Design protection in Europe

A European directive will have effects in the UK, if and when it is implemented, as Simon Stokes explains

UK law has an uneasy time protecting industrial designs. Exploit what the law defines as ‘artistic works’ industrially (for example, a painting or drawing used as a fabric design), and you benefit from limited copyright protection.

Craftspeople may even be able to claim copyright in ‘works of artistic craftsmanship’ – a throwback to the arts and crafts movement, which the courts have been unable to define with any great clarity. But design a mass-produced item with both a utilitarian and an aesthetic purpose – a chair, a kettle, a motor car – and straight away you are entering difficult legal territory.

UK designers have to rely on a range of possible legal protections for their designs: copyright, registered designs, unregistered design rights, passing off, trademarks and patents.

Given this mixed bag of protection it is not surprising that UK designers often look wistfully to the protection our European neighbours give to designs. Take France for example. Here, there is a long tradition of ‘the unity of art’ – works of pure, applied or industrial art/ design can all qualify for copyright protection. Provided the design is not purely functional and it bears ‘the stamp of the author’s personality’, it can be protected by copyright and this can last for the life of the designer plus 70 years. France also has a strong ‘moral rights’ tradition. There is a form of registered design protection in France as well, which lasts for 50 years, though the French appear to favour their generous copyright system over registered design protection. Copying of designs in France may also amount to ‘unfair competition’, which is similar but by no means identical to the UK concept of ‘passing off’.

Go to other European countries and you are likely to find a similar range of laws. Some may make copyright protection paramount; others have better developed laws against unfair competition or dealing with registered designs. All try to wrestle with the questions industrial designs pose: should copyright protect works of applied art and if so, how? To what extent should designs where function dictates form (take products that interface, for example) or which are functional, be protected?

How are spare parts to be protected? How long should design protection last? What balance should be struck between protecting designs by patents, registered designs, unregistered designs, unfair competition and copyright, and are these rights cumulative (for example, you can benefit from all of them), or exclusive? (For example, you can only have copyright or registered design protection, not both.)

This diversity of laws poses difficulties for the designer. Take a chair design in the Bauhaus tradition. Some countries may grant the designer generous copyright protection; others, such as the UK, will offer much more limited protection. These national differences clearly go against the letter and spirit of the EC Treaty. There ought to be a level playing field for designers across Europe.

After much lobbying, a European Directive which seeks to harmonise registered design protection (as opposed to copyright and unregistered design right), was promulgated in 1998 – member states must implement this by 28 October. A European Regulation that will establish a Community-wide Registered Design (similar to the successful Community Trademark) and introduce a limited unregistered design right is also on the cards.

The European Commission, however, has still not acted to harmonise copyright and moral rights protection for industrial designers. While the new registered design laws will undoubtedly benefit UK designers, fundamental differences in copyright and moral rights protection will remain in Europe. So the Commission gets only five out of ten for effort at this stage. The great European design debate looks set to continue.

Cassina versus Sedeti

(Dutch Supreme Court 26 May 2000)

This case illustrates the tricky issues that can arise due to differences in design protection between EU states. The design at issue was a chair designed by Mario Bellini, which had a metal frame covered with a close-fitting leather cover, closed by a zip. The plaintiff Cassina, an Italian furniture manufacturer, had the exclusive rights to the chair. The defendant Sedeti sold a chair in the Netherlands, called Paola, similar in design to the Bellini chair but without the zip. Cassina had registered the Bellini chair as a design in the Netherlands but this protection lapsed in 1993. Cassina therefore sued Sedeti for copyright infringement – Dutch copyright law protects works of applied art. But Sedeti argued on a formality that as Cassina had not filed a copyright extension notice before its registered design protection lapsed (which is what Dutch law requires), its copyright protection had lapsed as well.

In a surprising decision, the Dutch Supreme Court rejected Sedeti’s argument and ruled that the chair was still protected by copyright as a ‘work of applied art’. This was despite Italian law not giving copyright protection to works of applied art. So in this case an Italian company was granted copyright protection not available to Dutch nationals in a similar position.

Design Protection in the UK

Copyright: where an artistic work is exploited industrially, the copyright generally lasts for 25 years.

Registered designs: you must apply for this right. Novel features of shape, pattern or ornament applied to an article by an industrial process that have ‘eye appeal’ and an aesthetic appearance can be registered. This lasts up to 25 years. Both 2D and 3D designs can be protected.

Unregistered design right: no registration is required for this 15-year right. It protects both functional and non-functional 3D designs that are not ‘commonplace’. A recent UK design right case involved the design of compact umbrellas.

Law of passing off: the law says that no one has the right to represent his goods as the goods of somebody else. There will not be passing off if the goods look similar but it is obvious they come from different manufacturers. Jif Lemon was a famous passing off case.

Trademarks: you can apply to register the shape of an article as a trademark but it needs to be very distinctive, such as the classic Coca-Cola bottle. The European Court of Justice is currently deciding whether Philips can register its distinctive three-headed Philishave shaver as a trademark.

Patents: where the industrial design includes or comprises a patentable invention, you can apply for a patent; but ‘aesthetic creations’ are expressly excluded from patent protection. This right lasts 20 years.

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