What does the new Community Design Right legislation mean for designers?
The Community Design Right is already upon us. But will this new regulation mean more rights and accessibility for designers or simply more complications and expense?
The European regulation is the product of years of deliberation by the commission over how to protect intellectual property rights in design. The regulation was heavily influenced by UK legislation, but there are some important differences that are going to have an impact on designers who want to protect their works in the UK and the EC.
There are now two new community-wide rights available to designers. There is a registered right renewable up to 25 years (which is the same as the UK right in terms of length) and an unregistered right lasting three years (whereas the UK right lasts up to 15 years from design/10 years from marketing).
The new unregistered right came into existence in March this year. The unregistered right arises automatically when the design is first marketed in the EC. In order to gain a registered design right, the prospective rights owner must make an application to the Office for the Harmonisation of the Internal Markets in Alicante. Registrations cannot be made until implementation regulations are finalised and the first registrations are therefore not expected until spring 2003.
The main requirements for protection (for both the registered and unregistered rights) are as follows:
A design is defined as, "the appearance of a product resulting from the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation". The important inclusions are colour and ornamentation, which are not in the old UK protection. This considerably widens the protection available to designers and is a welcome change.
Products are defined as "any industrial or handicraft item, including ... parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces".
This definition is wider than that under the old UK legislation as it includes new aspects such as packaging. This extra level of protection may not be a bad thing for brand owners.
The novelty requirement ensures that only new designs are entitled to the protection. A design must not be identical to one that has already been made available to the public. Small differences in design may allow circumvention of this requirement, but it is important to remember that it is the appearance of the design as a whole that is the crucial factor.
This requirement dovetails with that of novelty and specifies that designs must create an individual overall impression on the informed user from anything else that has been made available to the public. This assessment is stated to take into account the degree of freedom available to the designer.
Under the regulation, features of appearance can not be solely dictated by functionality in order foi them to be protectable. This ensures that where , design must be carried out in that way for reason; of functionality, the designer cannot gain exclusive use of the only way of designing such an item. It is thought that this will be rare.
The registered right confers the exclusive right to use the design, however, the unregistered right only confers exclusivity in respect that no other party may use a copy of that design.
There are advantages to the new system but there are also drawbacks:
The problem of how to protect the component parts of complex designs has long been a thorn it the side of the development of UK and European Design Right Law. The car manufacturing industry and independent spare parts suppliers both lobbied long and hard over this point in the struggle for control of the vehicle spare parts industry.
The result is a confusing fudge. Component parts may be protected as long as they remain ‘visible during normal use’. This may lead to rather inconsistent and illogical regime in this respect. Not only that, but the regulation is currently not applicable to components of complex products which are used for the repair of that product. The vehicle spare parts industry therefore remains subject to national design rights law until the regulation is amended.
Another question remains - is it a good idea to run community-wide rights in tandem with the pre existing national rights? As it stands there are now seven possible ways of protecting designs in the UK (two European design rights, two UK design rights passing off, trade marks and also copyright).
The added cost and complication of the new regulations may not be to the benefit of SMEs. Design companies might be better served if the national design legislation was scrapped and full reliance was placed on the regulation. But once the European system's teething problems are resolved it may be that the introduction of the new pan-European rights is to everyone's benefit.
First published in the December 2002 issue of Brand Strategy.