DOCSLIB.ORG

Legal Review on Industrial Design Protection in Europe

Total Page：16

File Type：pdf, Size：1020Kb

Download full-text PDF Read full-text
Legal Review on Industrial Design Protection in Europe Legal review on industrial design protection in Europe Under the contract with the Directorate General Internal Market, Industry, Entrepreneurship and SMEs (MARKT2014/083/D) Legal review on industrial design protection in Europe Final Report - 15 April 2016 EN This study was carried out for the European Commission by For further information on this report, please contact: Mr. Jos Dumortier time.lex - information & technology law 35 rue du Congrès B-1000 Brussels - Belgium M: +32 477 33 82 96 [email protected] www.timelex.eu Core Team: Prof Jos Dumortier time.lex Davide Parrilli time.lex Prof Uma Suthersanen Queen Mary Intellectual Property Research Institute, Queen Mary, London Honorary Prof David Musker Queen Mary Intellectual Property Research Institute, Queen Mary, London; Consultant, Jenkins Patricia Ypma Spark Legal Network Peter McNally Spark Legal Network Jasmine Simpson Spark Legal Network Dr Lena Boucon Spark Legal Network Jo Steyaert Indiville Wouter Samyn Indiville Country Experts: Prof Clemens Appl Austria Vienna University of Economics and Business Susie P. Arnesen Denmark Løje, Arnesen & Meedom Prof Mario Franzosi Italy Avvocati Associati Franzosi Dal Negro Setti Prof Ignacio Garrote Spain Autonomous University of Madrid Prof Christophe Geiger, France CEIPI, University of Strasbourg Natalia Kapyrina Prof Pavel Koukal Czech Republic Masaryk University Dr Ewa Laskowska Poland Jagiellonian University Prof Marianne Levin Sweden Stockholm University Dr Vytautas Mizaras Lithuania Valiunas Ellex Mark Pohar Slovenia - Dr Ana Ramalho Portugal Maastricht University Allard Ringnalda Netherlands Klos cs Dr Dharamveer Singh Chauhan Luxembourg VP Fund Solutions (Luxembourg) SA Prof Guido Westkamp, Germany Queen Mary Intellectual Property Dr Marc Mimler Research Institute, Queen Mary, London DISCLAIMER The information and views set out in this report are those of the authors and do not necessarily reflect the official opinion of the Commission. The Commission does not guarantee the accuracy of the data included in this study. Neither the Commission nor any person acting on the Commission’s behalf may be held responsible for the use which may be made of the information contained therein. 2 EUROPEAN COMMISSION Directorate-General for Internal Market, Industry, Entrepreneurship and SMEs Unit: GROW-F5 – Intellectual Poperty abd Fight against Counterfeiting Contact: Tomás Eichenberg E-mail: [email protected] European Commission B-1049 Brussels 3 EUROPEAN COMMISSION Legal review on industrial design protection in Europe Directorate-General for Internal Market, Industry, Entrepreneurship and SMEs Unit: GROW-F5 – Intellectual Poperty abd Fight against Counterfeiting 2016 4 Europe Direct is a service to help you find answers to your questions about the European Union. Freephone number (*): 00 800 6 7 8 9 10 11 (*) The information given is free, as are most calls (though some operators, phone boxes or hotels may charge you). 5 EUROPEAN COMMISSION LEGAL NOTICE This document has been prepared for the European Commission however it reflects the views only of the authors, and the Commission cannot be held responsible for any use which may be made of the information contained therein. More information on the European Union is available on the Internet (http://www.europa.eu). Luxembourg: Publications Office of the European Union, 2016 ISBN 978-92-79-60092-0 doi: 10.2873/056970 © European Union, 2016 Reproduction is authorised provided the source is acknowledged. 6 EUROPEAN COMMISSION Contents 1. Introduction ............................................................................................................... 17 1.1 Purpose of the study ............................................................................................... 17 1.2 Methodology applied ............................................................................................... 18 1.2.1 Inception ........................................................................................................... 18 1.2.2 Desk research ................................................................................................... 20 1.2.3 Stakeholder surveys and interviews ............................................................... 20 1.2.4 Conclusions and recommendations ............................................................... 21 1.3 Analytical Framework, Literature Review, and Terminology ................................ 22 1.3.1 Analytical Framework ....................................................................................... 22 1.3.2 Literature review ............................................................................................... 22 1.3.3 Terminology used in this report ...................................................................... 23 2. Genesis of the current EU legal and institutional framework ................................. 24 2.1 Community design rationale .................................................................................. 24 2.2 Current EU legal framework ................................................................................... 25 2.3 Current EU and national institutional frameworks ................................................ 26 2.3.1 National registration fees ................................................................................. 26 2.3.2 Litigation/Enforcement Costs .......................................................................... 28 2.3.3 SMEs and transactional costs within national systems ................................ 29 2.3.4 Ease of filing ..................................................................................................... 31 2.3.5 National filing trends ........................................................................................ 32 2.3.6 RCD and IR/EU Fees ......................................................................................... 44 2.3.7 Recommendations ........................................................................................... 53 3. Key substantive issues within the EU design framework ...................................... 54 3.1 Definition of a design .............................................................................................. 54 3.2 Informed user, individual character, and product sector ..................................... 63 3.3 Visibility in relation to product and complex product .......................................... 71 3.4 Disclosure rules ...................................................................................................... 78 3.5 Designs solely dictated by technical function ...................................................... 82 3.6 Relationship between Design Law and copyright ................................................. 92 4. Key procedural issues within the EU design framework……………………...….... 98 4.1 Representation of a design ..................................................................................... 98 4.2 Invalidity proceedings ........................................................................................... 102 4.3 Ex parte injunction ................................................................................................ 105 4.4 Non-availability of certain actions in all Member States ..................................... 106 4.5 Ex ante examination of novelty and individual character ................................... 108 5. Other issues arising in design law ......................................................................... 110 5.1 Novelty ................................................................................................................... 110 5.2 Designs of interconnections ................................................................................ 112 5.3 Designs contrary to public policy/public morality .............................................. 114 7 EUROPEAN COMMISSION 5.4 Rights conferred by a design and limitations ..................................................... 115 5.5 Other forms of protection: national unregistered design right, unfair competition and passing off ............................................................................................................ 117 5.6 Multiple applications ............................................................................................. 118 5.7 Exhibition priority .................................................................................................. 119 5.8 Deferred publication .............................................................................................. 121 5.9 Recommended amendments to align with other legislative instruments ......... 122 6. Optimisation of the EU design regime ................................................................... 128 6.1 Three Dimensional (3D) Printing .......................................................................... 128 6.2 Spare Parts ............................................................................................................ 135 7. Conclusions and recommendations .......................................................................... 153 7.1 General conclusion on the EU design regime ..................................................... 153 7.2 Priority issues and adverse aspects .................................................................... 156 7.2.1 Design, appearance and visibility ................................................................ 157 7.2.2 Scope and criteria
Load more

Recommended publications
  • Generative Design Rationale: Beyond the Record and Replay Paradigm
    Knowledge Systems Laboratory December 1991 Technical Report KSL 92-59 Updated February 1993 Generative Design Rationale: Beyond the Record and Replay Paradigm by Thomas R. Gruber Daniel M. Russell To appear in a forthcoming collection on design rationale edited by Thomas Moran and John Carroll, to be published by Lawrence Erlbaum Associates. KNOWLEDGE SYSTEMS LABORATORY Computer Science Department Stanford University Stanford, California 94305 Generative Design Rationale: Beyond the Record and Replay Paradigm Thomas R. Gruber Daniel M. Russell Knowledge Systems Laboratory Systems Sciences Laboratory Stanford University Xerox Palo Alto Research Center 701 Welch Road, Building C 3333 Coyote Hill Road Palo Alto, CA 94304 Palo Alto, CA 94304 [email protected] [email protected] Updated February 1993 Abstract. Research in design rationale support must confront the fundamental questions of what kinds of design rationale information should be captured, and how rationales can be used to support engineering practice. This paper examines the kinds of information used in design rationale explanations, relating them to the kinds of computational services that can be provided. Implications for the design of software tools for design rationale support are given. The analysis predicts that the “record and replay” paradigm of structured note-taking tools (electronic notebooks, deliberation notes, decision histories) may be inadequate to the task. Instead, we argue for a generative approach in which design rationale explanations are constructed, in response to information requests, from background knowledge and information captured during design. Support services based on the generative paradigm, such as design dependency management and rationale by demonstration, will require more formal integration between the rationale knowledge capture tools and existing engineering software.
    [Show full text]
  • European Practice for Overseas Attorneys
    European Practice for Overseas Attorneys European patent law differs in some significant aspects from the law in other countries, in particular the United States. This note sets out some important features of European patent law to remember when preparing patent applications for Europe. For more detailed drafting tips, see our briefing note"Drafting Patents for Europe". Novelty Claiming priority According to European patent law, an invention is considered The European rules on claiming priority are in accordance new if it has not been made available to the public anywhere with the Paris Convention, so that priority can be claimed in the world before the priority date of the patent application. within one year of the first regular national filing in a An invention is "made available to the public" if knowledge Convention country. If a second priority application is filed of the claimed features of the invention was available to any and the European application is filed within one year of the person who was not under an obligation to keep the invention second but not the first application, priority is lost for matter confidential. which was in the first priority application, and it has the date of the European filing only. This most commonly occurs A novelty-destroying disclosure can be in any form, for when the second application is a Continuation-in-Part (CIP) example an oral description or a public display of the relevant application and can be very serious if there is a European features of the invention, as well as printed publications. (or PCT) application corresponding to the US parent, as this This means that public prior use of the invention anywhere in will be at least novelty-only prior art.
    [Show full text]
  • Argentina Argentine Argentinien Report Q169 in the Name of The
    Argentina Argentine Argentinien Report Q169 in the name of the Argentinean Group by Ernesto O'FARRELL and Gustavo P. GIAY Criminal law sanctions with regard to the infringement of intellectual property rights 2. Substantive Law 2.1 Penal sanctions have been in force since long before the TRIPS Treaty was adopted by Argentina. A special Law improving penal sanctions related with infringement of software has been enacted after TRIPS. 2.2 Regarding trademarks, a special intentional element is not necessary, because the Law presumes that dealers are expected to keep accurate records of their commercial opera- tions, and should be able to prove the source from which they obtained the infringing goods, so that the owner of the trademark may prosecute the party or parties responsible for the infringement. This point of view has been ratified by a quite recent Supreme Court decision in re Sandys Confezioni S.P.A. (S. 350-XXII, March 13, 1990). With respect to copyright and patents, the courts normally require that the culprit has had a reasonable opportunity to be aware of the rights protected that he has infringed, which is almost equivalent to the requirement of an intentional element. In general, the burden of proof has to be assumed by plaintiff, except, with respect to trademarks and patents, when the culprit refuses to give proof and information regarding: a) the name and address of whoever sold or deliver the infringing goods, when such transaction took place, as well as to exhibit the respective invoices; b) the amount of units manufactured or sold and their price, as well as to exhibit the sale invoices.
    [Show full text]
  • Design Patent Infringement: Post- Egyptian Goddess
    DESIGN PATENT INFRINGEMENT: POST- EGYPTIAN GODDESS Marta Kowalczyk* I. INTRODUCTION The United States Court of Appeals for the Federal Circuit overturned de- sign patent precedent in its en banc decision in Egyptian Goddess, Inc. v. Swisa Inc.1 Prior to Egyptian Goddess, courts had been applying a two-prong test to determine design patent infringement. Egyptian Goddess eliminated one of those prongs: the point of novelty test.2 The Federal Circuit in Egyptian God- dess instead only focused on one test, the ordinary observer test, to determine design patent infringement.3 The Federal Circuit not only held the ordinary observer test to be the sole test in determining design patent infringement but also modified this test.4 This recent development discusses the rejection of the point of novelty test and the modification of the ordinary observer test in Egyptian Goddess.5 Part II briefly overviews design patent law prior to Egyptian Goddess, focusing on the evolution of the two-prong test of design patent infringement. Part III discusses the facts and analysis of Egyptian Goddess. Part IV reviews case law post-Egyptian Goddess and comments on the effects of Egyptian Goddess on design patent infringement law. Part V provides concluding remarks on the future of design patent law post-Egyptian Goddess. II. DESIGN PATENT LAW PRE-EGYPTIAN GODDESS Prior to Egyptian Goddess, design patent holders were required to satisfy two separate tests in order to succeed in a design patent infringement claim: the ordinary-observer test and the point of novelty test. This Part discusses the framework of the aforementioned tests.
    [Show full text]
  • Digital Opportunity: a Review of Intellectual Property and Growth
    Digital Opportunity A Review of Intellectual Property and Growth An Independent Report by Professor Ian Hargreaves May 2011 Contents Page Foreword by Ian Hargreaves 01 Executive Summary 03 Chapter 1 Intellectual Property and Growth 10 Chapter 2 The Evidence Base 16 Chapter 3 The International Context 21 Chapter 4 Copyright Licensing: a Moment of Opportunity 26 Chapter 5 Copyright: Exceptions for the Digital Age 41 Chapter 6 Patents 53 Chapter 7 Designs 64 Chapter 8 Enforcement and Disputes 67 Chapter 9 SMEs and the IP Framework 86 Chapter 10 An Adaptive IP Framework 91 Chapter 11 Impact 97 Annex A Terms of Reference 101 Annex B Stakeholders Met during Review of IP and Growth 102 Annex C Call for Evidence Submissions 105 Annex D List of Supporting Documents 109 Foreword When the Prime Minister commissioned this review in November 2010, he did so in terms which some considered provocative. The Review was needed, the PM said, because of the risk that the current intellectual property framework might not be sufficiently well designed to promote innovation and growth in the UK economy. In the five months we have had to compile the Review, we have sought never to lose sight of David Cameron’s “exam question”. Could it be true that laws designed more than three centuries ago with the express purpose of creating economic incentives for innovation by protecting creators’ rights are today obstructing innovation and economic growth? The short answer is: yes. We have found that the UK’s intellectual property framework, especially with regard to copyright, is falling behind what is needed.
    [Show full text]
  • IP Federation Review 2020 REVIEW Formerly Trends and Events, ISSN 2046-3049
    IP Federation 1 | IP Federation Review 2020 REVIEW Formerly Trends and Events, ISSN 2046-3049 www.ipfederation.com DECEMBER | 2020 Improving the intellectual property framework to meet the needs of innovative industry for a century Rising to the challenge… IP Federation members have stepped up to the plate to share their most valuable IP to help combat COVID-19 | P10 100 Artificial Intelligence and years Intellectual Property Fourth industrial revolution technology and its interplay with IP Federation’s centenary year | P14 the IP system | P40 2 | IP Federation Review 2020 Advancing industry’s view on intellectual property since 1920 The IP Federation was founded in 1920 as the Trade Marks, Patents and Designs Federation (TMPDF) in order to coordinate the views of industry and commerce in the United Kingdom, and to make representations to the appropriate authorities on policy and practice in intellectual property (IP) matters. AIMS ACTIVITIES The IP Federation’s aim is to bring about The IP Federation initiates proposals and improvements in the protection afforded by follows developments at national, European intellectual property rights throughout the world, and international levels across all fields of to the advantage of inventors, manufacturers and intellectual property. It has a close relationship consumers alike. Today the Federation has over with the Confederation of British Industry 40 IP-intensive member companies operating (CBI) and provides professional input on in a wide range of sectors and product groups, intellectual property matters to the CBI, as among which are many of the largest companies well as representing it in certain meetings in the UK, as well as smaller companies.
    [Show full text]
  • Design Patent Claim Construction: Navigating Written Description
    Presenting a live 90-minute webinar with interactive Q&A Design Patent Claim Construction: Navigating Written Description, Ornamentality, Functionality and More Drafting Claims to Withstand Scrutiny and Avoiding Claim Limitation Attack THURSDAY, AUGUST 10, 2017 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific Today’s faculty features: Christopher V. Carani, Shareholder, McAndrews Held & Malloy, Chicago Robert S. Katz, Esq., Banner & Witcoff, Washington, D.C. Nathan B. Sabri, Partner, Morrison & Foerster, San Francisco The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10. Tips for Optimal Quality FOR LIVE EVENT ONLY Sound Quality If you are listening via your computer speakers, please note that the quality of your sound will vary depending on the speed and quality of your internet connection. If the sound quality is not satisfactory, you may listen via the phone: dial 1-866-819-0113 and enter your PIN when prompted. Otherwise, please send us a chat or e-mail [email protected] immediately so we can address the problem. If you dialed in and have any difficulties during the call, press *0 for assistance. Viewing Quality To maximize your screen, press the F11 key on your keyboard. To exit full screen, press the F11 key again. Continuing Education Credits FOR LIVE EVENT ONLY In order for us to process your continuing education credit, you must confirm your participation in this webinar by completing and submitting the Attendance Affirmation/Evaluation after the webinar.
    [Show full text]
  • A Mission Impossible? an Assessment of the Historical and Current Approaches Mauricio Troncoso
    Marquette Intellectual Property Law Review Volume 17 | Issue 2 Article 3 International Intellectual Property Scholars Series: European Union Patents: A Mission Impossible? An Assessment of the Historical and Current Approaches Mauricio Troncoso Follow this and additional works at: http://scholarship.law.marquette.edu/iplr Part of the Intellectual Property Commons Repository Citation Mauricio Troncoso, International Intellectual Property Scholars Series: European Union Patents: A Mission Impossible? An Assessment of the Historical and Current Approaches, 17 Intellectual Property L. Rev. 231 (2013). Available at: http://scholarship.law.marquette.edu/iplr/vol17/iss2/3 This International Intellectual Property Scholars Series is brought to you for free and open access by the Journals at Marquette Law Scholarly Commons. It has been accepted for inclusion in Marquette Intellectual Property Law Review by an authorized administrator of Marquette Law Scholarly Commons. For more information, please contact [email protected]. TRONCOSO FORMATTED FINAL (DO NOT DELETE) 5/24/2013 1:09 PM INTERNATIONAL INTELLECTUAL PROPERTY SCHOLARS SERIES* EUROPEAN UNION PATENTS: A MISSION IMPOSSIBLE? AN ASSESSMENT OF THE 1 HISTORICAL AND CURRENT APPROACHES MAURICIO TRONCOSO** I. INTRODUCTION .......................................................................................... 233 II. THE FIRST APPROACHES ........................................................................... 233 A. Original Design ............................................................................
    [Show full text]
  • Type Design for Typewriters: Olivetti by María Ramos Silva
    Type design for typewriters: Olivetti by María Ramos Silva Dissertation submitted in partial fulfilment of the requirements for the MA in Typeface Design Department of Typography & Graphic Communication University of Reading, United Kingdom September 2015 The word utopia is the most convenient way to sell off what one has not the will, ability, or courage to do. A dream seems like a dream until one begin to work on it. Only then it becomes a goal, which is something infinitely bigger.1 -- Adriano Olivetti. 1 Original text: ‘Il termine utopia è la maniera più comoda per liquidare quello che non si ha voglia, capacità, o coraggio di fare. Un sogno sembra un sogno fino a quando non si comincia da qualche parte, solo allora diventa un proposito, cio è qualcosa di infinitamente più grande.’ Source: fondazioneadrianolivetti.it. -- Abstract The history of the typewriter has been covered by writers and researchers. However, the interest shown in the origin of the machine has not revealed a further interest in one of the true reasons of its existence, the printed letters. The following pages try to bring some light on this part of the history of type design, typewriter typefaces. The research focused on a particular company, Olivetti, one of the most important typewriter manufacturers. The first two sections describe the context for the main topic. These introductory pages explain briefly the history of the typewriter and highlight the particular facts that led Olivetti on its way to success. The next section, ‘Typewriters and text composition’, creates a link between the historical background and the machine.
    [Show full text]
  • Patents, Trade Marks and Design Rights: Groundless Threats Law Commission Patents, Trade Marks and Design Rights: Groundless Threats Law Com No 346
    Patents, Trade Marks and Design Rights: Groundless Threats Law Commission Patents, Trade Marks and Design Rights: Groundless Threats Marks and Design Rights: Groundless Patents, Trade Law Com No 346 Law Com No 346 39750 Cm 8851 Cover.indd 1 04/04/2014 17:25 The Law Commission (LAW COM No 346) PATENTS, TRADE MARKS AND DESIGN RIGHTS: GROUNDLESS THREATS Presented to Parliament by the Lord Chancellor and Secretary of State for Justice by Command of Her Majesty April 2014 Cm 8851 © Crown copyright 2014 You may re-use this information (excluding logos) free of charge in any format or medium, under the terms of the Open Government Licence v.2. To view this licence visit www.nationalarchives.gov.uk/doc/open-government-licence/version/2/ or email [email protected] Where third party material has been identified, permission from the respective copyright holder must be sought. This publication is available at www.gov.uk/government/publications Print ISBN 9781474101974 Web ISBN 9781474101981 Printed in the UK by the Williams Lea Group on behalf of the Controller of Her Majesty’s Stationery Office ID 04041402 39750 04/14 Printed on paper containing 75% recycled fibre content minimum ii THE LAW COMMISSION The Law Commission was set up by the Law Commissions Act 1965 for the purpose of promoting the reform of the law. The Law Commissioners are: The Right Honourable Lord Justice Lloyd Jones, Chairman Professor Elizabeth Cooke David Hertzell Professor David Ormerod QC Nicholas Paines QC The Chief Executive of the Law Commission is Elaine Lorimer. The Law Commission is located at 1st Floor, Tower, 52 Queen Anne’s Gate, London SW1H 9AG.
    [Show full text]
  • Chapter 6: Design and Design Frameworks: Investing in KBC and Economic Performance
    323 | DESIGN AND DESIGN FRAMEWORKS: INVESTMENT IN KBC AND ECONOMIC PERFORMANCE CHAPTER 6. DESIGN AND DESIGN FRAMEWORKS: INVESTMENT IN KBC AND ECONOMIC PERFORMANCE This chapter addresses the nature and the economic impact of design by looking at design-related intellectual property and how businesses protect their knowledge based capital. The chapter reviews the nature and various definitions of design and how design-related IP, specifically registered designs, relates to other formal IP mechanisms such as patents, trademarks, and copyright. It looks at the primary areas of design activity in a subset of OECD countries and investigates the similarities and differences of the constituent design IP regimes as well as the various treaties governing international design IP regulation. The review continues with an examination of how design-related IP functions in comparison to and in conjunction with other formal and informal IP protection mechanisms and what factors motivate firms to choose and appropriate combinations of protection mechanisms. By examining historical patterns of design registrations in a variety of ways, this chapter identifies trends, at the national level, of how firms perceive the importance of design-related IP. Analysis of national origins of registrations in both the European Community and the United States provides an indicator of the activity of those countries’ businesses relative to their proximities to the markets. It explores the existence of possible alternative indicators for design activity and of industry-specific variations across the sample set. The chapter concludes with a review of input and output measures as stated in the limited set of studies that have endeavoured to establish or quantify the value and/or benefit of design and design-related IP.
    [Show full text]
  • The European Patent Convention, 3 Md
    Maryland Journal of International Law Volume 3 | Issue 2 Article 10 The urE opean Patent Convention Follow this and additional works at: http://digitalcommons.law.umaryland.edu/mjil Part of the International Law Commons, and the International Trade Commons Recommended Citation The European Patent Convention, 3 Md. J. Int'l L. 408 (1978). Available at: http://digitalcommons.law.umaryland.edu/mjil/vol3/iss2/10 This Notes & Comments is brought to you for free and open access by DigitalCommons@UM Carey Law. It has been accepted for inclusion in Maryland Journal of International Law by an authorized administrator of DigitalCommons@UM Carey Law. For more information, please contact [email protected]. THE EUROPEAN PATENT CONVENTION The European Patent Convention' (EPC) is an attempt to simplify European patent law. The Convention provides a procedure for securing a single, European patent,2 which has the effect of a national patent in the signatory nations designated in the application. Through this alternative to national procedures, widespread patent coverage should be easier to obtain. Require- patent, however, are rigorous and its ments for a European 3 attraction is primarily the consolidation of the grant procedures. The EPC establishes several organs to handle the various aspects of the patent application procedure. The European Patent Office (EPO), located in Munich, is the international equivalent of a national patent office. Its administrative divisions are the General Search Division, the Examining Division, and the Opposition Division. The Receiving Section is at The Hague. The first procedural step is the filing of an application at either a national patent office or directly with the EPO.4 The application may be in any of the three official languages (English, French, or German) and the applicant's choice becomes the language of the proceedings.5 The Receiving Section subjects the application to both a preliminary6 and a supplementary formal examination to determine whether it is in proper form and all fees are paid.
    [Show full text]