Surprisingly Complex of Design Law - Essay Example

The Existence of Five Systems of Protection renders Design Law surprisingly and unnecessarily complex In order to effectively understand and target the basis or the source of such a complexity as suggested in the essay topic, one needs to first understand that the term ‘design’ to a layman represents either an architectural plan or the sketch or drawing intended to be employed as a part of the final product, or simply an assortment of the elements of a particular item. For the purposes of intellectual property rights, however, a design is concerned with aspects of an item or with features applied to it, and is never concerned with the item itself.1 Apart from the definition attributed to this term, the variations pertaining to the different regimes for design law are effectively a manifestation of the diverse cultures and philosophies underlying the pedigree of Member States.2 However, the most tangible reason why the law for design protection is ambiguous, scattered and does not touch a unified, coherent base in today’s times, is due to the very fact that it combines aspects of form and functionality, simultaneously running parallel to those of expression, identification and instrumentality. Burdened with all these elements, it crosses the boundaries of being singularly categorized or molded into a single frame; thereby blending in and ultimately comprising characteristics usually identified with copyright, patents and even trademarks.3 Customary intellectual property regimes lack the creativity and flexibility to deal with this intersection of the earlier mentioned major branches of intellectual property. In the context of this essay, the five core systems (Registered Design Act 1949; Copyright, Designs and Patents Act 1988 governing unregistered design right; the Design Directive, and finally the Community Design Right under the European Council, which makes provisions for both unregistered and registered design right) formulated for design protection shall be briefly analyzed with a view to understanding the discrepancies in being able to effectively implement the laws therein, and the complexities therein; which have rendered design law ambiguous, scattered and a skeptical, risky subject to venture, without a touch of certainty. The Community Design Regulation being almost identical to the Design Directive, the focus shall be on the other three systems of design protection. In order to understand the complexities and the inconsistency in the laws to design protection, it is imperative that a brief comparative study be drawn between the two extremes which govern design law at present- the old system under the Registered Designs Act 1949 and the Design Directive 98/71/EC which was implemented by the Registered Designs Regulations 20014. The statutory basis for registered designs lies with the 1949 Registered Designs Act, which got amended thereafter by the Registered Designs Regulations in 2011. 5 As opposed to the Design Directive as formulated by the EC, in its current semblance, the registered design system is principally concerned with visually appealing rather than functional designs for articles, covering both two and three dimensional designs.6 An important point to note about the old law of registered designs is that they brought only the visual aspects of articles under the wing of protection. Though it sounds fallacious and has criticized by many as it so happened in the case Re Littlewood’s Pools7, the Registered Designs simply scraped the surface of design protection and acceptance only in terms of what appealed to the eye, and had a separate existence than that of the article it had to be applied to.8 One can see that the Design Directive in stark contrast, is broader is perspective and does not mandate such registration of design in respect of every specific item or group of items.9 Yet again, the Registered Designs Act 1949 under section 1(5) makes provisions for excluding from registration designs for articles of a ‘primarily literary or artistic character’, stating that they are mainly covered under copyright law. Whereas the Design Directive in its approach has been flexible by incorporating everything under its wing ranging from literary and artistic works to character merchandising, albeit remaining silent on the registrability of interiors of products.10 There seems to be an apparent consensus on the ‘must match’ exception under mandate 1 (1) (b) of the RDA 1949 and the ‘must fit’ exception under the Directive. Nevertheless it needs to be understood that the former excludes the registrability of a design to the extent that it focuses on the aesthetic interdependence of component features; and the latter emphasizes a shade more on the mechanical connections rather than just the visual components of the article.11 The rationale behind this under the RDA 1949 was to promote competition in the spare- parts market, so as to reduce monopoly and now allow the title-holder or the author of the design to control the strings of the market by producing the replacement parts. This again, was only for the protection of ‘truly aesthetic, stand alone designs’. 12 The justification behind the exception under the Directive is to authorize the interoperability of products manufactured differently by not granting protection to the design of mechanical fittings.13 This very rule of exception seems to create a divide between both the systems for the RDA 1949 appears to be replete in its content and effectiveness when it comes to governing the arena of spare-parts, whereas it is a glaring reality that under the Directive the law as to spare parts still remains undecided on a coherent, unified basis, resulting in the Member States retaining their respective domestic provisions on the same. The only relaxation allowed in the law is the liberty granted to Member States to merely initiate changes in the abovementioned provisions, provided the changes have the effect of liberalizing the market for spare parts.14 Since the law is still not decided on this front and the lack of coherence on the spare-parts issue is likely to unsettle and dethrone the founding principle of the EC which is essentially freedom of movement of goods.15It cannot be emphasized sufficiently that the excessive and unnecessary focus on the visual appearance of a design under the RDA 1949, does away with the actual creativity and content of a design. The old system disregards the possibility that ‘appeal factor’ is widely subjective and what seems unattractive on the surface might have unique features and efficient purpose, which should be made a core purpose of designs, as wisely accepted and adopted by the new laws under the Directive. It increases the chances of bringing in more individuals under its wing, thereby increasing the intellectual pool and enhanced, healthy competition which does not inherently incorporate elements of bias. The Copyright, Designs and Patents Act 1988 which came about as a reform to the old UK based Registered Designs Act 1949 and became a clear necessity by way of the famous case British Leyland Motor Corp. Ltd. Vs. Armstrong Patents Co. Ltd;16 sought to protect unregistered functional designs, and was more in tune with the Design Directive of EU; with a marked detour from the ‘eye appeal’ factor the old UK system so staunchly adhered to. Nonetheless, in pursuance of its stringent need for originality or novelty, the Act itself limits the scope of section 213 (4) by allowing nothing else except the specific design field in question, to ­determine the degree of originality of a design to be protected.17 A very recent authority on this account is the Landor and Hawa International Ltd. vs. Azure Designs Ltd.(CA) 18 case which talks about a constricted narrow, interpretation of section 213 (3) (a) of the Act.19 However, this has the danger of being vague and inaccurate, for design is no more an exclusive, separate field of creativity anymore. It is now an integral part of almost everything, and to disregard its connectivity to a broad arena while deciding the novelty in one might result in the possibility of overlooking potential designs worth protecting. In the light of failure of the design owner to meet the requirements of the Directive or the RDA 1949, he can obtain the same under this unregistered system of UK, provided the specified design fits within one of the nine categories of “works” enumerated by the Act; and secondly, it must qualify as original.20 Though unregistered designs may not receive the same degree of protection as copyrights or registered designs, they are easier to obtain than having to fulfill the stringent requirements of copyright protection, given that UK is the only country which allows for such protection via an unregistered designs protection system.21 One may assume that the much discussed EU Directive has come up as a perfect solution to the issue of designs protection given its harmonizing principles; however it is to be noted that though it integrates the salient features of the national laws and covers central issues; does not intend to harmonize procedures relating to registration, renewal, invalidation;22 which leaves the core issues to be decided by the respective Member States, which on the face of it seems an incongruous, indeterminate, tiresome process. Also, the Directive in adherence to the laws of most Member States has excluded from the design protection rights; the technical aspects of a design [Article 7(1)], being considered for patent protection. In doing so, it has inadvertently left many questions unrequited23; one of them being the exclusion of only purely functional designs which goes against the theme of the Directive which creates no barrier between aesthetics and functional designs.24 Event the ‘must fit’ exception under the Directive fails in clarity as there is a possibility that this exception might not apply to dimensions of component parts which are dictated by their need to fit into complex products.25 There is obscurity in interpreting the provision under the Directive which states that the applicant or the holder of the right must be entitled to apply for it under the laws of the Member State concerned [ Article 11 (1) (c )]. 26 Though the Directive provides protection for improper use of badges, emblems, etc. [Article 11 (2) (c)], it does not expressly confer a priority right where other rights exist. It particularly does not confer a right of refusal where there is an earlier unregistered design right and the use of the design applied could be prevented by the owner of the unregistered design right.27 It is quite unfortunate that despite its flexibility and effectiveness in various aspects, the Directive for a considerably long time could not reach an actual consensus on the issue of protection for spare parts, result being it settled down for a freeze-plus compromise [Article 14].28 In the light of the discrepancies that might crop up owing to the previous systems, one can resort to a fairly new design system known as the Community Design Regulation also introduced by the European Union which paves the way for both registered as well as unregistered designs. Unregistered designs though having their benefits are suitable for short-term products for a considerably lesser period of time. If the owner seeks an economical, simple procedure of comprehensive protection, he should resort to the registered Community design. It also has its own share of demerits in the sense that it will not protect constituent parts that lose their identity once integrated into composite products or designs primarily reflecting the utility of the product.29 Since there are numerous systems under which to obtain protection for designs, a major problem that arises is the need for a universal procedure, which being less cumbersome, is also economical and designer friendly. Till a definite stand is taken on this issue, design owners should weigh the pros and cons of seeking protection under a particular regime. This eventually calls for a cost-benefit analysis of the requirements prior to effectuating the procedure, and the resulting costs needed to be taken care of, as well as the benefits as a consequence of the same. Apart from that questions like renewal which have totally been disregarded in the scenario, can be addressed according to the newly formulate Regulatory Improvement Bill, 200830 of New Zealand which protects the designs of owners who have failed to pay a renewal fee. . BIBLIOGRAPHY Books:- Tritton, Guy. Intellectual Property in Europe. 2nd Edition. 2002. Sweet & Maxwell. London. Bently, Lionel. Sherman, Brad. Intellectual Property Law. 1st Edition. 2001. Oxford University Press, New York. Torremans, Paul. Intellectual Property Law. 5th Edition. 2008. Oxford University Press. New York. Katherine, Colston. Kirsty, Middleton. Modern Intellectual Property Law. 2nd Edition. 2005. Cavendish Publishing Ltd. UK. Web Sources:- Barrera, Maria Helena. “Design Law: Protecting a Paradox”. n.p. Web 12 March 2010 http://www.jus.unitn.it/cardozo/review/Business/Barrera1.html Watson, Robert. “Design Protection for Spare Parts in the EU.” Mewburn Ellis LLP. February 2006. Web 12 March 2010 http://www.aipla.org/Content/Microsites150/Industrial_Designs/Industrial_Designs_Articles_and_Presentations/Spare_Parts_in_Europe.pdf Cooper, Rosana. “Intellectual Property-Copyright Infringement- Design Rights”. Web 13 March 2010 http://ezinearticles.com/?Intellectual-Property-%96-Copyright-Infringement-%96-Design-Rights&id=261045 “U.S Mission to the European Union.” Web 13 March 2010 http://www.buyusa.gov/europeanunion/ipr_designs.html “New Law will allow lapsed design registrations to be restored.” Web 13 March 2010 http://www.ajpark.com/news/2008/10/new_law_will_allow_lapsed_design_registrations_to_be_restored.php Articles:- Pruetz, Erica. “Protecting Car Design Internationally: A Comparison of British and American Design Laws”. 24 Loy. L.A. Intl and Comp. L Rev. n. p. 2002 Cases:- Re Littlewood’s Pools [(1949) 66 RPC 309] British Leyland Motor Corp. vs. Armstrong Patents Co. Ltd. [1986] I 850 All ER Word count: 2264 excluding the title, bibliography and footnotes Read More