INTELLECTUAL PROPERTY

LAW
RIGHTS IN DESIGNS
 Questions
Design right

• What's design right? example

• What are the requirements for design protection?
• Exception to design rights? example
• What's the difference between copyright and design right in term of ownership,
author, duration of the right?
• Is there any difference between copyright and design right in case infringement
and asking for legal liabilities?
• How about " fair use" or " fair dealing" in design right? example

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 Questions
Registered design

- What's registered design? example

- How a registered design is registrable?
- What's the difference between registered design, copyright and design right in
term of ownership, author, duration of the right?
- Exclusions from design registration? example
- Application for registration
- Infringement of registered design?
- Hague system for the international registration of industrial design
- How can trader apply IPR term and condition stipulated in TRIPS and industrial
design?
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 Design Rights

• ‘Design’ means the design of any

aspect of the shape or configuration
(whether internal or external) of the
whole or part of an article.

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Design Rights
• What is protected by design rights? – Tangible three-
dimensional objects
• Requirement for being protected: - Being original
- Not commonplace

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Design Rights
• Exceptions to design right:
1) Surface decoration;
2) A method or principle of construction;
3) The ‘must fit’ exception
4) The “must match” exception
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 Design Rights

Designer Owner
A person who actually creates a The designer is also the owner of the
design. design right unless the design was
produced by an employee or under a
commission, when the employer or
the person or company placing the
commission own the rights

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 Design Rights

Primary infringement Secondary infringement

• Copying the design without the Infringement by trading:
owner’s permission - Dealing with the infringing copy;
- For commercial purpose;
- Know or have reason to know that
the article is an infringement of
design right.

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 Exceptions to infringement:
- For the last 5 years, the owner
cannot stop competitors from
manufacturing articles to the
Design Rights design, because a license of right is
available under 1988 Act.
- Use by the Crown

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 Registered design

• ‘Design’ means the appearance of the whole

or a part of a product resulting from the
features of, in particular, the lines, contour,
colours, shape, texture and/or materials of
the product itself and/or its ornamentation.
• A design can be two or three dimensional, it
can be whole of party of a product.
• Community registered design

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2. Registered design under Vietnamese IP Law:

Industrial Design

• Appearance of a product embodied by three-dimensional

configurations, lines, colors, or a combination of these
elements

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 • To be registrable:
1) Novelty: It must be new throughout the
World. A design is new if no identical
design or no design whose features differ
only in immaterial details has been made

Registered available to the public before the relevant

date
2) Individual character: a design has
design individual character if the overall
impression it produces on the informed
user differs from the overall impression
produced on such a user by any design
which has been made available to the
public before the relevant date.

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 2. Industrial Design (VN law)

• To be registrable:
1) Novelty: Significantly differs from other industrial designs that are
already publicly disclosed inside or outside the country before the filing
date or priority date
2) Creativity: based on industrial designs already publicly disclosed
before the filing date or priority date, it cannot be easily created by a
person with average knowledge in the art
3) Industrial applicability: it can be used as a model for mass
manufacture of products by industrial or handicraft methods

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 Exclusions from design registration
1) a feature of a product is dictated by its

Registered function;
2) a feature which allows a product to fit to
another product
design (similar to Vietnamese IP law)

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 Application for registration :
- Representation of design;
Registered - Filling application form;
design - Paying fee
- Opposition

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 Registered design
Kastenholz, v Office for Harmonisation in the Internal Market (Trade Marks and
Designs) (OHIM), Qwatchme A/S [2013] EUECJ T-68/11 (06 June 2013)
The contested design Farbfolge II, 12 Stunden im 5-
Minuten Takt’ (in colour)

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 Registered design
Kastenholz, v Office for Harmonisation in the Internal Market (Trade Marks and
Designs) (OHIM), Qwatchme A/S [2013] EUECJ T-68/11 (06 June 2013)
The contested design Farbfolge II, 12 Stunden im 5-
Minuten Takt’ (in colour)

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 Kastenholz, v Office for Harmonisation in the
Internal Market (Trade Marks and Designs)
(OHIM), Qwatchme A/S [2013] EUECJ T-68/11
Registered (06 June 2013)
design Was the contested design identical with the earlier
designs?

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Registered design
Duration of protection:
- Initial registration period: 05 years
- Four subsequent periods: 20 years

Compare to Vietnamese law on industrial designs:  Industrial design

registrations are effective from issuing date to the end of 5 years from the
filing date, may be extended for 2 consecutive periods of 5 years.
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 Registered design
• Industrial design protection is limited to the territory of the country
or the region where protection is sought and granted.
• Hague system for the international registration of industrial design

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 Registered Design

Designer Owner
• A person who actually creates a - In the course of employment
registered design - Under commission

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Registered design
• Infringement: without the owner’s consent
- Using the registered design or a design being substantially
similar to the registered design constitutes infringement.
- Making, offering, putting on the market, importing or
exporting, or to stocking the infringing products which
made for such a purpose
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 Registered design

PMS International Group Plc v Magmatic Ltd [2016] UKSC 12 (9 March

2016):
Two of those registered designs Alleged “Kiddee Case”
included CADs

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Case study
 Piaggio Việt Nam và Công ty Detech

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Case study: ABC Ltd engaged Designer, a self-employed person to
create a design for it. Designer was paid £500 for the design.
However, the parties say nothing about who owns the design. ABC
Ltd registered the design. Designer appealed and claimed that he
was the right owner.
• 1. Under UK/ VN/ US law, who owned the right?
• 2. May the owner internationally register the design?
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 Overlap

• Copyright
• Design right
• Registered Design

Find a case study about overlap

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Thank you
for your
attention
Questions & Answers

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