Impact of the European Directive 98/71/EC
|✅ Paper Type: Free Essay||✅ Subject: Law|
|✅ Wordcount: 2789 words||✅ Published: 19th Sep 2017|
In recent years, the European Community has taken steps towards harmonising and unifying national laws in relation to the protection of designs. This has lead to much change and debate at national levels over the possible benefits and consequences of this unification of national laws. The United Kingdom, in particular, is quite aggrieved about the issue, as the implementation of the new Directive means significant changes to the interpretation and application of its domestic design laws. This object of this brief is to determine whether the implementation of the European Directive 98/71/EC on the legal protection of designs  OJ L 289/28 (hereafter referred to as the “Directive”), as well as other relevant regulations from the European Community, has lead to the protection of designs becoming “utterly desperate” in principle and detail within the UK jurisdiction, as per Cornish and Llewellyn’s claim. It will consider pre-existing rules in the United Kingdom relating to the protection of designs prior to the implementation of the Directive, and consider the impact the Directive has made on these. It will also seek to explore the changes (if any) in regards to the definition and extension of the design laws to expand or restrict their application to specific items. It has been contended by some authors that the existence of a number of systems of protection of designs makes this area of law “surprisingly and unnecessarily complex”.
If you need assistance with writing your essay, our professional essay writing service is here to help!Essay Writing Service
In the United Kingdom, the protection of designs is predominantly given by the Registered Designs Act 1949, which has been consequentially amended by the Copyright, Designs & Patents Act 1988. Many areas of intellectual property law have been relied upon over the years in order to seek protection for designs in addition to the legislation, such as that relating to trade marks, passing off and the law relating to breach of confidence. The concept of design protection is one that is long entrenched in UK legislative history since the passage of the Copyright of Designs (Registration) Act 1839, and has developed accordingly. Under the Copyright, Designs and Patents Act 1988, three systems now operate to protect designs. These include:
- A registered design system, which protects designs for up to twenty-five years;
- An unregistered design system, which protects the shape of three-dimensional objects, for up to fifteen years; and
- Protection in copyright for design drawings of artistic works for twenty-five years.
Additionally, the Act established a number of important defences for copyright infringement, which did not exist in the previous laws. Prior to the commencement of this Act, there was no system established that allowed for the protection of unregistered designs and, as mentioned above, the concept of design protection was often being treated by the courts as forming part of the broader concept of intellectual property law, and did not grant it much independent recognition. When considering this pre-existing system of design protection that was available before the implementation of the Directive and other Community measures, it is clear that the English system appeared to function quite effectively. Not only did the system serve to protect designs through a more extended and focused scope of application, but it also allowed for statutory defences to arise in situations where the circumstances justified a possible copyright infringement. The UK legislature recognised the increased need to protect designs in statutory law, given the lack of protection they were afforded by the courts. The point here is that there was often a need for individual states to make their own regulations in regards to the protection of designs, as the social and political factors that needed to be overcome in order to implement a standardised benchmark of design protection was far too great, and far too variable, to even consider at that point. This was often due to the differing emphases that each individual state placed on different aspects of design protection, such as copyright, unfair competition law and registration. This highlights that there was a need for states to maintain their individual control over design laws, as they were often unique to the circumstances within that jurisdiction, and harmonisation by way of Community law would not cater for the uniqueness of each Member State.
The variance in the national laws relating to designs was recognised as being a problem for the Community through the European courts. As such, a consulting and legislative process was commenced that lasted much of the 1990s, with the Directive finally being published in 1996 (which established the harmonisation of national laws in relation to designs) and the Regulation 6/2002 on Community Designs being adopted in December of 2001 (which established the two Community Registered and Unregistered Design Rights). The Directive specifies that its purposes are, among others, to promote the internal European market through removing the “barriers that divide Europe” in relation to “conditions for obtaining registration”, the rights of the design owner, the term of protection of the design, and the grounds which can overturn the registration. The European Regulation has been implemented in UK law through the Community Design Regulations 2005 however, according to Bentley and Sherman, the UK legislature have sought to modify some of the provisions of the European Regulation in this statutory instrument, which the UK courts will almost certainly abandon in favour of the original text of the European Regulation. It is actions like these that reflects the disagreement and dissent being expressed by the UK in relation to these harmonised design laws throughout the EC, and also shows a want to maintain control over their own design laws.
The process of registration after the harmonisation of the Directive and Community law has been amended in such a way so as to reduce the differences between registering a design in the UK and registering one at the Office of Harmonisation in the Internal Market in the European jurisdiction. The fact that these two processes exist demonstrates an unnecessary burden on the process of registration. Now not only does one have to make a decision to register a design, they must now also make a choice as to where and how they register it. It forces a person now to make the choice as to whether they want Community-wide recognised rights or one that is merely recognised in the UK. It has created an unnecessary step in the process. This supports the claim made by Cornish and Llewellyn in the sense that the protection of designs has become “utterly desperate” due to the significant detail involved in registering a design. The European method, however, has served to broaden the scope of the items that can now seek protection under design law. Under the old British case law, for example, it was held that a football pools coupon’s design could not be registered because the design actually was the article. The Directive, in article 1, clearly includes the ability to register “graphic symbols” under it, thus not requiring such a distinction to be made. However, the main change that the Directive has made is it now specifies exclusion to the design rules, which did not necessarily exist under the old regime. These can be found in section 1C(1) of the Registered Designs Act 1949, implemented by article 8 of the European Regulation. This means that designs can be excluded where they relate to the function of the design, the interfaces of the design or are contrary to morality. In other words, a design can be rejected for registration where their design is necessary to achieve a particular technical function, can allow a registration owner to control a particular type of product (such as owning the design of a laptop computer external port, which may allow them to control the sale of electronic mice, for example), or where that design might cause offence to some people. Essentially, the Community design laws have sought to amend the pre-existing procedural system of registration of designs to a more substantive approach, requiring much more attention to detail than what was previously required. This could be construed as supporting Cornish and Llewellyn’s claim that the Community laws have become “utterly desperate” with regard to the “morass of detail”, as registration now requires a determination of the substantive elements of registration, whereas it was previously merely a simple process.
In conclusion, it would appear that Cornish and Llewellyn’s argument that the Community design laws have turned this area law “utterly desperate” may have substantial merit. The law has certainly shifted in such a way that has caused it to become more of a substantive process rather than one of simply filling out a form and paying a fee. Now one must prove that the registration of their design will not impact upon the Community as a whole (when registering in the European system), which may even make it tougher to register a design given its Community wide application, and the possibility of it clashing with another’s design. The merits of this debate still remain to be seen, and will most likely be determined in case law in the near future. However, in terms of Cornish and Llewellyn’s argument, it would appear that they may have a case. The process has definitely changed, and registration has become substantively more difficult, with a need to satisfy a number of exclusionary grounds in order to be awarded registration, and thus be protected. The ability for a design to be protected has become much more difficult, it just remains to be seen whether this is for the best or worse.
- Bently, L, and Sherman, B, Intellectual Property Law (2004, 2nd ed), London: Oxford University Press
- Cornish, WR, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (1999, 4th ed), London: Sweet and Maxwell
- Hart, T, and Fazzani, L, Intellectual Property Law (2004, 3rd ed), London: Palgrave Macmillan
- Callico Printers Act 1787 (27 Geo. 3 c. 23)
- Callico Printers Act 1794 (34 Geo. 3 c. 23)
- Community Design Regulations 2005
- Copyright of Designs (Registration) Act 1839 (2 Vict. c. 17)
- Copyright, Designs & Patents Act 1988
- Design Rules 2005
- European Directive 98/71/EC on the legal protection of designs  OJ L 289/28
- Registered Designs Act 1949
- Regulation 6/2002 on Community Designs
- AB Volvo v Erik Veng (UK), Case 238/87  ECR 6211
- Benchairs v Chair Centre  RPC 429
- Carflow Products v Linwood Securities  FSR 424
- Consorzio Italiano della Componentistica de Ricambio per Autoveicoli & Maxivar v Regie Nationale des Usines Renault, Case 53/87  ECR 6039
- Keurkoop BV v Nancy Kean Gifts BV, Case 144/81  ECR 2853
- Phillips Electronics PV v Remington Consumer Products  RPC 283
- Re Littlewood’s Pools (1949) 66 RPC 309
- Valeo Vision SA v Flexible Lamps  RPC 205
Journal Articles and Other Sources
- EC Green Paper on the Legal Protection of Industrial Design (III/F/5131/91-EN, Brussels, June 1991)
- J. Reichman, ‘Design Protection in Domestic and Foreign Copyright Law: From the Berne Revision of 1948 to the Copyright Act of 1976’ (1983) Duke Law Journal 1143
- H. Cohen Jehoram, ‘Designs Law in Continental Europe and Their Relation to Copyright Law’ (1981) European Intellectual Property Review 235
- Designs Practice Note, DPN 1/03 ‘Component Part of complex product visible in normal use’ (7 Jan 2003)
 Lionel Bently and Brad Sherman, Intellectual Property Law (2004, 2nd ed), 611.
 Phillips Electronics PV v Remington Consumer Products  RPC 283.
 Benchairs v Chair Centre  RPC 429.
 Valeo Vision SA v Flexible Lamps  RPC 205; Carflow Products v Linwood Securities  FSR 424.
 (2 Vict. c. 17). Prior to this, the Callico Printers Act 1787 (27 Geo. 3 c. 23) and 1794 (34 Geo. 3 c. 23) served to protect designs relating to linens, cotton and other manufacturing products automatically.
 Copyright, Designs and Patents Act 1988, pt 3.
 Copyright, Designs and Patents Act 1988, ss 51-2.
 In the case of Phillips Electronics PV v Remington Consumer Products  RPC 283, the court recognized the issue of design law clashing with trade mark law, and questioned whether a person would be best to register a logo as a design rather than a trade mark.
 Bently and Sherman, as above n 1, 596. Cited J. Reichman, ‘Design Protection in Domestic and Foreign Copyright Law: From the Berne Revision of 1948 to the Copyight Act of 1976’ (1983) Duke Law Journal 1143; H. Cohen Jehoram, ‘Designs Law in Continental Europe and Their Relation to Copyright Law’ (1981) European Intellectual Property Review 235.
 See, for examples, Keurkoop BV v Nancy Kean Gifts BV, Case 144/81  ECR 2853; Consorzio Italiano della Componentistica de Ricambio per Autoveicoli & Maxivar v Regie Nationale des Usines Renault, Case 53/87  ECR 6039; AB Volvo v Erik Veng (UK), Case 238/87  ECR 6211.
 See EC Green Paper on the Legal Protection of Industrial Design (III/F/5131/91-EN, Brussels, June 1991).
 European Directive 98/71/EC on the legal protection of designs  OJ L 289/28, Recitals 1; 9-10; 17; 21.
 Bently and Sherman, as above n 1, 597 fn 32. Cited Designs Practice Note, DPN 1/03 ‘Component Part of complex product visible in normal use’ (7 Jan 2003).
 Bently and Sherman, as above n 1, 602.
 Re Littlewood’s Pools (1949) 66 RPC 309. See also Design Rules 2005, r 26 (relating to articles of literally or artistic character. These cannot seek protection under the rules).
 Designs can be excluded under the Registered Designs Act 1949, ss 1A(1)(b) and 1C-D, and registration can be overturned by s 11ZA(1).
 Bentley and Sherman, as above n 1, 620.
 See EC Green Paper on the Legal Protection of Industrial Design (III/F/5131/91-EN, Brussels, June 1991), para 8.9.2. (Discussing the example of a swastika appearing on a board game about the Second World War as presumably not causing any offence).
Cite This Work
To export a reference to this article please select a referencing stye below:
Related ServicesView all
DMCA / Removal Request
If you are the original writer of this essay and no longer wish to have your work published on UKEssays.com then please: