EU court asked to clarify unregistered design rights issues

The Intellectual Property Enterprise Court (IPEC), which forms part of the High Court of England and Wales, plans to ask the Court of Justice of the EU (CJEU) to confirm the date on which the novelty of a design is to be assessed for the purposes of determining its eligibility for protection as an unregistered Community design.

Florian Traub, an expert in intellectual property law at Pinsent Masons, the law firm behind Out-Law, said the answers provided by the CJEU will be of considerable interest to the design industry, particularly following Brexit.

"The CJEU's ruling will determine whether UK-based designers can benefit from unregistered Community designs when launching their products outside the EU, for example during the London Fashion Week, or whether benefiting from the protection will require first making the design available at an event in the EU27," Traub said.

EU law provides designers with scope to register the designs they create so that they can exercise a monopoly over how they are used. Designs must meet strict criteria to benefit from Community registered design right status, but designers that achieve that standard can obtain up to 25 years worth of rights, renewed at five year junctures.

Not all designs have to be registered to benefit from protection against copycats.

The owner of an unregistered design has the right to reproduce the design for commercial purposes by making a product to that design or by producing a design document recording the design for the purpose of enabling the product to be made.  Infringement of the unregistered design will occur when a third party copies that design.

In the UK there two forms of unregistered design right exist. The first covers the UK only, the second is the so-called Community unregistered design right, covering the whole of the EU.

The two forms of unregistered design right co-exist, although are not identical. In essence, UK design rights protect original, non-commonplace designs of the shape or configuration of products. Community design rights protect the appearance of the whole or part of a product resulting from the lines, contours, colours, shape, texture and/or materials of the product and/or its ornamentation.

A UK unregistered design right arises on the creation of the work. Community unregistered design right lasts for three years from the date on which the design is first made available to the public in the EU.

In a case concerning a dispute over the rights to designs of toys, the judge sitting at the IPEC in London has proposed two questions to ask the CJEU on unregistered Community designs. In its first question, it has suggested it will ask the CJEU to clarify what 'made available to the public' means in practice.

"For the protection of an unregistered Community design to come into being under [EU design regulation], by the design being made available to the public …, must an event of disclosure … take place within the geographical confines of the Community, or is it sufficient that the event, wherever it took place, was such that, in the normal course of business, the event could reasonably have become known to the circles specialised in the sector concerned, operating within the Community (assuming the design was not disclosed in confidence …)?" the IPEC has proposed to ask.

Under IPEC's plans, the CJEU will also be asked whether how the date for assessing the novelty of a design for which unregistered Community design protection is claimed should be calculated.

"Is the date … the date on which the unregistered Community design protection for the design came into being …, or alternatively the date on which the relevant event of disclosure of the design … could reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community (assuming that the design was not disclosed in confidence …), or alternatively some other, and if so, which date?" the IPEC has proposed to ask.

A design that is new and has individual character is eligible for unregistered Community design protection if it is "made available to the public in the manner provided for" in the EU's Design Regulation.

Under the legislation, a design is considered to be 'new' "if no identical design has been made available to the public". In the case of designs for which unregistered Community design protection is claimed, this means "before the date on which the design for which protection is claimed has first been made available to the public".

A design is said to have been 'made available to the public' if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before – in the case of unregistered designs – the date on which the design for which protection is claimed has first been made available to the public, "except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community".

The law provides that a design is not to be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.

Article 11 of the Design Regulation provides that a design that passes the new and individual character tests will be protected by an unregistered Community design right for three years starting from "the date on which the design was first made available to the public within the Community".

Under this article, a design is said to have been 'made available to the public within the Community' "if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the Community", subject to the confidentiality exception.