

OHIM has published a number of appeals decisions on its website. You can find these at http://oami.europa.eu/en/office/aspects/decisionsboard.htm. Please make a note to have a look at some of these when you have completed this module. Your trainer may be able to suggest some more useful reading material.

As always, review what you have learned, make any notes that you wish, and then try the quiz.

AQUA

Test yourself

Are extensions of time within which to file statement of grounds of appeal available?

What is the time limit for paying the appeal fee?

What are the ways in which you may pay the appeals fee?

What is the difference between the way the BoA treats inter partes and ex parte proceedings?

Check your answers.

AQUA

The answers

No. The four-month period cannot be extended.

Two months from the date of receiving the decision you wish to contest.

Debiting your account with OHIM Making a euro transfer to OHIMâ&#x20AC;&#x2122;s bank account.

In inter partes proceedings, the BoA only examines evidence provided by the parties. In ex parte proceedings it may examine matters it chooses.

RED

Red Module Assignments and Licences of Registered Community Designs

RED

In this module, we look at changing the ownership of a Community Design and at licensing them to others. We look at drafting assignment and licence documents and in detail at the pitfalls of completing the official application form for recordal. You should have an annex to this module. It has examples of assignment and licence documents for you to look at. We will tell you when you need to turn to these. Before you start this module, you should have worked through the Grey and Scarlet Modules.

To complete this module, you will need Access to the OHIM website A printer The Community Design Regulation 6/2002 Commission Regulation 2245/2002 â&#x20AC;&#x201C; the Rules The Community Designs Handbook.

When you have completed this module, you will have Identified the Article of the Community Design Regulation that deals specifically with the transfer of ownership of a registered Community Design Listed acceptable forms of proof of the transfer of ownership Identified the time limit for remedying deficiencies in an application Explained who may request recordal of a licence

This module will take about a day to complete, including reading the annex material.

RED

Assignments An assignment records the fact that the ownership of a Community Design has changed.

Why might the ownership of a registration change?

Now think about the possible reasons why a design might pass into different ownership. List as many circumstances as you can think of, where the proprietor might change.

Then compare your list with ours on the next page.

RED

The proprietorship of a design may change where an entire business is sold, including assets such as Community Designs the design alone is sold - perhaps because someone has carried out a search and found it as a potential barrier to the registration of their own design, or because it is unused a company becomes insolvent and the receivers or liquidators sell its assets, including the designs a design is owned by one legal entity which then changes (for example, a sole proprietor forms a limited company) there is a change in the structure of a group of companies for tax or other reasons, involving transfers of rights the owner dies and the design is inherited by someone else

You may have thought of some more examples.

Note that the legislation refers to the person who originally owns the Community Design as the registered holder and to the person to whom they are transferring (assigning) the Community Design as the successor in title.

RED

Drafting an Assignment of Rights

You need to know how to draft an assignment of registered and unregistered design rights.

Firstly, you need to know what is actually being assigned. You may be provided with a list of rights to be assigned by your client, or you may have generated such a list yourself - for example, from due diligence enquiries that you have carried out.

Then, you have to settle the list of properties to be assigned with both parties (the Assignor and the Assignee). This may mean negotiating with the solicitors or intellectual property attorneys acting for the other party. Your agreed schedule of assigned rights is the basis of your assignment document.

You need to work out who the parties to the assignment are. Sometimes this is selfexplanatory, sometimes it is not. For example, you may find that registered design rights are on record in the name of a company which is not the same as the company you believe owns the rights. This is not an infrequent occurrence!

Imagine that this has indeed happened. What would you do next? Write down your answer, and then read on.

RED

You need to check whether there has been an assignment of rights which has not been recorded or if there has been a change of company name. You may need to record the change of company name before attempting to draft your assignment. Value Next, you need to think about the value of what is being assigned. Sometimes this transaction will be part of a much larger transaction (for example, where your client is buying the assets of another company). Sometimes the intellectual property will be valued at a nominal ten pounds, but at other times the true value of the intellectual property may be very high. You need to discuss this value and have it agreed. Other interests You should check prior to generating your assignment document whether it is possible to assign the rights free of liens and encumbrances. It is often the case that a company has taken out a security interest with a bank (something similar to a mortgage on a house) and you will not be able to record your assignment until any such liens have been waived.

Further assurance You certainly need to include a â&#x20AC;&#x153;further assuranceâ&#x20AC;? clause in your assignment document. This is in effect a statement that both parties will assist each other in seeking to get the assignment recorded at the relevant registry.

RED

Jurisdiction Which jurisdiction governs the assignment? In most cases that you are likely to deal with, this will be the Courts of England and Wales. However, sometimes you may find that the jurisdiction is Switzerland or the USA or elsewhere.

Identifying unregistered rights The assignment of unregistered design right have the particular problem that it can be difficult to list out what the rights are. One way of doing this is to identify unregistered design rights by product segment, family and model. Definitions Your agreement may well be part of a much larger share purchase agreement or asset purchase. If so, then you must make sure that the definitions in your assignment agreement are the same as the definitions in the main agreement. You cannot have a dispute as to definitions!

Why record the change of ownership? The person who buys the design cannot invoke registered rights unless and until the transfer of ownership is recorded.

In the annex, we have given you some sample assignment documents. Please look at them now.

RED

The Community Design Regulation The Community Design Regulation explains how Community Designs are dealt with as objects of property. You should have this with you â&#x20AC;&#x201C; you will find a copy in The Community Designs Handbook.

Please read Articles 27 to 31.

The Rules There is more detail about the practical details of the registration of assignments.

Please read Article 23 now.

Now, from memory, please list the acceptable proofs of transfer. Now check against our list on the next page.

RED

The following are acceptable The application to register the transfer, signed by the registered holder or their representative and the successor in title or their representative or The application submitted by the successor in title, accompanied by a declaration signed by the registered holder (or representative) that they agree to the registration or The application accompanied by a completed transfer form or document, signed by the registered holder (or representive) and by the successor in title (or representative).

Well done if you remembered these.

Applications Note that under rule 24.7, you may also assign the ownership of applications for registered Community Designs. However, given the speed at which they normally become registered, you would have to be quick to do this.

RED

The OHIM website

As usual, please go to the main OHIM Designs page.

Hover over “Forms and filings”.

Click on “Downloadable forms”.

Click on the “Recordal application” download button. A form will open as a pdf document. Please note that you can use the same form for a variety of purposes, and that it is the same one whether your application deals with a registered Community Design or a Community Trade Mark.

Print it out, and look at it. Now close the pdf document.

On the next page, we start going through this form in some detail, but think about how you might complete the form before reading on.

RED

The form

Remember to indicate at the top that the form concerns a registered Community Design (“RCD”). Box 1 - remember that unless your applicant is an individual, you need to tick the box for a legal entity. Box 2 is slightly complicated – you need to be clear whether you are acting on behalf of the owner of the registered right or the applicant for recordal – these may be one and the same person, or may not. For whom are you acting? For example, your client may have an exclusive licence to use the subject matter of a registered design, and one of the conditions of that licence is that your client – not the proprietor – deals with the recordal. Box 3 is again complicated – and again you need to decide for whom you are acting. If the rights holder is not the recordal applicant, then you need to fill in details identifying the rights holder. You need to state specifically when you are acting for someone outside the EU for example, a US company. You should be aware that a trade mark or design registration must have an address for service in the EU if the owner is domiciled outside the EU. You do not have to be the address for service in order to record the assignment or licence. You can record the assignment or licence whilst somebody else remains the address for service. Box 4 leads on from box 3. If you are recording the assignment or licence without being the address for service, you need to fill in the address for service in box 4. Box 5 is particularly complicated. You need to be clear what you are applying to do. The box presupposes you might want to record the total transfer (assignment) of the trade mark or design. Alternatively, you might want to limit the transfer to certain representations of the design. You might also want to record a right in rem (which we can liken to handing over the deeds of a house to a bank as collateral for a debt). Box 6 doesn’t apply to assignments.

RED

Box 7 is drafted as if it applies only to trade marks, but can in fact be used if you wish to specify that only certain designs covered by a multiple design registration are to be assigned.

Box 8 is straightforward – use a continuation sheet if it doesn’t give you enough room.

Box 9 deals with changes of name and address.

Box 10 deals with payment of fees and is straightforward.

Box 11 is for the signature – you need to be either a representative before OHIM with your own OHIM ID number or be authorised to sign on behalf of the firm.

Box 12 says it’s optional - but it is optional only in the sense that if other involved parties don’t sign here, then you have to provide OHIM with a copy of the assignment or transfer document signed by both parties.

RED

Finally, you need to fill in the number of pages you have used right at the top of the form and fill in each page number at the bottom right hand corner.

Important. Remember that you cannot save what you fill in, so you must print it out and hope that you don’t lose the document halfway through – this does happen, so be warned.

Go back to the downloadable forms page.

Click on “FAQS” for the recordal application.

Please read these notes now.

RED

The Community Designs Handbook

Chapter 12 of The Community Designs Handbook deals with transactions relating to Community Designs.

Please read paragraphs 12-01 to 12-019 now, and then answer the questions below.

May you sell rights in a registered Community Design in relation to France only?

To whom does OHIM send copies of documents in connection with a Community Design?

What is the time limit for remedying any deficiencies in an application to register transfer of ownership?

In practice, what does OHIM check?

The answers are on the next page.

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How did you get on?

No. The design is registered in respect of the whole of the EU and is a unitary right.

The registered holder (owner). Another reason why it is important to make sure that the right ownership is recorded!

Two months, in most circumstances.

Whether you have submitted sufficient proof of the transfer â&#x20AC;&#x201C; not whether the transfer is legally valid.

Note. Although it is most unlikely to arise very often in practice, please bear in mind that, very rarely, there may be implications of distorting competition in the EU. Make a note to discuss this with your trainer when you have finished this module.

As well as changing the ownership of a Community Design, you might also be involved with licensing one. We look at that next.

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Licences

We have looked at changes of ownership of registered Community Designs.

However, a proprietor might want to exploit a design in other ways.

Why might someone allow another person or company to use their designs, without transferring ownership of those designs?

Please list any circumstances that you can think of. Then compare your ideas with ours.

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A proprietor might permit use of a design by another person in cases of

Licensing between businesses - for example, an owner is not using a Community Design â&#x20AC;&#x201C; perhaps because they do not have the funds to develop it themselves, but it still has considerable commercial potential

Merchandising of, for example, cartoon characters â&#x20AC;&#x201C; your client might make toys in the shape of the characters, but license others to make cutlery with handles in the shapes of the characters

Use by a subsidiary company of a registered Community Design owned by the parent company.

You may have other examples in mind, based on your own experiences.

Now read on to learn about preparing licences.

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Preparing licences of registered designs Licences of designs can be more complicated than assignment documents. As with an assignment, you need to List the rights that that are being licensed, both registered or unregistered Establish who the parties are Establish what the value of the licence is Is it to be a one-off single payment? Are there continuing royalty payments on a per unit basis? Is it a royalty-free licence? Who has the responsibility to pay renewal fees and maintain the licensed rights? The licensee? The licensor? What are the termination provisions? Is it to have a term? Is it to be without a term? Normally, with registered rights, licences are expressed as being for the term of the last standing registered rights. What happens if there is a breach of the licence? What provisions do you want to write in for cessation of working under the licence?

As with assignments, it is usual to have a further assistance clause in a licence. There are sample licences in the annex to this module. Please look at them now. You will see that they are much longer than the assignment documents you looked at earlier.

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The Community Design Regulation

Please read Article 32. Note that a licence may be For a limited time For the whole of the EU Just for parts of the EU â&#x20AC;&#x201C; note that this is different from transfer of ownership Exclusive (the design is licensed to only one person and the proprietor may not use it) Sole (the design is licensed to only one person, but the proprietor may also use it) Non-exclusive (more than one person may be licensed to use the design).

You will need to show these details on the recordal application form â&#x20AC;&#x201C; which is the same one you have already looked at in connection with assignments.

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Note We said above that it is possible to licence a Community Design for part of the EU. However, please be aware â&#x20AC;&#x201C; and make sure that your clients are aware â&#x20AC;&#x201C; of the principle of exhaustion of rights in this context (Article 21). This means that once your client has consented to a product bearing the design being put onto the market in the EU, they cannot then prevent that product being imported and resold in other EU countries by for example, invoking rights to prevent infringement.

The Rules There is more detail about the practical details of the registration of licences in the Rules.

Please read Articles 24 to 26 of Commission Regulation 2245/2002 (the Rules) now, and then answer the short questions below from memory if possible. 1.

Who may request the recordal of a licence?

When is a sub-licence recorded?

May you change the details of recorded licences?

As usual, our answers are on the next page.

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How did you get on? 1.

The design owner The person to whom the design is licensed.

When it is granted by the licensee of a recorded licence.

Yes, under Article 26.

The Community Designs Handbook

Chapter 12 of The Community Designs Handbook also talks about licensing registered Community Designs.

Please read paragraphs 12-020 t0 12-035 now.

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More about property rights

Names and addresses of rights holders

Please read Article 19 of the Community Design Regulation, and paragraphs 12-046 â&#x20AC;&#x201C; 12-047 of the Handbook. .

More information

Please read Articles 33 and 34 the Community Design Regulation now.

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You are almost at the end of this module.

Please look back through the module now, as usual, to review what you have learnt and make notes of points you would like to research further, or discuss with your trainer.

When you have finished this module, you will find it useful to look at any files your office has covering licences or transfers of registered Community Designs â&#x20AC;&#x201C; note especially how the official forms have been completed.

Now try the quiz.

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Test yourself

Which Article of the Community Design Regulation deals specifically with the transfer of ownership of a registered Community Design?

How does the legislation refer to the person who originally owns the Community Design the person to whom they are transferring the Community Design?

May you apply to register the change of ownership of more than one Community Design in a single application?

Can you apply to register the change of ownership of a pending application?

Under what circumstances may a non-exclusive licensee bring proceedings for infringement of a registered Community Design?

May you license a Community Design in respect of Latvia only?

How do we suggest that you go about identifying unregistered design rights for assignment purposes?

Check your answers.

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The answers

Article 28.

The registered holder The successor in title.

Yes â&#x20AC;&#x201C; on condition that the registered holder and the successor in title are the same people for all the Community Designs in question.

Yes.

Where the owner of the Community Design consents to the proceedings.

Yes. Licences are an exception to the unitary principle.

We suggest that you identify them by Product Segment Family Model.

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Red Module Assignments and Licences of Registered Community Designs Annex

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DATED

9th September

2008

ASHLEY MANUFACTURING LIMITED - and OHIO APPLIANCES INC

ASSIGNMENT OF RIGHTS IN REGISTERED DESIGNS

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DATE:

2008

PARTIES (1)

ASHLEY MANUFACTURING LIMITED (previously called ASHLEY LIMITED) incorporated and registered in England and Wales with company number 05555129 whose registered office is at Guelder House, Breakwich, West Midlands, B66 2AA (the “Assignor”).

(2)

OHIO APPLIANCES INC incorporated and registered in the state of Ohio whose registered office is at 2825 Appliance Boulevard, Lewisburg, Ohio, 45338 USA (the “Assignee”).

BACKGROUND (A)

The Assignor is the proprietor of the applications for, and registrations of, the registered designs out in Schedules 1 and 2 (together the “Assigned Registered Designs”).

(B)

By an asset purchase agreement of even date between inter alia the Assignor and the Assignee (the “Main Agreement”) the Assignor has agreed to assign to the Assignee the Assigned Registered Designs to the Assignee on the terms set out below.

AGREED TERMS 1.

INTERPRETATION All defined terms shall bear the same meaning as in the Main Agreement unless the context requires otherwise.

ASSIGNMENT

2.1

In accordance with the terms of and for the consideration set out in the Main Agreement, the Assignor assigns to the Assignee as of the date of this Agreement the following:-

(a)

the sole legal and beneficial title free from all options, liens, charges and encumbrances in and to the Assigned Registered Designs;

(b)

the right to sue for damages and other remedies for any infringement of any of the rights listed in this clause 2.1 which occurred prior to the date of this assignment.

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FURTHER ASSURANCE The Assignor shall do or procure to be done all such further acts and things, and execute or procure the execution of all such other documents, as the Assignee may from time to time reasonably require in order to give the Assignee the full benefit of this agreement, whether in connection with any registration of title or other similar right or otherwise.

GOVERNING LAW AND JURISDICTION

4.1

This agreement shall be governed by and construed in accordance with the law of England and Wales.

4.2

Each party irrevocably agrees to submit to the exclusive jurisdiction of the courts of England and Wales over any claim or matter arising under or in connection with this agreement.

This agreement has been entered into on the date stated at the beginning of it. IN WITNESS WHEREOF this agreement is signed by the parties on the date first above written.

SCHEDULE OF REGISTERED DESIGNS ASSIGNED FROM ASHLEY MANUFACTURING LIMITED TO OHIO APPLIANCES INC

TITLE

COUNTRY

APPLN. DATE

APPLN. NO.

REGN. DATE

REGN. NO.

STATUS

Tool box

Finland

16/03/1999

99991

16/03/1999

99991

Granted

Tool box

Iceland

29/01/1999

170620

07/08/1998

2505

Granted

Tool box

USA

16/03/1999

29/102333

02/05/2000

D429393

Granted

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SIGNED for and on behalf of OHIO APPLIANCES INC acting by its duly authorised attorney in the presence of: …………………………… Authorised signatory Witness name

…………

Witness Address

…………

………………………………… ………………………………… Witness Signature

SIGNED for and on behalf of ASHLEY MANUFACTURING LIMITED by …………………………… Director

…………

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DATED

9th September

2008

ASHLEY MANUFACTURING LIMITED - and OHIO APPLIANCES INC

ASSIGNMENT OF RIGHTS IN UNREGISTERED DESIGNS

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DATE:

2008

PARTIES (1)

(2)

OHIO APPLIANCES INC incorporated and registered in the state of Ohio whose registered office is at 2825 Appliance Boulevard, Lewisburg, Ohio, 45338 USA (“Assignee”).

BACKGROUND (A)

By an asset purchase agreement of even date between inter alia the Assignor and the Assignee (the “Main Agreement”) the Assignor has agreed to assign to the Assignee all its right, title and interest in and to all unregistered designs (howsoever and wheresoever arising) in the products set out at schedule 1 (as defined in the Main Agreement as “Assigned Unregistered Designs”) on the terms set out below.

AGREED TERMS 5.

INTERPRETATION All defined terms shall bear the same meaning as in the Main Agreement unless the context requires otherwise.

ASSIGNMENT

6.1

In accordance with the terms of and for the consideration set out in the Main Agreement, the Assignor assigns to the Assignee as at the date of this Agreement:

(a)

all its right, title and interest in and to the Assigned Unregistered Designs; and

(b)

the right to sue for damages and other remedies for any infringement of any of the rights referred to in this clause 2.1 which occurred prior to the date of this assignment.

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this agreement, whether in connection with any registration of title or other similar right or otherwise. 8.

GOVERNING LAW AND JURISDICTION

8.1

This agreement shall be governed by and construed in accordance with the law of England and Wales.

8.2

Each party irrevocably agrees to submit to the exclusive jurisdiction of the courts of England and Wales over any claim or matter arising under or in connection with this agreement.

This agreement has been entered into on the date stated at the beginning of it. IN WITNESS WHEREOF this agreement is signed by the parties on the date first above written. SCHEDULE 1 THE PRODUCTS TO WHICH THE ASSIGNED UNREGISTERED DESIGNS RELATE Product segment, family and model Tool boxes 791 792 189 190 195 Wrenches: T555 T526 T1983 Screwdrivers Abc Abd Abe Abf (in early phase of development at present)

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SIGNED for and on behalf of OHIO APPLIANCES INC acting by its duly authorised attorney in the presence of: …………………………… Authorised signatory Witness name

…………

Witness Address

…………

………………………………… ………………………………… Witness Signature

SIGNED for and on behalf of ASHLEY MANUFACTURING LIMITED by …………………………… Director

…………

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DATED

10th September

(1) ASHLEY MANUFACTURING LIMITED - and (2) OHIO APPLIANCES INC

LICENCE UNDER REGISTERED DESIGNS

2008

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CONTENTS

DEFINITIONS .........................................................................................................................12

LICENCE .................................................................................................................................14

DURATION .............................................................................................................................15

MODIFICATIONS AND IMPROVEMENTS ........................................................................16

CONFIDENTIALITY ..............................................................................................................17

MAINTENANCE OF PATENTS/REGISTERED DESIGNS.................................................18

INFRINGEMENT....................................................................................................................18

TERMINATION ......................................................................................................................19

SUB-LICENSING AND ASSIGNMENT ...............................................................................21

10.

GENERAL ...............................................................................................................................21

11.

NOTICES .................................................................................................................................22

12.

DISPUTE RESOLUTION .......................................................................................................23

13.

LAW AND JURISDICTION ...................................................................................................24

SCHEDULE 1 .......................................................................................................................................25

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THIS LICENCE is made on

2008

BETWEEN (1)

OHIO APPLIANCES INC incorporated and registered in the state of Ohio whose registered office is at 2825 Appliance Boulevard, Lewisburg, Ohio, 45338 USA (“Licensor”); and

(2)

ASHLEY MANUFACTURING LIMITED incorporated and registered in England and Wales with company number 05555129 whose registered office is at Guelder House, Breakwich, West Midlands, B66 2AA (“Licensee”).

BACKGROUND In accordance with a sale and purchase agreement between the parties of even date the Licensor has agreed to grant the Licensee a licence UNDER various patents and registered designs (all as defined below) on the terms set out in this agreement. IT IS HEREBY AGREED as follows: 9.

DEFINITIONS 9.1

In this agreement unless the context otherwise requires the following words and expressions shall have the following meanings: “Fizzle” means Fizzle Electronic Company Limited (a company incorporated in Hong Kong) of 225 Aberdeen Street, Mong Kok, Hong Kong, China. “Commencement Date” means the date of this agreement; “Confidential Information” means secret or confidential commercial, financial, marketing or technical information, know-how, trade secrets and other information whatsoever in any form or medium whether disclosed orally or in writing after the Commencement Date together with any authorised reproductions of such information. “Field of Use” means the field of vehicle (including HGVs), fork-lift trucks, railroad, monorail, logistics, and shipping applications;

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“Group” means in relation to any company that company and every other company which is for the time being a subsidiary or holding company of that company or a subsidiary of any such holding company (and the terms “subsidiary” and “holding company” shall have the meanings given to them by Sections 736 and 736A of the Companies Act 1985); “Improvement” means any substantial modification, alteration, change or improvement to the technology; “Improvement Notice” means the written notice to be provided by the parties in accordance with clause 12.1. “Intellectual Property” means patents, patent applications, know-how, utility models, copyright (including copyright in software) database rights, registered designs, design rights, confidential information, rights in inventions, processes and formulae and all other intellectual property and rights of a similar or corresponding nature anywhere in the world; “Products” means without limitation all and any products, systems, integrated systems and solutions, equipment, software, spare parts, components and processes whatsoever; “Registered Designs” means the registered designs short particulars of which are set out in part 2 of schedule 1; “Technical Documents” means all designs, drawings, plans, specifications, instructions, prototypes, models, samples and reproductions (whether in two or three dimensions); “Technology” means the Registered Designs; “Term” means the term of this agreement; “Territory” means worldwide; and “Working Day” means any day from Monday to Friday (inclusive) which is not a statutory holiday in the US or the United Kingdom.

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9.2

The headings to clauses are inserted for convenience only and shall not affect the interpretation or construction of this agreement. Words imparting the singular shall include the plural and vice versa. Words imparting a gender include every gender and references to persons include an individual, company, corporation, firm or partnership.

9.3

The words and phrases “other”, “including” and “in particular” shall not limit the generality of any preceding words or be construed as being limited to the same class as any preceding word where a wider construction is possible.

9.4

References to any statute or statutory provision shall include (i) any subordinate legislation made under it, (ii) any provision which it has modified or re-enacted (whether with or without modification), and (iii) any provision which subsequently supersedes it or re-enacts it (whether with or without modification).

10.

LICENCE 10.1

The Licensor grants and the Licensee accepts upon the terms and conditions set out in this agreement with effect from the Commencement Date a royalty-free licence to use and exploit the Technology in the Territory including without limitation the right to design, develop, manufacture, have manufactured, assemble, offer for sale, sell, promote, distribute, install, repair, maintain and service the Products, within the Field of Use only.

10.2

Subject only to the licences which may be granted to Fizzle in accordance with clause 10.6.1 the Field of Use shall be exclusive to the Licensee. The Licensor shall not use the Technology in the Field of Use and subject only to the aforementioned sublicences to Fizzle in accordance with clause 10.6.1 it shall not grant any sub-licence to a third party or any company within the Licensor’s Group to use or exploit the Technology in the Field of Use.

10.3

Nothing in this agreement shall grant the Licensee any rights of use for the Technology outside of the Field of Use.

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10.4

The Licensee shall be entitled to grant sub-licenses to third parties of the Technology in the Field of Use (including without limitation to any company in the Licensee’s Group) provided that:10.4.1 within 30 Working Days of the grant of any sub-licence the Licensee shall provide to the Licensor a true copy of it; 10.4.2 the Licensee shall be responsible for any breach of the sub-licence by the sublicensee as if the breach had been that of the Licensee under this agreement.

10.5

Under no circumstances shall the Licensee grant sub-licences outside of the Field of Use.

10.6

The Licensor shall be entitled to grant sub-licences of the Technology: 10.6.1 in the Field of Use solely to Fizzle for the manufacture and supply of fork-lift trucks. The terms of each such sub-licence shall be agreed by the Licensor save that each sub-licence shall require the payment of royalties quarterly in arrears which shall be shared equally between the Licensee and Licensor. Payment of the Licensee’s share of the royalties shall be paid to the Licensee within 30 Working Days of receipt by the Licensor; 10.6.2 outside of the Field of Use to any company within the Licensor’s Group only and not to any other third party.

10.7

The parties shall execute such formal licences as may be necessary for registration with intellectual property offices and other relevant authorities the details of this agreement. The Licensor agrees to execute such formal licences as are submitted by the Licensee. The cost of lodgement and registration of such formal licences shall be borne by the Licensee.

11.

DURATION This agreement shall come into force on the Commencement Date and subject to the provisions for earlier termination set out herein shall continue until the expiry of the last to expire of the Patents and Registered Designs.

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12.

MODIFICATIONS AND IMPROVEMENTS 12.1

If either of the parties during the period of 3 years from the Commencement Date files an application for a Registered Design anywhere in the Territory for an Improvement it shall to the extent that it is not prohibited by law or by any obligation to any third party promptly issue an Improvement Notice giving details of the Improvement subject to obligations of confidence.

12.2

On receipt of an Improvement Notice the receiving party shall have 30 Working Days in which to confirm in writing that it intends to take a licence of the Improvement. Where a party confirms it requires a licence of an Improvement in accordance with this clause 12.2 the parties shall enter into arms length, good faith negotiations concerning the commercial terms of the licence taking into account the current market conditions save that the following provisions shall be included in the licence: 12.2.1 the licence will be non-exclusive; 12.2.2 the licence will extend throughout the Territory; 12.2.3 the licence will reflect the parties’ rights and restrictions set out in herein in respect of sub-licensing; 12.2.4 where the licence is granted to the Licensee it shall allow for the exploitation and use of the Improvement in the Field of Use by the Licensee and its sublicensees; 12.2.5 where the licence is granted to the Licensor it shall allow for the exploitation and use of the Improvement in all areas outside of the Field of Use by the Licensor and any company in the Licensor’s Group save that the Licensor may not grant sub-licences of any licensed Improvement outside of the Licensor’s Group..

12.3

All Improvements generated by the Licensee during the Term and all Intellectual Property arising in such Improvements shall vest absolutely in the Licensee.

12.4

All Improvements generated by the Licensor during the Term and all Intellectual Property arising in such Improvements shall vest absolutely in the Licensor.

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13.

CONFIDENTIALITY 13.1

Each party shall keep and procure to be kept secret and confidential all Confidential Information belonging to the other party (including without limitation in respect of Improvements and any Technical Documents) disclosed or obtained as a result of the relationship of the parties under this agreement and shall not use nor disclose the same save for the purposes of the proper performance of this agreement or with the prior written consent of the disclosing party.

13.2

Each party shall restrict the disclosure and maintain the confidentiality of the Confidential Information by treating it with at least the same degree of care and by exercising no lesser security measures to the Confidential Information as the receiving party applies to its own proprietary information.

13.3

The obligations of confidentiality in this clause 13 shall not extend to any matter which either party can show to the reasonable satisfaction of the disclosing party: 13.3.1 is in, or has become part of, the public domain other than as a result of a breach of the obligations of confidentiality under this agreement; 13.3.2 was in its written records prior to the Commencement Date other than due to disclosure under the Confidentiality Agreement; 13.3.3 was independently disclosed to it by a third party entitled to disclose the same; or 13.3.4 is required to be disclosed under any applicable law, or by order of a court or governmental body or authority of competent jurisdiction, provided that such information is disclosed only to the extent actually required by law and prior to such disclosure the receiving party gives the disclosing party such prior notice that it is reasonably able to give in order to give the disclosing party the opportunity to seek a protective order for the Confidential Information.

13.4

The Confidential Information shall remain the sole property of the disclosing party and the receiving party will immediately upon written request of the disclosing party: 13.4.1 return all Confidential Information or part thereof as well as any copies thereof to the disclosing party;

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13.4.2 erase all Confidential Information from any computer resident database or any other similar device into which it was programmed; 13.4.3 destroy all notes, analyses or memoranda containing, referring to or analysing Confidential Information; 13.4.4 within thirty (30) Working Days of the demand provide the disclosing party with a certificate addressed to it and signed by a duly authorised representative of the receiving party confirming the compliance with any request under this clause 13. 14.

MAINTENANCE OF REGISTERED DESIGNS 14.1

During the Term the Licensor shall: 14.1.1 pay all renewal fees and do all such acts and things as may be necessary to maintain the Registered Designs; 14.1.2 not allow to lapse or abandon any of the Registered Designs without giving the Licensee three monthsâ&#x20AC;&#x2122; prior written notice whereupon if the Licensee so elects in writing the Licensor shall assign to the Licensee without charge or payment such of the Registered Designs which the Licensor proposes to abandon or allow to lapse;

14.2

The Licensor warrants that neither it nor any company within its Group will enter into any arrangement or agreement with any third party which may conflict with or prejudice this agreement or any rights of the Licensee hereunder.

15.

INFRINGEMENT 15.1

The Licensee and Licensor shall promptly notify the other of:15.1.1 any potential or actual infringement of the Technology which is brought to their attention; and 15.1.2 any threatened or actual legal action or allegation that the use by the Licensee of the Technology in accordance with this agreement infringes third party Intellectual Property.

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15.2

Subject to clause 15.3 the Licensor shall decide to in its absolute discretion whether and what steps (if any) should be taken to prevent or curtail the infringement of the Technology.

15.3

Upon written notification to the Licensor of any actual or potential infringement of the Technology in the Field of Use, the Licensee will have 30 Working Days in which to decide how and whether to enforce the Technology. Only if the Licensee declines or fails to take any action within this timescale then the Licensor shall take such steps as it deems appropriate anywhere in the Territory to curtail any such threatened or actual infringement of the Technology.

15.4

The costs and expenses of any steps, actions or proceedings pursued by: 15.4.1 the Licensor pursuant to clause 15.2 shall be borne by the Licensor; 15.4.2 the Licensee pursuant to clause 15.3 shall be borne by the Licensee.

15.5

The Licensor and Licensee shall provide all reasonable assistance to, and at the cost of, the other in any legal action or other steps taken to curtail any infringement of the Technology. Such assistance shall include being joined as a party in any legal or other judicial proceedings. Where one party is so joined in any legal or other judicial proceedings pursued by the other party (for the purposes of this clause 15 â&#x20AC;&#x153;the Litigating Partyâ&#x20AC;?) hereby indemnifies the other party in respect of any order, decision or settlement agreement requiring the payment or contribution to the defending partiesâ&#x20AC;&#x2122; legal costs and/or damages.

15.6

Any damages awarded or agreed to be paid to the Litigating Party shall be retained for its own benefit.

15.7

In the event of any threats of, or actual legal action by a third party pursuant to clause 15.1.2 the parties shall promptly consult and decide what steps should be taken. Neither party shall make any admission of liability or initiate or consent to the terms of any settlement agreement without prior consultation with, and agreement of, the other party.

16.

TERMINATION 16.1

The Licensor may immediately terminate this agreement in the event the Licensee:

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16.1.1 proposes a voluntary arrangement within the meaning of Section 1 or Section 253 of the Insolvency Act 1986, or an interim order is made in relation to the Licensee under Section 252 of the Insolvency Act 1986; 16.1.2 is deemed to be unable to pay its debts within the meaning of Section 123 of the Insolvency Act 1986, or calls a meeting for the purpose of passing a resolution to wind it up, or such a resolution is passed, or a resolution is passed by the directors of the Licensee to seek a winding up or administration order, or the Licensee presents, or has presented, a petition for a winding up order which is not discharged in 30 Working Days, or presents, or has presented, a petition to appoint an administrator, or has an administrative receiver, or receiver appointed over all of its business, undertaking, property or assets; 16.1.3 seeks to formally challenge the registration or validity of any of the Registered Designs and fails to withdraw any such challenge within 30 Working Days of receipt of the Licensorâ&#x20AC;&#x2122;s written request to do so. 16.2

The Licensor shall immediately terminate this Agreement without notice if the Licensee seeks to formally challenge the registration or validity of the Registered Designs.

16.3

Upon termination of this agreement in accordance with clause 16.1: 16.3.1 the licence of the Technology granted to the Licensee shall cease and the Licensee shall no longer be entitled to use or exploit the Technology in so far and for as long as any of the Registered Designs remain in force; 16.3.2 the Licensee shall be entitled to sell all remaining stocks of Products and satisfy all outstanding contracts for the Products; 16.3.3 each party shall return all Technical Documents belonging to the other remaining in their possession or control; 16.3.4 the provisions of clauses 9,13,16.3,18,19,20 and 21 shall survive termination of this agreement.

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17.

SUB-LICENSING AND ASSIGNMENT 17.1

The Licensor may assign this agreement without the consent of the Licensee to the purchaser of all or part of its business and assets party provided such assignment is subsequently promptly notified to the Licensee.

17.2

The Licensee may assign this agreement without the consent of the Licensor to:17.2.1 the purchaser of all or part of its business and assets; and 17.2.2 any company within the Licenseeâ&#x20AC;&#x2122;s Group

provided such assignments are promptly notified to the Licensor. 17.3

For the avoidance of doubt the Licensee shall be entitled to sub-contract to a third party or any company within the Licenseeâ&#x20AC;&#x2122;s Group any aspect of the design, development, build, manufacture, assembly, servicing and repair of the Products in the Field of Use.

18.

GENERAL 18.1

This agreement contains the entire agreement and understanding of the parties and supersedes all negotiations, understandings or previous agreement between the parties relating to its subject matter.

18.2

Nothing contained or implied in this agreement constitutes either of the parties the partner, agent or legal representative of the other for any purpose or creates any partnership, agency or trust, and no party has the authority to bind the other party in any way.

18.3

If the whole or any part of a provision of this agreement is void, unenforceable or illegal in any jurisdiction it is severed for that jurisdiction. The remainder of the agreement has full force and effect and the validity or enforceability of that provision in any other jurisdiction is not affected. This clause has no effect if the severance alters the basic nature of this agreement or is contrary to public policy.

18.4

No failure or delay by a party in exercising or pursuing any claim right or remedy arising under this agreement or from any breach by another party of any of its

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obligations under this agreement shall operate or be construed as a waiver thereof, nor shall the rights and remedies of a party under this agreement be in any way extinguished or diminished by the granting of any indulgence, forbearance or extension of time by that party, and a single or partial exercise of any right or remedy shall not prevent any further or other exercise or the exercise of any other right or remedy. 18.5

This agreement may be executed in any number of counterparts all of which taken together shall constitute one and the same agreement.

18.6

Each party agrees to execute, acknowledge and deliver such further instruments, and do all acts, as may be necessary or appropriate to carry out the purposes and intent of this agreement and to refrain from doing anything that would hinder performance of this agreement or prevent a party from obtaining the full benefit of the agreement in accordance with its terms.

18.7

No alteration or variation of this agreement shall be effective unless it is in writing and is signed by an authorised signatory of each of the parties.

18.8

The Contracts (Rights of Third Parties) Act 1999 shall not apply to this agreement. No person who is not a party to this agreement (including any employee, officer, agent, representative or subcontractor of either party) shall have the right (whether under the Contracts (Rights of Third Parties) Act 1999 or otherwise) to enforce any term of this agreement which expressly or by implication confers a benefit on that person without the express prior agreement in writing of the parties which agreement must refer to this clause.

19.

NOTICES 19.1

Any notice to be given under this agreement shall be in writing and delivered by hand, prepaid registered post or facsimile to the other party at the address or fax number set out below or to such other address or fax number as either party may specify in writing to the other.

Notices Licensor

the Addressee details: Amber Goldsmith Company name: Ohio Appliances Inc

RED ANNEX

Address: 2825 Appliance Boulevard, Lewisburg, Ohio, 45338 USA Notices Licensee

the Addressee details: Daniel Egret Company name: Ashley Manufacturing Limited Address: Guelder House, Breakwich, West Midlands, B66

2AA, UK 19.2

Notices are deemed to have been given: 19.2.1 if delivered by hand, at the time of the delivery unless delivered after 5.00pm or on a non-Working Day at the place of receipt, in which case the notice is deemed to have been given at 9.00am the next Working Day; 19.2.2 if sent by registered post from within the United Kingdom, three Working Days after posting (or seven Working Days if posted from outside the United Kingdom); and 19.2.3 if sent by facsimile, at the time the facsimile is received, as shown in the transmission report as the time that the whole facsimile was sent unless received after 5.00pm or on a non-Working Day in the place of receipt, in which case the notice is deemed to have been given at 9.00am the next Working Day.

20.

DISPUTE RESOLUTION 20.1

In the event that a dispute arises between the parties they shall meet as soon as practicable and negotiate in good faith with a view to resolving the dispute.

20.2

If the parties are unable to settle any dispute by negotiation under clause 20.1 within 10 Working Days the parties shall promptly refer the matter to their respective chief executive officers.

20.3

If the parties have not been able to resolve the dispute under clause 20.2 after a further 15 Working Days (or such other longer period as the parties may agree), the parties shall refer the dispute to mediation conducted in accordance with the Centre for the Effective Dispute Resolution (CEDR) Model Mediation Procedure the costs of which shall be borne equally by the parties.

RED ANNEX

20.4

Notwithstanding the provisions of clauses 20.1 to 20.3, either party may seek interim, injunctive or interlocutory relief or remedies without having to use the dispute resolution procedure if it reasonably considers that the other party to this agreement has breached or is about to breach, any of the terms or conditions of this agreement.

21.

LAW AND JURISDICTION 21.1

This Agreement shall be interpreted and construed and any dispute or claim arising out of or in connection with it shall be governed by, and construed in accordance with, the laws of England.

21.2

All disputes or claims arising out of or relating to this agreement shall be subject to the non-exclusive jurisdiction of the English Courts.

IN WITNESS the parties have signed this agreement on the date first above written.

RED ANNEX

SCHEDULE 1

Registered designs

TITLE

COUNTRY APPLN. DATE

APPLN. NO.

REGN. DATE

REGN. NO.

STATUS

Mono rail capsule France

16/03/1999 991999

Granted

Fork lift

16/03/1999 981737

16/03/1990 981737

Granted

Mono rail capsule India

29/01/1999 133623

07/08/1998 2554

Granted

Fork lift

India

29/01/1999 178665

07/08/1998 3881

Granted

Fork lift

Mexico

03/02/1999 904153

03/02/1999 12230

Granted

Fork lift D55

USA

16/03/1999 29/102123 02/05/2000 D423985 Granted

Fork lift D56

USA

16/03/1999 29/102124 02/05/2000 D423986 Granted

Mono rail capsule USA

02/02/1999 29/100372 25/04/2000 D423391 Granted

France

RED ANNEX

SIGNED for and on behalf of OHIO APPLIANCES INC acting by its duly authorised attorney in the presence of: …………………………… Authorised signatory Witness name

…………

Witness Address

…………

………………………………… ………………………………… Witness Signature

SIGNED for and on behalf of ASHLEY MANUFACTURING LIMITED by:

…………………………… Director

…………

RED ANNEX

DATED

10th September

2008

(1) ASHLEY MANUFACTURING LIMITED - and (2) OHIO APPLIANCES INC

RECIPROCAL LICENCE OF UNREGISTERED DESIGNS

RED ANNEX

CONTENTS 1.

INTERPRETATION.................................................................................................................. 1

GRANT OF LICENCES............................................................................................................ 3

INTELLECTUAL PROPERTY RIGHTS ................................................................................. 4

CONFIDENTIALITY................................................................................................................ 4

NOTICES................................................................................................................................... 6

GENERAL................................................................................................................................. 7

LAW AND JURISDICTION..................................................................................................... 8

SCHEDULE 1......................................................................................................................................... 9 The products in respect of which Unregistered IPR Licence is granted from Ashley Manufacturing Ltd to Ohio Appliances Inc......................................................................... 9 SCHEDULE 2....................................................................................................................................... 10 The products in respect of which Unregistered IPR licence is granted from Ohio Appliances Inc to Ashley Manufacturing Ltd ...................................................................................... 10

RED ANNEX

THIS AGREEMENT is dated

2008

BETWEEN (1)

ASHLEY MANUFACTURING LIMITED (“Ashley Manufacturing”) incorporated and registered in England and Wales with company number 05555129 whose registered office is at Guelder House, Breakwich, West

Midlands, B66 2AA and (2)

Ohio Appliances INC (“Ohio Appliances”) incorporated and registered in the state of Ohio whose registered office is at 2825 Appliance Boulevard, Lewisburg, Ohio, 45338 USA

BACKGROUND In accordance with a sale and purchase agreement between the parties of even date the parties have agreed to grant to each other a reciprocal licence of various and unregistered intellectual property rights (as defined below) on the terms set out in this Agreement. IT IS AGREED AS FOLLOWS: 1.

INTERPRETATION 1.1

The following definitions apply in this Agreement:“Ashley Manufacturing Field of Use” means the field of vehicle (including HGVs), fork-lift trucks, railroad, monorail, logistics, and shipping applications; “Commencement Date” means the date of this Agreement; “Confidential Information” means secret or confidential commercial, financial, marketing or technical information, know-how, trade secrets, processes, drawings, and instructions recording or relating to the Licensed IPR and other information whatsoever in any form or medium whether disclosed orally or in writing Commencement Date together with any authorised reproductions of such information.

RED ANNEX

“Ohio Appliances Field of Use” means cranes. “Group” means in relation to any company that company and every other company which is for the time being a subsidiary or holding company of that company or a subsidiary of any such holding company (and the terms “subsidiary” and “holding company” shall have the meanings given to them by Sections 736 and 736A of the Companies Act 1985); “Licensee” means either or both of; (i)

Ohio Appliances in relation to the licence granted by Ashley Manufacturing pursuant to clause 2.1.1; and

(ii)

Ashley Manufacturing in relation to the licence granted by Ohio Appliances pursuant to clause 2.1.2;

“Licensor” means either or both of; (i)

Ashley Manufacturing in relation to the licence granted to Ohio Appliances pursuant to clause 2.1.1; and

(ii)

Ohio Appliances in relation to the licence granted to Ashley Manufacturing pursuant to clause 2.1.2;

“Licensed IPR” means the Unregistered IPR the subject of the reciprocal licences granted by, and to, Ashley Manufacturing and Ohio Appliances under the terms of this agreement. “Unregistered IPR” means all unregistered intellectual property rights including without limitation design right, copyright (including copyright in software), database rights, confidential information, know-how, processes and formulae and all other intellectual property and rights of a similar or corresponding nature anywhere in the world, existing as at the date of this agreement. “Working Day” means any day from Monday to Friday (inclusive) which is not a statutory holiday in the US or the United Kingdom.

RED ANNEX

GRANT OF LICENCES 2.1

The parties hereby grant with effect from the Commencement Date the following perpetual, worldwide, irrevocable, royalty-free and non-exclusive licences of :2.1.1

the Unregistered IPR arising in the products and product facilities listed in schedule 1 hereby granted by Ashley Manufacturing in favour of Ohio Appliances subject to such use being restricted to the Ohio Appliances Field of Use; and

2.1.2

the Unregistered IPR arising in the products and product facilities listed in schedule 2 hereby granted by Ohio Appliances in favour of Ashley Manufacturing subject to such use being restricted to the Ashley Manufacturing Field of Use.

2.2

Either party shall at the request of the other use all reasonable endeavors to do or procure the doing of all such further acts and execute or procure the execution (as a deed or otherwise) of all such documents as may from time to time be necessary to give full effect to this Agreement.

2.3

Each Licensee may grant sub-licences (including without limitation to each of the partiesâ&#x20AC;&#x2122; Group) of the licences granted to them under clause 2.1 without the prior written consent of the relevant Licensor provided that:2.3.1

any sub-licence grated by Ashley Manufacturing is restricted to the Ashley Manufacturing Field of Use; and

2.3.2

any sub-licence granted by Ohio Appliances is restricted to the Ohio Appliances Field of Use.

2.4

In the event either party generates an improvement, modification or enhancement of the Licensed IPR such improvement, modification or enhancement shall vest in that party. Either party shall be at liberty to discuss potential licensing to the other party upon agreed commercial terms of any such improvement, enhancement or modification.

RED ANNEX

INTELLECTUAL PROPERTY RIGHTS 3.1

Each Licensee acknowledges each Licensorsâ&#x20AC;&#x2122; ownership and proprietary rights in the Unregistered IPR and agrees and acknowledges that it shall not obtain any rights in the Unregistered IPR, except as expressly granted to it under this Agreement;

3.2

Each Licensee shall immediately give notice in writing to the Licensor if it becomes aware of any: 3.2.1

infringement or suspected infringement of any of the Licensed IPR; or

3.2.2

claims made or threatened that the use of the Licensed IPR infringe the rights of any third party.

3.3

In the case of any infringement or suspected infringement by any third party of the Licensed IPR: 3.3.1

each Licensor shall, in its sole discretion, decide what action if any to take; and

3.3.2

each Licensor shall have sole control over, and conduct of, all claims and proceedings;

3.3.3

each Licensee shall, subject to an indemnity from the Licensor for its costs (including without limitation legal costs), provide the Licensor with all assistance that it may reasonably require in the conduct of any claims or proceedings; and

3.3.4

each Licensor shall bear the cost of any proceedings and shall be entitled to retain all sums recovered for its own account.

CONFIDENTIALITY 4.1

Each party shall keep and procure to be kept secret and confidential all Confidential Information belonging to the other party disclosed or obtained as a result of the relationship of the parties under this agreement and shall not

RED ANNEX

use nor disclose the same save for the purposes of the proper performance of this agreement or with the prior written consent of the disclosing party. 4.2

4.3

The obligations of confidentiality in this clause 13 shall not extend to any matter which either party can show to the reasonable satisfaction of the disclosing party: 4.3.1

is in, or has become part of, the public domain other than as a result of a breach of the obligations of confidentiality under this agreement;

4.3.2

was in its written records prior to the Commencement Date other than due to disclosure under the Confidentiality Agreement;

4.3.3

was independently disclosed to it by a third party entitled to disclose the same; or

4.3.4

is required to be disclosed under any applicable law, or by order of a court or governmental body or authority of competent jurisdiction, provided that such information is disclosed only to the extent actually required by law and prior to such disclosure the receiving party gives the disclosing party such prior notice that it is reasonably able to give in order to give the disclosing party the opportunity to seek a protective order for the Confidential Information.

4.4

The Confidential Information shall remain the sole property of the disclosing party and the receiving party will immediately upon written request of the disclosing party: 4.4.1

return all Confidential Information or part thereof as well as any copies thereof to the disclosing party;

RED ANNEX

4.4.2

erase all Confidential Information from any computer resident database or any other similar device into which it was programmed;

4.4.3

destroy all notes, analyses or memoranda containing, referring to or analysing Confidential Information;

4.4.4

within thirty (30) Working Days of the demand provide the disclosing party with a certificate addressed to it and signed by a duly authorised representative of the receiving party confirming the compliance with any request under this clause 13.

NOTICES 5.1

Any notice to be given under this Agreement shall be in writing and delivered by hand, prepaid registered post or facsimile to the other party at the address or fax number set out below or to such other address or fax number as either party may specify in writing to the other. Ashley Addressee details: Daniel Egret

Notices to Manufacturing

Company name: Ashley Manufacturing Limited Address: Guelder House, Breakwich, West

Midlands, B66 2AA, UK Notices to Appliances

the

Ohio Addressee details: Amber Goldsmith Company name: Ohio Appliances Inc

Address: 2825 Appliance Boulevard, Lewisburg, Ohio, 45338 USA

RED ANNEX

5.2

Notices are deemed to have been given: 5.2.1

if delivered by hand, at the time of the delivery unless delivered after 5.00pm or on a non-Working Day at the place of receipt, in which case the notice is deemed to have been given at 9.00am the next Working Day;

5.2.2

if sent by registered post from within the United Kingdom, three Working Days after posting (or seven Working Days if posted from outside the United Kingdom); and

5.2.3

if sent by facsimile, at the time the facsimile is received, as shown in the transmission report as the time that the whole facsimile was sent unless received after 5.00pm or on a non-Working Day in the place of receipt, in which case the notice is deemed to have been given at 9.00am the next Working Day.

GENERAL 6.1

This Agreement contains the entire agreement and understanding of the parties and supersedes all negotiations, understandings or previous agreement between the parties relating to its subject matter.

6.2

Nothing contained or implied in this Agreement constitutes either of the parties the partner, agent or legal representative of the other for any purpose or creates any partnership, agency or trust, and no party has the authority to bind the other party in any way.

6.3

If the whole or any part of a provision of this Agreement is void, unenforceable or illegal in any jurisdiction it is severed for that jurisdiction. The remainder of the Agreement has full force and effect and the validity or enforceability of that provision in any other jurisdiction is not affected. This clause has no effect if the severance alters the basic nature of this Agreement or is contrary to public policy.

RED ANNEX

6.4

No failure or delay by a party in exercising or pursuing any claim right or remedy arising under this Agreement or from any breach by another party of any of its obligations under this Agreement shall operate or be construed as a waiver thereof, nor shall the rights and remedies of a party under this Agreement be in any way extinguished or diminished by the granting of any indulgence, forbearance or extension of time by that party, and a single or partial exercise of any right or remedy shall not prevent any further or other exercise or the exercise of any other right or remedy.

6.5

This Agreement may be executed in any number of counterparts all of which taken together shall constitute one and the same Agreement.

6.6

No alteration or variation of this Agreement shall be effective unless it is in writing and is signed by an authorised signatory of each of the parties.

6.7

The Contracts (Rights of Third Parties) Act 1999 shall not apply to this Agreement. No person who is not a party to this Agreement (including any employee, officer, agent, representative or subcontractor of either party) shall have the right (whether under the Contracts (Rights of Third Parties) Act 1999 or otherwise) to enforce any term of this Agreement which expressly or by implication confers a benefit on that person without the express prior Agreement in writing of the parties which Agreement must refer to this clause.

LAW AND JURISDICTION 7.1

This Agreement shall be interpreted and construed and any dispute or claim arising out of or in connection with it shall be governed by, and construed in accordance with, the laws of England.

7.2

All disputes or claims arising out of or relating to this Agreement shall be subject to the exclusive jurisdiction of the Courts of England and Wales.

IN WITNESS the parties have signed this agreement on the date first written above.

RED ANNEX

SCHEDULE 1

The products in respect of which Unregistered IPR Licence is granted from Ashley Manufacturing to Ohio Appliances

Product

segment

and Model

family Forklift truck

XG678

Forklift truck

XH771

Freight fittings for trains

WN990

Freight fittings for ships

VM887

RED ANNEX

SCHEDULE 2 The products in respect of which Unregistered IPR licence is granted from Ohio Appliances to Ashley Manufacturing

Product segment and family

Model

Cranes

QA100

Cranes

QA115

Cranes

QA125

Cranes

BETA700

Cranes

BETA701

Cranes

BETA702

RED ANNEX

SIGNED for and on behalf of ASHLEY MANUFACTURING LIMITED by:

…………………………… Director SIGNED for and on behalf of OHIO APPLIANCES INC acting by its duly authorised attorney in the presence of: …………………………… Authorised signatory Witness name ………… Witness Address ………… ………………………………… ………………………………… Witness Signature …………

IVORY

Ivory Module Restitutio in Integrum

IVORY

In this module, we will look at a right which is not available in the UK, but is based on practice at the European Patent Office. If you have already worked through the corresponding manual covering the Community Trade Mark, you may remember something about it from that.

Before you start this module, you should have worked through the Grey Module.

To complete this module, you will need The Community Design Regulation The Community Designs Handbook.

When you have completed this module, you will have Identified the time limit for applying Explained what you must supply in support of an application Listed the time limits to which the right does not apply Identified the Article that provides for restitutio in integrum

This module will take less than half a day to complete.

IVORY

What is the right of restitutio in integrum? Restitutio in integrum means that OHIM has the power to re-establish any right lost through non-compliance with a time limit in spite of the applicant having taken all due care. The applicant or holder of the right may apply to have their rights re-established.

Primary legislation You should have a copy of the Council Regulation (EC) NÂ° 6/2002 of 12 December 2001 on Community Designs - it is included in the Handbook.

Please read Article 67, then answer the following questions. 1.

What is the time limit for applying for restitutio in integrum?

What does OHIM require from an application?

Your clients were under the impression that a design had lapsed, and placed products bearing a very similar design on the market. The owner of the earlier design has now made a successful application for restitutio in integrum. Should your clients fear that the rights holder may take action against them for infringement?

Check your answers.

IVORY

How did you get on?

Two months from the removal of the cause of the non-compliance, and no longer than a year from the expiry of the time limit in question. (Article 67.2)

The grounds on which you are basing the application The facts you are relying on The fee. (Article 67.3)

Not if your client placed the product on the market in good faith. (Article 67.6) Note that once the design right has been restored, your clients should not be selling their own products bearing the design â&#x20AC;&#x201C; they do risk infringement action then. Note that they also have two months to bring proceedings objecting to the restitutio decision.

There are few circumstances in which you are likely to have to apply for restitutio in integrum, and fewer still when it is likely to be granted. We will talk about circumstances next.

IVORY

Probable circumstances

Please write down the most likely circumstances under which you might have to apply for restitutio in integrum. Then please compare your list with ours on the next page.

IVORY

We thought of these possibilities Third party failure to deliver documents â&#x20AC;&#x201C; for example A courier did not deliver A server was not working A postal strike A failure in your own office systems Natural disaster â&#x20AC;&#x201C; for example, fire or floods.

However, none of these will guarantee that OHIM will grant your request. In particular, it will not look leniently on mistakes in your office that could have been avoided. You should always do everything you can to ensure that you meet all deadlines. You will need to be able to show OHIM that you have done this. And you need to be able to show that your office has reliable systems in place for recording time limits.

The Community Designs Handbook Chapter 13 of the Handbook deals with restitutio in integrum.

IVORY

Please read chapter 13 now, and then answer the questions below.

Which time limits does restitutio in integrum not apply to?

Give an example of the â&#x20AC;&#x153;removal of the cause of non-complianceâ&#x20AC;?.

How do you apply for restitutio in integrum?

Which language must you use for the application?

Can you appeal decisions?

Now see how you got on.

IVORY

Compare your answers with ours.

The time limit for filing restitutio in integrum The time limit for claiming Convention priority Cases where a right is not lost Failures of a person who is not a party to proceedings before OHIM.

Realising that the time limit has been missed â&#x20AC;&#x201C; for example, when you receive a letter from OHIM.

In writing, setting out your grounds and facts.

One of the languages of the proceedings in which you failed to observe the time limit.

Yes.

The Community Designs Bulletin Re-established rights may be published in the Community Designs Bulletin. This only happens if the previous change of status was already published.

IVORY

In conclusion, we can say that you have to have very good reasons indeed for any application for restitutio in integrum.

You are almost at the end of this short module.

Please look back through the module now, as usual, to review what you have learnt and make notes of points you would like to research further, or discuss with your trainer. In particular, you should ask your trainer if your office has ever applied for restitutio, and if so, take a look at the files to see what happened, and whether OHIM granted it.

Now try the quiz.

IVORY

Test yourself

Which Article of the Regulation provides for restitutio in integrum?

Does OHIM provide an application form for restitutio in integrum?

Your application is based on a courier companyâ&#x20AC;&#x2122;s failure to deliver on time. What should you submit to OHIM?

Your client has just been granted restitutio after missing a deadline to pay renewal fees. In the interim where your client lost his rights, someone else has started selling products bearing a very similar design â&#x20AC;&#x201C; and is continuing to do so. Do you advise your client to commence action for infringement immediately? Give reasons for your answer.

Check your answers.

IVORY

The answers

Article 67.

At the time of writing, no.

A statement as to why you could not sent the material by fax (Some, but not all, documents may be filed electronically. If you lost a case through fax filing where you could have filed electronically, you are unlikely to be granted restitutio.) Evidence of the date you gave the material to the courier A letter from the courier company setting out the date by which you could have expected the material to reach OHIM Other evidence, for example, of strikes or natural disasters,that delayed delivery.

Your client should be very wary of acting too quickly. Remember that the third party has two months in which to object to the restored rights.

JADE

Jade Module Duration and Renewal of a Registered Community Design

JADE

In this module, we look at renewing the registration of Community Design, and at how long the right lasts. We take a look at the form for requesting renewal, and talk about fees, including those for belated renewals. Before you start this module, you should have worked through the Grey and Ivory Modules.

To complete this module, you will need Access to the OHIM website A printer The Community Design Regulation EC No 6/2002 The Community Designs Handbook.

When you have completed this module, you will have Identified the maximum period of registration for a Community Design Stated the languages for requesting renewal Explained who may request renewal Identified the fee for late renewal.

This module will take less than half a day to complete, as it is very short.

JADE

Duration of a Community Design registration

Begin by thinking about what you already know about the registration of a Community Design.

How long does a registration last?

Write down your answer, and then check it.

The answer is on the next page.

JADE

A Community Design registration lasts for five years from the date of filing the application (unless it is successfully challenged, or surrendered). It may be renewed up to four times. Each renewal lasts for five years. So, the maximum term of registration is 25 years. Well done if you remembered this.

The renewal form

As usual, please go to the main Designs page on the OHIM website, and then hover on “Forms/Filings”.

Click on “Renewal a Community Design online”. Click on “Apply online”. Please print out this form to refer to as you work through this module. Then close the window. Click on the “Please read the help files carefully”. Print these out if you wish.

JADE

Still looking at “Forms/filings” let your mouse hover over “Downloadable forms” Click on the “Download” button for “Renewal of Community Designs”. This will take you to the form you use if you are not using the online renewal option. Take a look at the form.

Please read the help files, referring to the forms as you go along. Then please answer the following questions. 1.

May you use a form of your own office’s design?

What is the advantage of using an electronic form?

May you fax renewal forms?

What languages may you use?

Who may request renewal?

What currencies may you pay the renewal fee in?

JADE

Yes - but OHIM recommends that you use its form.

You do not need to add attachments. You can simply extend the space on the form to fit your requirements.

Yes.

Spanish, German, English, French or Italian.

The applicant The applicantâ&#x20AC;&#x2122;s representative An authorised person, including a licensee.

Euros only.

Fees Note that the levels of fees rise with each renewal. Note that all fees now have to be paid electronically. OHIM no longer accepts cash and cheques in respect of renewal fees.

JADE

Multiple registrations As you should have seen when you read the notes, you can renew multiple registrations on one form. The rights holder can elect to renew the registration in respect of only some of the designs, or of all of them. The level of renewal fees does depend on the number of designs, so there may not be much point in renewing designs that are no longer commercially viable. When a design comes up for renewal, you have discharged your duty in law if you send the client a reminder in good time for them to decide “Yes” or “No”, and then tell you in sufficient time to pay the renewal fee on their behalf, if the answer is “Yes”. But you should discuss this with your client. They will not thank you for spending their money on designs that are unlikely to generate revenue for them, but will want to make sure that all designs in use remain protected for as long as possible.

Note You need to specify, as you have seen, which designs you want to renew in a multiple design registration. If you don’t do this, OHIM will take the fees for designs in consecutive numerical order as listed on the original application to register the design.

JADE

When to renew You can request renewal within the six months ending on the last day of the month in which the registration expires. This is slightly complicated, although if you are familiar with CTMs, you will find this similar. It means that if the renewal date is 17th July 2009, renewal fees may be paid up to, and including, 30th July 2009 â&#x20AC;&#x201C; or in the six months prior to that â&#x20AC;&#x201C; so that the period for renewing starts on 30th January 2009.

Late renewals You may pay renewal fees up to six months after the renewal date has expired. You also need to pay specific late renewal fees. This grace period starts on the day following the month in which protection ends. For example, for an application filed on 1st April 2004, the normal final renewal date would be 30th April 2009, so the renewal fee may be paid late up to 31st October 2009.

Can you renew after the grace period?

You should have a copy of the Regulation with you. Please read Article 67(2) to find out.

This should be familiar to you from the module covering resitutio.

JADE

The Community Designs Handbook

You should have a copy of the Handbook with you. It has a very short chapter on renewals â&#x20AC;&#x201C; chapter 10.

Please read it now. It will only take a few minutes.

You are almost at the end of this short module. As usual, review what you have learnt and make any notes before carrying on.

Now try the quiz.

JADE

Test yourself

How many times may you renew a design registration?

You have faxed your renewal form to OHIM. Should you send a confirmation copy to be safe?

In connection with renewals, what does OHIM mean by â&#x20AC;&#x153;representativeâ&#x20AC;??

By what means may you pay renewal fees?

What is the fee for late payment of renewal fees?

If there are deficiencies in the renewal application, whom will OHIM notify?

Check your answers.

JADE

The answers

Up to a maximum of four times, for periods of five years each.

OHIM says not. It will notify you if the fax was not clear enough.

A professional representative entitled to act before OHIM. (Either someone appropriately qualified in a member state, or someone on the OHIM list of professional representatives.)

You can only pay renewal fees electronically.

An additional 25% of the normal renewal fee.

The person who requested the renewal, as well as the rights holder if different.

GREEN

Green Module Sources and Resources for UK Registered Designs

GREEN

In the Blue Module, we talked generally about the background to registered designs. Now we will look in more detail at design registration in the UK, rather than in the EU.

Before you start this module, you should have worked through the Blue Module.

To complete this module, you will need Access to the IPO website A printer

When you have completed this module, you will have Listed the main changes to the Act and Rules introduced in 2006 Identified the Sections that specify the type of designs that qualify for registration Explained the circumstances under which a registered design might be kept secret Identified the form used for making an application in the UK.

This module will take about half a day to complete.

GREEN

The UK-IPO website

We will begin at the IPO website. Please go to http://www.ipo.gov.uk.

Then click on “Designs” in the left hand menu and go to http://www.ipo.gov.uk/design.htm. Note that the site covers unregistered design right, as well as registered designs, and is written for applicants rather than professionals.

Under the heading “The decision making process”, click on “Design law and how we interpret it”

Click on “Design law”. You will reach a page with yet more links.

Click on “Registered Designs Act, Rules and Statutory Instruments”.

GREEN

This should bring you to a page that links to the current consolidated version of the Registered Designs Act 1949. This Act has been amended many times over the years, so UK-IPO has produced a consolidated version incorporating all the changes, which is useful. Click on “The Registered Designs Act”.

The Act has been amended by the Copyright, Designs and Patents Act 1988, the Registered Designs Regulations 2001, the Registered Designs Regulations 2003 and the Regulatory Reform Order 2006., so it is essential to have a consolidated version, so that you can see what is up to date. Click on “Consolidated version of the Act”.

We strongly recommend that you print out the consolidated version to make it easier to refer to.

Now click back and then click on “The Registered Designs Rules”. Take a look at these.

Next, we will take a look at the Designs Journal published by UK-IPO.

GREEN

Electronic Designs Journal

Click back to the main Designs page and then click on “Electronic Designs Journal”. This electronic publication is a fairly recent innovation. Click on it and take a look. You should see the headings Design Text Locarno Classes Proprietor Agent

Click on the individual texts and you should see a representation of the design appear on the right-hand side. You should also see the options “Image / Word / Locarno Class / Proprietor / Agent / Register Information”. You can select any of these for viewing the designs.

Click back. You should be able to access previous Journals as well.

Now click on “Guide to the Electronic Designs Journal”.

Look at “How to use the Electronic Designs Journal”. Take a look at the information there.

GREEN

The Registered Designs Act 1949 You should remember that we talked about this in the Blue Module. We will now look in some detail at recent changes to this Act.

The Regulatory Reform (Registered Designs) Order 2006

Please go to the IPO website, and go to http://www.ipo.gov.uk/d-law-currentnotice-desreschange.htm. Click on â&#x20AC;&#x153;Guidance note on the changesâ&#x20AC;?. A pdf document will open. Please read it.

Now make a short list summarising the main changes to the Act that were introduced in 2006. Then compare your list with ours.

GREEN

Your list should look like this.

Applications are no longer examined for novelty (that is, to check that they are new) and individual character. Multiple applications are possible. All applicants have the option of delaying publication and registration for up to 12 months, to enable them to tie publication to the launch of a product. It became easier to restore designs that had lapsed due to non-payment of renewal fees.

Changes to the Rules

Now please summarise the main changes to the Rules that were introduced in 2006, and then check your list against ours on the next page.

GREEN

The main changes to the Rules were The application procedure was simplified. Procedures for multiple applications were introduced. Statutory forms were modernised. Provisions were made for the public to inspect documents It became a requirement that designs should be published in a Journal.

Changes to the Registered Designs (Fees) Rules Note also that there were changes to the Fees Rules at the same time â&#x20AC;&#x201C; A multiple application fee structure A fee for deferring publication.

GREEN

The amended Registered Designs Act 1949

Please spend some time reading through the amended Act now. When you have finished reading, write down your answers to the questions below. 1.

Which Sections tell us the type of designs that qualify for registration?

Under what circumstances might a registered design be kept secret?

Which Section provides for the rights granted by registration?

What is the maximum period of registration for a design?

Who may apply for cancellation of a registration?

For how long after an application in a Convention country may a person make an equivalent application in the UK, with the benefit of the earlier application date?

Who is responsible for the maintenance of the register of designs?

To whom would you appeal from decisions made by the Registrar?

What is the penalty for falsely representing an unregistered design as a registered one?

Now see how well you got on.

GREEN

The answers

Section 1, subject to Sections 1A- 1D. These are formulated for consistency with the Designs Directive.

Where a design is relevant for defence purposes â&#x20AC;&#x201C; Section 5(1). However, you might like to note that, to date, no class of designs has been notified by the Secretary of State, so this Section is effectively inoperative.

Sections 7-7A.

25 years â&#x20AC;&#x201C; Section 8(1) and (2).

The registered proprietor, under Section 11.

Six months. Section 14(1).

The Registrar. Section 17(1).

The Appeal Tribunal. Section 28(1).

A fine - Section 35.

GREEN More about the Rules

Please go to the main Designs page on the UK-IPO website. Click on “Design law and how we interpret it”. Click on “Design law”. Click on “The Registered Designs Rules 2006”, read Parts 1 and 2, and then answer the following questions.

Which form do you use for making an application in the UK?

Is it necessary to specify the product to which the design will be applied?

What is the maximum permitted size of any specimen that you file?

You are filing a Convention application. What is the time limit for filing a copy of the representation of the design that was the subject of each convention application?

Now check your answers.

GREEN

How did you get on? 1.

Form DF2A.

Yes.

29.7cm x 21cm x 1cm.

Three months from the date of filing.

You are almost at the end of this Module and will shortly reach the final quiz.

Before you finish, however, donâ&#x20AC;&#x2122;t forget to spend a few minutes making notes of any points you want to discuss with your trainer.

Now try the quiz.

GREEN

Test yourself

By what has the Registered Designs Act 1949 been amended?

Where can you find a consolidated version of the Act?

Under what headings are design registrations published in the electronic Journal?

How do you view the full details of a published design?

Check your answers.

GREEN

The answers

The Copyright, Designs and Patents Act 1988 The Registered Designs Regulations 2001 The Registered Designs Regulations 2003 The Regulatory Reform Order 2006.

On the UK-IPO website.

Design Text Locarno Classes Proprietor Agent Image Word Register Information

By clicking on the designs number in the designs view in the Electronic Journal.

YELLOW

Yellow Module Filing a UK Registered Design Application

YELLOW

In this module, weâ&#x20AC;&#x2122;ll discuss the practicalities of filing a registered design application in the UK. You will have the opportunity to look at the IPO forms and the extra information it gives to applicants.

Before you start this module, you should have worked through the Grey, Blue and Green Modules.

To complete this module, you will need Access to the IPO website A printer

When you have completed this module, you will have Identified the type of protection granted by a registered right Explained the conditions concerning originality Listed examples of repeat patterns Identified the grace period permitted in the UK.

This module will take about a day to complete.

YELLOW

In recent years, changes to practice in the UK have made filing applications here quite similar to the procedure at OHIM. You should remember about this from working through the Grey Module. If you like, take a few minutes now to look back at what you learned from it. In particular, the UK now has provisions that allow you make multiple applications. As at OHIM, businesses are able to file as many designs as they wish as part of one application at IPO. Deferred publication is also available, and IPO has an updated fee system.

The UK-IPO website Now we’ll look at the help available on the IPO website.

Please go to http://www.ipo.gov.uk/design.htm.

Click on “Should you apply?”

Click on each heading in turn on the page that you reach, and spend some time looking at the information there.

YELLOW

Now please try to answer the following questions.

What is the type of protection granted by a registered right?

What are the conditions concerning originality?

Which types of designs, specifically, will the Registry object to?

Under what circumstances does the Registry not regard the designer as the owner of the design?

Now take a look at the answers.

YELLOW

How did you get on?

A monopoly right.

The design must be new (that is, not identical to existing designs) and have individual character.

It will object to designs that are not a design by legal definition are offensive consist of, or include, certain protected flags and international emblems are solely dictated by the product’s technical function.

Where the designer has been commissioned for money or money’s worth - in which case the commissioning person is the owner created the design as an employee in the normal course of their employment in which case the employer is the owner.

We hope that you didn’t find these too difficult!

YELLOW

Before you file the application A potential new client, Mrs Nancy Potter, a jewellery designer and maker, has written to you. She has enclosed a copy of her new design, which is for an enamelled brooch shaped like a basket of flowers. She wants you to apply to register it. Mrs Potter tells you in her letter that she has had problems in the past with people copying her designs and selling them cheaply at craft fairs. You should therefore, ideally, begin by checking registrability and asking your client a few questions. Does she know if the same or a very similar design of brooch is being used by anyone else? Did she design the brooch herself? Has she shown the design to anyone apart from you â&#x20AC;&#x201C; or sold any of the brooches, such that the design might not be new ?

Mrs Potter has told you that she designed the brooch herself and has made one up already as a sample, which she has not yet shown to anyone, although she hopes soon to show the sample to a chain of gift shops which usually stocks a number of her designs. Ms Potter says that, as far as she knows, her design is completely novel. She would like to file quickly as she has an appointment with the gift shop buyer very soon.

What do you do next? Make a brief note, and then read on.

YELLOW

Searches You may have thought of searching to try to see whether there is already the same design on file. You would carry out searches on the IPO website to try to find out whether there is a risk that your client’s design would infringe one that is already registered whether Mrs Potter’s design is likely to be invalid on the grounds that it is not novel - because there is already one registered that is too like it. Confidentiality You might well also have thought of a confidentiality agreement. Before disclosing the design to the buyer, the buyer should agree with Mrs Potter, preferably in writing, to keep the design confidential. (Alternatively, Mrs Potter could rely on the grace period – a period of 12 months is allowed during which she may publish her design without risking losing her rights.) If you are going to carry out a search, you need to have a fairly good idea as to what you are searching for. In the case of a brooch shaped like a basket of flowers, it seems very likely that there will be large numbers of fairly similar designs already registered. There are also “common law” searches – you can ask searchers to search relevant trade journals – or suggest that Mrs Potter does this herself, to save costs. The more designs of a similar type there are, the closer a design needs to be before it risks infringing an earlier registered design. Likewise, the more crowded the design field, the more significant any differences are in conferring novelty unless such differences are immaterial. With regard to Mrs Potter’s design, you think that it is likely that her design would have to be very close to another for infringement to be a risk (as it is relatively common for brooches to be made in the shapes of flower baskets). Your client feels that the possibility that someone might already have registered a similar design is of less importance to her than filing the application as soon as possible, in case someone else files a similar design in the interim.

So she instructs you to file without carrying out a search.

YELLOW

Before we move on to look at filings, weâ&#x20AC;&#x2122;ll look at the Designs Registry approach to searches.

As you know from the Gold Module, it is possible to carry out searches using the UKIPO website. However, it is a good idea to check first with your client, who will have specialist trade knowledge, whether she is aware of any similar designs. She may not have realised that the earlier existence of a similar design can preclude her from registering hers - even if she did not actually copy the earlier design.

Sometimes, clients may ask you to request searches because they want some information about a design they believe someone else - usually a business rival - has registered. More rarely, people may ask for a search to find out how they can obtain a product in which they are interested.

The Gold Module talks about this.

Now weâ&#x20AC;&#x2122;ll move on to look at filing an application to register a design.

YELLOW

How to apply

The IPO site has helpful information here.

Please go to http://www.ipo.gov.uk/design/d-applying/d-apply.htm. Spend a few minutes studying the information that you find here then please try to answer the questions.

Which form do you use to apply to register a design?

What do you use form DF2B for?

What must you include with the application?

The answers are on the next page.

YELLOW

Here are the answers. 1.

DF2A.

Applying for surplus designs included in an earlier application filed with a form DF2A – designs divided from an earlier application.

The completed form DF2A The fee sheet form One copy of the illustrations of the design The fee.

The application form

You should be looking at http://www.ipo.gov.uk/design/d-applying/d-apply.htm. On the right-hand menu, please click on “DF2A: Application to register one or more designs”. It will open as a pdf document. Print it out to refer to.

YELLOW

Now click on “Fill in application form DF2A”. Another pdf document should open – this one explains how to complete the form. Please read it, referring to the application form that you printed out. (Print this out too if you wish.) Then please answer the questions below. Your clients are Mr Gerald Wood, Mrs Marina Wood and Miss Amita Mukherjee, a partnership trading as “Babes in the Wood”. The designs are for children’s bedroom furniture in the shape of tree houses. There is no priority.

What must you do if the application form does not have sufficient space for all the details of your application?

Do you have to show the names of all the partners?

In which section do you add your own details?

May you copy the second page?

In which section do you specify the bedroom furniture?

Your clients are keen to specify that the furniture is textured to look like wood bark. Which part of the form do you use?

What size paper should you use for showing the illustrations of the designs?

YELLOW

Check your answers.

Use separate sheets, numbering each sheet. Write in section 7 of the form the number of extra sheets you have used.

No, you can just show the name “Babes in the Wood”. However, the Registry prefers it if you do show the names of the partners, and as there are only three here, you could do so easily. It is harder if there are a large number of people in the partnership. In this instance, you could try “The current partners of Babes in the Wood”. (This is acceptable in the UK, although in some countries, you may have to list all partners.)

Section 4.

Yes, as many times as necessary.

Section B on the second page.

Section E.

A4.

Now read on.

YELLOW Some notes on completing application form DF2A Page 1 1.

This is for your reference.

The total number of designs applied for. Are they all to be published immediately? You need instructions from your clients on this.

Name and address of the applicant.

Name of agent. ADP number.

Fees enclosed. We will look at the ready reckoner later on in this module.

Signature and name.

Name and contact number.

Page 2 A

Name of applicant.

The product or products that the design is used for (for example, beds or chairs).

The number of illustration sheets. This will depend on the number of representations you are filing.

Fill this in if you are dealing with a repeating pattern.

You may use this for any extra descriptions of the design.

We don’t often use this, as it could limit your client’s rights unnecessarily. Limitations and disclaimers are no longer compulsory, so you are unlikely to need to fill this in.

You must say “Yes” or “No” for each design – remember to discuss deferred publication with your clients, as we said above.

We will look at priority claims shortly.

We will look at why you would need to complete this when we talk about priority.

YELLOW

Priority You saw that Section H of the application form allows an applicant to claim priority. This refers to priority under the Paris Convention, which covers most forms of intellectual property. By “Paris Convention”, we mean the Paris Convention of 20 March 1883 (text as amended at Stockholm on July 14 1967, and October 2 1979, effective June 3 1984) Claiming priority means that, where a corresponding design application has been filed in a Paris Convention country, or in another country with reciprocal arrangements with the UK, and on condition that the UK application is filed within six months of the corresponding application, the Designs Registry will treat the UK application, for novelty purposes, as if it had been filed simultaneously with the foreign application. On the form, it is only necessary to give the date and country of first filing; there is no need to give the application number – Rule 27. The design applied for in the UK must look the same as the corresponding foreign one and it must give the same scope of protection. You will have to file a copy of the Convention country application, either with the application documents or within three months of filing them – Rule 28. The Registry might request a translation of these, if they are not in English. If the Registry queries whether the design originally filed does give the same protection as the UK application, you may be able to file an affidavit from the agent in the Convention country to confirm that the scope of protection is the same. (Or you can ask the Registry to exclude any aspects which are not protected by the original application from the UK rights.) It is good practice to include at least the same views in the UK application as were included in the Convention country application. The version of the Paris Convention that the UK signed allows the claiming of partial and multiple priorities. It is possible, therefore, that where two designs are not identical, some features could have priority, and others not.

Important note

Claiming priority when filing for a registered design is a complicated issue, because the law abroad currently varies considerably from UK law. We recommend that you make a note to talk to your trainer about this.

YELLOW

The Registry will check that the representations are clear enough to support the UK application - if they do not clearly show that the designs and products are the same, the Registry will not allow the application with the priority date claimed – unless you file an appropriate declaration. However, provided that the UK application shows enough views for the Registry’s purposes, it does not have to show all the views included in the original application. The Registry will decide exactly which views are allowed on the merits of each individual case. date of original filing supports the priority claim name and address of the applicants are the same in both cases (These often differ in applications from the USA, as American design applications are filed by the inventor.) This is what section I on the application form is for. Make a note to talk to your trainer about this. If the name and address are not the same, you should explain why (for example, there has been an assignment, or a change of company name).

Important Note Bear in mind that your clients may wish to file a corresponding application in the future. You should advise them in writing that they have the option of claiming Convention Priority if they file abroad within six months of filing in the UK - and explain what this means. You should enter the relevant date into your firm’s diary system, and send out a reminder at the appropriate time (about four or five months after the UK filing). Ask your trainer whether your office has an automatic system for doing this.

YELLOW

Representations or specimens

These can be clear drawings in ink photographs (you should ensure that no part of the design is hidden - for example by shadows or reflections) tracings in ink and can be black and white You will probably use this in most cases – but make a note to talk to your trainer about your usual office practice in colour Colour is specifically recited as a design feature is Section 1(2) of the Registered Designs Act 1949 (as amended) and in Product 1(a) of the Directive in black and white shadings with a colour key. However, the Registry used to dislike this, but its practice may change now.

Please note that transparency has not historically been a design feature that can be protected – we await judicial guidance as to whether this will continue to be the case. You may show perspective views - and this is normally good practice. You may not show broken lines – you cannot refer to parts that are not visible.

The Designs Registry prefers to see good quality photocopies of ink originals.

YELLOW

You should not use staples to fix anything to the backing sheet as these may damage the representations. Talk to your trainer about what your office uses to fasten representations to a backing sheet, if applicable.

On the sheet(s) showing the representations, you should have a statement explaining what views are represented - for example, “Front view”, “View of one side” or “Perspective view”. Please note that there is no need to include views that are not normally seen (for example, the inside of a teapot). The relevant case on this is known as Ford Motor Co’s Application [1972] RPC 320. Because it is now possible to register designs for parts of products, arguably it is not necessary to show any parts that your client is not interested in protecting. At the time of writing, Registry practice has yet to develop in this area. The same effect can probably be achieved by using disclaimers. (You may include a partial disclaimer, usually on the first sheet, indicating that protection applies to a particular part of the product shown in the representations, or in some other way limiting the scope of protection – Rule 6. If it is clear that the innovation features of the client’s design lie in a particular part of the product, a disclaimer can direct a court’s attention to that part and “deemphasising” the possibly irrelevant parts. This effectively enhances the scope of protection.) You should give the Design Registry all the views that are normally seen however, you don’t have to provide drawings or photos of them if there is no material difference. In these instances, you can write, for example, the other side corresponds the other side is a mirror image the back of the product is plain the product is of indefinite length. There is no need to give any other detail. The Registry likes the views to appear in the upright position if possible.

YELLOW

You do not need to give measurements or the proportions of the product. You may give a simple explanation of what is shown. If the product is, for example, wallpaper or lengths of fabric, which have no finished length, you can write The product is of indefinite length, of which the views are typical sections within the productâ&#x20AC;? The sheets should be consecutively numbered (page 1 of n, Page 2 of n, Page 3 of n, and so on). It is good practice to show the name of the applicant on the first sheet. If you initially filed specimens, the Designs Registry will require that you follow them by filing representations, unless the specimens are flat and fixed to card or paper. You should avoid showing confusing detail of items which are not to be covered by the registered design - try to leave out non-essential details. Non- essential details could include, for example, the address of the applicant, or a product code.

Repeat patterns You will need to show the Registry enough of these to enable the examiner to see what the pattern looks like overall.

Please make a brief list of any examples you can think of, of products for which the design could be a repeat pattern. Then read on.

YELLOW

You might file an application for repeat pattern design applied to textiles wallpaper wallcoverings. You may have listed some other examples. When you file these, your representation should show a full sample of the pattern that is repeated, with enough in addition for the examiner to be able to see how the repeats of the pattern will join.

Size of representation

As a guideline, your representation should be between 180 x 130 mm and 330 x 210 mm in size, and you should leave a left hand margin of about 50 mm.

The paper you use for representations should be approximately A4 size. If a representation on one sheet would be too small to show all the necessary detail, you may file continuation sheets.

YELLOW

Specimens If you are filing a specimen, it must be flat and stuck to card or linen-backed paper, with glue that will not discolour with age.

Moving or removable parts If the product has parts which, in normal use can be moved you must show views of the different positions - for example, you can show a sequence of views from the same angle removed you must show views of the product when it is separated. The Designs Registry says that â&#x20AC;&#x153;It is not strictly necessary to show every possible arrangementâ&#x20AC;?. In fact, one arrangement will be enough. For infringement purposes, it is legitimate to bend or reconfigure flexible or reconfigurable products to conform to the representations. Nevertheless, it many cases, it is best to show the various arrangements.

Kits If the product is a kit which has parts which must be assembled to form the product, your representations should show all the essential parts and how the kit is assembled which are individually registrable, your client may apply to protect them individually.

YELLOW

Parts not usually seen in use You should not show parts of the product which are not normally seen in use. (For example, do not use dotted lines to indicate parts of the product that aren’t visible.)

Hollow items Where the inside of a hollow product is part of the design – even when not initially visible – or is seen when in normal use (for example, a bowl - or a chocolate Easter egg – an example is the Ferrero case), you must show the inside. Where the inside of a hollow product is not normally seen when the product is in use, you should show the products as if they were solid.

Words, letters and numerals Where these do not form an essential part of the design, you should remove these from the representations. (Crossing them out with a neat line is acceptable.) Alternatively, you could disclaim them (exclude them from the monopoly rights in the registered design). For example, you can write No claim is made to any right to the exclusive use of the word “ATLANTIC” appearing in the design No claim is made to the exclusive use of the numerals “2003” as such.

Further views If the Designs Registry requires further views to clarify something, and finds that they show added subject matter, you may lose the original filing date – your client will then be given the filing date when you filed the additional views.

YELLOW

Divided applications

Now go back to http://www.ipo.gov.uk/design/d-applying/d-apply.htm. On the right hand menu, click on “DF2B” and print out the pdf document to refer to. Then click on “Fill in application form DF2B”. Again, print out this advice if you wish. As you can see, it is quite similar to DF2A.

Designs Ready Reckoner This form relates to the fees, and you have to enclose it with the application form. You should still be at http://www.ipo.gov.uk/design/d-applying/d-apply.htm.

Click on “Designs Ready Reckoner” on the right hand menu, and note how the fees are calculated.

YELLOW

You are almost at the end of this module. There is quite a lot of information to absorb here, so please spend a little time reviewing it, and as usual, making notes.

Now try the quiz.

YELLOW

Test yourself

Is it possible to apply to register multiple designs in one application in the UK?

The Registry offers a search service â&#x20AC;&#x201C; but what types of design does it explain that the service does not cover?

Where should you send an application to register a design in the UK?

You requested deferment of publication. What must you do if the design is to become registered?

On which page of the application form do you show the illustrations of the designs?

What grace period is allowed in the UK?

Check your answers.

YELLOW

The answers

Yes.

Designs protected only by design right or copyright.

Intellectual Property Office Concept House Cardiff Road Newport South Wales NP10 8QQ.

You need to send Form DF2C to request publication of each design, as well as £20 publication fee and a deferral fee of £20 for each design.

Page 3.

12 months.

BRONZE

Bronze Module Examination and Publication of a UK Registered Design Application

BRONZE

In this module, we take a look at what happens to an application in the UK, after you have filed it. We talk about possible objections, and what you might be able to do about them. We will look in some detail at information published by the Designs Registry. Before you start this module, you should have worked through the Grey, Green and Yellow Modules.

To complete this module, you will need Access to the IPO website The Registered Designs Act 1949 (as amended).

When you have completed this module, you will have Read the applicable Designs Practice Notices Stated what the usual time limit is for replying to objections Identified how to file evidence Explained when you might have to file a partial disclaimer.

This module will take about half a day to complete.

BRONZE

How long does it take to register a design in the UK?

In the Yellow Module, we looked at filing an application in the UK. Now, weâ&#x20AC;&#x2122;ll talk about what happens next.

You should be looking at the IPO website.

Please go to http://www.ipo.gov.uk/design/d-applying/d-after.htm.

Look at the timeline at the bottom of the page. You will see that registration can happen in four to five months, if there are no objections.

Letâ&#x20AC;&#x2122;s look at the process in more detail.

BRONZE

The application process

When it receives an application, the Designs Registry firstly allocates it a number. This number remains the same throughout the lifetime of the application and also of the subsequent registered design.

The Registry then sends a filing receipt. As you just saw, it normally issues this within six days of receiving the application. You should make a note of the date when you send the application and, if you do not receive the filing receipt after about two weeks, you should contact the Designs Registry to find out what has happened to the application. Although it does not happen very often, some applications get lost, or filing receipts are sent to the wrong address. Your office should have a diary system to help you with this. If you are not sure how this operates in your office, make a note to ask your trainer about this when you have finished this module.

Make a record of the number - again, your office almost certainly has a system for recording this. You must also make a record of the filing date shown.

You should also check all the details shown on the filing receipt against your own file, to make sure that the Registry has not made any mistakes.

You will normally then report to your clients that you have received the filing receipt and will give them the application number and date of filing, so that they can refer to it.

BRONZE

Further documents needed

If you are filing an application which claims convention priority, you have three months allowed for filing the supporting documents.

US priority documents

What happens if the application from which you were claiming priority was filed in the USA?

Please go to the Designs Practice Notice 2/04 at http://www.ipo.gov.uk/design/d-decisionmaking/d-law/d-law-notice/ d-law-practicenotice/d-law-practicenotice-dpn204.htm to find out.

BRONZE

Look at http://www.ipo.gov.uk/design/d-applying/d-after/d-after-object.htm.

The Registry does not examine applications to see if They are new They have individual character.

Find out a little more about this by going to http://www.ipo.gov.uk/design/d-decisionmaking/d-law/d-law-notice/ d-law-practicenotice/d-law-practicenotice-dpn106.htm.

However, it may still have objections.

BRONZE

Technical function The Registry does still raise objections that a design is dictated by technical function.

You can read more about this by going here http://www.ipo.gov.uk/design/d-decisionmaking/d-law/d-law-notice/ d-law-practicenotice/d-law-practicenotice-dpn503.htm. If you do receive this sort of objection, you may have to file pictures of similar products to show that the one you are trying to register is not solely dictated by technical function but has some other qualities over and above technical function. For example, you could argue that the design has aesthetic qualities. Although aesthetic qualities are not a requirement for a design to be registrable, their existence certainly helps the argument that there is more to a design than technical function.

Parts of products If you are applying to register only part of a product, you may receive objections because the Examiner doesnâ&#x20AC;&#x2122;t understand exactly what you are trying to cover.

The Registry gives us guidance on this at http://www.ipo.gov.uk/design/d-decisionmaking/d-law/d-law-notice/ d-law-practicenotice/d-law-practicenotice-dpn203.htm.

BRONZE

If there are any objections to an application, the examiner will write to you, explaining what the objection is, and reminding you of the two-month deadline for reply. You should ensure that you note the due date for a reply (ask your trainer what sort of system your office has for monitoring this), and that you reply in good time. In addition to the matters listed above, the examiner may also ask for some changes to the application form you filed - for example, you may need to amend the statement of article or the representations you filed.

Overcoming objections Within the two months (or the period under any granted extension) allowed for response, you may send written observations (reasons why you believe that the Registry should reconsider its objections) Or apply for a Hearing (where you can put forward oral arguments and discuss the application face to face with a Hearing Officer, who will be a senior officer at the Designs Registry.) You can do this either in person, or via a video conference link with the Designs Registry in Newport. When you attempt to resolve matters by writing to the Examiner, you still have the right to go to a Hearing - but after a Hearing, your only option, if your arguments are unsuccessful, is a formal appeal.

We will look again at Hearings in a minute.

BRONZE

So we recommend that you begin with correspondence. (As a preliminary, you may be able to phone the Examiner to discuss the strength of any objections raised. Many Examiners are very helpful when approached this way. You will get to know the Examiners who are happy to respond to this sort of approach - but don’t be too discouraged if you don’t get the answer you were hoping to hear. Examiners aren’t always right!)

There are various means by which you might be able to overcome objections. You may able to show that, in addition to the functional features, there is an added element. Referring to case law It is always useful to be able to refer to a decided case in support of your argument. Filing evidence You may be able to file evidence that the design in question is not merely functional. You might do this by sending the examiner information (such as pictures from trade catalogues) of other articles that perform the same function, to support an argument that your client’s design has added design freedom and non-functional features obtaining evidence that the design is not purely functional. You may be able to obtain such evidence from the trade - for example, from other manufacturers of similar goods or from a trade association. The Act

Please read Section 3B of the Registered Designs Act 1949 as amended.

BRONZE

The form in which you will file evidence at the Designs Registry

Any evidence, such as trade evidence, is normally given in the form of a witness statement.

Important note You must tell your client that, as and when the design becomes registered, any evidence filed will be available for public inspection - anything included cannot be kept confidential, unless you have previously made a specific request to keep a part of the evidence confidential, and the Designs Registry has agreed (which it rarely does). The wording of a Witness Statement can vary slightly, but you should show the Act that you are dealing with, and give full details of the application in question. Please make a note to ask your trainer to show you some Witness Statements from your own office files, when you have finished this module, so that you can see how colleagues in your office prefer to phrase their Witness Statements. For example, you could head it like this. REGISTERED DESIGNS ACT 1949 (AS AMENDED) On behalf of [applicantâ&#x20AC;&#x2122;s name] [witnessâ&#x20AC;&#x2122;s last name, initials] Witness [First, Second etc Statement Exhibits [Initials 1, initials 2 and so on] Dated [date] WITNESS STATEMENT

BRONZE

Witnesses who speak other languages If the person who will sign the Witness Statement is someone whose first language is not English, you must include a statement to the effect that their knowledge of the English language is sufficient to enable them to understand the contents of the document.

A Note about Evidence Anything you are sent is normally filed as an exhibit to the Witness Statement. This will normally include any letters sent by people who reply to the letters that you send. These are referred to at whatever point seems most appropriate. You will usually refer to them by the initials of the person making the Witness Statement and number them. Each Exhibit will have its own Exhibit sheet, which will carry the same heading as the Statement and will say This is Exhibit (for example) AB1 of the Witness Statement of (Annie Brown) dated the (insert date) When you refer to the exhibited item in the text of the Witness Statement, you must refer to the exhibit number. We suggest the wording “Exhibit AB1 (or whatever number it becomes, depending on the number of Exhibits you have already referred to), now produced and shown to me, consists of a letter from Mr John Webster of Malfi Electrical Ltd”. If you are sending copy documents, you can include this sort of phrase “... Exhibit AB2 consists of a copy, which I confirm to be a true copy, of....”

Note It used to be necessary to file “Statutory Declarations” instead of Witness Statements, and it was necessary to sign these in front of a solicitor, and swear an oath. You will probably see details about these when you are looking at old files, but you and your clients do not now normally need the formality of taking the documents to a solicitor. However, you may still do this if necessary. There may be circumstances (for example, if the evidence is filed by a foreign national and signed in their home jurisdiction) where a Statutory Declaration, or Affidavit, is appropriate.

BRONZE

Divide-outs If you have filed a multiple design and have received objections to one part of it but not others, it is normal to divide out your application so the designs that have not been objected to can proceed. You may also request that a design be divided out if the Registry has objected that the application is in fact for more than one design.

We historically refer to these as â&#x20AC;&#x153;divisionalsâ&#x20AC;?. You must request this before the original application has proceeded to registration before the end of the acceptance period of the original application whichever is the earlier.

You will find more information at http://www.ipo.gov.uk/design/d-decisionmaking/d-law/d-law-notice/ d-law-practicenotice/d-law-practicenotice-dpn303.htm. Please read this now.

BRONZE

Hearings We mentioned earlier that it is possible to have a Hearing. These are very rare nowadays in design cases.

The Registry gives a little information on Hearings, and you can find it here http://www.ipo.gov.uk/design/d-decisionmaking/d-challenge.htm

Appeals You may appeal against decisions made by the Registry. Appeals against decisions made by the Registrar are made to the Appeal Tribunal (the Registered Designs Appeal Tribunal) Registered patent attorneys have the right to act on behalf of clients before these tribunals.

The appeal will be heard by a High Court judge or a deputy.

BRONZE

Errors As a separate issue from the Registry notifying you of objections, you may find that there is an error in an application. What should you do then?

Go to http://www.ipo.gov.uk/design/d-applying/d-after/d-after-correction.htm to find out.

This also applies to errors that appear on the Register.

Again, you may need to supply evidence, as we discussed earlier in this module.

BRONZE

Extensions of time You may apply, in writing for a two month extension of time within which to reply, if there are genuine reasons why you cannot reply in full immediately (for example, your client is obtaining information from a third party). Please note that this will only be allowed if it does not extend past the end of the 12-month acceptance period for settling issues arising during examination.

Non-completion of the application If you have not supplied the Designs Registry with everything it needs to consider your client’s application, it will decide that your clients have abandoned the application. However, if your clients genuinely need extra time to supply any documents, you can obtain an extension of time of up to three months. To obtain this, you must file Designs Form 8 the appropriate fee – each month costs extra.

To see Designs Form 8, you can use the “Search” box on the IPO website. It will open as a pdf document.

BRONZE

Important note

Although there are circumstances where needing to request an extension of time is essential, it is bad practice to make a habit of requesting them simply because you have not allowed yourself enough time to deal with the matter. You should try always to deal with responses to the Designs Registry in plenty of time to meet the deadline.

If you request extensions of time, you might need to give the Designs Registry evidence of your reasons for the request. The Registry may ask you to supply your evidence in the form of a Witness Statement. We have just talked about these.

It is not a good reason alone to say that your client had failed to supply you with information you have requested. You are normally expected to ensure that your client gives you what you need in good time to meet the unextended deadline. However, you may find that the Registry is more sympathetic if, for example, you are able to explain that your client is going through a management buy-out, and/or your usual instructing principal has left, and no clear line of communication has replaced them.

Now move on to read about what happens next.

BRONZE

Registration

Go back to http://www.ipo.gov.uk/design/d-applying/d-after.htm. This will tell you what the Registry does when it accepts an application.

Certificates of Registration

The Registry issues a registration certificate. You must let your client know when you have received the certificate. The Registration Certificate is your clientâ&#x20AC;&#x2122;s property. Best practice is to send your client the original certificate, telling them specifically to keep it with their other important papers, while keeping a photocopy for your records. The Registration certificate is attached to representations or specimens of the design and certifies the registered proprietorâ&#x20AC;&#x2122;s name and date of registration. More up-to-date information, in the form of a certified register extract, may be needed, for example, to show that renewal fees have been paid, or changes in ownership have been recorded. Official certificates and copies can be obtained by filing Designs Form 23 and paying the fee.

BRONZE

Marking registered designs

It is a good idea to mark registered designs as such. It is not a legal requirement in the UK (although it is in some other countries), but it warns potential infringers against reproducing the design - and prevents anyone from claiming later that they are “innocent infringers”.

Don’t forget to advise your client to mark the articles as registered designs, using the word “registered” and the registered design number.

And please bear in mind that a false claim that a design is registered is punishable by fine - so you and your client should make a note of when the design expires.

You are almost at the end of this module. Now is the time to make the usual notes of points you would like to know more about, or to remember.

Now try the quiz.

BRONZE

Test yourself

How long does the Designs Registry normally allow you for replying to objections?

How does the Designs Registry say you may contact the Examiner?

In what form would you normally file evidence?

How do you request an extension of time to complete an application?

What does the Designs Registry do when it accepts an application?

Which form do you use to record the change of name or address of a design owner?

Does the Registry raise objections that i. A design is not new? ii. A design is dictated by technical function?

When are you likely to have to provide a partial disclaimer?

Check your answers.

BRONZE

The answers 1.

Two months.

By writing or phoning.

A Witness Statement.

By filing Designs Form 8 and the appropriate fee.

It Registers the design in the United Kingdom Designs Register Publishes the registration details in the Patents and Designs Journal Publishes the design illustrations in the Designs in View publication Issues a registration certificate.

DF16A.

i. No. ii. Yes.

When you are apply to register the design of only part of a product.

AMBER

Amber Module Duration, Renewals and Post-registration Matters in UK Registered Designs

AMBER

In this module, we look at how long a UK registered design lasts and how to renew it. We also talk about invalidity, cancellations and rectification.

Before you begin this module, you should already have worked through the Lemon, Green, Yellow and Bronze Modules.

To complete this module, you will need Access to the IPO website The Registered Designs Act 1949 as amended The Registered Designs Rules 1995, as amended by the Registered Designs (Amendment) Rules 2001.

When you have completed this module, you will have Read relevant sections of the legislation Stated who may apply to cancel a registration Listed what you must file in cases of late renewal Named the form you must file to record a change of address.

This module will take about a day to complete.

AMBER

Marking registered designs We discussed earlier why it is a good idea to mark registered designs as such. It is not a legal requirement in the UK, but it warns potential infringers against copying a design and prevents anyone from claiming later that they are “innocent infringers”. Remember to advise your client to mark the articles as registered designs, using the word “registered design” and the registered design number.

Period of protection You may remember the duration of a design registration from your earlier reading.

Please write down how long a design registration may last.

Then read on.

AMBER

The design is registered for an initial period of five years from the date of application. If the fees are paid, the registration period can be extended for four additional periods of five years up to a maximum of 25 years. As you will appreciate, many designs have a relatively short shelf-life. The Designs Registry uses the renewal income from successful designs with a long commercial life to subsidise the application costs for everyone, thus making protection more accessible to all. Looked at from the viewpoint that â&#x20AC;&#x153;unnecessaryâ&#x20AC;? monopolies are harmful to commerce, renewal fees also help to ensure that monopoly rights are removed reasonably quickly after the design proprietor loses interest in protection.

Please spend a few minutes reading Sections 8, 8A and 8B of the Registered Designs Act 1949 as amended, and Rules 38 and 39 of the Registered Designs Rules 1995, as amended by the Registered Designs (Amendment) Rules 2001.

Late renewals You should normally pay the renewal fees in the three months before the existing registration period has expired. However, the Designs Registry will allow late renewals for up to six months, from the expiry of the registration period. You will need to pay an additional fee and file Designs Form 9A if you are filing an application to renew a registration late. Note Renewal dates for designs claiming Convention priority used to be calculated at five-year intervals from the priority date. Following the amendments made by the Registered Designs Regulations 2001, all renewal dates are calculated from the filing date. This includes registrations filed before 9 December 2001 (the commencement date of the Registered Designs Regulations 2001) claiming priority.

AMBER

The IPO website has information on designs renewals.

Please go to http://www.ipo.gov.uk/design/d-manage/d-changerenew/ d-changerenew-renew.htm.

On the right hand side of the screen, please click on DF9A and take a look at the form. This is the form that you use for renewals at the usual time, and also for renewals within the six monthsâ&#x20AC;&#x2122; grace period.

Close this pdf document and look at the renewals page again.

There is a table of renewal fees. Note that they rise fairly sharply for each subsequent block of five years.

AMBER

Restoration After six months, but within 12 months of expiry, the rights in a registered design that has expired due to non-renewal can only be restored by applying on Designs Form 29. You must send evidence to show that “reasonable care” was taken to renew the design registration and must explain why the renewal fee wasn’t paid. Designs filed before 1 August 1989 (the commencement date of the Copyright, Designs and Patents Act 1988) cannot be restored in this way – Copyright, Designs and Patents Act 1988 Section 269(2).

Go to http://www.ipo.gov.uk/design/d-manage/d-changerenew/d-changerenew-restore.htm, where there is information from the Designs Registry covering this.

If the Registry is not satisfied with your reasons, it will refuse to restore the registration, However, you do have the right to appeal, but must do so within two months.

On the right hand side, click in turn on DF29 and DF30 to see what the two forms you would use look like.

AMBER

Protection abroad A UK registration grants automatic protection in some other countries. These are mainly British Commonwealth or ex-British Commonwealth countries, but do not include the Channel Islands. You can check with local agents in the countries whether the UK registration grants automatic protection, or whether you will need to do anything else. The situation in various countries changes quite frequently, so you need to ensure that you have up-todate information. Many foreign agencies circulate newsletters (by email, as well as by post), and you will find it helpful to look at these when they arrive, as they will alert you to recent and forthcoming changes in most areas of IP. We will talk about the International Registration system in the Violet Module.

Re-registration In some other countries, you can re-register a UK design registration. Brunei - file the request within three years of the UK registration Guernsey - at any time Jersey - file the request within three years of the UK registration Malta - note the short time limit - file the request within four months of the UK application Trinidad & Tobago - file the request within three years of the UK registration.

AMBER Recording changes There are various changes that might occur that you do need to record at the Designs Registry.

Changes to the ownerâ&#x20AC;&#x2122;s name or address

Please go to http://www.ipo.gov.uk/design/d-manage/d-changerenew/d-changerenewnameaddress.htm. Note that this is different from recording an assignment (which we talk about in the Cerise Module). This applies simply when, for example, a company changes its name or moves premises, but is the same entity. Click on DF16A, to see the form that you use for recording the changes.

Changes to the agent It may happen that a client will appoint a new agent. If your firm takes over a client from other attorneys, you will need to make sure that your firm is recorded at the agent in connection with any registered designs.

Please go to http://www.ipo.gov.uk/design/d-manage/ d-changerenew/d-changerenew-attorney.htm. Click on DF1A to see the form that you should use.

AMBER

Cancellation As well as the term “cancellation”, you will also see the word “revocation” used. This is because rights are revoked if cancellation is successful.

Please read Section 11-11ZF of the Act. Then write the answers to the questions below. 1.

Who may apply to cancel a registration?

If the proprietor does not apply, what are the grounds on which a design may be declared invalid? (Ignore matters of rights in an earlier distinctive sign or of copyright in an artistic work.)

If a registered design is declared invalid because it was not new at the time of registration, from what date is the registration treated as having been invalid?

The answers are on the next page.

AMBER

Check your answers.

The registered proprietor. Section 11.

That the design was not new at the date of registration or on any ground on which the application could have been refused originally – Section 11ZA.

From the date of registration – Section 11ZE.

Please go to http://www.ipo.gov.uk/design/d-manage/d-changerenew/ d-changerenew-cancel.htm to see the Designs Registry’s information on this.

Click on Form DF19C to see the form.

AMBER

Invalidation Sometimes someone other than the proprietor of a design wishes to remove it from the Register. You should remember that we looked at the invalidation of registered Community Designs in the Lemon Module. (If you want to go back and look at it, to refresh your memory, please do so now.)

Please go to http://www.ipo.gov.uk/design/d-other/d-object/d-object-cancel.htm.

You should see a link to Section 11ZA of the Registered Designs Act 1949. Please click on it. Read this now, to find out on what grounds a registered design may be declared invalid. Close the document when you have finished reading it. Note that you need to have evidence to support a claim, although you do not need to file it straight away. You do, however, need to file a Statement of Case. In this, you must state the facts on which you are relying. For example, you might be acting on behalf of the person who is actually the designer. Other likely grounds are lack of individual character, or prior disclosure.

Click on DF19A on the right-hand side to see the form that you must file if you wish to have a registered design in the UK invalidated.

AMBER

Rectification

Now please read Section 20, which deals with rectification – making changes to the Register, other than those requested by the registration owner. Note that the applicant for rectification must be a person aggrieved. Look in particular at Section 20(1A) (a) to (d) and at Section 20(1B). The grounds for rectification will normally be the same as those for cancellation. A rectification action takes place before the court - it is not a decision of the Registrar.

There is some information on the IPO website. Please go to http://www.ipo.gov.uk/design/d-other/d-object/d-object-rectify.htm.

If you click on “Appy to the Court”, you will be taken to the Courts Service website. Look at this, if you wish. However, there is no need to spend too long here.

In practice, you are most unlikely ever to have to deal with a rectification of a UK registered design.

AMBER

You are almost at the end of this module. As you have seen, there are many issues that can occur after registration, but the ones you are most likely to deal with, particularly in the early stages of your career are the simpler ones â&#x20AC;&#x201C; renewals, changes of address and so on.

When you have finished this module, ask your trainer to show you any UK registered design files in your office that include a variety of post-registration matters.

When you are ready, try the quiz.

AMBER

Test yourself

When should you pay the renewal fees for a registered design?

What is the grace period for late renewals?

What do you need to file for a late renewal?

What are the time limits for re-registering a UK design registration in i. Guernsey ii. Jersey?

Which form do you use for applying to record a design ownerâ&#x20AC;&#x2122;s change of address?

Does the owner of a design need to pay a fee when applying to cancel it?

You are applying to have a registered design invalidated. What do you need to file?

Check your answers.

AMBER

The answers

In the three months before the existing registration period has expired.

Six months. (An additional six months is available in particular circumstances.)

An additional fee Designs Form 9A Designs Form 29, if applying under Section 8A.

i. Guernsey – there is no time limit ii. Jersey – within three years of the UK registration.

DF16A.

No.

Form DF19A A Statement of Case, setting out the reasons, and the facts on which you are relying A fee of £50.

CERISE

Cerise Module Assignments and Licences of UK Registered and Unregistered Designs

CERISE

You have already read about licences and assignments of Community Designs when you worked through the Red Module. In this module, we introduce you to the subject of licensing and assigning both registered designs and unregistered design right in the UK. Before you begin this module, you should already have worked through the Green, Red, Yellow and Bronze Modules.

To complete this module, you will need Access to the IPO website A printer The Registered Designs Act 1949 (as amended) The Registered Designs Rules 1995, as amended by the Registered Designs (Amendment) Rules 2001 The Copyright, Designs and Patents Act 1988.

When you have completed this module, you will have Read the Sections of the Act that provide for the licensing of registered designs Stated who is entitled to be the owner of a registered design Listed taxes that may be payable Named the form on which you apply to register the new proprietor of a registered design.

This module will take about a day to complete.

CERISE

Licences and registered designs

Please look at Section 15B and 15C of the RDA 1949 now. A licence is an agreement between the proprietor of a registration (known as the “licensor”) to allow another person (the “licensee”) to perform certain commercial acts, which, without the licence, would be infringements of the rights given by the registration. The licence agreement is a contract and must, for enforceability, comply with all the legal requirements of formation and validity of any contract under contract law. It follows that once a valid licence agreement is in existence, any activity by the licensee which is not permitted by the licence is both an infringement (which is a tort – a civil wrong not involving a contract) and a breach of contract. The remedies for these are not necessarily the same. As you have seen, the Act does not specify the form that licences should take. Licences can be oral written and exclusive non-exclusive (We’ll discuss shortly what exactly is meant by these terms.)

Important note If your client obtains a licence of a registered design, they must also obtain a licence for any associated unregistered design right (a subject we look at later on). It is in the interests of your clients, whether they are licensors or licensees – but especially if they are licensees, to have a written licence specifying the terms of the licence that has been agreed, and to record it on the Designs Register.

CERISE

The Designs Registry

Now we’ll take a look at what the Registry says about licensing.

Please go to http://www.ipo.gov.uk/design/d-manage/d-useenforce/d-useenforce-license.htm. Please read the very short amount of information there.

Now click on “Fill in Form DF12A”.

Next, on the right-had side, click on DF12A, and take a look at the pdf document that opens. Print it out.

Then go back to the page “Filling in Form DF12A”. Look at the form you just printed out while you look at the Registry’s explanation of how to fill it in.

CERISE

The licensing of unregistered design right This is somewhat different from the licensing of registered designs

Voluntary licences

Please read Sections 222 to 225 of the CDPA now.

Unregistered design right licences are, as mentioned above, contracts under which the proprietor of an unregistered design right agrees to grant to another person, permitting them to do something which would otherwise be an infringement of the design right. Voluntary licences generally fall into three categories Exclusive licenses - where rights are granted to only one person, so that no-one else - not even the proprietor - may exploit the design Sole licences - where only the licensor (the proprietor) and a sole licensee have the right to exploit the design Other - non-exclusive - where the proprietor reserves the right to grant any number of licences.

CERISE

The form

Voluntary licences of design right can take any form and cover whatever terms are agreed between the parties, provided that they conform to the basic legal requirements of a valid contract – for example, contain a “consideration”, have a clearly defined set of parties and defined subject matter.

There is a point you should have noted about exclusive licences. Please make note as to what you think this is.

Then look at the next page.

CERISE

The answer we are looking for is that, for practical purposes, exclusive licences must be in writing.

Look back at Section 225(1) to see why. Although it is not actually specified that it must be in writing, an exclusive licence would be of little practical value if you did not put it in writing. You may also have realised that an exclusive licensee has the same rights against a successor in title (a new owner of the licensed design right) as they would have against the original proprietor.

Infringement and exclusive licensees We look at the infringement of unregistered design right generally in the Cream Module. However, there are some points that relate specifically to exclusive licensees.

Please read Sections 234 and 235 of the CDPA, and then answer the questions on the next page.

CERISE

Please answer the questions from memory, rather than by referring to the Act, if possible.

All the questions relate to the following situation. Mr Khan is the owner of an unregistered design right dated three years ago. Ms Appelboom is the exclusive licensee of the design right. Mr Olsen appears to be infringing the design right.

Ms Appelboom does not have rights and remedies equivalent to those owned by an assignee against one person. Who?

Mr Olsen is your client and has been accused by Ms Appelboom of infringing her rights in an unregistered design. Are there any limits on the defences your client may use?

Mr Khan has now discovered that a third party is infringing the licensed right. Can he proceed with the infringement action alone?

May Mr Khan apply for an interlocutory injunction alone?

The answers are on the next page.

CERISE

Compare your answers.

Mr Khan - the design right owner – Section 234(1).

No - your client may defend himself using the same defences he would have in an action which the design right owner brought – Section 234(1). Note that in the licence of right period, Ms Appelboom will no longer be an exclusive licensee.

No - normally Ms Appelboom would, under Section 235(1) need to be joined as plaintiff, or added as defendant. In the latter case, she would not be liable for any costs. She would, however, be bound by any order of the Court – which is the purpose behind this provision.

Yes – Section 235(3).

Now move on to read about licences of right of unregistered designs.

CERISE

Licences of right

Please read Section 237 now. Compulsory licences are only available under very limited circumstances.

Section 237 This Section provides that anyone may apply for a licence in the last five years of the existence of an unregistered design right. If the proprietor receives such a request from a prospective licensee, the proprietor must grant the licence. However, the proprietor is entitled to receive royalties from any use that the licensee makes of the design. If the parties cannot agree on the terms of the licence, including the royalties payable, the Comptroller will settle the terms â&#x20AC;&#x201C; Sections 237(2) and 247.

Warning If your clients are ever in this situation, you should warn them that the costs of this sort of appeal to the Comptroller might be greater than any royalties involved.

CERISE

Imagine that you are a manufacturer who has observed for some time that a competitor is making a great deal of money from an article in which he has an unregistered design right (but for which there is no registered design).

Many of your loyal customers have asked if you can supply the product to them, and you are sure you could. You are also convinced that you could sell the product much more cheaply than your competitor.

A colleague has told you about licences of right, and you think this sounds hopeful.

However, there is one major problem you need to overcome before this is a possibility.

Make a note of what this is.

Then read on.

CERISE

Your main problem will be in identifying whether the compulsory licence period has started - or when it will start. Remember that since design right is unregistered, there is no central record of it - such as, for example, a filing date. Your competitor is unlikely to volunteer the information and lose profits to you.

V Think for a moment about how you might overcome this problem. Then read on.

You might try to obtain the proprietorâ&#x20AC;&#x2122;s old catalogues. If a picture of the article made to the design was printed in 1992, then the design must have been created and first marketed in 1992 or earlier see a set of the proprietorâ&#x20AC;&#x2122;s report and annual accounts, if the proprietor is a public company. They might refer to the costs of research and development of the article employ a private investigation agency to ascertain when the design was first known about.

CERISE

If the proprietor will not give you the information, and you have not been able to find it out yourself, you can apply to the Comptroller for a preliminary ruling, under Section 246.

Please read Section 246 now, as well as Section 248 which deals with what is to be done when one does not know who owns a design right.

Please note that a potential licensee must make a “reasonable inquiry” before applying to the Comptroller. We have made some suggestions for inquiries on the previous page.

Appeals Under Section 249, the Comptroller’s decisions can be appealed. You must make these appeals to the (Registered Designs) Appeal Tribunal.

Next, we’ll look at assignments in the UK.

CERISE

Weâ&#x20AC;&#x2122;ll start with the assignment of UK registered designs.

Registered designs Think about the ownership of a registered design. You read in earlier modules about who is entitled to be the proprietor of a registered design.

Please write down who is entitled to own a registered design in the first instance.

Then check your answer.

CERISE

You should remember that the first owner is presumed, unless proven otherwise, to be the author of the design except where there is a person commissioning the design from the author or the author’s employer if the author created the design in the course of his or her employment – Section 11 Copyright, Designs and Patents Act 1988 – but also please look at s.39(3) of the Patents Act 1977 when you have finished this module or person contracting for the author’s services

However the original owner of the registered design can transfer ownership of the design registration to someone else. A transfer of this kind is known as an assignment. The transferor (seller) is known as the assignor, while the transferee (buyer) is known as the assignee.

Please make a note to discuss with your trainer the subjects of other transfers of ownership by transmission or operation of the law. Examples of other transfers include circumstances where the proprietor dies or is insolvent.

CERISE

Circumstances where you may need an assignment

Commercial circumstances An assignment may arise as the result of commercial negotiations - the owner may sell the right to produce products to a specific design.

Sale Or it may happen where an entire business is sold.

Bankruptcy and Liquidation It could also be the case that rights in both registered and unregistered designs revert to the Official Receiver on the liquidation of a company or to the trustee in bankruptcy. It may be possible to apply to the Treasury Solicitor to buy these rights - the Treasury Solicitor is obliged to obtain the best price for them. If the appointment of the Receiver has been recent, you would need to apply to the Receiver to request assignment of the relevant property right.

Intestacy Finally, if a person owns a registered design, in his or her own name (rather than a partnership or company name) and dies without a will, rights in the design will pass to the Crown (“bona vacantia”) and are then possibly available for purchase, from the Treasury Solicitor’s Office, Bona Vacantia Division in London.

CERISE

The Registered Designs Act 1949 (as amended)

Please read Section 19 of the RDA now.

You should note that if someone owns both a registered design and an unregistered design right for the same design, one is deemed to be assigned automatically when the other is assigned - unless the assignment makes it plain that this is not intended - Section 19(3B). Section 19(3A) says that an assignment cannot be recorded unless the unregistered design right is assigned together with the corresponding registered design right.

V What happens in cases where the registered design consists of a number of features - and each feature carries with it a separate design right? If you are dealing with this sort of registered design, you should ensure that any assignment document you draw up specifies each feature of the registered design together with any design right that there is in each of those features.

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Recording an assignment

It is not a legal requirement that assignees apply to be recorded as the proprietor of a registered design. However, if they want to be able to take action against infringers, they must be the â&#x20AC;&#x153;registered proprietorâ&#x20AC;?. So, in effect, if owning the registered design is to be of any use to them, they must apply for registration. Looking at what we said earlier about assignment of registered design rights without the corresponding unregistered rights, or vice versa. Section 19(3)(a) can cause difficulties for the assignee. They would have to rely entirely on the co-operation of the assignor in any infringement action.

Please go to http://www.ipo.gov.uk/design/d-manage/d-sell.htm and look at this page.

As you can see, you also use form DF12A for recording assignments. Note however, that it is not a substitute for a Deed of Assignment, just a recordal form.

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Other interests You may also apply to record other interests in a registered design. You may have noticed the reference to mortgages on the website page you looked at earlier. Mortgages are deeds effecting the charging of property. In the case of registered designs, this might arise, for example, if the registered design owner owes money to a creditor. A registered design may be used as security for a loan. (A deed is a written and signed document which sets out the things that have to be done or recognitions of the parties to it towards a certain object. In the context of an assignment, it is a transfer document which must be in writing and signed.)

Please read Rule 42 of the Registered Designs Rules

To learn more, please go to http://www.ipo.gov.uk/design/d-manage/d-useenforce/d-useenforce-mortgage.htm. Note that if someone mortgages their design right, they do need to inform the Registry when the loan has been paid off. You use the same form â&#x20AC;&#x201C; DF12A â&#x20AC;&#x201C; to do this.

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The Design Registry needs the following information. the full name and address of the current proprietor (assignor) the full name and address of the assignee the number of designs to be assigned with a list or schedule of the numbers

The Registry will check that all the designs are in the name of the proprietor shown that all the designs are “live” What the transaction to be recorded actually is. Designs Form 12A is used to apply to register transactions that include assignments, licences and mortgages that there is an address for service the form is signed The form is dated.

If you have enclosed a copy of an original document, you (or if appropriate your client) should write on it “I certify this to be a true and exact copy of the original document as seen by me”.

Assignments may be for the entire design right or part of the rights owned by the design right proprietor the entire period of unregistered design right or a different specified term.

They should show all accrued rights of action for infringement - so that the assignee can take action alone for any infringement that happened before the date of the assignment for registered design applications still within the six-month priority period, the right to claim priority

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Stamp duty

Stamp duty is no longer payable on most transfers of intellectual property, including registered and unregistered design rights, following abolition in the March 2000 budget.

Transfers which took place prior to 28 March 2000 will not be exempt, and late payment fines may apply. Transfers of goodwill may also attract stamp duty. Stamp duty is payable on the monetary value (“consideration”) of registered design assignments and the value of this consideration must appear on the any assignment document. However, you will often find that the consideration is purely nominal.

If you are dealing with an assignment that is not exempt from stamp duty, there may be advantages in showing the monetary value and a “certificate of value”. Please make a note to talk to your trainer about this when you have finished this module, if you are unfamiliar with the subject.

Some more information about stamp duty The following are also not normally liable to stamp duty Mergers Transactions within groups of companies Mortgages

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Other taxes

Assignments, licences and other transactions involving designs may have tax implications that go beyond stamp duty.

Please make a list of any other taxes that might be payable.

Then compare your list with ours.

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Other taxes that might be payable are

income tax VAT corporation tax capital gains tax inheritance tax.

These are difficult areas, and you should not attempt to advise your client yourself. You should advise your client to seek the advice of an expert such as an accountant.

Next, we discuss assignments of unregistered design right.

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Assignments of unregistered design right Now we will look at unregistered rights.

The relevant provisions are found in Section 222 of the CDPA. Please read this now. The assignment of an unregistered design right should be in writing and signed by, or on behalf of, the assignor. Apart from these requirements, there is no set format for such assignments â&#x20AC;&#x201C; but bear in mind that an assignment is a contract, and must fulfil the legal requirements of contract law. All the document needs to make clear is the unregistered design right that is being transferred.

Who may sign? The assignor, or anyone acting on the assignorâ&#x20AC;&#x2122;s behalf. This could include the signature of a partner director competent officer of the company - such as the company secretary - who has been authorised to act on behalf of the company the holder of a Power of Attorney.

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Assignments of future rights

Please look at Section 223 of the CDPA. Design right owners may assign future design rights - an assignment can provide that any future rights that arise when someone creates a design are automatically assigned to someone else - as soon as the design is created. (Section 91 provides for assignment of future copyrights.)

V Think for a few minutes about why this is important.

An assignment of future rights might be important in a joint venture arrangement whereby designs are originated by one company, but put on the market (exploited) by the other. Depending on the precise commercial circumstances, it might be appropriate for the company using the designs to own the rights, rather than being licensed. Also, although design right commissioned designs is owned by the commissioner, it is prudent to have the terms of the commission set out in writing, and this may include a specific assignment of future design right.

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A word of warning about assignments generally

You should always try to keep up to date with any changes in companies that are your clients.

If a company is sold or there are changes within a group of companies for example, many of the IP rights, including registered designs and unregistered design rights, will probably change ownership - and you should advise your clients to record the change of ownership of the registered rights.

However, you will frequently find that your clients forget to inform you of important and relevant changes. So you should make sure that, as far as possible, you try to keep up-todate with what is happening to your clients.

Ideally, you should arrange regular meetings to keep in contact so that you are aware of all relevant changes. You can also look from time to time at relevant trade journals and follow any information about clients in the business and finance press.

You can also look at clientsâ&#x20AC;&#x2122; websites and information sites for the industry.

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You are almost at the end of this module.

If your office has files covering transactions relating to designs, make a note to have a look at them when you have finished.

And as always, review what you have learnt, make any notes that you wish, and then try the quiz.

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Test yourself

When is the Registry likely to check that stamp duty has been paid?

Which Sections of the CDPA refer to the licensing of unregistered design rights?

To whom would you apply to find out when a licence of right becomes available?

Under what circumstances might the Comptroller order that a licensee does not need to pay royalties to a design right owner?

Which form would you use to apply to register a new proprietor of a registered design?

What should be written on copies of original documents when you send copies to the Registry?

Which form do you use to record a mortgage against a registered design?

Check your answers.

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The answers

When the licence is effective prior to 28 March 2000, and/or involves property which is not exempt from stamp duty and when a company seal has been affixed to the licence the licence cannot be terminated the licence is granted in respect of a single payment and not for periodic royalties.

Sections 222 to 225.

When granting a compulsory licence of a right whose owner is unknown – Section 248(2) Copyright, Designs and Patents Act 1988.

Designs Form 12A – Rule 42(1) Registered Designs Rules 1995, as amended by the Registered Designs (Amendment) Rules 2001.

“I certify this to be a true and exact copy of the original document as seen by me”.

Form DF12A.

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Pink Module Rights in, and Infringement of, a UK Registered Design

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In this module, we look at the rights which a proprietor has in a design which is registered in the UK. We discuss the actions which infringe a registered design and how we might determine whether a registered design has been infringed. We also look briefly at bringing infringement actions and the remedies that may be awarded to the owner of an infringed design. (We talk about infringement of registered Community Designs in the Lilac Module.) Before you start this module, you should have completed the Blue and Green Modules.

To complete this module, you will need The Registered Designs Act 1949 (as amended) The Registered Designs Rules 2006.

When you have completed this module, you will have Read the relevant Sections of the RDA Identified situations in which your client would be able to enforce registered rights against infringers Made notes of your ideas concerning the identification of infringing designs Listed the remedies available in infringement cases.

This module will take about half a day to complete.

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The Registered Designs Act 1949 (as amended)

Weâ&#x20AC;&#x2122;ll begin by looking at the sections of The Registered Designs Act 1949 as amended by the Registered Designs Regulations 2001, implementing the Designs Directive (98/71/EC), that provide for the rights in a registered design. You should have a copy of the Act with you.

Please find the relevant Section of the Act and read through it. Then answer the questions below. Please try to answer them from memory.

The Act provides that certain actions, in connection with an article that is the subject of a registered design, are the sole right of the registered design owner. What are these actions? (Ignore matters of copyright and unregistered design right.)

Your client, Mr McGregor, is a designer of planters (plant pots) in novelty shapes. Would he have enforceable rights under Section 7 in the following circumstances? In each case, please assume that no-one else has any earlier rights in the designs. i) He has made drawings of a design he proposes to put into production shortly, of planters shaped like camels.

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ii) Mr McGregor has registered a design for planters shaped like bowls of fruit, featuring moulded shapes of pineapples, bananas and grapes with grape leaves. He has seen for sale pots of a similar style, with pineapples, bananas and grapes, but with palm leaves instead of grape leaves. iii) A catalogue for pottery supplies, issued by a company previously unknown to your client, includes a mould for making pots which appear to be identical to your clientâ&#x20AC;&#x2122;s fruit bowl-design planters, registered as above. iv) Mr McGregor has applied to register a design for plant pots featuring a peacock tail design. (There is no priority claim.) You believe that the Design Registry will shortly grant registration, as it has not made any objections to the design. Meanwhile, Mr McGregor has seen a rival manufacturer selling pots which he claims are identical.

Does Mr McGregor have the right to prevent other people from producing kits to enable third parties to make up designs which copy his registered designs?

Check your answers.

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The answers.

You should be looking at Section 7.

The owner has the exclusive right “to use the design and any design which does not produce on the informed user a different overall impression”. (Look also at the specified actions in Section 7(2) ) – but please note that this list of actions is not exhaustive.

i) No - Mr McGregor does not have a registered design. ii) Your client will have a good case if the other pots have a design which does not produce a different overall impression from his registered design on the informed user. iii) This probably falls under Section 7(2)(a) and your client seems to have a case. iv) No. A design cannot be infringed until the registration certificate has been issued. Section 7A(6).

Under Section 7(1), the proprietor has exclusive rights to the design, and it is arguable that producing a kit with the objective of recreating the design is “using” the registered design. The kit is arguably a product in which the design is incorporated or to which it is applied, as defined in Section 7(2)(a),

Now read on.

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Rights acquired by registration

You should note that the right that an owner has in a registered design is a monopoly right. This means that registered proprietors do not have to show that their design has been copied in order to prevent copying. Any action that Section 7 of the RDA states to be the sole right of the proprietor is an infringement of the registered design if it is done without the proprietor’s permission. This is subject to certain permitted acts and defences set out in Section 7A, which we will discuss later in this module.

Please read Section 7(1).

You should see that the grant of a registered design gives the registered proprietor the exclusive right to use the design and any design which does not produce on the informed user a different overall impression.

The words used here are the same as those used in relation to the test for registrability. As we saw earlier, a design will be registered if it is new and has individual character – which means that “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 before the relevant date”.

Who exactly is the “informed user”? It is not defined in legislation. It is a matter being decided by case law. In some cases the informed user may be the ordinary end user. In other cases, the Court has to rely on more expert evidence to gauge whether the alleged infringing design creates a different overall impression on the informed user. We look at a case that considers this in the Orange Module.

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Scope of the protection

Please read Section 1(2) of the Registered Designs Act.

This is a wide definition. Previously, the design had to be applied to an article and the definition of article was the subject of much litigation. “Design” in this new legislation is a wider concept, and we are now waiting to see how this will affect litigation. This is particularly true when one considers the definition of “product”.

Please try to remember how a “product” is defined, and write down the definition now. Then read on.

PINK Products “ ‘Product’ means any industrial or handicraft item other than a computer program; and in particular, includes packaging, get-up, graphic symbols, typographic type-faces and parts intended to be assembled into a complex product.”

Important Note that the exclusive rights given to the proprietor of a registered design under Section 7 are not limited to the particular field for which the design is registered or will be used. This creates a wide-ranging monopoly – far more than prior to the new Act. We now also have the possibility that a design which previously did not infringe a registered design (because, for example, the registration was registered for use in a different area) would now infringe that registered design. Such a design is therefore prohibited since the new law on infringement relates to all future infringements regardless of when the design was registered. (There are, however, some transitional provisions which deal partially with this particular problem. We discuss transitional provisions in the Gold Module.)

Actions which infringe registered designs The proprietor has the exclusive right to prevent others, by taking them to court if necessary, from using the design. This includes making offering for sale putting on the market importing (for sale or hire or for trade or business use) stocking the product for the above purposes exporting any products which are made to the design which is registered made to a design which does not produce on the informed user a different overall impression. Important note The proprietor of a registered design might infringe some other registered design or other right (for example, patent, copyright or registered trade mark), each of which is independently enforceable. If you wish, make a note now to discuss the implications of this with your trainer. 8

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Identifying designs that are registered

It is good practice to advise your clients to make it clear that their designs are registered. Although this is not a legal requirement in the UK, it does warn people, who might otherwise have been tempted to copy the design, that the design is registered.

Your clients should therefore

use the word â&#x20AC;&#x153;Registeredâ&#x20AC;? And show the design registration number on the product itself. If there are practical reasons why this is not possible - for example, the article is a small item of costume jewellery - then your client should mark any packaging and point-of-sale material, or catalogues, company literature, data sheets and price lists.

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Important note

Please turn to, and read, Section 35 of the Act.

It is an offence, which is punishable by fine, falsely to claim that a design is registered. So you must warn your client to note carefully the date when the registered rights in the design will lapse - this will be after a period of 5, 10, 15, 20 or 25 years. If they have not paid the renewal fees to keep the registered design in force (and in any case, after the end of the maximum 25 year period of exclusive rights in a design), they must ensure that they stop marketing any articles which claim that the design is registered. (They should also ensure that any other materials they issue, such as brochures or catalogues, do not claim that the design is registered. Although Section 35(2) only refers to â&#x20AC;&#x153;productsâ&#x20AC;?, this is good practice, bearing in mind the more general scope of Section 35(1).)

What happens if your client still has stock on hand at the date of expiry, that still shows the registration details? Provided that the claim is first made at a time when it is true, there is no duty to do more than is reasonably practical to remove or obliterate the claim, after the time when it becomes untrue.

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Infringement

Please look back again at Section 7 of The Registered Designs Act 1949 (as amended).

You have seen, in Section 7A, that infringement occurs when “a person… without the consent of the registered proprietor, does anything which, by virtue of Section 7… is the exclusive right of the registered proprietor”. Under Section 7(1), registration gives the registered proprietor the exclusive right to use the design as registered, or any other design which does not produce a different overall impression on the informed user.

But how do we - and judges – go about deciding whether a design is so close to a registered one that it infringes?

Write down, very briefly, your ideas.

Then read on.

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In past cases, it was the eye of the purchaser and the customer interested in buying the design, and the representations of the article (product) that judges considered. They also asked “Could one article be mistaken for another?”.

Look at Section 7(3) of the RDA. This says that the degree of freedom which a designer has must be taken into account. What difference could this make?

The effect of Section 7(3) seems to be that in the case of a largely functional design that is very close to a prior art design, more notice has to be taken of the impression given by the features which are different from the prior art. Therefore, the scope of protection will be construed more narrowly. Again, you will read something about this in a case when you work through the Orange Module.

In the case of a design where more freedom to design exists, more attention may be paid to all of the features of the design when assessing overall impression and a wider protection will be afforded. We have some guidance in the Commission’s Explanatory Memorandum which states “Highly functional designs where the designer must respect given parameters are likely to be more similar than designs in respect of which the designer enjoys total freedom. Therefore, [this section] also establishes the principle that the freedom of the designer must be taken into consideration when the similarity between an earlier and a later design is being assessed.”

And you should remember Section 1C, which lists products which are excluded from registration because the design is dictated solely by technical function or must fit with another product so that either product may perform its function. What happens if part of a design is excluded from registration because it falls under this Section?

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It is not always straightforward to decide whether a design is sufficiently different from a registered one for there to be no infringement, and the test is always subjective.

Generally, however, if your client’s registered design does not greatly differ from existing designs, another design would have to be very close to infringe it.

If, however, your client’s design is particularly unusual, its registered protection may be broader and designs that are less than almost exact copies may infringe it.

Geometric patterns Although in Cook and Hurst’s Application [1979] RPC 197, a coloured striped design applied to a football shirt was permitted registration, courts will normally ignore colours that designs have in common when they are determining whether infringement had occurred.

Colour The definition of “design” brought in to Section 1(2) of the Act by the European Designs Directive, however, specifically recites colours as a possible design feature. Products to which designs can be applied, or in which they can be incorporated, include items such as packaging, where distinctive colours can be of significance.

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Other articles which may infringe

When you read through the Section 7 of The Registered Designs Act 1949 (as amended), you will have seen that some items, apart from precisely the same products to which the registered design is applied, may infringe.

Please think about this. Then write down what you think might be included here. Then compare your ideas with ours, on the next page.

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Again, we are waiting for clear guidance on this. However, looking at Section 7(2)(b), we see that stocking products to enable any of the infringing actions listed in Section 7(2)(a) could be an infringement, if done without the consent of the registered proprietor.

So items which would enable the product to be made - such as moulds a kit of parts to make the product might infringe. Ornamentation in the form of a given surface pattern or decoration will infringe, no matter what product it is applied to.

Well done if you got these.

Read on now to learn about taking action against infringement of registered, as well as unregistered, designs. (We also talk more specifically about infringement of unregistered designs in the Cream Module.)

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Threats

Please spend a few minutes reading Section 26 of The Registered Designs Act 1949 (as amended) now. You should be very careful that you do not make, on behalf on your clients, threats to bring action to prevent infringement unless you have a very good reason to believe that a registered design is genuinely being infringed. You may, however, notify someone that one of your clients’ designs is registered. And threats in relation to making, or importing, are not actionable. It is the type of activity that the registered design owner is complaining about that is relevant here. You must be particularly careful to avoid threatening the customers of a manufacturer. You must ensure that the overall context of your letter or notification must not be threatening - in the case Jaybeam Ltd v Abru Aluminium Ltd [1976] RPC 308, a mere notification that the design was registered was included in a letter threatening action to prevent copyright infringement - and the claimant successfully claimed that there was therefore a clearly implied threat of proceedings for registered design infringement. If you make groundless threats on behalf of a client, your client may be sued. However, you could also be sued personally. A threat is any communication the initial impression of which will be understood by the ordinary recipient as constituting a threat of proceedings for infringement (L’Oreal [UK] Ltd v Johnson & Johnson 2000FSR 686).

Very important Please take careful note – because a threatening letter or cease-and-desist letter can have grave consequences for you and for your firm, it is absolutely essential that you do not send out such a letter without the full approval of your supervising or senior partner, or the head of your department, if you work in industry.

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Who may sue in a threats action A person aggrieved by the threats may sue. This means that while it is normally the person to whom the threat is addressed that sues, it could be an associated person who is aggrieved. For example, a retailer of a product might receive the threat, but the manufacturer of the article in question might be able to sue.

The burden of proof in a threats action The burden of proof is initially on the person who made the accusation - they must prove that there is, or would be, infringement - then the burden of proof shifts to the person who was accused of infringement. They must then prove that the registered design is invalid, or does not cover the product in respect of which the accusation has been made.

Threats and the Courts If the Court holds that the threat was unjustified, then the person making the threat has to compensate the threatened person for damage suffered; and the Court will issue an injunction to stop further threats. The Courts disapprove of threats, so, even where someone actually brings a successful design infringement action, the Courts may look adversely on them because the threat was made.

(We look at threats actions in relation to unregistered designs in the Cream Module.)

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Pre-trial assistance from the Court

There are other proceedings that you can request before commencing proceedings. (These areas are normally dealt with by solicitors, so there is no need to do more than read these at the moment.) These include Asking for an order for disclosure of documents (including orders for disclosure against people who are not party to the proceedings) Inspection of relevant property Taking a sample of relevant property Carrying out experiments with or on relevant property Directing a party to provide information about the location of relevant property or assets Directing a party to provide information about relevant property or assets that may have become the subject of a freezing injunction.

(We look briefly at injunctions later on.)

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Actions for registered design infringement

Who can sue? The proprietor of a registered design has the right to sue.

Where to bring the action If your client wishes to sue for the infringement of his registered design, he may do so in either the High Court (the Chancery Division, where the case would be heard by a specialist judge of the Patents Court, and the Court of Session in Scotland) or, for actions in England and Wales only, the Patents County Court Generally, if your client has a small or medium sized business, and the defendant is domiciled in England or Wales (or the tort of infringement was committed there) they may prefer to use the Patents County Court. If cases are heard in the High Court, you might employ a solicitor and barrister (“counsel”), or specially qualified solicitor, on their behalf (but note that patent attorney litigators can also conduct litigation in the High Court), and patent attorneys or solicitors can represent clients (“have right of audience”) in the Patents County Court. In most circumstances, cases come to trial more quickly in the Patents County Court. If your client subsequently wishes, and at the discretion of the court, cases can normally be transferred from one of these courts to the other.

Time Limit There is normally a limitation period of six years (this may differ in Scotland – ask your trainer about this if it is relevant to you), during which you must bring the action. We calculate this backwards from the date of issue of proceedings, for acts committed up to six years before that date.

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Documents Proceedings are started when the Court issues the claim form. The documents involved are The claim form Particulars of the claim Particulars of infringement (for registered design/patent infringement) Form for acknowledgement of service Forms for defending/admitting the claim.

The claim form must include A statement of the nature of the claim The remedy the claimant is seeking A statement of the value of any money the claimant is seeking A concise statement of the facts the claimant is relying on A statement of any interest claimed, and details A statement of any aggravated damages or exemplary damages, as well as grounds, the claimant is seeking A statement of any provisional damages, as well as grounds, the claimant is seeking With the claim form, you must include particulars of the infringement you are alleging, and give at least one example of each type of alleged infringement Any other matters, according to practice direction 49E.

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Service of documents You may serve documents by Personal service First class post By fax or other electronic means at the defendant’s “address for service”.

Now – looking at things from the point of view of the defendant – what might the defendant now do?

If the defendant does not admit the claim, they should file Acknowledgement of Service A Defence A Counterclaim – we’ll look at this shortly Particulars of Objection, if they want to challenge the validity of the registered design in question. They must do this within 42 days after the claim documents have been served.

You should remember that the defendant does not need to respond to the claim until the Particulars of Claim have been served on him or her. This only varies if they want to dispute the jurisdiction of the Court. If they want to do this, they must still file an Acknowledgement of Service.

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The Defence must specify which of the allegations the defendant Denies â&#x20AC;&#x201C; with reasons, and any different version of events he or she wishes to put forward (otherwise the defendant will be deemed to have admitted the allegations) Admits Is unable either to admit or deny, but requires the claimant to prove.

The Defence must be filed in Court, and a copy served on each party. It must also be verified by a statement of truth. It must normally be filed within 14 days after the service of the Particulars of Claim.

What happens if the defendant wants to make a counterclaim against the claimant?

Counterclaim If a defendant believes that the registered design in question is registered invalidly, they may claim for the revocation of that design.

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Note that the defendant must serve the claim, like the other documents, within 42 days after service of the original claim form. The claim for revocation must include every ground on which the defendant is challenging the validity of the registration, including any particulars the defendant intends to raise the names of anyone who is alleged to be a prior user descriptions with any necessary accompanying drawings whether any relevant machinery or apparatus exists, and where it can be inspected.

What the claimant does next

The claimant should file a Reply to the Defence. If the defendant made a counterclaim, then the claimant also needs to file a Defence to the Counterclaim.

It may be possible to file these as one document, and they both also require a statement of truth.

Proceedings then become complex. This largely falls outside the scope of this Manual; we recommend that you make a note to talk to your trainer about further proceedings, when you have finished this Module.

Next, we look at remedies.

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Remedies

The Court has the power to award remedies at any stage.

Assume that your client has succeeded in showing that someone has infringed their registered design. The court may well award them some â&#x20AC;&#x153;remediesâ&#x20AC;?. Please think for a moment about what the court might award to your client.

List as many of these as you can think of. Then compare your list with ours on the next page.

PINK Possible remedies Remedies available include Injunctions. An injunction is a court order forbidding certain acts – or, sometimes, requiring a party to perform certain acts. An injunction might be granted before an action comes to full trial, if the matter is urgent, or after full trial Damages – to compensate the winning party for the damage caused by the activities of the losing party, in order to put the winning party in the same financial position it would have been in (as far as possible) had it not been for those activities Delivery up – the surrender or destruction on oath of unsold infringing products Costs – reasonable legal costs incurred by the winning party. Well done if these were on your list.

Injunctions A claimant can request either an interim remedy (interlocutory injunction) before the action has come to trial or a final injunction. Both types of injunction in design matters may be awarded by either the High Court or the Patents County Court. Interim injunctions in intellectual property matters are, at the time of writing, becoming rare, as the time taken for a case to reach full trial has decreased, and money is usually an adequate remedy. An injunction can take different forms, but usually has the effect of preventing the defendant from doing whatever the claimant is objecting to.

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These can include freezing injunctions (previously known as “Mareva injunctions”) search orders (previously known as “Anton Piller orders”) “Norwich Pharmacal” orders – an order against an innocent party who gets mixed up in acts relating to, or connected with, infringing goods, to disclose the identity of the true tortfeaser (person who committed the infringement). If you are applying for one of these, you must support the request with affidavit evidence. We talk about these in a little more detail later on. Other interim injunction requests can be supported by A witness statement A Statement of Case, accompanied by a statement of truth The application, accompanied by a statement of truth.

Safeguards against abuses You have probably realised by now that an interim remedy- which can have the effect of completely stopping a defendant from, for example, selling an article until the action comes to full trial - can be a very powerful weapon. In practice, it can, on occasion, cause a business to cease trading.

So - what stops someone using it as a convenient way of damaging a trade rival?

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A case known as American Cyanamid [1975] FSR 101 sets out guidelines which the Courts follow before deciding whether to grant an interim remedy (which is referred to as an interlocutory injunction in the case). These guidelines are usually followed in all such cases. They are considered in order, and they are well worth noting. The court will ask: 1.

Does the claimant’s evidence show a serious question to be tried? (If “no”, the injunction will not be granted.)

Would any damages awarded at trial be an adequate remedy for the claimant? (If “yes”, the injunction will not be granted.)

Would any damages/costs at trial, if the claimant fails, be an adequate remedy for the defendant? (If “no”, the injunction will not be granted.)

What is the “balance of convenience”? (Which party would suffer most if the injunction were granted or refused?)

If the “balance of convenience” is even, should the Court preserve the status quo.

Lastly, if the Court has not been able to decide the issue on any of the preceding tests, it will consider the relative merits of the parties’ substantive cases.

As you can see, it’s a very important aspect of the American Cyanamid test to try to decide if the defendant would suffer irreparable damage as the result of the grant of an interim remedy.If, after it has been granted, the effect of the injunction on the defendant’s business will be so damaging that it’s not worthwhile for the defendant to go on to full trial, the case is effectively settled at the interim stage. The other objective of the American Cyanamid guidelines is to avoid the interim measures becoming a full “mini-trial”. Only as a last resort should the court consider the parties’ substantive cases.

PINK

Search orders and Freezing injunctions We mentioned these earlier. We won’t explain these in detail here, but we recommend that you talk to your trainer about them later. However, briefly: Search orders These court orders (previously known as “Anton Piller orders”) are made without notice to the other side and are granted only where there is evidence of a serious danger that the defendant will remove or destroy evidence before the trial. Their effect is to order the defendants to allow the claimant’s representative to enter their premises and remove evidential material. They are not search warrants. There are strong safeguards on the rights of defendants to try to ensure that these Orders are not misused. Freezing injunctions These (previously known as “Mareva injunctions”) are granted only where there is evidence that potential defendants will dispose of their assets - by moving them out of the country, for example. They freeze the defendant’s assets pending resolution of the court action. Again, there are legal safeguards to protect both defendants, and third parties who may have some claim on the assets.

Undertakings Sometimes, an undertaking may be offered to the proprietor, by the infringer, instead of an injunction. An undertaking is a binding agreement between the parties.

PINK

Trial Most proceedings donâ&#x20AC;&#x2122;t come to full trial, but are settled earlier. How long do you have to wait? If matters canâ&#x20AC;&#x2122;t be settled any other way, a trial normally happens about 10 to 15 months after the Claim form was served, unless the Judge orders a speedy trial, shortening the procedure. Who hears the case? One judge will hear the case; there is no jury. How is evidence given? This can be from written statements, or given orally by witnesses, who are summoned by service of a Witness Summons. How long does the trial take? The length of the trial depends on the complexity of the case; it might be just a half day, or it could last up to a week â&#x20AC;&#x201C; which then becomes very expensive for clients. What happens next? The judge may or may not give a decision immediately. If not, then after a few weeks, he or she will issue their judgment, explaining the evidence and law taken into account. They conclude with a statement as to whether the registered design is valid/whether there is unregistered design right whether there was infringement. What about damages? The Court deals with assessment of damages separately.

PINK

Final Remedies Various remedies may be available to someone whose registered design has been found to have been infringed. a Final Injunction which can include an absolute prohibition on the infringer using the proprietor’s design Costs the Act does not provide for these, but in practice they may be awarded by either court, at its discretion. They are not designed to compensate the winning party for all its legal expenses. If the parties cannot agree, a formal procedure for “taxing” or assessing costs will operate. Damages which can be nominal (and are nearly always awarded), or can be an award designed to compensate the registered design owner for any loss suffered as a result of what the infringer has done. The winning party may be able to ask for an “Enquiry after damages”. The court may also award interest on damages, normally from the date the infringement took place. The question of damages will be decided in separate proceedings after the trial. An Account of Profits which means that the infringer accounts to the design proprietor for the profits it made from using the design. This is an equitable remedy and only granted at the discretion of the Court. As with damages, this is dealt with in separate proceedings after the trial. (Important note – one cannot claim both damages and an account of profits proprietors must decide which to claim.)

PINK

Delivery-Up which means that the infringer is ordered to give the infringing products in its power of possession to the custody of the court, for destruction, or other disposal â&#x20AC;&#x201C; such as handing them over to the claimant. (This may be awarded at the discretion of either of the courts.) Destruction where the infringer may be ordered to destroy the infringing products. The infringer will have to certify under oath that the products have been destroyed. Like delivery-up, this remedy is at the discretion of the court.

Appeals A party can ask for permission to appeal against a decision. Permission is given either by the Court where the action was heard, or the Court of Appeal. You must normally request permission within 14 days of the decision you are appealing. How long will it be before the appeal is heard? It will normally be a year to eighteen months, before the appeal is heard. Who hears the appeal? Appeals are usually heard by three Court of Appeal Judges.

Further Appeals You may then take a further appeal to the House of Lords on a point of law only â&#x20AC;&#x201C; provided you have permission from either the Court of Appeal or the House of Lords.

PINK

Actions which are not infringing and defences to infringement accusations

Please read Section 7A(2) of the Act now.

A client has come to you with a letter accusing her of infringing a registered design. Please list any possible defences she may have.

Then read on.

PINK

We thought of the following possible defences to allegations of infringement. Your client’s action falls within the scope of Section 7A(2). Your client’s design has in common with the registered design only features that fall under Section 1C(2) – features which are necessary for the product to perform its function. The registered design is not new (or “original” in the case of designs which predate the Copyright, Designs and Patents Act 1988) - this would be grounds on which to counter-attack. The registered design does not have individual character. The registered proprietor is not entitled to own the registered design, either because he did not create it or did not commission it. The design is not yet registered. Section 7A(6). The design registration has expired. Your client can prove that she had prior sales. Your client has a licence. Your client’s products were put on the market in EEA by the design proprietor, or with his consent. Section 7A(4). The design is for component part used in the repair of a complex product, and your client’s use of it is for such repairs. Section 7A(5).

PINK

Not valid defences If you wrote down any of the following, please make a note now that they are not valid defences to accusations of infringement. Innocent infringement. If your client had no good reason to believe that the design was registered (it was not marked, for example), she may still be found to have infringed the design. However, in these circumstances, the claimant would not be awarded damages. Your client created her design independently. Remember that a registered design is a monopoly right. Exhaustion of rights â&#x20AC;&#x201C; that is, that the proprietor placed the product on to the market in another country (other than in the European Economic Area), or that this was done with his consents. You might like to note that the Registered Designs Act 1949 (as amended) nowhere explicitly mentions international exhaustion of rights, so this leaves the possibility of litigation on the subject.

You are almost at the end of this module. As usual, review what you have learned and make any notes before carrying on. Then try the quiz.

PINK

Test yourself

Which section of the RDA provides for the rights in a registered design?

If a part of a product has been designed with the sole criterion of enabling it to fulfil a particular technical function, is it registrable as a design?

Who has the right to sue for infringement?

Your clients wish to sue for the infringement of their registered design. Where may they bring the action, assuming it is brought in England or Wales?

Sometimes, as an alternative to having an injunction imposed on them, an infringer may offer what?

In a case where someone has made a potentially unjustified accusation of infringement, who may sue?

How would you file a request for a registered design search where you do not know the number of the registered design in question?

Check your answers.

PINK

The answers

Section 7.

No – Section 1C.

The registered proprietor – Section 7.

In either The Chancery Division of the High Court The Patents County Court depending on the circumstances..

To give an undertaking.

A person aggrieved by the threats – Section 26 of the Registered Designs Act 1949.

File Designs form 21, together with a representation or specimen of the design in question applied to, or incorporated in, a product.

LILAC

Lilac Module Infringement of Registered Community Designs

LILAC

This module looks at what happens when someone needs to enforce rights in a registered Community Design.

In particular, we will look at the â&#x20AC;&#x153;cascadeâ&#x20AC;? that is used for determining which court proceedings should be brought in.

Before you start this module, you should have worked through the Grey and Lemon Modules.

To complete this module, you will need The Community Designs Handbook.

When you have completed this module, you will have Read Titles IX and X of the Regulation Identified the Article that provides for sanctions Explained where to bring infringement proceedings in specific circumstances Listed the sanctions available.

This short module will take about half a day to complete.

LILAC

Enforcement Once a Community Design is registered, the owner has enforceable rights.

You should have a copy of The Community Designs Handbook with you. Please turn to Chapter 19 “Enforcement of a Community Design”. Please read the “Executive Summary” at the beginning.

Now please turn to the Community Design Regulation (included in the Handbook, or if you prefer, on the OHIM website) and read Title IX (Articles 79-94). Remember that we talk about invalidity in the Lemon Module.

Then try to answer the questions on the next page.

LILAC

What sorts of courts must Member States designate?

If neither the plaintiff nor defendant are domiciled in, or have an establishment in, a Member State, where would you bring infringement proceedings?

Which Article provides sanctions in actions for infringement?

Which rules determine further appeals from Community Designs courts of the second instance?

Now look at the answers.

LILAC

How did you get on?

National courts and tribunals of first and second instance (Community Design Courts).

Spain – the Member State in which the Office has its seat.

Article 89.

National rules.

The laws of Member States

Now read Title X “Effects on the laws of the Member States” (Articles 95 and 96).

LILAC

Now please return to the Handbook and read paragraphs 19-004 to 19-006, then answer the questions below.

A client, Mrs Alice Rose comes to you with some problems relating to her registered Community Design for light switch covers, which she believes have been copied by a former partner, a Mr James Murphy. What is the very first thing you need to think about?

Which Articles tell you which Member State or States you may sue in?

What provisions specific to infringement do you need to consider?

What, specifically, do Community Design courts not have jurisdiction over?

When do Community Design courts apply national laws?

Now see how you got on.

LILAC

Check your answers.

What is the cause of action, and is it something that the Community Design courts have jurisdiction over?

Articles 82 and 83.

Who can sue When to start infringement proceedings What presumptions of validity apply Whether there are concurrent proceedings for a declaration of invalidity Whether there are parallel proceedings in another Member State The sanctions that are available.

Actions for declaration of invalidity of a registered Community Design that is not brought as a counterclaim in an infringement action.

In any matters not covered by the Regulation.

LILAC

Where can you sue?

Now please read paragraphs 19-007 to 19-014, and then try to answer the questions below.

The defendant, Mr Murphy, lives in Ireland, but has his main business in the UK. Your client, Mrs Rose, lives in France, but also has her main business in the UK. As far as Mrs Rose has been able to ascertain, the infringing covers are only on sale in Germany. In which country would you bring proceedings?

Mr Murphy has moved to the USA, but is having his manufacturing done in China, as it is much cheaper. He has no other business premises in the EU. Where would you now bring proceedings?

What Regulation do we use in interpreting the meanings of “domicile” and “establishment”?

How long does someone normally have to have been resident in the UK to be considered to be domiciled here?

Mr Murphy remains in the USA, and his only business is in China. Mrs Rose has now moved to Norway. Where would you bring proceedings?

If both parties had agreed that the German Community Design court would have jurisdiction, what would be the effect of any decision from that court?

LILAC

You should have these answers.

Ireland – the Member State in which the defendant is domiciled.

France – where the plaintiff is domiciled.

The Brussels Regulation.

Three months.

The UK. Norway is not a member of the EU, so the fourth consideration on the cascade is the one that applies.

It would have Community-wide effect.

We hope that you didn’t find these questions too difficult.

Next, we’ll consider the specific provisions.

LILAC

Specific provisions relevant to infringement proceedings Please read paragraphs 19-015 to 19-043, and then as usual try to answer the following questions.

Mrs Rose has sold all rights in all her designs to LightUp Ltd, a company registered in England. When may the new owner commence infringement proceedings?

What happens if someone is copying a design that is not yet registered?

Mr Murphy claims that he has a registration of the design in question in the Republic of Ireland that predates Mrs Roseâ&#x20AC;&#x2122;s registration. What might he do?

What extra complications can arise if the Community Design court where the action is brought is not in the country where the infringement is actually taking place?

What sort of financial payments might be ordered against an infringer who did not knowingly commit the infringement?

Where in England would you make an application for interim relief relating to a registered Community Design?

Check your answers.

LILAC

Here are the answers.

Once the transfer has been recorded on the register.

You cannot start infringement proceedings until the design is registered.

He would be likely to challenge the validity of the later design registration.

The court may also impose sanctions provided for by the national laws of the country where the infringement is happening. It therefore needs to know what these are.

Recovery of profits or payment of damages.

The Patents Court or Patents County Court.

As that was quite a lot of reading, please go back and read these paragraphs again, if you wish. Then read on.

Now please read paragraphs 19-051 to 19-056.

LILAC

Threats proceedings You need to be aware of the necessity to be very cautious in approaching possible infringement matters.

Please read paragraphs 19-057 to 19-059.

Appeals

Finally, please read paragraph 19-061.

In the Pink Module, we looked at infringement proceedings in the UK.

LILAC

You are almost at the end of this module. You should be clear as to how the cascade works for deciding where to bring infringement proceedings in connection with a registered Community Design, so if you need to, please go back and revise this now.

And, as always, please take some time to make any extra notes that will help you later on.

Then try the quiz to see what you remember.

LILAC

Test yourself

Over what do Community Design courts have exclusive jurisdiction?

What sanctions are available in actions for infringement?

Why would you might choose not to sue in the country where the infringement is happening?

What happens when a Member State has not designated a Community Design court?

Check your answers.

LILAC

The answers 1.

In connection with Community Designs Infringement actions Actions in respect of threatened infringement of Community Designs if provided for by national law Actions for declaration of non-infringement of Community Designs if provided for by national law Actions for a declaration of invalidity of an unregistered Community Design Counterclaims for a declaration of invalidity of a Community Design raised in connection with the first two above.

An order prohibiting the defendant from proceeding with the acts which have infringed or would infringe the Community design An order to seize the infringing products An order to seize materials and implements predominantly used in order to manufacture the infringing goods, if their owner knew the effect for which such use was intended or if such effect would have been obvious in the circumstances Any order imposing other sanctions appropriate under the circumstances which are provided by the law of the Member State in which the acts of infringement or threatened infringement are committed, including its private international law

Because, unless it is the right forum under the â&#x20AC;&#x153;cascadeâ&#x20AC;?, the court would have jurisdiction only in respect of the infringement actually happening in that country.

Jurisdiction lies with the national court that would have jurisdiction in proceedings relating to a national design right there.

CREAM

Cream Module Infringement of Unregistered Design Right

CREAM

In this module, we discuss the infringement of unregistered designs, both in the UK and in the EU. We also look briefly at the infringement of semi-conductor topography rights. We look at the infringement of registered rights elsewhere. Before you start this module, you should already have worked through the Black Module.

To complete this module, you will need The Copyright, Designs and Patents Act 1988 The Design Right (Semiconductor Topographies) Regulations 1989

When you have completed this module, you will have Stated the exclusive rights of the unregistered design right owner Identified a problem in establishing secondary infringement Listed circumstances when a claimant might be able to show that a defendant has copied a design Explained who may sue for infringement of an unregistered Community Design.

This module will take about a day to complete.

CREAM

In the Black Module, we looked at what unregistered design right actually is. We’ll start our look at unregistered design right infringement by considering the provisions of the Copyright, Designs and Patents Act 1988.

Please read Sections 226 to 235 of the CDPA, then answer the questions below. This shouldn’t take long. 1.

What are the exclusive rights of the owner of unregistered design right?

Can unregistered design right be infringed by someone who has not themself made an infringing copy?

Who can take action to prevent unregistered design right infringement?

Which Sections provide remedies for infringement?

If the court decides not to make an order as to the disposal of infringing articles, what happens to the articles?

What is the meaning of “innocently acquired”?

The answers are on the next page.

CREAM

Our answers.

“The owner of unregistered design right in a design has the exclusive right to reproduce the design for commercial purposes (a) by making articles to that design, or (b) by making a design document recording the design for the purpose of enabling such articles to be made.”“ Section 226(1).

Yes, under the “secondary infringement” provisions of Section 227.

The unregistered design right owner. Section 229(1). Also an exclusive licensee, under Section 234.

Sections 229 - 231.

“...The person in whose possession, custody or control the article or other thing was before being delivered up or seized is entitled to its return.” Section 231(5).

It “means that the person acquiring the article did not know and had no reason to believe that it was an infringing article”. Section 233(3).

Now move on.

CREAM

Duration of unregistered design right

Next, please think back to the Black Module.

We looked at the duration of unregistered design right - that is, the length of time a proprietor is entitled to exclusive rights in an unregistered design.

Please make a note of the length of time for which rights are granted to a design proprietor to prevent infringement of that unregistered design right. Please try to remember the terms for both UK unregistered design right and unregistered Community Designs, as well as semiconductor topography rights.

Then please check your answer.

CREAM

You should have remembered that UK unregistered design right has a basic term of fifteen years from the end of the calendar year when either the design was first recorded in a design document or an article was first created to the design whichever was the earlier. or ten years from the end of the calendar year in which the articles were first made available, where articles made to the design are available, by or with the permission of the unregistered design right owner, for sale or hire within five years of the end of the calendar year specified above whichever is the shorter.

Unregistered Community Designs last for three years from publication in the EU.

For semiconductor topographies, you should have remembered that the term of unregistered design right is the same as for other qualifying unregistered designs with two important differences there is no requirement that articles should be marketed within five years of the design being created, in order to qualify for the basic ten year protection period and the 15-year period of protection runs from the date of the creation of the design, not the end of the calendar year.

Next, we discuss the exclusive rights of the design owner.

CREAM

What is the nature of the exclusive right?

Copying It is important to remember that the owner of unregistered design right only has the right to prevent others from copying the design and/or having the infringing items for commercial/business purposes. Weâ&#x20AC;&#x2122;ll discuss this in more detail later in this module.

Independent creation Unregistered design right does not grant the right to prevent others from producing a design document for the same article or producing articles to the same design in circumstances where those others have created the same design independently. This is a very important point to note.

Now move on to take a look at primary and secondary infringement.

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Primary infringement

Primary infringement of unregistered design right occurs when someone, who does not have the unregistered design right ownerâ&#x20AC;&#x2122;s permission, does any of the things that Section 226 of the Copyright, Designs and Patents Act 1988 specifies are the sole right of the designer. It also occurs if someone authorises a third party to do any of the things specified in Section 226.

So a person who, without permission of the unregistered design right owner creates a design document, which could be a drawing a written description a photograph a computer record or anything else recording the design (Section 263(1) ) with the object of making articles to the design, for a commercial purpose, or enabling someone else to do so or makes articles to the design, for a commercial purpose

is a primary infringer. Weâ&#x20AC;&#x2122;ll look at aspects of primary infringement in more detail.

CREAM

Section 226 (2)

Please read Section 226(2), as well as the definition of “design” in S.213(2).

So we can say that an article is made to a design if it incorporates or has applied to it “exactly or substantially” those aspects of shape or configuration that constitute the design. So it is the shape or configuration we must look at when considering whether there is infringement under this section. It would therefore not constitute an infringement of unregistered design right to make something which functions in the same way or exhibits the same properties if that article is not substantially of the same shape or configuration.

How do we judge whether an article has been made “substantially” to a design?

This question has been considered by the Courts in a number of cases. Generally speaking, we can say that, as held in the the case of C&H Engineering v F Klucznik & Sons Limited [1992] FSR 421, the question of substantiality is an objective test to be decided through the eyes of the person to whom the design was directed.

However, unregistered design right can subsist in a wide variety of items and will not always be limited to everyday items which are directed at ordinary lay people such kitchen furniture. It can also cover items where the differences that might lead to infringement can only be established by taking detailed scientific measurements.

CREAM

Making a design document This is the second category of primary infringement of unregistered design right.

Please read Section 263(1) of the Copyright, Designs and Patents Act 1988. It is an infringement to make a design document recording the design in which there is unregistered design right, for the purpose of enabling articles to the design to be made. The definition you have just read is a wide definition. A design document can, therefore, be any record and does not necessarily need to be a drawing (whether recorded on paper or on computer) but could, for example, be something recorded in a written or oral description or in a film. It is a requirement of Section 226 (1)(b) relating to the infringement of unregistered design right that the person creating the design document must have the purpose in mind of making articles to the design. This is not to say that the creator of the design must intend to make articles to the design himself – only that this must be the purpose for which the document was created. This therefore covers subcontractors and employee draftsmen with no intention of manufacturing articles to the design – see also section 226 (3); “… authorises another to do…”. the situation where the intention is that articles made to the design will be manufactured outside of the jurisdiction situations where there is an intent to obtain a licence to manufacture before manufacturing takes place. Important - Commercial purposes To be classed as primary infringement, the article made to the design must be made for commercial purposes (or in the case of infringement by making a design document, that the design is reproduced for commercial purposes). “Commercial purposes” are defined in Section 263(3) as meaning being done with a view to the article in question being sold or hired in the course of a business. A claimant must therefore prove this to show infringement.

CREAM

Secondary infringement

The provisions relating to secondary infringement are in Section 227.

Anyone who, without the unregistered design right ownerâ&#x20AC;&#x2122;s permission for commercial purposes imports into the UK or possesses or for business purposes sells lets for hire offers for sale exposes for sale an article which that person knows, or had reason to believe, is an infringing article

is a secondary infringer. Read on to learn more about secondary infringement.

CREAM

Dealing with articles

Please read Sections 227 and 228 of the Copyright, Designs and Patents Act 1988. Secondary infringement is committed by dealing with something, the making of which would be a primary infringement, and knowing the article to be a copy.

Important There is, however, one exception to this general rule. This is that the definition of “infringing article” set out in Section 228 does not include “design documents”. In fact, “design documents” are explicitly excluded from the scope of the definition of “infringing article”. So, dealing (that is, importing, selling, and so on) in a design document does not constitute a secondary infringement of unregistered design right (although in appropriate circumstances could amount to infringement of copyright). If you are trying to show infringement, you can try arguing that the possession of a design document may, in some circumstances, amount to an intention to make articles of the design (and your client may then want to start interim proceedings). Similarly, someone dealing in the design document may well lead to a plea of authorising a primary infringement. A design document would also generally be caught by an order for delivery up under Section 230(1) as an article, “… specifically designed or adapted for making articles to a particular design…”. So, in an action for secondary infringement, the person dealing with the articles must have knowledge or at least a reason to believe that the articles being dealt with are infringing articles.

CREAM

Some points to note about secondary infringement

Some uses This provision can be most useful when the act of primary infringement is taking place outside the UK (this would make it very difficult - perhaps impossible - to take action to prevent primary infringement) the unregistered design right owner cannot find out who the primary infringer is. The unregistered design right owner can then take action to prevent infringement and protect rights in the unregistered design.

Problems with secondary infringement

Look again at Section 227. As we have seen, there is a problem with establishing that secondary infringement has taken place. Please make a note of what you would advise a client to do in circumstances where secondary infringement of his design may have occurred.

Then compare your ideas with ours.

CREAM

The problem is that you must establish that the person you believe to be a secondary infringer knew, or had reason to believe, that the article was an infringing article. So â&#x20AC;&#x201C; how could you overcome this? The best way to deal with this is for your client - or you on your clientâ&#x20AC;&#x2122;s behalf to write to the alleged secondary infringer, to let him or her know that there is unregistered design right in the articles. You should give the other side time to investigate what you have said and to reply to you before you take further action. It is reasonable to specify that you require an answer within fourteen days, for example. You should send a letter of this type by recorded delivery or registered post. If you send a fax or email, you should keep a copy of the transmission report and, for safety, send a confirmation copy by Recorded Delivery. Important. Be extremely careful, however, not to threaten the addressee with action to prevent infringement. Always make sure that your trainer or another senior member of staff sees the letter before it goes out. This is essential to avoid serious problems. If, after receiving this letter, the person does not satisfy you that the article is not infringing - for example, that it is different from the design in which there is unregistered design right, or the person can show that the design was not copied or does not stop the allegedly infringing acts Then the accused secondary infringer will not be able to argue that he or she did not know that unregistered design right might exist in relation to the articles in question, if you decide to take legal action to prevent infringement. (This also removes the defence of innocent infringement). We also looked at this area in the Pink Module.

CREAM

Infringing articles

Please read Section 228 again. This gives us the statutory definition of articles that infringe.

In the Black Module, we saw that unregistered design right may exist in parts of an article as well as in entire articles. But the provisions of the CDPA refer to infringing articles - look again at Sections 226 to 228, if you wish.

So we should ask at least two questions. How close does one article have to be to another before it infringes? How much of an article needs to be manufactured before the courts might consider it to be an infringing article?

V Please think about these questions for a minute or two. Then read on.

CREAM

We’ll begin our look at this subject with a reported case - Electronic Techniques Anglia Ltd v Critchley Components Ltd [1997] FSR 401, BLC/6/97, [1997] CIPA 304. This case included an accusation of infringement of unregistered design right. Mr Justice Laddie held that, to show infringement, it is not necessary that the defendant must have used the design in question on “precisely the same type of article” - he believed that the scope of unregistered design right is intended to be wider than this. But Laddie J also said “It may be that a design applied to certain articles has a different impact to the same design applied to others”. So, an article of a different type from the one in which the defendant claims unregistered design right may still be an infringing article.

But We have to look carefully at the visual impact the design makes when it is applied to a different article - if the impact is sufficiently different, the courts may find that there is no infringement.

Parts of articles The situation is somewhat different when only parts of an article have been manufactured. Infringement rights in these circumstances are more limited.

Next, we’ll look at the subject of copying.

CREAM

Copying You should remember that unregistered design right only gives protection in cases where someone has copied a design. But what constitutes copying? And how can you prove that it has taken place?

What is copying? Section 226(2) of the CDPA says that it is copying a design â&#x20AC;&#x153;... so as to produce articles exactly or substantially to that designâ&#x20AC;?.

Please make notes as to what a claimant might have to show, to demonstrate that a design has been copied.

Then compare your ideas with ours.

CREAM Compare your answer. The claimant will firstly have to provide the date of creation and proof of ownership, then show that the designs are similar. However, this will not be enough to show that the defendant has actually copied the design. In addition, there has to be a connection between the design and the alleged copy. The creator of the latter must have seen, or been given detailed information (for example, a photo or description) about the former. As examples, the claimant might be able to show that the defendant had the opportunity to copy the design if the defendant was an employee who had an opportunity to study the design the defendant was a customer who had an opportunity to study the design articles made to the design have been widely marketed articles made to the design - or even the design itself - have been shown at an exhibition that the defendant attended the claimant has published details of the design in the trade press or on a website details of the design appear in the claimant’s literature or catalogues, which the defendant has received or seen the design has been stolen from the claimant’s premises a third party connected with the defendant described the design to the defendant if the defendant is a competitor or otherwise a “design-aware” person, it is more likely that he or she will be held not to go around with eyes closed, but rather, be open – even subconsciously – to visual input or stimuli, and thus be less likely to be “innocent” in the technical sense. You may have thought of some more ideas. Important note Thus, to constitute infringement, copying does not have to be deliberate. It may be that a defendant has unconsciously copied a design - but still infringes. But what happens if the defendant was inspired by the design, rather than seeking to make a copy?

CREAM

Proof of copying

It is not normally enough to infer that copying has taken place merely because circumstances such as those listed on the previous page exist.

This matter was discussed in the case Amoena UK Ltd & Anr v Trulife Ltd BL C72/95, [1995] CIPA 566.

Here, the judge held that the claimant had not proved that the defendant had copied the design. The claimant had inferred it from the fact that the two designs were similar. However, because there were practical constraints which limited the number of designs it was possible to make, this inference was not necessarily correct.

In instances like this, some similarity might occur because both designers were trying to achieve similar results.

In this case, the fact the defendant actually owned a copy of the claimantâ&#x20AC;&#x2122;s design did not constitute proof of copying.

The judge in this case also discussed the concept of the copying of ideas. Deriving an idea from someone elseâ&#x20AC;&#x2122;s design and then developing it oneself apparently does not constitute infringement.

There is no unregistered design right in ideas.

CREAM

Similarity

It may sometimes happen that designs are identical - but very often, they will be similar, rather than exactly the same. Given that the question of infringement of unregistered design right arises only if there is a nexus between the two competing designs, the question is, has the defendant distanced his or her design sufficiently from the claimantâ&#x20AC;&#x2122;s, such that it is no longer considered to be a copy? And note the words of ss 226(2): â&#x20AC;&#x153;exactly or substantiallyâ&#x20AC;?, suggesting that unregistered design rights have a narrow scope.

Comparing the designs through the eyes of a purchaser of the goods is a test- but there is a possible problem here.

Please write down what you think the problem might be. Then read on.

CREAM

You should have noted that unregistered design right protects not just the visible parts of a design, but also parts that are not normally seen.

So an â&#x20AC;&#x153;eye of the purchaserâ&#x20AC;? test is not always relevant in determining whether unregistered design right has been infringed. (Note that this is different from infringement of registered designs, which we cover in the Pink Module.)

You may also have noted that unregistered design right protects not only entire articles, but as we said earlier, may also cover parts of articles.

So, again, it may not be possible to determine whether someone has infringed an unregistered design right merely by looking at two complete articles.

This is an evolving area of the law.

Next, we will look at taking action against infringers.

CREAM Taking action against infringement

Who may take action - and where?

Please read Section 229(1) of the Copyright, Designs and Patents Act 1988, then Section 215. Section 229(1) specifies who may take action; Section 215 tells us who that may be. Exclusive licensees can also take action provided that they join the unregistered design right owner as either co-claimant or as a defendant â&#x20AC;&#x201C; Sections 234 and 235. Other licensees must ask the unregistered design right owner to take action. (We cover the subject of licences in the Red Module.) You can bring actions before either the High Court - in the Chancery Division (or in Northern Ireland or Scotland, the Outer Session) Patents County Court (England and Wales only). As we explained in the Pink Module, if your clients have a small or medium-sized business, and the jurisdiction is in England or Wales, they may prefer to use the Patents County Court, where they can avoid the costs of using solicitors and/or counsel and where matters are normally tried more quickly. Cases may, in appropriate circumstances, be transferred from one of these courts to the other.

Remedies We discuss remedies that may be granted by the court, following a successful action for infringement, in the Pink Module. Please look at this Section of the Pink Module now, if you have not already worked through it.

CREAM

Defences to accusations of infringement

Now weâ&#x20AC;&#x2122;ll look at how you might help a client who has been accused of infringement - or how you might advise a client who wants to take action to prevent alleged infringement of defences that the other side might have.

A client who has been accused of infringing unregistered design right has come to you for advice. Make a note of any possible defences you can think of, that he may have. Think back to all you have read so far, including the cases you have read, or which we have discussed in this Module and the Black Module.

Then look at our answer on the next page.

CREAM

We thought of the following possible defences, which might apply, depending on the circumstances of the case. There is no infringement because The client’s design is original - not copied The defendant is in fact the co-owner of the design The defendant has a licence The unregistered design right owner acquiesced in your client’s use of the design. The design in question does not consist of features of shape and configuration – for example, it consists entirely of surface decoration The design is excluded from unregistered design right protection because it does not qualify either under the provisions of Sections 217 and 218 - qualifying individuals and persons, or under the first marketing provision - Section 220 The design is excluded from unregistered design right protection under the “mustfit” provision - Section 213(3)(b)(i) The design is excluded from unregistered design right protection under the “mustmatch” provision - Section 213(3)(b)(ii) The design is excluded from unregistered design right protection because it was “commonplace in the design field in question at the time of its creation” - Section 213(4), or not original because it was itself a copy, or does not involve skill, labour or judgement in its creation (“copyright” originality) The design is excluded from unregistered design right protection because it is in fact a method or principle of construction The unregistered design right has expired.

Well done if you got most of these. (If your list differed greatly from ours, please make a note to discuss this with your trainer.)

CREAM

Defence arguments â&#x20AC;&#x201C;does an unregistered design right exist?

As we said earlier, an obvious line of defence to any action for unregistered design right infringement is that unregistered design right does not subsist in the design.

Most commonly, such defences are either based on the argument that the design is not original in the copyright sense and/or on the argument that the design is commonplace in the design field in question and/or on the basis that the design does not fall within the rather strict qualifying provisions necessary for protection of the design by the UKâ&#x20AC;&#x2122;s unregistered design right legislation.

Important It is essential for the claimant in a unregistered design right action to define carefully which parts of the article in which they are claiming unregistered design right. For example, any one article may consist of a number of commonplace and novel parts. Cases can be won and lost on accurately pleading the extent to which unregistered design right is claimed. It is important, usually, to plead infringement in the design of the whole of the article or alternatively, in the design of each separate part.

CREAM Section 236

Where there is a work in which copyright subsists and that work consists of or includes a design in which unregistered design right subsists it is not an infringement of unregistered design right in the design to do anything which is an infringement of the copyright in that work. So - the same act cannot constitute an infringement of both copyright and unregistered design right â&#x20AC;&#x201C; a claimant can only bring action for copyright infringement.

For most functional articles, this section is likely to have little effect. The existence of Section 51(1) of the 1988 Act already seriously limits the scope of cases in which unregistered design right and copyright infringement will be concurrent and generally, unless the infringing article is an artistic work, its manufacture will not infringe copyright - so this does not really remove the right to sue for unregistered design right infringement. Unless an artistic work has shape and configuration features, and is not purely surface decoration, there will be no unregistered design right - although buildings and other works of architecture are classed as artistic works despite having shape and configuration features. It is also unlikely that many defendants will want to be sued for copyright infringement rather than unregistered design right infringement. Remember that there is a much longer term of copyright protection, the easier qualifying provisions for copyright protection, and the non-availability of licences of right. We will talk about differences between copyright and unregistered design right in the Purple Module.

CREAM

Acquiescence

Important note for you and your clients

You must take action quickly if you suspect infringement.

Think now about cases where you are acting for the claimant. If it appears to the court that your client was aware of infringement for some time, but did not take action at once, then the court may hold that the other side has a defence in your clientâ&#x20AC;&#x2122;s acquiescence.

The court may hold that it is simply unreasonable for your client to attempt to assert rights at a late stage. Your client may be estopped (legally barred by reasons of oneâ&#x20AC;&#x2122;s own actions or inactions) from pursuing an action to prevent infringement.

It is essential for your clients to take action very quickly when they think that someone may be infringing their unregistered design right.

CREAM

Stating what the unregistered design right is

You may have realised that, since there is no registration involved in unregistered design right, it is normally impossible for a defendant to know whether a person claims rights in a design which parts of a design the claimant will claim to have rights in.

It is up to the owner to decide which elements he or she wants to protect - the courts will rule on whether those elements can be protected by unregistered design right.

The defendant is likely to be unaware of what rights the claimant is claiming, until the claimant sends a letter before action.

A letter before action - or a statement of claim - is likely to be the only record of the rights that someone claims in an unregistered design. So it is worth noting and keeping the letter or statement.

For example, if clients wish to apply for a licence of right (covered in the Red Module), they need to know when the term of unregistered design right started. Proprietors may be unwilling to grant such licences and consequently are not likely to give this information readily. So a letter before action or statement of claim, which is likely to give details of the creation of the design, would be useful evidence of the date of the start of the unregistered design right term.

CREAM

Innocent infringement

This is not a defence to an accusation of infringement, but may well be relevant to your clients, whether they are the claimant or the defendant.

If the person accused of primary infringement can show that they did not know, and had no reason to believe, that there was any unregistered design right in a particular design, then they will not have to pay damages - although they will still be found to have infringed if they have copied the design (and the Court can grant an injunction to prevent them continuing to copy) if the design is not in the licence of right period â&#x20AC;&#x201C; Section 233(1).

If the person has been accused of secondary infringement and can show that they, or a predecessor in title, acquired the infringing article innocently, the only remedy that the Courts will allow will be damages not exceeding a reasonable royalty â&#x20AC;&#x201C; Section 233 (2) and (3).

This is why, when your clients first become aware that one of their designs may have been infringed, you should begin by sending a letter notifying the alleged infringers of the rights claimed by your clients in the design.

If they then continue to do whatever it is that your clients are complaining of, they cannot plead innocent infringement, and thereby escape paying any damages to your client if they are then shown to have been infringing.

However, you should be careful of the terms in which you phrase your letter. Read on to find out why.

CREAM

Threats

Please spend a few moments reading Section 253 of the CDPA. As you can see, if you - or your clients - accuse other people, without good reason of infringing unregistered design right, they may bring an action seeking various remedies. The action lies against the person making the threats â&#x20AC;&#x201C; that could mean you! Important So - always remember, not to threaten the addressee. Always make sure that your supervising partner or Head of Department sees the letter before it goes out. This is essential to avoid serious problems. However, note that you are able to make threats of, for example, bringing actions, where you allege that the other person has made or imported an infringing article. You should be particularly wary when the person you are writing to is merely selling what may be an infringing article. It is most important that you avoid even giving the impression that you are making a threat against the person (who may be a customer of the manufacturer or importer). However, you can safely write and notify the other side of the unregistered design right that your clients claim. You can ask for the other side to comment on the claimed right. You cannot say that you will commence an action for infringement - this would be construed as threatening. You cannot even safely say that your client is prepared to come to terms instead of commencing an action.

CREAM

If your clients want to take some action quickly, or make their terms plain from the outset, you have the option of issuing a writ, or sending a letter before action shortly followed by a writ.

We talk about threats actions in more detail in the Pink Module, where we also discuss remedies, and procedures for conducting litigation.

Undertaking to take licences of right

Please read Section 239 now. Where a design is in the licence of right period, the defendant has the option of giving an undertaking to take a licence of right. This can be done at any time before the final order in the proceedings is made, and without admitting liability. If such an undertaking is given, there can be no injunction granted, nor an order for delivery up/destruction, and any award of damages or account of profits will be limited to no more than twice the â&#x20AC;&#x153;arms lengthâ&#x20AC;? royalty rate.

CREAM

Infringement of semiconductor topography rights

You should have with you a copy of the Unregistered design right (Semiconductor Topographies) Regulations 1989. Please read Section 8 now.

Note that making article or design documents to the semiconductor topography design is not an infringement if it is for non-commercial purposes.

There are some important differences between the infringement provisions for semiconductor topographies and other registered designs. Please list these now.

Then check your answer.

CREAM

These are the differences.

A design document that copies the original is an infringing article - Regulation 8(3) provides that Section 228(6) of the Copyright, Designs and Patents Act 1988 (which says that a design document is not an infringing article) does not apply to semiconductor topographies.

It is not infringement to reverse engineer a semiconductor topography and as a consequence create another topography - look at Regulation 8(4). Note, however, that the topography thus created must also be original

Regulation 8(2) explicitly sets out, in relation to semiconductor topographies rights, principles arising from European competition law, which are applicable to all intellectual property rights.

Next, we will talk about infringement of unregistered Community Designs.

CREAM

Infringement of an unregistered Community Design

The provisions concerning infringement of unregistered design right in the Community are generally similar to those for registered designs.

There is, however, one major difference.

The main difference is that registered design right is a monopoly right, but unregistered design right merely gives the proprietor the right to prevent copying.

So, to prove infringement, the owner of an unregistered right has to prove that his or her design has actually been copied by the alleged infringer. This mirrors the situation under UK law.

CREAM

Who can sue for infringement of an unregistered Community Design?

The holder of the right - Article 19(1) licensees, with the consent of the holder exclusive licensees, with notice to the holder (subject to the provisions of the licence contract) can sue – Article 32.3.

We look at the Community Court system and the “cascade” of jurisdictions in the Lilac Module.

CREAM

You are almost at the end of this module.

In practice, you are not likely to have much to do with infringement of unregistered designs, but nevertheless, it is important that you are aware of the subject, so please take a little time now to review what you have learnt, and make any note that you think will be helpful.

Then try the quiz.

CREAM

Test yourself

How does the CDPA define â&#x20AC;&#x153;reproductionâ&#x20AC;? of a design?

Who may take action to prevent infringement of unregistered design right?

Which Section of the CDPA provides remedies for groundless accusations of infringement?

Who may bring action for groundless threats?

A client of yours has taken an existing semiconductor topography and has made a very detailed study of it. As a result, he has created a new topography. Has he infringed unregistered design right in the original topography?

Who may sue for infringement of an unregistered Community Design?

Check your answers.

CREAM

The answers

As “copying the design so as to produce articles exactly or substantially to that design”. Section 226(2).

The unregistered design right owner or, in some cases, an exclusive licensee – Sections 229(1) and 234.

Section 253.

A “person aggrieved by the threats” – Section253(1).

No – the Design Right (Semiconductor Topographies) Regulations 1989: Regulation 8 (Copyright, Designs and Patents Act 1988 Section 226(1A) (b) as substituted.

The holder of the right - Article 19(1) The licensees, with the consent of the holder The exclusive licensees, with notice to the holder (subject to the provisions of the licence contract)

VIOLET

Violet Module The Hague Agreement and International Registrations

VIOLET

In this module, we introduce the Hague Agreement and provisions for the international registration of designs. This system is, in practice, rarely used, although this may change since the EU became a Contracting Party. However, you do need to be aware of how it works.

To complete this module, you will need Access to the WIPO website A printer.

When you have completed this module, you will have Summarised the benefits of an international registration of a design Identified the currency in which fees are payable Explained where you may file applications Listed the fees payable in connection with an international registration.

This module will take about a day to complete.

VIOLET

The Hague Agreement The Hague Agreement (1925), revised at London (1934) and at The Hague (1960) with supplements and amendments is an international treaty. It was most recently amended by the Geneva Act of 2nd July 1999. Nation states and groups of states (for example, the EU) elect to become a party to the Agreement. Having done so, the terms of the international treaty become effective under national or regional law.

A bundle of applications An international registration of an industrial design is not a single registration. In effect, it is a bundle of applications in designated territories, all filed together at the International Bureau. Each designated country or organisation may refuse the application under its own national laws. The resulting registrations may be renewed centrally through WIPO and assigned centrally, but they remain separate national rights. It is important to understand this when you are learning about the international registration system.

VIOLET

The WIPO website Let’s look at the WIPO website.

Go to http://www.wipo.int/portal/index.html.en.

Click on “Industrial designs” on the left-hand menu.

Click on “Hague System”.

Click on “General information”.

Click on the pdf link under the heading “Overview on the Hague System”. The document that opens should be headed “The Hague Agreement Concerning the International Registration of Industrial Designs: Main Features and Advantages”.

This is a very useful introduction.

VIOLET

Please read paragraphs 1-22, and then try to answer these questions from memory, as far as possible. 1.

How does WIPO refer to the countries, states and organisations that may be covered by an international registration?

Where would you file an international application?

Does a design owner need to have another application or registration for the design before they can obtain an international registration?

What languages may you file in?

What condition applies to the designs you may include in one international application?

In what currency must you pay the fees?

What time limit does WIPO give for correcting any defects in the application?

Where does WIPO publish new international registrations?

Now look at the answers.

VIOLET

How did you get on? 1.

Contracting Parties.

At WIPO.

No.

English or French.

They must all belong to the same Locarno class.

Swiss francs.

Three months.

On the WIPO website, in the International Designs Bulletin.

What happens after registration?

Each designated Contracting Party has the opportunity to carry out a substantive examination. Now read paragraphs 23 to 37, and then answer the questions on the next page.

VIOLET

Again, please try to answer these questions from memory.

On what grounds specifically may a Contracting Party not refuse an international registration?

What is the time limit for a Contracting Party to notify the International Bureau of any refusals?

Can you appeal to WIPO in connection with any refusals?

What is the period of protection of an international registration of a design?

Where do you request renewals?

Do you have to request renewal in connection with each of the contracting parties?

Compare your answers with ours.

VIOLET

You should have got these answers.

Non-compliance with formal requirements.

Six months from publication on the WIPO website, or under the 1999 Act, 12 months where it is an Examining Office or where oppositions are possible.

No. You deal with the Office of the Contracting Party.

Five years, renewable in five-year terms in respect of each contracting party, up to the maximum provided for by the relevant local laws.

At the International Bureau.

No.

You should now have a reasonably clear overall picture of the system. Next, we will take a more detailed look at various aspects.

VIOLET

Guide to international registrations

Return to the page http://www.wipo.int/hague/en/general/.

On the left-hand menu, click on “Guide”. You should then see a page with lots of links to pdf documents.

Click on the “Part A: Introduction” pdf first. We also recommend that you print it out. Please read it carefully, then answer the questions.

Who may apply for international registration of an industrial design?

Under which Act may intergovernmental organizations become Contracting Parties?

Your client’s product is three-dimensional. What is the maximum number of views that a Contracting Party is entitled to demand?

VIOLET

Here are the answers. 1.

“Natural persons or legal entities having a real and effective industrial or commercial establishment, or a domicile, in at least one of the Contracting Parties to the Hague Agreement, or being a national of one of these Contracting Parties; or of a member State of an intergovernmental organization that is a Contracting Party.”

The 1999 Act.

Six.

You probably noticed that some of the rules concerning what Contracting Parties may or may not do are quite complex.

Now go to “Part B: the International Procedure”

Click on “Chapter 1: General” pdf. Again, you may like to print this document.

VIOLET

Please try to answer the questions from memory.

May you send handwritten letters to the Bureau?

What may not be sent by fax?

May you use your own forms?

When does a period expressed in years expire?

By what means may you pay fees?

You are the appointed representative for an international application. Does this mean that you are automatically considered to be the representative when an office of a contracting party raises an objection?

Now see how you got on.

VIOLET

Check your answers. 1.

No.

International applications containing a reproduction to be published in colour.

Yes, provided they have the same contents and format as the official ones.

In the relevant subsequent year, on the same day and month as the event from which the period started to run.

Debit to a current account with the Bureau Payment into the Swiss postal account or other specified accounts held by the Bureau Credit card online.

No.

The please go back to http://www.wipo.int/hague/en/guide/.

Click on the Chapter II: The International Procedureâ&#x20AC;? pdf. Again, you may find it easier to work with if you print it out.

VIOLET

Please read up to, and including Section 08, and then answer the questions. 1.

In connection with entitlement to file, what sorts of persons does “national” include?

Is it possible for two parties to file a joint application?

What is meant by unity of design?

Does the Bureau examine for the name of the creator of a design?

Your client’s design is a drawing of an eagle which he plans to use on the hilts of knives. What would you show at item 8 (apart from the Locarno classification)?

What happens if you included a description (item 9) which is more than 100 words long?

To which Act is the European Community a Contracting Party?

Is it possible to use an international registration of an industrial design as a basis for a priority claim elsewhere?

Your client wants to file specimens of the design. Under which Act is it possible to do this, and how many must you file?

Now look at the answers.

VIOLET

Here are the answers.

Both natural and legal persons.

Yes, provided they both qualify under the entitlement rules.

Generally, “two or more industrial designs included in the same application have to conform to the same creative concept”.

No, but it may be required by some Contracting Parties.

“Drawing to be used on knives” or something similar.

You have to pay an extra fee per word.

The 1999 Act.

Yes.

The 1999 Act. One specimen for the International Bureau and one for each designated national Office that has notified the Bureau that it wishes to receive copies of international registrations.

VIOLET

Contracting parties

Please go http://www.wipo.int/hague/en/guide/ again.

On the left-hand menu, click on “About members”.

Click on the pdf for “List of members”.

Take a look at the list now. It is updated as new countries and organisations join.

You can see that it excludes many commercially important countries, including China, Japan, South Korea (although North Korea is a member), Russia, Canada, the USA, Brazil and Mexico.

The fact that it excludes so many important industrialised countries is one of the factors that has affected its popularity. As we said at the beginning, at the time of writing, the international registration system for industrial designs is really not very popular.

However, the fact that the European Community joined at the beginning of 2008 may make it commercially more attractive.

VIOLET

Forms

Please go to http://www.wipo.int/hague/en/forms/.

Please click on form DM/1. Then print it out. Click back. Then click on form DM/1.INF. Again, please print this out.

Please read it now, and refer to the actual application form as you do so. As you will see, it gives more detail about aspects of the application covered briefly in the previous exercise. You will find that it includes a list of Locarno classes. You should remember this from the Gold Module. If not, make a note to go back and look at the Gold Module again when you have finished this one.

VIOLET

Electronic filing

Please go to http://www.wipo.int/hague/en/guide/.

Click on â&#x20AC;&#x153;E-filingâ&#x20AC;? on the left-hand menu. Please read the information, although as it is very short, there is no need to print it out.

Note that reproductions must be filed as either JPEGs or TIFFs, and be no larger than 2 megabytes.

And please also note that the printed representations of the designs should not exceed 16x16cm. If in doubt, print out the representation yourself before filing!

Powers of attorney must be filed as pdf documents.

VIOLET

Fees

Please go to http://www.wipo.int/hague/en/guide/.

Click on “Fees/Fee calculator” in the left-hand menu.

Please take a look at the current schedule of fees.

Then click on the individual fees, to see what sorts of payments are involved for the designated Parties.

Then go back and click on “Fee calculator”. If you wish, spend a little time experimenting with making entries. As you can see, you can use the same calculator in connection with renewals.

VIOLET

Please go back to your printout of Chapter II. Read to the end, and then answer the questions below.

What does â&#x20AC;&#x153;refusalâ&#x20AC;? mean under the Hague Agreement?

What information must a notification of refusal contain?

What is the minimum period of protection, including renewals, in Parties designated under the 1999 Act?

Which form do you use for notifying the change in ownership of an international registration?

Does the change of ownership have to be effective in all the Contracting Parties?

Does the renunciation of an international registration have to be effective in all the Contracting Parties?

There is no official form for renewals, but what is the unofficial one?

Must you renew for all the designs in the registration?

What is the grace period for late renewal?

VIOLET How did you get on? 1.

“Within the applicable refusal period… a designated Office indicate the grounds which be liable to lead to a refusal of protection.” The Office making the notification The number of the international registration The grounds on which the refusal is based, with reference to the relevant laws Details of any prior designs if those are the grounds on which the registration has been refused The designs to which the refusal relates, if not all of them Any applicable time limits The date of refusal.

15 years.

Form DM/2.

No. You can specify which ones.

No. But it does apply to all the designs included in the registration. If only some designs are involved, a limitation may be appropriate.

Form DM/4.

No – you may renew for all or just some.

Six months.

VIOLET

More forms

Now please go to http://www.wipo.int/hague/en/forms/ again. Please spend a little time now looking at the other forms you have just been reading about. Print them out if you wish.

The 1934 Act If all the parties designated in an application are designated under the 1934 Act, you need to use form DM/34.

Please go to http://www.wipo.int/hague/en/guide/, print out the information on the 1934 Act and read it now. This summarises the differences involved if the 1934 Act applies. Note in particular that the Contracting Parties cannot refuse an international registration under this Act.

VIOLET

The WIPO Bulletin Finally, we will look at the Bulletin.

Please go to http://www.wipo.int/hague/en/guide/. Click on “WIPO Bulletin”. A search page will open. There is no need to complete any of the fields. Simply click on “Search”. The records for the most recent publication will appear. Click on any of them to see the published information about the designs in question.

You are almost at the end of this module. As usual, review what you have learnt and make any notes before carrying on. Then try the quiz.

VIOLET

Test yourself

How many designs may you include in one international application?

Under the 1999 Act, what is the longest period for which you may request deferment?

What fees are payable in connection with an international application?

You read what WIPO believes the advantages of an international registration of an industrial design to be. Please write down, as far as you remember, what this summary is.

How long after the date of the international registration does the publication take place?

What sort of paper should you use for the reproductions accompanying an international application?

You are filing electronically. How do you file the reproductions?

What information is shown in the International Register?

Can you record a license of a design on the International Register?

Check your answers.

VIOLET

The answers 1.

Up to 100.

30 months from the filing date.

A basic fee A publication fee A standard or individual fee for each contracting party.

â&#x20AC;&#x153;The same result can be obtained by means of a single international registration, made in one language, on payment of a single set of fees, in one currency and with one Office.â&#x20AC;?

Usually six months, unless the applicant requests otherwise.

A4 paper, white and opaque.

As attachments to the electronic form.

All the date contained in the application, except for priority dates more than six months before the filing date Any reproduction The date of the international registration The number of the international registration The relevant class.

No.

PURPLE

Purple Module The Relationship between Registered Designs, Unregistered Design Right and Copyright

PURPLE

We recommend that you tackle this module towards the end of your study of this manual, as we have designed it to build on, and give an overview of, subjects discussed in earlier modules. In particular, you should already have worked through the Silver Module that deals with copyright. Please note that when we discuss copyright, we look only at copyright in the UK. The complexities of copyright law in other countries are outside the scope of this manual. We will also give you opportunities in this module to revise what you have learnt in other modules.

To complete this module, you will need The Copyright, Designs and Patents Act 1988 The Registered Designs Act 1949 as amended. Directive 98/71/EC of the European Parliament and of the Council of the 13 October 1998 on the legal protection of designs (â&#x20AC;&#x153;the Directiveâ&#x20AC;?).

When you have completed this module, you will have Read relevant parts of the CDPA Stated the advice you would give to a client about the grounds for suing where her rights are being infringed Made a table, briefly comparing registered and unregistered design rights Listed the advantages of registering a design. .

This module will take about half a day to complete.

PURPLE

Introduction

In this module, we take a brief overview of registered designs, unregistered design right and relevant aspects of copyright.

While you have been working through this manual, you have been reading various cases. You will have noticed that in many of them, it is not merely one aspect of intellectual property (for example, the infringement of a registered design) that is considered, but several aspects.

It is common, for example, that when someone makes an accusation of infringement of a registered design, they also accuse the alleged infringer of something else, such as design right infringement. Or perhaps, an accusation of design right infringement may be accompanied by an accusation of patent infringement.

The Designs Directive Article 16 This Article allows Member States to allow other forms of protection â&#x20AC;&#x201C; such as unfair competition laws or national unregistered design right - for designs.

Please read this Article now. We are likely to see further harmonisation of various laws relating to unfair competition in the future.

PURPLE

Article 17

This Article provides that registered designs may also be protected under national copyright laws.

Note that copyright laws are also likely to be harmonised at some stage â&#x20AC;&#x201C; but this is unlikely in the near future, although some aspects, including duration of rights, have been harmonised by a specific Directive.

Please read the Article now. Then make a note of what you think the relative advantages might be of each type of protection for designs.

Then compare your notes with ours, on the next page.

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We thought of these advantages in each type of right.

The principal advantage of a registered design is that it is a monopoly right. It protects the design owner against other people selling, for example, products bearing the design, even if they created the products independently, and were not copying the registered design. A Community registered design is a unitary right covering (at the time of writing) 27 Member States. It is generally also easier to defend rights in a registered right than an unregistered one. Copyright provides a much longer term of protection than design right – the duration of copyright is the lifetime of the author, plus 70 years, calculated from the 31 December of the year in which the author dies. The maximum term of protection under registered design right is 25 years. Many articles do not meet the definition of “artistic work” provided for by the Copyright, Designs and Patents Act 1988, and do not, therefore, qualify for copyright protection. Some of these may qualify for unregistered design right protection, but for a much shorter term than copyright, with licences of right being available in the final part of the term. However, many designs will be excluded from UK unregistered design right protection, either because of the “must-fit” or “must-match” exclusions, or because they do not meet the qualifying countries requirements. Community unregistered design right applies to products which could also be registered as Community designs, but the term of protection is very short. Again, it is a right to prevent copying, not a monopoly right. (We look at this in more detail in the Platinum Module.) Copyright comes into being automatically when a work is created – there are no associated costs of registration. (The same applies to unregistered design right, with a shorter protection period.)

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Articles 18, 19, 20 and 21

Article 18 provides for future revisions to the Directive, the other Articles provide for implementation, the date the Directive came into force, and for the fact that the Directive is addressed to all Member States.

Please read them now.

Under the original transitional provisions of the UK Copyright, Designs and Patents Act 1988, certain designs had some remaining copyright protection. This was a consequence of the old provisions of the Design Copyright Act 1968. However, functional designs ceased to have copyright on 1 August 1999.

Today, as a general rule, the law attempts to distinguish between copyright and design right.

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As we said on the previous page, the law makes an attempt to distinguish between original artistic works in which there is copyright and the existence of design right.

Have a quick look at the CDPA Sections 1 to 7. You will see that copyright is provided for various types of work by Sections 3 to 7. Now consider Section 4 artistic works - more carefully. This is where the interface with designs protection is likely to occur. Please note in particular “irrespective of artistic quality” Why do you think this is included? the definition of a graphic work – Section 4(2) the inclusion of a work of artistic craftsmanship

Mr Johnson has produced an engineering drawing of a gear pump. It shows two crosssections, two end views and a plan; it also gives the main dimensions. Does this drawing have copyright? The answer is on the next page.

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The answer is yes. It is a drawing, so it is an artistic work â&#x20AC;&#x201C; specifically, a graphic work. It does not have artistic merit, but that is immaterial.

Remember that here we are only talking about copyright in the UK. To remind yourself about what qualifies for design right protection, please look back at the Black Module if you wish.

Please look now at Section 236 of the CDPA.

This states that if there is both copyright and design right in the same work, an act which infringes the copyright does not infringe the design right. So if an article could infringe both design right and copyright (because it could be said to be a work of artistic craftsmanship) it will only be possible to enforce the copyright. The design right becomes irrelevant.

In effect, this means that if any of your clients find that their copyright is clearly being infringed, but design right could also apply, they must sue on the grounds of copyright infringement - not design right infringement.

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Next, please try this short exercise.

Your client had designed and marketed a folding table which appears to be a work of artistic craftsmanship. He asks if he can enforce UK unregistered design right against someone who copies it. What do you tell him?

Is this client better off using copyright or design protection? Please give a reason for your answer.

Please check your answers.

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The answers.

No - copyright probably prevails here. However, there could well be some argument as to whether the article in question is or is not a work of artistic craftsmanship. It may be advisable to plead design right infringement as well, in case the copyright claim fails.

Copyright. This gives protection for 70 years after his death, rather than ten years. The protection given is of the same type - that is, protection against copying.

Does all of this mean that, where artistic copyright exists under the provisions of the CDPA, design right cannot be enforced?

Please think about this for a moment - thereâ&#x20AC;&#x2122;s no need to write anything down.

Then read on.

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The answer is that there are some circumstances where copyright may exist, and design right infringement may also occur. The key point is that the act which infringes the design right must not be the same as the action which infringes the copyright.

We will try to clarify this.

Imagine that your client, Mr Joe Joseph, has produced a drawing which he intends as the design document for a functional item (that is, an item which would not, when created, be capable of copyright protection).

Under Section 9 of the CDPA, he owns copyright in the drawing. (You should already have noted that Section 4(1)(a) of the Act, which defines the works which qualify for copyright protection, specifically states that copyright subsists in a “graphic work... irrespective of artistic quality”.)

Mr Joseph also owns design right, under Section 213 of the CDPA - the design has been recorded in a design document.

Section 51(1) permits copyright to subsist in the design document or model, but states that there is no infringement by making articles to the design or by copying articles to the design (unless one is dealing with an artistic work or typeface). Copyright will normally exist if there is a design drawing, but it is not infringed (Section 51[1]) – and this means that the design right can be infringed by making articles to the design or by coping articles made to the design (Section 236 does not apply).

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Mr Joseph has now discovered that a former employee, Mr Kirk, has copied the drawing, and, subsequently, produced articles to the drawing.

What might you advise Mr Joseph to do? Please write down your ideas.

Then look at the answer on the next page.

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It is not an infringement of copyright to make articles to the drawing (Section 21). However, it is an infringement of copyright to copy the drawing. “Design” in Section 51 is limited to shape and configuration features, and excludes surface decoration (subsection 3). Therefore, copying the drawing is not “making an article to the design or copying an article to the design”, so Section 51 does not apply to prevent copying the drawing from being an act of copyright infringement.

And it is not an infringement of design right to copy the drawing by making another drawing – design right excludes surface decoration – Section 213 (3) (s).

Some points to note If Mr Joseph’s design had been for an artistic work, then making articles to the design would also constitute copyright infringement, not design right infringement – see Section 17(3). And if Mr Kirk had made a drawing from made a print from photographed Mr Joseph’s original drawing, any of these actions would constitute copyright infringement – and Section 236 would apply, and exclude design right infringement.

If Mr Joseph’s design had not been an artistic work (for example, it was for a crankshaft), then making articles to the design would not be copyright infringement. This is clear from CDPA Section 51.

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Section 51

Please read Section 51 CDPA now.

Now think about the effect that the absence of copyright for the design has on Mr Joseph’s design right. Then read on.

Unregistered design right can be enforced - Section 236.

Mr Joseph might have protected his design by registration. But if it were not registered, he would still have the right to prevent copying of the design under the Copyright, Designs and Patents Act 1988. (Remember the limitation on the term of protection for “exploited” artistic works imposed by Section 52.)

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Think about what you have just been learning about copyright and design infringement, and then try to answer the questions below. Please give your reasoning, with reference to the relevant sections of the Act.

What would the situation be if Mr Josephâ&#x20AC;&#x2122;s drawing recorded the design for a two-dimensional pattern, to be applied to a carpet? Is design right or copyright enforceable against infringers?

You have another client who is famous British bird sculptor. He creates from scratch a clay model for a unique sculpture to be created in bronze. What rights does your client have to prevent copying of the bronze sculpture?

Your sculptor client has created a clay model for a plastic figure which will be mass-produced and given away in cereal packets. Is design right or copyright enforceable against infringers?

Our answers are on the next page.

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Compare your answers with ours.

Section 52 would not exclude copying the drawing from being copyright infringement. (The pattern would be surface decoration and therefore not a “design” for the purposes of Section 51 subsection (3).) Any copy of the drawing would be an infringement of copyright (whether by making an identical drawing or by making a carpet with an identical pattern). No design right would subsist - Section 213(3)(c) – so Section 236 is irrelevant.

The model is a design document under Section 263(1). The model records or embodies a design for the sculpture, which is an artistic work. Therefore, Section 51 does not apply – so copyright remains enforceable – Section 51(1). Because the model records an original design consisting of shape and configuration features, design right also subsists – but Section 235 is applicable, so that the design right is not enforceable.

The mass-produced plastic figure is unlikely to be regarded as a sculpture, despite the fame of its creator as a sculptor. It is also unlikely to qualify as an artistic work, and Section 51 is therefore likely to apply, making copyright in the clay model unenforceable. Even if the figure is an artistic work, Section 52 is then likely to be applicable, reducing the copyright term - the figure is not specifically charged for, but is part of the overall product offer for the cereal as sold and arguably it is therefore sold or offered or exposed for sale or hire – Section 52(6)(b). So – design right subsists, and Section 236 probably does not operate in this case to make design unenforceable.

If you find this area confusing, it is worthwhile spending a little time now in reviewing it.

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Design right and registered designs

In some circumstances, the same articles may be protected by both unregistered design right and registered designs.

Please spend a few minutes now thinking about what you have learned about unregistered design right protection and registered designs and make notes of any points concerning the overlap that occur to you.

Then read on.

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The original purpose of design right was to ensure that the design of articles has some protection, whether or not the articles are functional. Now, it provides a shorter term of protection similar to copyright. It Exists automatically Is cheap to create Protects against copying, but not independent creation. A registered design gives A longer term of protection Monopoly rights Notice to third parties of its existence. Although it does cost money to register a design, and maintain that registration, it is usually easier and cheaper to enforce than unregistered design right, as there is no need to prove its existence and then to prove copying – see below. A functional design produced by one of your clients may be registrable. Features of the product which are dictated solely by the product’s technical function do not give rise to registrable design rights – Section 1C(1) of the Registered Designs Act 1949 as amended. However, most designs will have other features dictated by different factors, and these features may be enough to confer novelty and individual character – Section 1B(1).

A registered design may also qualify for unregistered design right protection. However, you should always draw to the attention of your clients the fact that registered rights are longer lasting and wider than design right. Don’t let them forget that if they want to prove that an unregistered design has been infringed, they have to show that it has been copied – and this can be difficult. Registered designs are exclusive rights – that is, registration grants the right to exclude others from making an article to similar designs. So it is not necessary to prove that a design has been copied to prove infringement of a registered design. (We look at infringement of UK registered designs in the Pink Module.) Another important advantage of the registered design is that the registration certificate is prima facie evidence of the ownership of the registered right. In an infringement action on an unregistered design right, the claimant first has to prove ownership of the right. This might not be easy (or even possible) particularly if there are poor records as to who made the design. For many businesses, keeping proper records is not a priority when making new designs. The effect of this overlap that is most likely to be of interest to your clients is that, if they are suing for infringement, they may be able to attack on the ground of infringement of both registered and unregistered rights.

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Comparison of registered and unregistered design rights

Think for a moment about the relative natures of registered and unregistered design rights - the scope of protection, what is protected, the disadvantages and the benefits.

Then try to make a table covering the above points. This need only be very short.

Then compare your table with ours on the next page.

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Registered Designs

A term of protection of up to 25 years from the date of the application to register the design A Community Registered Design covers 27 countries in one unitary right, requiring only one application. Fees are payable every five years to keep the registration in force To obtain protection, forms and supporting documents must be filed, together with fees The proprietor has a monopoly in the design that is registered There is no need for the proprietor to show that the design has been copied if they wish to take action to prevent infringement There is a public record of the rights that the proprietor is claiming There is a public record of the date from which the rights commence Features dictated solely by function or â&#x20AC;&#x153;must-fitâ&#x20AC;? features are excluded Covers ornamentation, including surface decoration No nationality qualification requirements as to the design proprietor Can be used to claim Convention Priority.

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Unregistered Design Right A term of protection usually of ten years in the UK from the end of the calendar year in which articles were first manufactured to the design (and not beyond 15 years from the end of the calendar year in which the design was first recorded) There is also a shorter unregistered Community Design Right, which again covers 27 countries. The last five years are subject to “licences of right” – anyone is free to copy, but they must pay reasonable royalties There are no legal costs to secure protection (unless the owner wishes to enforce rights) Functional designs are protected Protection is automatic - there are no formalities The proprietor does not have a monopoly in the design To succeed in an action for infringement, the proprietor must satisfy the court that the design has been copied There is no public record of the rights claimed by the proprietor There is no public record of the date from which the right commences “Must fit”, “must match” and “commonplace” features, and surface decoration are excluded. There are restrictive requirements as to the nationality or residence or the design right owner It cannot serve as a basis for foreign protection.

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Please donâ&#x20AC;&#x2122;t worry if your table didnâ&#x20AC;&#x2122;t look exactly like ours on the previous pages. However, if yours differed considerably, please make a note to discuss it with your trainer when you have finished this module. It may be that you would benefit from further help in understanding the relative scope of these rights.

Important note about ownership If there is unregistered design right in a design which is also registrable, then, if that design is to be subject of a registered design application - the applicant must be the owner of the unregistered right. In most instances, this will be the case.

To remind yourself about ownership of these rights, please look at The Copyright, Designs and Patents Act 1988, Section 215 The Registered Designs Act 1949 as amended, Section 2.

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Assignments Under Section 224 of the CDPA, where both unregistered design right and a corresponding registered design are both owned by the same person, then if the registered design is assigned, the design right is also presumed to be assigned. If this is not what a client wants, you must be careful to specify that one right is not transferred along with the other. Please note that although the owner of design right and a registered design are likely to be the same person, the owner of copyright may be different.

Please look at Sections 9, 10 and 11 of the CDPA. Then read on.

When you file a registered design application, the Registrar in the UK requires that the applicant for the registration owns any copyright in the design.

You and your clients should not normally find this a problem. However, if copyright in part of the design is owned by someone else, your client may have to disclaim registered rights in the part of the design in which he does not own copyright.

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You have almost reached the end of this module, and, probably, the end of the manual. While this manual has provided you with a basic introduction to both design right and registered designs, please donâ&#x20AC;&#x2122;t worry if you still have some questions. Complex aspects of these subjects are likely to become clear only with practice. It is also important to remember that unregistered design right is still a relatively new right and the law of registered designs has been substantially amended even more recently. We recommend that, when you have finished this module, you build on your learning by spending some time reading relevant sections of the various textbooks that have been written on the subjects. The list of sources for this manual will give you a starting point.

When you are ready, try the quiz.

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Test yourself

Your UK client, Mrs Kirsty Kay, a designer of small hand tools, believes that both her copyright and unregistered design right, in the same drawing, are being infringed. What, briefly, is your advice to her about her grounds for taking action?

Mrs Kay now believes that there is infringement of both her registered and unregistered rights in one of her designs. Again, very briefly, what do you advise her?

Which Section of i) the CDPA ii) the RDA defines who is the first owner of the rights?

True or false? The proprietor of a registered design right wants to assign it. The corresponding design right is automatically assigned with the registration.

Your client has asked you why, when she does not have to pay any fees for unregistered design right protection, she should pay to register a design. Assuming that her design qualifies for both types of protection, what reasons do you give her for registering a design?

Check your answers.

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The answers

If her copyright were being infringed by making articles, the same action cannot, under Section 236 of the CDPA, infringe her design right. If she wished to sue, she would have to do so on the grounds of copyright infringement. However, Section 51 would not apply (to provide for copyright to be infringed by making articles), only if the articles in question were artistic works. If, as is likely, the tools are not artistic works, Section 51 applies with the effect that making tools to the drawings is not an infringement of copyright. Mrs Kay will have to rely on unregistered design right. As there is no â&#x20AC;&#x153;double protectionâ&#x20AC;?, Section 236 is irrelevant.

In this case, she may sue for infringement of both the registered design and unregistered design right.

i) Section 215 ii) Section 2

True, unless it is made clear that the design right is not also transferred. Copyright, Designs and Patents Act 1988 Section 224.

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You could explain that the advantages of registering her design over relying on design right are a registered design offers broader scope of protection than unregistered design right - compare the rights granted under Section 7(1) of the RDA with those granted under Section 226(3) of the Copyright, Designs and Patents Act 1988 there is no need for your client to prove that a design has been copied when attempting to prove infringement of a registered design - not the case when trying to enforce design right there is an official record of the rights she claims in the design, so it will be easier to enforce the rights there is an official record that your client is the proprietor of the design competitors may be warned away from potential copying the term of protection granted by a registered design is 25 years (from the date of application) - that of design right is ten years (from the date that articles are first manufactured to the design) and the last five years are subject to â&#x20AC;&#x153;licences of rightâ&#x20AC;?.

Acknowledgements The author would like to thank the following Keith Farwell, Phillips and Leigh William Jones, IP21 Jessica Ho, Phillips and Leigh Nicholas Pope, CIPA Martin Hammler, Phillips and Leigh

Sources The OHIM website The IPO website The WIPO website The Community Designs Handbook (Thomson Sweet & Maxwell) Copinger and Skone James on Copyright (Thomson Sweet & Maxwell)

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AUTHOR: REBECCA CHAMBERS EDITORS: KEITH FARWELL AND WILLIAM JONES

Ensuring that trainee patent attorneys and trainee trade mark attorneys receive the training that they need can be a valuable but time-consuming task. Base your training programme on the CIPA Designs and Copyright Training Manual, and you have a structured framework of study already prepared. This manual is designed to give you a basic introduction to the law and practice relating to registered designs and unregistered design rights. Topics covered include: Community Registered Design Registered designs in the UK International Registration system and unregistered design right Introduction to literary and artistic copyright, mainly as it impacts on the work of patent and trade mark attorneys. Price ÂŁ75.00 For further information on other publications and courses visit:

I S B N 978-0-9039323-4-9

www.cipa.org.uk

780903 932349