Globally, design law is complex, so understanding some of the differences is important for most designers planning to trade with Japan, New Zealand, Australia, Canada, and the United States is important.
ACID is currently contributing to discussions with the Department of Trade in negotiations with the above countries post Brexit and it is important that all stakeholders and negotiators know and understand the differences of what is a very complex set of laws, with little global harmonisation.
In the interests of brevity, we have provided a high-level overview of the laws only.
Nick Kounoupias, ACID’s Chief Counsel said, “A distinction can immediately be drawn between on the one hand the design laws of Canada, Australia, and New Zealand, which have a Commonwealth and UK heritage, and on the other those of Japan and the US, which do not. In the latter two examples designs are protected through a species of patent laws”.
Australia
Registered Designs
Under the legislation a design is registrable only where it is new and distinctive upon comparison with the prior art base as it existed before the priority date of the design. After examination, if the registrar finds that the design meets all the requirements, a certificate of examination is issued. Alternatively, the design is removed from the register. A design, which has passed the substantive examination stage, can be revoked by an order of a prescribed court.
A design means the overall appearance of a product resulting from one of more visual features of this product, including shape, configuration, pattern, and ornamentation. The feel of the product, its material and the repeat features of its pattern are not deemed visual features.
Unregistered Designs
There is no separate or discrete regime for the protection of unregistered designs. Instead they are protected, where possible, under the provisions of the Copyright Act 1968. The rationale of Australian design protection is similar to that in the UK. In 2004 certain changes were made to Australian copyright law to remove copyright protection for certain copyright works which are exploited industrially. Broadly speaking the amendments mirror analogous provisions enshrined withing UK legislation in Sections 51 and 52 of the Copyright, Designs and Patents Act 1988 (“CDPA”). So, a 3D design industrially exploited will be denied copyright protection. However, as a matter of principle a 2D artistic work will continue to receive copyright protection and be entitled to dual protection by design registration.
New Zealand
Industrial designs are protected in two ways – by registration under the Designs Act 1953 or automatically under the Copyright Act 1994. As with Australia, there is no separate regime for unregistered designs.
Registered Designs
The New Zealand Designs Act 1953 is closely modelled on the UK Registered Designs Act 1949 before it was amended by the CDPA and the IP Act 2014.
The first method affords protection and an absolute monopoly for up to 15 years subject to passing the formal process of application and registration. Following a successful registration, the registered design will be infringed even by an independently produced design which is similar.
To qualify for registration a design must be applied to an article. The design is not the article itself but is rather the concept of a shape, form, or ornament applied to that article.
A design feature must be applied to an article by any industrial process or means.
Unregistered Designs
Any industrial design which is in the form of a graphic work is likely to fall within the artistic work category of the Copyright Act 1994 and thus be protected automatically under copyright law. However, an independently produced drawing will not infringe as the requirement remains that the second ought to be derived from the first in order to be found as infringing.
The only requirement for copyright protection is originality.
Canada
Registered Designs
In Canada industrial designs are protected only if they are registered. Registration grants an owned a monopoly over a design providing an exclusive right to its use for 10 years.
The requirements for registration are similar to those under UK law but the application for registration must be made within a year from the date of first publication in Canada or elsewhere. The requirements for registration are novelty and originality. The registration is for the design as a whole. Any individual characteristics must be filed for separately.
Unregistered Designs
Canadian law does not provide protection to unregistered industrial designs beyond remedies that may be available under copyright law trade mark law or passing off.
However, where an unregistered design is applied to an article which is reproduced more than 50 times, copyright protection ceases to apply, and industrial design protection is the only option.
Japan
Protection is available both for registered and unregistered designs. Industrial designs may be protected under the following acts:
Registered designs
Designs can be registered as design patents in accordance with the provisions of the Design Patent Act.
Under article 2(1) of the Design Patent Act the scope of protection extends to the shape, patterns and colours of an article, or part of it which creates a distinct visual impression.
In addition to design patent protection, an industrial design may be protected under the Trademark Act. In practice the protected protection is sought for characters, figures, signs or 3-D shapes or any combination thereof including colours. An application for a trademark is filed with the Patent Office. The trademark design must be the one by which consumers recognise the goods or services of the particular enterprise. Protection lasts for 10 years from the date of registration.
Unregistered designs
Protection of unregistered design rights is available under the Copyright Act and under the Unfair Competition Prevention Act (UCPA).
In order for an unregistered design to be protected by copyright it must fall within the definition of a work, which is a product in which thoughts or sentiments are expressed in a creative way and which falls within the literary, scientific, artistic or musical domain. An artistic work includes a work of crafts of artistic value and fine art also. Works of applied art and industrial design, however, are a grey area and generally very difficult to attain copyright protection. The protection lasts for 50 years from the date the work is made public.
Under article 2(1)1 of the Unfair Competition Prevention Act, unfair competition occurs when someone misrepresents the goods or services of another as one’s own by creating confusion as to their origin.
In order to seek protection, the Plaintiff needs to prove that:
Article 2(1)3 of UCPA affords protection against counterfeited goods, which lasts for three years from the date that the product is sold in Japan. The purpose is to protect the configuration of goods, which have been developed at a cost and effort, from being copied by a third party without incurring substantive costs.
United States
The protection of industrial designs is afforded by a combination of three separate regimes: design patents, trade dress and unfair competition laws, and copyright.
Registered designs
To obtain a design patent under the US Patent Act the following criteria must be met:
Industrial designs, which are non-functional and distinctive, can also be protected under registered trademark / trade-dress laws. That is to say that a product’s trade dress is protectable as its complete image and overall appearance, encompassing the design of the product. Trademark law however provides protection for both registered and unregistered trade dress. The term of protection is 10 years which can be renewed perpetually, given that it continues to be a distinctive source of origin.
Unregistered designs
Where an industrial design is a pictorial, graphic or sculptural work, including 2-D or 3-D works or fine, graphic or applied art, photographs, prints, art reproductions, maps, globes, charts, diagrams and models, it can be protected under the Copyright Act.
Registration is not necessary for copyright to subsist; however, it is a prerequisite for an action in copyright infringement to have registered the copyright in the design at the Library of Congress. To obtain a registration the owner must submit an application for registration of the copyright claim to the Copyright Office. The protection begins on the day that the registration fee is received by the Copyright Office. Protection subsists from its creation and endures for the life of the author plus 70 years.
A summary of ACID negotiating points:
Suggested negotiating point for Australia, New Zealand, and Canada:
The UK should argue for reciprocal recognition of a discrete regime for protection of unregistered designs in Australia, New Zealand and Canada as currently exists under UK law through the Unregistered Design Right provided for in the CDPA and the Supplementary Unregistered Design Right (the old EU Community Unregistered Design Right). These rights offer 10-15 years and 3 years protection for designers where their designs are unregistered and are infringed.
Negotiation Position – Japan
The fact that Japan has an unfair competition law, whereas the UK does not, could be an issue. Unfair competition laws are much broader and more powerful than passing off laws that apply here. I expect Japan to argue for enhanced unfair competition protection- and ACID would welcome this!
The system of registering designs under patent laws is too well established to be changed.
Negotiating Position – United States
The system of registering designs under patent laws is too well established to be changed. However, we could look at the trade dress laws to see whether enhanced trade dress protection could be included within the UK design regime in the future.
©NickKounoupias, ACID Chief Counsel August 2020
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