Designs

Introduction

Designs law is concerned with the appearance of articles, or features of them. The most important thing about designs is what they look like, although that simple proposition is lost in a jungle of legal verbiage: as Jacob J (as he then was) said of registered designs, ‘it takes longer to say than to see’.1

Not only does it take longer to say than to see, it can be said in a number of different ways. Designs can enjoy legal protection in no fewer than five ways, possibly simultaneously: by registration in the UK or the EC; under the law of copyright; since 1989 under the UK unregistered design right system; and finally by Community unregistered design right. But these different pieces of law have between them three different ideas of what should be protected, and the term of protection and against what the owner is protected also differ. Bently and Sherman describe the law as ‘multi-layered, complex and lacking in logic’: Jacob LJ called it ‘… a particularly abstruse branch of metaphysics.’2

Politically, this has been a particularly contentious area of law both domestically and within the European Union, and it is because of legislative efforts to deal with the various and diametrically opposed interests involved (in particular in the motor industry) that the law has reached its present stage of confusion. The only thing to be said in favour of what we have now is that it used to be much worse.

Students should look carefully at their syllabus. While you probably need to know of the existence of five systems of protection, you might be expected to have a detailed knowledge only of some of them. The external London University LLB, for example, demands detailed knowledge only of UK unregistered design right and copyright.

The registered designs system is tailor-made to protect designs, and now protects a wide range of them, following the most recent amendments to the legislation consequent upon the introduction of the Community design system. The involvement of copyright in this area is in many ways an historical anomaly: since 1988 it has been largely (but not completely) displaced by unregistered design right, another tailor-made regime but one based on very different principles from the registered system, though not entirely unlike copyright.

This chapter and those that follow deal mainly with UK and Community registered designs and unregistered design right, and do so in series – a parallel treatment would be impossibly complicated. Copyright is dismissed perfunctorily early on, but there is more information in the chapters on copyright. At least the substantive law of registered designs in the UK and EU is, in theory at any rate, the same, so it is unnecessary to deal in repetitive detail with Community Registered Designs.

The Registered Designs Acts

The Registered Designs Act 1949 succeeded earlier statutes which had established a regime of registration for a fairly narrow range of designs. The 1949 Act as originally enacted gave protection only to designs that were novel and original and had a high degree of eye-appeal. The Copyright, Designs and Patents Act 1988 extended the duration of protection from 15 to 25 years, removed the requirement for originality (which, being a lower hurdle than novelty, had little practical effect) and modified the eye appeal test slightly, but the scope of the Act remained relatively narrow.

The Registered Designs Act 1949 was extensively amended by the 1988 Act and then virtually rewritten in 2001 by the Registered Designs Regulations3, which implemented the EC Directive on the legal protection of industrial designs.4 There are therefore three rather different pieces of legislation, each going under the name of the Registered Designs Act 1949, and at present (until 2016) two of them could possibly have a bearing on the same problem. An unofficial consolidation is available on the UK IPO website, and the Statute Law Database5 enables users to look back through earlier versions – a particularly useful feature in the case of an Act amended this much.

The amended 1949 Act, Version 3, closely follows the wording of the Directive, to which little further reference need be made here. However, for designs already on the Register, the old rules about validity still apply, so tempting though it might be to disregard the pre-2001 version of the legislation, to do so would be wrong. Accordingly, where necessary, the provisions of the unamended legislation are covered in this text, although the assumption is made that while the validity of pre-2001 registrations remains a significant issue, the same is not true of infringements committed in that period.

The Copyright Act 1956

Copyright protection under the 1956 Act covered technical drawings as artistic works and did not require any artistic merit. Three-dimensional reproductions of the drawings would infringe the copyright provided the ‘lay recognition’ test was passed (s. 9(8)). An article made by copying a three dimensional article would infringe copyright in the underlying drawings, even though the copier had never seen the drawings. Copyright applied even where the designs were not capable of being registered, and lasted for the full copyright term.

Because the threshold for copyright protection is low, mundane engineering drawings received generous protection which extended (because of s. 9(8)) to articles made from them. In British Northrop Engineering v Texteam Blackburn6 Megarry J (him again!) held that drawings for machine parts were ‘plainly’ artistic works (plainly to a lawyer, perhaps, but less so to most ordinary people).

Copyright therefore came to be the primary means of protecting industrial designs. Registration under the Registered Designs Act 1949 cost money, lasted for a maximum of 15 years, and required a high level of eye-appeal and novelty (and also, as noted above, originality, though this confused the issue without making any substantive difference). Copyright was indiscriminate and long-lasting by comparison, and provisions in the 1956 Act designed to prevent double protection backfired, leaving a situation that the Whitford Committee7 described in 1977 as ‘bizarre’ - designs with eye-appeal got much less protection than mundane engineering drawings. Finally in British Leyland Motor Corp & Ors v Armstrong Patents Company Ltd & Ors 8 the House of Lords, drawing constructively on landlord and tenant law, excepted spare parts from this protection. The principle of non-derogation from grant put an end to the matter until the law could be changed.

Copyright and designs now

The Copyright, Designs and Patents Act 1988 set out to end this situation and to exclude copyright from the designs field. However, it did not do so by limiting the definition of artistic works, which one might imagine would have been a good place to start (engineering drawings could have been excluded from the definition, or a requirement for artistic quality inserted): rather, the government chose to smash holes in the protection given by copyright, creating exceptions in the form of what the Act calls ‘permitted acts.’

Before we consider those exceptions, let us pause to look at section 4(1) of the which tells us what is an artistic work. As well as graphic works, section 4(1)(a) tells us that sculptures are a type of artistic work, and the definition of graphic works includes etchings and engravings. All these types of artistic work are three-dimensional, even if the third dimension might be small, but it (or other statutes with similar language) has sufficed to protect what intellectual property lawyers do not call Frisbees9 but everyone else does.

Then, after dealing with works of architecture (section 4(1)(b)), the Act tells us that works of artistic craftsmanship are also a component of the category of artistic works. They might be hard to recognise from the cases, though the Supreme Court’s decision in Lucasfilm v Ainsworth10 does shed light on this difficult area, and the case illustrates well how copyright law might be recruited to protect three-dimensional articles which one would imagine were more aptly protected by tailor-made design laws.

Also before moving on to consider the relevant exceptions to copyright protection, pause at section 17(3) which tells us that a two-dimensional artistic work is ‘reproduced in [a] material form’ if it is converted into a three-dimensional form, and the other way round. The identical provision in the 1956 Act was considered by the House of Lords in LB (Plastics) v Swish Products11 where the defendant’s three-dimensional furniture infringed the plaintiffs’ copyright in their two-dimensional drawings.Section 51 limits what acts infringe copyright in a design document, essentially saying that there will no longer be three dimensional infringement of copyright in a two dimensional work. Only if the design document is a design for an artistic work (perhaps a preliminary drawing for a sculpture or item of pottery) will this exception not apply. Whether a document is a design document depends on the intention of the creator.

Section 52 limits copyright protection (if it has survived section 51) to 25 years (the same period, now, as registered protection) where the design has been exploited by an industrial process. This means 50 or more items or anything made in lengths (wallpapers and fabrics).12 The limitation, which is couched as a permitted act, applies only to the exclusive rights that are engaged when the design is applied industrially. The purpose of the legislation was to ensure that abstaining from registering a design did not confer on the owner longer protection than they would have had if they had registered (hence the limitation to 25 years).

So if the item of pottery mentioned in the previous paragraph was manufactured in numbers exceeding that maximum no copyright protection would remain. But the government has been persuaded that section 52 is disadvantageous to designers and also incompatible with the Directive, and provisions enabling it to be appealed were included in the Enterprise and Regulatory Reform Act 2013. They will probably come into force in 2014. It is not clear to me what has changed to make it no longer necessary to keep copyright and registered designs on the same footing.

Copyright protection does remain important for fabric designs (which can be registered under the amended 1949 Act if they meet the criteria, but which are not protected by unregistered design right, the scope of which expressly excludes surface decoration): see Designers Guild Ltd v Russell Williams (Textiles) Ltd.13

The Directive and the Regulation

As it did with other areas of intellectual property law, the European Community recognised from an early stage that the legal protection of designs could have a detrimental effect on free movement of goods. The working party that was set up in 1959 (along with working parties looking at patents and trade marks) eventually reported that differences in national laws (among six Member States) were too great to attempt harmonisation, but that there might be scope for a Community designs system to co-exist with the national ones.14 It was not until 1991 that the Commission followed this up with a green paper15, before which the Max Planck Institute had published a tentative draft Community design regulation16 to which the Commission’s proposals owed a great deal.

The approach taken in the Directive17 and Regulation18 which eventually came into operation in 2003 was very similar to that in the trade mark field: create a unitary registered design system for the whole Community, and impose the same substantive rules on national registered design systems. In principle, a design would be registrable (or not) on the same terms in all the Member States and as a Community registered design. They would receive the same protection for the same length of time. Designers would choose where to seek protection according to where they were active and what they could afford.

One feature distinguishes the Community design system from its elder trade mark cousin: the Community designs regulation grants a three-year period of automatic unregistered protection to supplement what can be obtained by registration. For many short-lived designs, three years is quite enough and the expense of registration is not justified.

The Hague Agreement

The Hague Agreement is a special arrangement under the Paris Convention, permitting international applications for registration of designs. There is no examination. Neither the UK nor the Republic of Ireland is a party (although the Benelux countries, France, Germany, Spain, Italy, Denmark, Poland, Bulgaria, Romania, Finland, Estonia, Latvia, Lithuania, Slovenia and Croatia among the EU Member States (with apologies for any I might have missed) are, along with Switzerland, the Holy See, Surinam and a many more, now totalling 61). The Agreement, for long of little importance, is now much more significant with 2,604 applications filed in 2012 containing 12,454 individual designs. The biggest filer was Swatch AG.

This recent growth of interest in the Agreement followed the adoption of the Geneva Act of on 2 July 1999. This makes the system more compatible with the registration systems in countries such as the UK, US and Japan, where the novelty of the design is examined before registration. It requires member states to examine international applications according to their own laws within six months after receipt, and allows countries which have an examination for novelty an additional six months.

The fee system is modified and publication of the design may be deferred for up to thirty months. Samples of the design, rather than graphic reproductions, may be filed.

The amended Agreement still requires primary legislation in the UK, which has not yet been forthcoming. The changes to the Registered Designs Act 1949 brought about as a result of the Directive could not have been extended to cover the Hague Agreement too, because of the limited powers of ministers to implement directives by secondary legislation under the European Communities Act 1972. However, because the EU is a member of the Hague Union, it is possible to secure registered design protection valid in the UK through a Hague application.

1Philips v Remington [1998] RPC 283 at 318.

3 SI No 3949/2001: see also the Registered Designs (Amendment) Rules 2001 (SI No 3950) and the Registered Designs Fees (Amendment) Rules 2001 (SI No 3951).

4 Directive 98/71/EC, OJ No L289 28.10.1998, P. 28, hereinafter the Directive.

5www.statutelaw.gov.uk.

6[1974] RPC 57.

7 The Report of the Committee to consider the Law on Copyright and Designs (Cmnd. 6732), 1977.

8 [1986] UKHL 7, [1986] AC 477.

9Frisbee is a registered trade mark, and therefore an adjective not a noun. The article concerned in the case, Wham-O Manufacturing v Lincoln [1985] RPC 127, was a throwing disc. The case was heard in New Zealand, where the law was much the same as in the UK. Hi Tech Autoparts v Towergate Two Ltd (Nos 1 and 2) [2002] FSR 254 and 270 (rubber car mats) provides a home-grown example.

10[2013] SC xxxx, confirming Mann J’s judgment [2009] FSR 103.

11[1979] RPC 551.

12The Copyright (Industrial Process and Excluded Articles) (No. 2) Order 1989, SI No 1070. Its predecessor, which was defective, was repealed before it came into operation. See Jules Rimet Cup Ltd. v The Football Association Ltd. [2007] EWHC 2376 (Ch)

13[2000] UKHL 58, 2000 WL 1720247, [2001] FSR 11, [2000] 1 WLR 2416, [2001] 1 All ER 700.

142143/IV/62, 17 December 1962.

15Legal Protection of Industrial Design, Working document of the Commission, III/F/5131/91-EN. How contentious this area of law has been is demonstrated by the status of this as a Working document: the Commissioners themselves wisely avoided discussing the subject.

16GRUR International, No. 8, 1990.

17European Parliament and Council Directive 98/71/EC on the legal protection of designs [1998] OJ L289/28.

18Council Regulation (EC) 6/2002 of 12 December 2001 on community designs [2002] OJ L 3/1.