In December 2015 and April 2016, two major amendments to the Polish Industrial Property Law (IPL) came into force. These amendments contain many key changes, in particular with regards to Polish national registered designs.
One of these important changes is the repeal of Article 116 of the IPL which prevented registered designs benefiting from copyright after their registered rights expired. This means that, following the repeal, design owners no longer have to choose between copyright or registered design rights to protect their designs.
Before the amendment
Article 116 provided that copyright protection did not apply to products:
- produced according to the specifications of a registered design applied for at the Polish Patent Office; and
- put on the market after the expiration of the relevant registered design.
In other words, the design was only protected under copyright during the registered design's registration period, that is, only for a period of 20 years following the application date of the registered design. After the registered design expired, the design was not eligible for copyright protection.
The old law allowed 'replicas' of registered designs to be manufactured immediately after the expiry of the registered design, whereas the manufacture of 'replicas' of designs that were not registered constituted copyright infringement.
The 'moral' rights of the design's author (for example to claim authorship and to be identified by name on the product) were, and continue to be, protected after the expiration of the design registration.
CJEU judgment in Flos v Semeraro
Initially, the abovementioned restriction contained in Article 116 was generally recognised by Polish legal doctrine as being compliant with EU law and, in particular, the EU Directive on the legal protection of designs (the Directive) on the basis that each Member State could determine the degree of copyright protection afforded in their jurisdiction. However, this approach changed in 2011 following Flos v Semeraro and, consequently, Article 116 of the IPL was repealed.
In this judgment the CJEU held that Article 17 of the Directive must be interpreted as precluding national legislation of a Member State which prevents copyright protection applying to a design which:
- entered the public domain before the date that the national legislation came into force;
- was protected by a now-expired design right registered in or in respect of that Member State; and
- otherwise meets all the requirements for copyright protection.
Moreover, the CJEU stated that Article 17 of the Directive must be interpreted as precluding national legislation of a Member State which, with regard to any third party who has manufactured or marketed products based on designs, for a substantial period of 10 years or more (or completely), prevents copyright protection of designs which:
- entered the public domain before the date that the national legislation came into force; and
- otherwise met all the requirements to be eligible for copyright protection.
Advantages and disadvantages of the repeal of Article 116
Although Article 116 has now been repealed, it arguably had some benefits, which are now lost. For example, it clarified the legal situation on the market (it made it easier to establish whether a product was protected or not) and it had a positive influence on competition as it prevented monopolisation of certain design-led product solutions.
On the other hand, Article 116 was an exception to the position in the EU which created inconsistency between Member States. It could also be argued that the discrimination of the works which qualified both for copyright and design protection and the limitation of their copyright protection only to the duration of the design registration right was unjustifiable.
Only time will tell whether this new regime, which affords designs stronger protection (by way of registered design rights and copyright), will in fact serve to support innovation and creativity in Poland.
 Flos SpA v Semeraro Casa e Famiglia SpA , C-168/09, 27 January 2011
 Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs