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Registered designs - the content of the right

Right given by registration

The registered proprietor is granted the exclusive right to use not only the design, but also any design which does not produce on the informed user a different overall impression1. This replaces the old test, which gave exclusive rights over the design and any design not substantially from it. Obscure negative wording is evidently a necessary feature of registered design legislation. The purpose of these words is to make the boundaries of what constitutes an infringement fuzzy, so that the defendant’s article does not have to be identical for there to be an infringement – a feature found, in different ways, in all areas of intellectual property law.

Whether the new right is more extensive must be moot at present: of course, the wider range of designs that can be registered makes the exclusive right correspondingly wider to begin with.

The extent to which the impression given must be different was considered by the Court of Appeal in Procter & Gamble Co v Reckitt Benckiser (UK) Ltd2. Jacob LJ gave the judgment of the court, taking the view that infringement is avoided where the design of the allegedly infringing product gave a different overall impression – but different did not mean ‘clearly’ different (as the trial judge had thought). Article 6 and recital 14 of the Regulation differ: the recital says ‘the design clearly differs’ whereas the Article omits the word ‘clearly’. In The Procter & Gamble case Jacob J thought this significant, but in Dyson v Vax3 he acknowledged that it as ‘sloppy drafting’.4 The impression has to be made on the notional ‘informed user’, who would be taken to be ‘fairly familiar’ with design issues.

Who is the informed user? Two decisions of the General Court help us here. First, Case T-9/07 Grupo Promer Mon Graphic SA v OHIM5:

It must be found that the informed user is neither a manufacturer nor a seller of the products in which the designs at issue are intended to be incorporated or to which they are intended to be applied. The informed user is particularly observant and has some awareness of the state of the prior art, that is to say the previous designs relating to the product in question that had been disclosed on the date of filing of the contested design, or, as the case may be, on the date of priority claimed.

Second, Case T-153/08 Shenzhen Taiden v OHIM6:

46. With regard to the interpretation of the concept of informed user, the status of ‘user’ implies that the person concerned uses the product in which the design is incorporated, in accordance with the purpose for which that product is intended.

47. The qualifier ‘informed’ suggests in addition that, without being a designer or a technical expert, the user knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them.

However, contrary to what the applicant claims, that factor does not imply that the informed user is able to distinguish, beyond the experience gained by using the product concerned, the aspects of the appearance of the product which are dictated by the product's technical function from those which are arbitrary.

The informed user is reasonably discriminatory (‘a relatively high degree of attention’). This is not the same person as the average consumer who plays a part in trade mark law

Whether a design produces a different overall impression on the informed user is something that must be determined bearing in mind the degree of freedom of the designer in creating the design. Just as when considering whether a design has individual character, design freedom is an issue: where there is relatively little design freedom, the second designer must be allowed to come closer to the first designer’s work than in the case where there is more leeway7. In Procter & Gamble the Court of Appeal thought that protection for a striking novel product would be greater than for a product which was just a little bit different from its predecessors. In comparing designs, the court considered that there was no great need to take into account the imperfect recollection of the viewer, unlike the situation of comparing of trade marks – the test was ‘what would impress now’, not a ‘stick in the mind’ test.

The fact that the law requires consideration of the overall impression given by the designs in suit means that the question falls to be considered at a general rather than a specific level. The ‘overall impression’ of a registered design (as with an allegedly infringing product) has to be established with care, the generality to which the court is required to descend being that of the notional informed user.

At first instance in the Procter & Gamble case, the judge (Lewison J) expressed concerns that an infringer would be able to escape liability if the infringing article was so bad that it failed to give the same overall impression as the registered design. Jacob LJ was not so worried: if a poor quality imitation did not convey the same impression as the original, that was because of its own design merits.

The proprietor may choose to limit his or her exclusive rights when applying for registration. There may be a partial disclaimer as a result of this. In addition, the Registrar or Court may have ordered partial revocation of the mark, in which case naturally the exclusive rights will be narrower than they would otherwise be8.

Infringements

Anyone who does one of the acts which it is the exclusive right of the proprietor to do without consent will infringe9. There is nothing in the infringement test to deal with the question of designs which are similar to a registered design, as this is built into the exclusive right itself.

Monopoly protection

The protection given by registration is in the nature of a monopoly right. It makes no difference to the question of infringement if the infringer has never seen the design and was unaware of its registration. The Register is public (it can be searched free of charge on the Intellectual Property Office web site) and everyone is therefore deemed to know what is registered. However, an innocent infringer will not be liable to damages for his infringement (though an injunction may still be granted) if he can convince the court that he did not know and had no reason to believe that the design was registered10. The mere fact that the word ‘Registered’ (or an abbreviation) was applied to the article will not give him reason to believe it is registered unless the number of the registered design is also shown11.

The use of a design

Section 7(2) sets out a number of activities that are within the definition of using a design. It is, however, not an exhaustive list.

The expression includes making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or to which it is applied. It also includes stocking such products for these purposes.

Pre-registration infringements

Proceedings may not be taken against an infringement which pre-dates the issue of the registration certificate12. This is different from the position in patent law. However, unregistered design right (UK or Community) may have been infringed as well and an action may lie covering the period before the registration certificate issued.

Non-infringement

Permitted acts

The 2001 amendments introduced a list of acts which are permitted, notwithstanding the fact that the legislation ordinarily reserves them exclusively to the proprietor of the registered design13. These are lifted from the patent legislation and they cover:

  1. acts done privately and for non-commercial purposes;

  2. acts done for experimental purposes;

  3. acts of reproduction for teaching purposes or for making citations, provided that they are compatible with fair trade practice and do not unduly affect the normal exploitation of the design, and the source is mentioned;

  4. use of equipment on ships or aircraft registered in another country but temporarily in the UK;

  5. importation into the UK of spare parts or accessories for the purpose of repairing such foreign ships or aircraft; and

  6. carrying out repairs on such foreign ships and aircraft.

The proprietor’s rights in a registered design are exhausted when the product is put on the market in the EEA by the registered proprietor or with his consent. Nothing done after that will infringe the right in a registered design.

The notorious must-match problem is dealt with in Section 7A(5) which states that the right in a registered design of a component part which may be used for the purposes of a repair of a complex product so about restore its original appearance is not infringed by the use on a registered design for that purpose.

Invalidity

A design which did not qualify for registration, and should therefore have been refused in the first place, may be declared invalid if it has been registered14. This covers the following situations:

  1. the design does not fall within the definition of a design for the purposes of the Act;

  2. the design lacks novelty or individual character, is dictated by technical function or is contrary to public policy or morality;

  3. the design consists of the emblems mentioned in Schedule [A] 1 of the Act which may not be registered;

  4. the registered proprietor was not the proprietor of the design, if the proprietor of the design objects;

  5. the registration of the design involved using an earlier distinctive sign, and the holder of rights to that sign which includes the rights to prohibit such use of the sign in the UK, objects; and

  6. the design involves an unauthorised use of a copyright work, if the owner of the copyright objects.

The grounds for invalidity are not, however, retrospective. A design which was validly registered under the pre-2001 law will remain validly registered notwithstanding the fact that it could not be registered now. Given that the scope of what can be registered has generally speaking increased, such cases are likely to be fairly few and far between.

Except where the legislation is specific about who might apply for a declaration of invalidity, any person interested may do so. The Act deals with applications made to the Registrar,15 and the court16 also has power to rectify the register, including in particular the power to declare a registration partially invalid17.

If the Registrar is satisfied that the ground of invalidity specified in the application has been established in relation to the registration, she must make a declaration of invalidity or, where appropriate, a declaration of partial invalidity. Where a declaration of partial invalidity will be made, the Registrar is obliged to inform the registered proprietor of this fact, and the registered proprietor can then apply to the Registrar to modify the registration. This may include adding a partial disclaimer.

Where a registration is declared invalid, it will be treated as invalid from the date of registration or such other date as the Registrar may direct.

Cancellation

The proprietor of a registered design may apply to the Registrar for cancellation, which will take effect from the date of the Registrar’s decision or such other date as the Registrar may direct.

Unprotected features

The protection given by registration extends only to the features identified in the application as being novel. The reproduction of functional or must match features, which are left out of account when the design’s registrability is assessed, does not amount to an infringement.

Compulsory licensing

The old compulsory licensing provisions in the 1949 Act have been removed. They were not permitted by the Directive.

Licensing of right

Licences may be available of right if the Secretary of State has so ordered following a finding by the Competition Commission that the right is being used in a manner that is contrary to the public interest18.

Crown Use

In common with patents, the Crown is given extensive rights to use registered designs19. These are not dealt with in detail in this work.

Duration

Registration may last for a maximum of 25 years (increased by the 1988 Act from 15 years) made up of five renewable five year terms20. This remained unchanged in the 2001 amendment. The Act contains provisions to deal with late payment of renewal fees, restoration of lapsed rights and the position of acts performed during the period when a design had not been renewed.

Legal proceedings

Certificate of contested validity

If the validity of a registration has been contested in proceedings before the court (meaning in the case of registered designs the Patents Court or the Patents County Court, the only courts in the country that have first instance jurisdiction in registered designs matters) and the court has held the registration to be valid, it can certify this fact21. This entitles the proprietor of the design to be awarded solicitor and client costs in any subsequent proceedings before the court for infringement or cancellation of the registration of the design.

Groundless threats

As with patents22, where anyone threatens another with proceedings for infringement of a registered design, any person aggrieved may bring an action for a declaration that the threats are unjustified, an injunction against the threats being continued, and damages23. Note that the threatener may not even own the registered design (which makes it more likely that the threat is groundless) and the person aggrieved may not have received the threats (which could have been addressed to retailers or distributors of goods made or imported by the person aggrieved).

Invalidity

The validity of a registration can be challenged in the course of infringement proceedings, often in a counterclaim made by the defendant at the same time as filing a defence. Given the lack of a substantive pre-grant examination, this is the main way in which registered designs which conflict with earlier designs are controlled. Validity can also be the subject of separate proceedings, before the court or the Registrar.

Offences

Although there are at the time of writing no criminal offences associated with infringements of registered designs, or with dealings in infringing articles, there are a couple of areas where criminal offences may be committed in connection with registered designs. There are also proposals to introduce criminal offences relating to infringements: the government’s proposals met with unanimous opposition from intellectual property academics and practitioners (often the same people) but so convinced was it of the merits of its proposals that is continuing with them, in the Intellectual Property Bill it introduced in the 2012 Queen’s Speech. Readers should keep a close eye on developments.

Secrecy

Section 5 provides for the secrecy of certain defence-related designs. Failure to comply with a direction made under that section is an offence punishable by imprisonment (up to six months on summary conviction, 2 years on indictment) or a fine (the statutory maximum on summary conviction, unlimited on indictment) or both24.

Falsely representing a design as registered

It is also an offence for a person falsely to represent a design applied to any article sold by him as being registered25. An offence is also committed if an article is marked with the word ‘registered’ or anything else implying that the design is still registered when it has in fact expired26. The fines for these offences are however lower (level 3 and level 1 respectively) and no custodial sentence is provided for.

Duration

Registration may last for a maximum of 25 years (increased by the 1988 Act from 15 years) made up of five renewable five year terms27. This remained unchanged in the 2001 amendment. The Act contains provisions to deal with late payment of renewal fees, restoration of lapsed rights and the position of acts performed during the period when a design had not been renewed.

Legal proceedings

Certificate of contested validity

If the validity of a registration has been contested in proceedings before the court (meaning in the case of registered designs the Patents Court or the Patents County Court, the only courts in the country that have first instance jurisdiction in registered designs matters) and the court has held the registration to be valid, it can certify this fact28. This entitles the proprietor of the design to be awarded solicitor and client costs in any subsequent proceedings before the court for infringement or cancellation of the registration of the design.

Groundless threats

As with patents29, where anyone threatens another with proceedings for infringement of a registered design, any person aggrieved may bring an action for a declaration that the threats are unjustified, an injunction against the threats being continued, and damages30. Note that the threatener might not even own the registered design (which makes it more likely that the threat is groundless) and the person aggrieved need not themselves have received the threats (which could have been addressed to retailers or distributors of goods made or imported by the person aggrieved).

Invalidity

The validity of a registration can be challenged in the course of infringement proceedings, often in a counterclaim made by the defendant at the same time as filing a defence. Validity can also be the subject of separate proceedings, before the court or the Registrar.

1 Section 7(1).

2[2007] EWCA Civ 936.

3[2011] EWCA Civ 1206.

4The judge cited Alexander von Mühlendahl in Design Protection in Europe, 3rd Edn. (2009 at pp.232-3). The same applies to the identical wording in the Directive (Recital 13 and Art. 9).

5[2010] ECR II-0000. The Court of Justice (Case C-281/10P) later rejected an appeal brought by PepsiCo, the original opponent, although the appeal did not criticise the definition of the informed user.

6[2010] ECR II-0000

7 Section 7(3).

8 Section 7(4).

9 Section 7A(1).

10 Section 10.

11 About the offence of falsely representing a design as registered, see below, paragraph .

12Section 7(5).

13 Section 7A(2).

14 Section 11ZA. This is different from cancellation, which at the proprietor’s request is available under section 11: see paragraph .

15 Section 11ZB.

16 The High Court and any patents county court.

17 Section 20.

18Section 11A.

19Section 12 and Schedule 1.

20Section 8.

21Section 25.

22 Supra., paragraph Error: Reference source not found.

23Section 26.

24Section 33.

25Section 35(1).

26Section 35(2).

27Section 8.

28Section 25.

29 Supra., paragraph Error: Reference source not found.

30Section 26.

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