Legally Interesting Changes

Legally Interesting Changes Legally Interesting Changes 1. Visibility 2. Technical Function 3. Indication of Product 4. Copyright for designs 5. Cultural Heritage 6. Conflict with prior designs Visibility in Use Legal Review: "The Design Directive should remove the confusion that has arisen with the national courts' interpretation of design with the visibility criterion" (recommendation: require visibility) p60. Visibility Proposals (Directive Version) Council Parliament (18) While design features need to be visible (18) Apart from being shown visibly in an to benefit from design protection, it is not application, design features do not need to necessary for those features to be visible atbe visible at any particular time or in any all times or in a particular situation in order particular situation in order to benefit from to qualify for such protection; as an design protection. As an exception to this exception to this principle, principle, Visibility - in Use and Otherwise: CJEU  T-494/12 Biscuits Poult v OHIM "since only the visible characteristics of the product portrayed by the contested design may be taken into account in the assessment of its individual character (...), the applicant's arguments relating to that assessment (...) cannot be upheld."  Case T-39/13 Cezar v OHIM "... it must be emphasized that visibility is an essential criterion for the protection of Community designs ..."  C-123/20 Ferrari "For the appearance of that section to be protected as a Community design, it must, by definition, be visible" Technical Function  "Recommended that clear legislative guidelines be incorporated within the Design Directive, whether via the recitals or the amendment of Art.7(1)"  Parliament proposal: add to Recitals "and that designs with a technical function are not excluded from the design protection." Indication of Product  Legal Review: Add to Directive something like CDR Art 36(6); clarify whether indication can be used for technical function, individual character p69-71, 91, 123  Council Proposal: 1. Regulation & Directive: "Although product indications do not affect the scope of protection of the design as such, alongside the representation of the design they may serve to determine the nature of the product in which the design is incorporated or to which it is intended to be applied." 2. Directive: "The indication of the products... shall not affect the scope of protection of the design" Indication of Product Case Law  R 1421/2006-3 Casio: "The Board is therefore unable to rule out that the indication of the product may produce legal consequences"  UK Green Lane Appeal: "With respect I am quite unable to agree."  C-361/15 Easy Sanitary Solutions: No effect on novelty or scope  But what about individual character, functionality? Copyright in Designs  Legal Review: Member States should now harmonies national laws to take account of C-168/09 Flos. "defenses, limitations of scope, and repair clauses applicable to design law do not currently align to those offered under copyright law." Recommendation "Clarify effect of Flos judgment" p127  • Council Proposal: "shall also be eligible for protection by copyright as from the date on which the design was created or fixed in any form provided that the requirements of Union copyright law [of that State] are met. [The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State]" Cultural Heritage  Council Proposal: "Any Member State may provide that a design shall be refused registration where it contains a total or partial reproduction of elements belonging to cultural heritage that are of national interest"  "In order to prevent the improper registration and misappropriation of elements belonging to cultural heritage of national interest, including, for example, artefacts, handicrafts, costumes, monuments or a group of buildings, Member States should be free to provide for specific grounds for non-registrability and invalidity."  Lisbon Art 3(3): EU "shall ensure the safeguarding and development of the European cultural heritage". NOTE: Italy has, and enforces, a national law  WIPO DLT 3(1)(ix): "disclosure of the origin or source of traditional cultural expressions... utilized or incorporated in the industrial design; Conflict with Prior Designs  At present, a design can be: 1. Invalid over a design disclosed before the filing date 2. Invalid over an EU design filed before, and disclosed after, the filing date  Difference in scope of attacks: 1. Prior disclosure: compare design with relevant parts of citation 2. Prior design right: compare citation with relevant parts of design 3. Probable Effect: prior right gives a broader attack - later design invalid 4. if it would infringe.  Council Proposal: broaden to disclosure "prior to or after" filing  Earlier EU registrations could thus be cited on either basis