David Stone, Partner, Intellectual Property, Simmons & Simmons LLP
It is not very often that new IP rights are born – and even rarer that they should turn ten years old. This year, EU-wide design law celebrates that significant milestone, albeit without a cake and ten candles.
The birth itself was not an easy one. What was then the European Economic Community of only six member states had first looked at harmonising design law in 1959, with a working group report concluding that any attempt at harmonisation would be hopeless. The work of the companion working groups on patents and trademarks progressed more quickly, with the Community Trade Mark (CTM) coming into force in 1996.
But for the protection of the appearance of a product provided by design law, things moved more slowly, and it wasn’t until forty years later that the Designs Directive was adopted in 1998. The Directive, harmonizing the registered design law of the member states of the European Union (EU), was based on the recognition that a harmonized design registration system had become ever more important for businesses. The Directive’s primary aim was to provide a level playing field throughout member states of the EU, assisting the aims of a single EU market, by harmonising national substantive laws on registered designs.
Sitting alongside the harmonised national systems were two new pan-EU design rights created by the Council Regulation on Community designs in 2001. This companion legislation created 25-year Registered Community Designs (RCDs), filed at the Office of Harmonization in the Internal Market (OHIM), the EU trade marks and designs office and a short-term three year unregistered Community design right to protect high fashion designs. This two tier pan-EU system aims to cater to the needs of all industries.
The pan-EU rights were not intended to replace the national registration systems, and, indeed, businesses interested in trading in only one or two member states of the EU continue to file for national protection of their designs.
OHIM first accepted applications for Registered Community Designs (RCDs) in early 2003. Ten years on, there are 450,000 registered designs in force in the EU and a developing body of jurisprudence from superior courts to demonstrate the effectiveness of these new rights. Design protection is providing an increasing contribution to culture, economics and society in the EU.
Cost effective registration
Applicants for RCDs can benefit from the legal security of registration of their IP rights. RCD applications are subject to only limited formal examination, and no ex officio assessment of novelty. The application can be filed in any of the 24 official EU languages, and with one application and one payment it is increasingly simple, fast and economical to obtain a term of protection of up to 25 years. The RCD system also provides for the flexibility of multiple applications with a bulk discount for multiple designs in the same Locarno class – the international classification used for registering industrial designs– whether it is a whole spring season of footwear, or a multiplicity of designs for new shampoo packaging.
RCDs provide equivalent protection to national registered designs in all 28 EU member states (following Croatia’s accession to the EU on 1 July 2013). The value to businesses is clear: for entities trading in several EU member states, RCDs provide a cost-effective single registration.
Whilst typical times for registration ranged between three to six months in the early years of the system, last year, 2,659 same-day registrations were issued. RCD applications are now mostly filed electronically from two per cent of all applications in the first year to 81 per cent currently. Overall, some 75,000 design applications are filed across the EU each year.
RCDs can be obtained through a designation of the EU under the Hague system for the International Registration of Industrial Designs and can be the base filing for, or take advantage of, priority under theParis Convention for the Protection of Industrial Property both of which are administered by WIPO. Designers also have the advantage of a 12 month grace period from first publication in which to file their design – their own prior disclosure is not novelty destroying for any RCD application filed within the 12 month period. The grace period provides an opportunity for designers to commercialise their design, and to see if the design warrants registered protection.
Alongside RCDs, the unregistered Community design right provides a shorter three year period of protection against copying for seasonal or high fashion industries. As their name suggests, unregistered Community designs do not require any formality, but the right will only subsist if the design is first disclosed within the territory of the EU. Thus, a design first disclosed to the public in Buenos Aires or Delhi can never attract unregistered design protection in the EU.
Unlike the RCD, unregistered Community designs provide a more limited scope of rights – they only protect from copying. Even an identical work cannot infringe an unregistered Community design if it was independently created. Hence, some high fashion rights owners are choosing to register their designs as RCDs, to avoid having to prove disclosure in the EU and/or copying of their unregistered Community design right.
Like many national design systems, the EU-wide system works on the basis of world-wide novelty. However, the framers of the legislation were keen to avoid a situation where protection for an EU innovation was invalidated by an obscure (and, as was suggested at the time, fabricated) prior design. Thus, whilst any design disclosed anywhere in the world is considered by the informed user in assessing novelty, the informed user ignores any designs which could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating with the Community. This complex construction of words probably means no more than that obscure designs are excluded from the prior art.
Novelty is not examined when an RCD is filed – hence there are certainly designs on the register that are not valid. Third parties can apply to OHIM to invalidate RCDs (or raise invalidity as a counterclaim in enforcement proceedings) – the reality is that comparatively few RCD invalidity proceedings have been filed – just over 1,100 decided invalidity cases is a tiny fraction of the over 700,000 RCDs filed.
The EU-wide design system introduced a number of legal neologisms. For example, to infringe, a later design must create the same overall impression on the informed user as an earlier design right. The test is the flipside of part of the test for validity – to be valid, a design must create a different overall impression on the informed user than designs previously made available to the public. The ‘informed user’, a term which is central to many cases under the Regulation and Directive, was not defined in either. Helpfully, the Court of Justice in the PepsiCo case has established an approach to the ‘informed user’ to ensure that there is a correct balance between validity and enforceability. The informed user is more informed than the reasonably circumspect consumer in trademark matters, but is not as skilled as the person skilled in the art in patent law. Rather, the informed 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 shows a relatively high degree of attention when using them.
RCDs have a further advantage, in that they can be notified to customs authorities on an EU-wide basis. Rights owners have been creative with this opportunity – notifying not just RCDs for product shapes, but also for logos, CD covers, books and the like.
The next ten years
What do the next ten years hold for design rights in the EU?
One area in which further harmonization is required is the divergent protection for spare parts. The EU-wide legislation denies novelty to spare parts, or as the legislation puts it, component parts of complex products not visible whilst in normal use. Thus, invisible spare parts are not protected at the EU-wide level. This includes, for example, spark plugs and oil filters, but not hub-caps or steering wheels (all component parts of motor vehicles).
However, harmonization could not be agreed at member state level, so the EU’s member states were left with the option to provide protection for spare parts or not, but with the added stipulation that any movement had to be towards not providing protection. Thus, it is hoped, national law will gradually be harmonized, as member states move towards a common position. However, this has not occurred in practice in the last 10 years, and now requires amendments to the Directive to ensure a single market in spare parts.
One other area where further harmonization is required is in relation to technical designs. The EU regime excludes from protection design features “solely dictated by technical function”. At least two, and possibly more, interpretations of this expression have gained currency in EU courts and tribunals. The “multiplicity of forms” approach in effect asks if the technical function can be achieved by any other configuration: If it can, then the feature is not solely dictated by technical function, and protection is available. The competing “no aesthetic considerations” theory asks “in designing that feature, did the designer have anything in mind other than technical function?”. These two theories can lead to very different results: at this stage, it will require a decision of the Court of Justice to ensure that a single coherent interpretation is adopted for features of designs solely dictated by technical function.
But these are comparatively small quibbles in a system that appears to be working remarkably well. Designers are readily able to protect their designs across a territory housing over 500 million people, whether by registration, or reliance on the shorter unregistered right. Designers seeking to enforce their rights have not always done so without hiccups, but the regime has held together well.
Looking just for a moment beyond the boundaries of the EU, a good measure of the solutions for efficient design protection developed by the EU legislation are being proposed to form part of a new treaty currently under negotiation at WIPO. The draft Design Law Treaty aims at introducing simplified design registration procedures to the industrial design laws of WIPO member states. Work on this draft treaty has made good progress.
Now, where is that birthday cake?
PepsiCo Inc v GrupoPromer Mon Graphic SA (C-281/10P) was the first case to reach the EU’s highest court on the meaning of “individual character” in EU design law, the key part of the test for both validity and infringement. The case involved an application to OHIM for a declaration of invalidity in respect of an RCD for a ‘promotional item for games’ filed by PepsiCo. The design as filed showed three images of rappers, also called pogs or tazos. The Court of Justice established that the informed user is more informed than an average consumer but is not a sectoral expert from patent law. A sectoral expert will know too much and will be able to perceive every difference between two designs. For the sectoral expert, very many designs will be valid but very few will be infringed. For the average consumer, however, differences will not be noticed so few designs will be valid but those that are will be likely to be infringed. The Court of Justice opted for somewhere between these two extremes, presumably aiming to give a reasonable scope of protection to a reasonable number of designs. PepsiCo’s RCD was invalidated.