Intellectual Property

in short... February 2002 Issue No. 24

gossIP

Registered Designs: the new Registered Designs Act which brings English law into line with the provisions of the EC Designs Directive came into force on 9 December 2001. For details see Issue 23 and Stop Press November 2001.

Community Designs: The Council Regulation on Community Designs was published in the Official Journal on 5 January. The Regulation introduces both a Community Unregistered Design and a Community Registered Design, applied for through OHIM (the Office for Harmonisation in the Internal market). The Regulation comes into force on 6 March 2002.

The Copyright, etc and Trade Marks (Offences and Enforcement) Bill has passed through the committee stage in the House of Commons unscathed. The Report stage is due on 12 April. The Bill will then proceed to the House of Lords. The Bill amends the Copyright, Designs and Patents Act 1988 in respect of criminal offences, search warrants, powers of seizure and orders for forfeiture and the Trade Marks Act 1994 in respect of search warrants and powers of seizure and other related matters.

Viagra-Patent: On 23 January the Court of Appeal upheld the decision of Mr.Justice Laddie that Pfizer's European Patent for "Viagra" was invalid because it was not inventive -it was obvious to try to use the patented compounds for the treatment of male impotence.

Designs

The Community Design Regulation

On 12 December 2001 the Council of the European Union adopted the Community Design Regulation - Council Regulation (EC) No 6/2002. The Regulation will enter into force on 6 March this year.

Two new IP rights will be available both to be called "Community Design" - a registered Community Design capable of lasting up to 25 years from registration and an unregistered Community Design capable of lasting for the much shorter period of three years from the date that the design was first made available to the public in the Community.

Applications for the new registered Community Design will be made to OHIM. The Office has yet to pass the enabling procedural regulations and this right will not come into effect until a date yet to be fixed by the Office.

The new unregistered Community Design will confer automatic protection against copying from 6 March. There will be no need to apply for registration - protection is available as soon as the design is first made public in the EU.

Disputes concerning the infringement and validity of both types of Community Design will be heard by Community Design Courts designated by the Member States. The decision of such a court in any one EU country will be binding throughout the EU. As yet the UK has not designated which court will be the Design Court.

The provisions of the Regulation mirror those of the Designs Directive : Directive 98/71/EC.

A Community Design will have a unitary character - it will have equal effect throughout the Community. It can only be registered, transferred, surrendered and declared invalid in respect of the whole of the Community. However, it can be licensed for the whole or part of the Community .

The definition of Community Design is like that for our own new registered design - "design" means the appearance of the whole or part of a product resulting from the features of, in particular (but not limited to) the lines, contours, colours, shape, texture and/or materials of the product itself or its ornamentation. A product can be industrial or a one-off handicraft item and can include a wide range of things except for computer programs although it can include graphic symbols that appear on such programs.

Any feature whose appearance is dictated by its function is not entitled to protection.

The rights conferred by the new Community Designs will not be enforceable against use of designs of component parts of complex products for repair purposes (which includes the manufacture and sale of parts as spare parts for the repair market).

The novelty and individual character requirements mirror the Directive's. To be a Community Design whether registered or not the design must be "new" and have "individual character".

In the case of an unregistered Community Design a design will be new if, before the date that the design became public no identical design had been publicly available. In the case of a registered Community Design the relevant date is the date that the application for registration is made. In both cases designs are deemed identical if their features differ only in immaterial details.

If a design gives a different overall impression to an informed user...