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Detailed Case Law Rev...
Registered Designs
Lecture: Registered Designs
What is the design?
RDA s.1 (2) “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 or materials of the product or its ornamentation.
(3) ‘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 typo graphic typefaces, but excluding
computer programs;
‘complex product’ means a product which is composed of multiple
components which can be replaced permitting disassembly and re-
assembly of the product.
Protection
Registered designs offer a 25-year protection from the date of filing the
design application.
The protection offered is exclusive – i.e., even designs arrived at
independently are not excluded from protection (c.f. unregistered
community designs).
Original proprietor of the
design RDA s.2
(1) The author is the original owner of the design.
(2) Unless created during employment, then it is the employer.
(3) Author is the person who creates it
Who can apply?
RDA s.3
Application for the registration of a design shall be made by the design
right owner.
Duration
RDA s.8(1) – 5 years from the date of the registration
Can be renewed and extended by 5 years (up to 25 years).
Subsistence
Criteria for deciding what qualifies for protection.
A registered design protects the appearance of the whole or part of a
product.
Product = industrial or handicraft item, other than a computer program.
OHIM Appeal Decision R 595/2012-3 – products does not
include living things, so you can’t obtain registered design
protection for heart shaped tomatoes for example.
Exclusion
Exclusions maintain public realms (footpaths that the public can
navigate between the protections).
There are four exclusions that apply to registered designs.
Function Exclusion
RDA 1(c)(1)
, A registered design shall not subsist in features of appearance of a
product which are solely dictated by the product’s technical function.
Philips v Remington C-299/99 – The shape was for functional
reasons, but other shapes were available for achieving the
same function. So called, “multiplicity of forms” test.
CeramTec v DOCERAM C-395/16 – if the designer only
considered the need for that product to fulfil its technical
function, and not any visual aspect of the design of the product,
then all of the features of the appearance of the product are
solely dictated by its technical function and a design registration
for the design of this product will be invalid.
This is the case even if other designs fulfilling the same
function exist.
Case C-684/21 – if the holder of a registered design also holds
registrations for numerous alternative designs, this does not on
its own provide an indication that a design is not dictated solely
by technical function.
Must fit Exclusion
RDA 1(c)(2) provides that a registered design shall not subsist in
features of appearance of a product which must necessarily be
reproduced in that exact form and dimensions so that the product can
be mechanically connected to, or placed in, around or against, another
product so that either product can perform its function.
i.e., interoperability of products should not be hindered by
designs, a good example is a plug.
An exception to this exclusion: modular products
RDA 1(c)(3)
s. 1(c)(2) does not prevent a registered design subsisting for a design
that for the purpose of multiple assembly or connection of mutually
interchangeable products within a modular system.
Not Visible Exclusion
RDA 1(b)(8)
Features are only considered new and to have individual character if
they remain visible during normal use of the complex product.
T-10/08, T-11/08 – only use from above and the side were
relevant to normal use, and design protection could not exist for
features which were not visible during normal use.
Immorality and Public
Order Exclusion RDA 1(d)
Masterman’s Design [1991] RPC 89 – The fact that the potentially
immoral feature are discrete in normal use was not an issue to be
considered. Design refused for Scotsman toy doll with genitals hidden
under kilt.
Hallelujah [1976] RPC 605 – mark must not be so insensitive to public
, opinion and cause many people offense.
Registration: novelty
and individual character
RDA 1B
A design shall be protected by a registered design if that design is new
and has individual character.
1B(2) a design is considered new if no identical design or no design
whose features differ only in immaterial details has been made available
to the public before the relevant date (c.f., priority date in patent law).
[i.e., nothing identical].
1B(3) a design is considered to have individual character if the overall
impression it produces on the informed user differs from that of any
design which has been made available to the public before the relevant
date (c.f., priority date in patent law). [i.e., nothing giving the same
overall impression].
Relevant Disclosure
Absolute Novelty: assessed at the worldwide level, if it has been made
available to the public anywhere in the world it is not new.
RDA 1B(5) provides that a design has been made available to the public
before the relevant date if:
(a) it has been published (whether following registration or
otherwise), exhibited, used in trade or otherwise disclosed
before that date; and
(b) the disclosure does not fall within subsection (6) below.
RDA 1B(6):
(a) if it could not reasonably have become known before the
relevant date in the normal course of business to persons
carrying on business in the geographical area comprising the
United Kingdom and the European Economic Area and
specialising in the sector concerned;
Green Lane Products v PMS Intl Group [2008] EWCA Civ 358 –
registered design right gave its owner a monopoly over any kind
of goods according to the design, it would be nonsensical to
consider validity only in relation to the field in which the right
was to be registered.
(b) if it was made to a person other than the designer, or any
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