In the previous post w had took under consideration a recent case about Design protection , in which it was defined individuality as a main feature of the procedure for defying in a patent in order to protect a new project. The concept of individuality of the good is quite an interesting one, for the multiple layers that defines it inside the case law and the regulations itself. As reported by Annette Kur, Max Planck and Thomas Dreier in European Intellectual Property Law: Text, Cases and Materials:
“individual character denotes a qualitative step, i.e. the design must also differ to some extent from the available wealth of forms, with the relevant perspective for the assessment being that of an informed user”.
As we had said in the previous post this means that a good in order to be protected by the union patent needs to have anything particularly different from the standard model that is around and this had to be spotted by the eye of an average user.
“It is a common view that legal protection of industrial designs has to follow either a patent or a copyright approach.”
As Kur says (A. Kur “The Green Paper’s “Design Approach” – What’s wrong with it” E.I.P.R. 1993, 15(10), p.374), and we can find this to be true especially if we take under consideration European law, in which the requirements of novelty and of individuality are foreseen in order to give a patent that recognize that individuality and novelty so much to patent it. Saez explains this phenomenon referring to two basic values in design that merit protection:
“the value inherent in the creativity of the designer and the objective or ‘market’ value of the design.” (V.M. Saez “The Unregistered Community Design” E.I.P.R. 2002, 24(12) p. 585).
Former value falls under the protection of copyright and latter “[…] within a system of registration close to patents.” (ibid p.585). Jehoram on the other hand states, “Designs, of course, are quintessentially a subject for copyright protection […]” (H.C. Jehoram “The EC Green Paper on the Legal Protection of Industrial Design: Half Way Down the Right Track – A View from the Benelux” E.I.P.R. 1992, 14(3), p.76). Commission has chosen to reject abovementioned alternatives and have taken, as Kur 23 says, a “Design Approach” (A. Kur “The Green Paper’s “Design Approach” – What’s wrong with it” E.I.P.R. 1993, 15(10), p.376). That being said only new designs should be registered for the purposes of preventing monopolization of designs, which are known or widely used in the market. Furthermore requirement that designs must be new serves the purpose of preventing there-registration of designs for which the protection period is about to expire. For above-mentioned reasons an alternative “Design Approach” has been chosen. Now the 2002 regulation does not define novelty and individuality but even the limits of the law concept of design to take under consideration “a result of three elements:
• A functional improvement or technical innovation in the product;
• A creative contribution of aesthetic nature by the designer; and
• An investment by the manufacturer to develop the two preceding
Elements.” (Green Paper on the Legal Protection of Industrial Designs – 111/F/5131/91-EN Brussels, June 1991, para. 5.4.1. P.56).
In evaluating if, the novelty had been added to the design and if the requirement of individuality is present, we necessarily have to enquire about functionality or the improvement that had been assigned to the new project. Saying that this innovation cannot been translated in reality without an aesthetical representation, or contribution that suits the function ability of the product, and both of this passages had been putted together by an author (which creative freedom has we had seen is important in order to stabilize the grade of the possible intervention from scratch).
Then Article 4 of the Regulation provides the requirements for protection. Paragraph one of this article shortly states, “Design shall be protected by Community design to the extent that it is new and has individual character”. This creates twofold criteria that every design shall fulfill in order to benefit from protection under the Regulation. Every design has to be new and has to have individual character. It is a cumulative test thus if one of the criteria is not complied with design will not be protected. As said therefore just one of the two criteria missing is enough to stop the eventual protection. Additional requirements are set for designs that are “applied to or incorporated in a product which constitutes a component part of a complex product…” Such designs shall be protected only if they “remain visible during normal use” and themselves fulfill the requirements of being new. Therefore, Novelty and Individuality became so not only the main features of the good that needs to be put under protection, but even the limits of the protection. However, how would we define correctly those two criteria?
Article 5 of the Regulation defines the concept of novelty. Paragraph 1states that “design shall be considered to be new, if no identical design has been made available to the public”:
- In case of UCD before the date when design has first been made available to the public.
- In case of RCD before the date of filling the application or alternatively the date of claimed priority.
Paragraph two states “Designs shall be deemed to be identical if their features differ only in immaterial details”. Novelty requirement has been “…interpreted and applied in very different ways in the various countries.” 45 (Green Paper on the Legal Protection of Industrial Designs – 111/F/5131/91-EN Brussels, June 1991, para. 5.5.1.1. P.67) however it could be separated into two groups known as “Subjective novelty” and “Objective novelty”. “Subjective novelty” requires proof that design has not been copied from other designers work. 46 (W.T. Fryer “Design users suggest national law changes, EC approach and strategy: Federal Republic of Germany surveys on design protection” E.I.P.R. 1990, 12(10), p. 362) whereas, “Objective novelty” requires proof that design is not known (made available to the public) anywhere in the world. “Subjective novelty” grants a right to the design owner to prevent third parties from copying the design he or she has developed. If however, a similar design has been achieved independently and there is reason to believe that designer could have not known about the former design, both designs will be granted protection and will coexist. Some industries are very mature where design differences are slight or where designs are very much limited by the standardization, technical or physical restraints. In such areas, there is a high risk of creating two designs independently that are essentially the same. In such industries “Subjective novelty” would not preclude both designers to market their products and enjoy design protection, because “Subjective novelty” requires only showing that design has not been copied. Whereas under the “Objective novelty” test, exclusive rights to the design would be granted for one designer only. It thus would preclude even independently created designs from being used. Objective novelty” is difficult to apply in practice because it is so resource exhaustive. According to the theory, in order to determine whether a design is new, one has to compare it with all designs available in the world throughout the history. Commission stated in the Green Paper that “…- at the present stage of technology -, no way exists in which a national authority [nor European Community] 49 can establish whether a design is ‘new’ in the sense of ‘universal, objective novelty’”. The Commission rejected time and geographical area limitations finding them to be an “artificial solution” 52 to the problem. It proposed a new solution according to which the novelty will be tested against the knowledge of “specialists operating within the Community in the sector of the marketable goods to which the design is intended to be applied.” 53 This was further developed to its current wording: “known in the normal course of business to the circles specialized in the sector concerned, operating within the Community.” 54 As Horton states, “this is not strictly speaking a geographical limitation…” 55 Why is it so? The “experts”, whose opinion will be requested, as the Commission points out in the Green Paper, are specialists, designers, merchants, and manufacturers operating in the sector concerned. 56 Even though the “experts” have to operate in the Community their knowledge is not restricted territorially. Current advancements in the multimedia sector will certainly keep the trend of expanding their knowledge of foreign markets and thus the body of prior design. After establishing that “Objective novelty” test, limited to the knowledge of “experts” operating within the Community, has been the choice for the Regulation one has to analyze how this test is applied. Article 5 paragraph 2 defines that “designs shall be deemed to be identical if their features differ only in immaterial details” 65 consequently in practice the features of the design shall be compared by the “experts”. Designs
Shall pass novelty test either by being:
- Not known to the “experts” operating in the Community; or
- They present “…sufficient differences from known designs to Constitute a creative independent development.”
A design can have a short description up to 100 words to explain the elements visible in the representation. (Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, [2002] O.J. L3, Art. 36.1(c).). “A design can be presented in up to seven views.” 73 (M. Schlotelburg “The Community Design: First Experience with Registrations” E.I.P.R. 2003, 25(9), p.385.)A design can be exposed either in color or in black and white, in photograph or in drawing. Three-dimensional designs do not have to be shown from all sides. What method of representation is chosen will determine the scope of protection. As Schlotelburg points out, “applicants should be aware that the selection of the means for representing a design is equivalent to the drafting of the claims in a patent: including features means claiming them.”
Euro Case Law 