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Should design rights protect things you can’t see?

Although many EU IP lawyers are currently concentrating on the trade mark reforms, the Commission is quietly getting on with its study of the design protection system in Europe.

The remit of the study is wide-ranging, but perhaps the most surprising issue that has arisen is whether design law in the EU should protect things that you can’t see.

Design law has long been considered the junior partner to some of the other IP rights – patents (which protect inventions), trade marks (which protect brands) and copyright (which protects literary, artistic and musical works). Design rights (called design patents in the United States) protect how something looks. Readers may recall that the appearance of the Samsung tablet computer was one of the main issues in the design dispute between the Korean powerhouse and Apple.

At first blush, the EU’s answer on invisible designs seems easy – Article 3 of the Designs Regulation says that design law protects the appearance of a product or part of a product. So one would have thought that invisible designs can’t be protected – they can’t have an appearance because they can’t be seen.

But this is complicated by a provision of the same EU-wide legislation that removes protection for spare parts. The debate about whether or not spare parts should be protected has been long and vigorous, in the simplest terms pitching EU member states with large car manufacturers against the rest. Those against protection for spare parts say that competition is required in the market to keep prices down. Those in favour say that safety is enhanced by ensuring spare parts are manufactured under licence from the car maker. Motorists, unsurprisingly, say that they want spare parts to be both safe and cheap.

In the end, in passing the Regulation in 2001, the legislators engaged in something of a fudge – they removed protection for invisible spare parts – spark plugs, carburettors and the like, whilst maintaining EU-wide protection for spare parts that are visible, including wing mirrors, bumper-bars, and the like. To be protected, a spare part (called in the legislation “a component part of a complex product”) must remain visible whilst in “normal use”.

The somewhat clumsy formulation for what is a spare part has created all sorts of litigation around what is normal use, and just how visible does something have to be to be protected. But what has sometimes been ignored is the corollary of the spare parts limitation. If spare parts have to be visible to be protected by design law, that means that anything that is not a spare part does not have to be.

pacemaker x-ray
Image credit: ‘Cardiomegally’ by James Heilman. CC BY-SA 3.0 via Wikimedia Commons.

Take, for example, a pacemaker, which is fitted by a surgeon into the human body to keep the heart functioning. Once fitted, the pacemaker is not visible – except perhaps on an X-ray machine of some sort. EU design law currently protects the appearance of the pace maker (if it is otherwise valid), because it is not a spare part – it does not have to be visible whilst in normal use.

Our early simple answer is therefore incorrect. Rather, EU design law does protect invisible designs, so long as the design is not for a spare part. And one can readily see why. There are plenty of good examples of “invisible” designs that are currently protected, and which have a real economic value. In the food field, there is customer drive for innovative designs inside gateaux, ice-cream cakes, and sausages. In building industries, design adds value to many materials which will eventually be wholly encased in concrete, plaster or grout.

It was a case about biscuits that can perhaps be credited with causing at least some of the confusion referred to above. Biscuits Poult applied to register a design for half a chocolate chip cookie, with the broken edge showing chocolate fondant or similar inside. A rival baker sought to invalidate the registered design, producing earlier designs showing either whole chocolate chip cookies, or cookies with interior fondant – but not the combination of the two. When the matter got to the General Court (the second highest court for EU-wide design registration matters), it was, thankfully, no longer seriously argued that the fondant was a “spare part” of the cookie. But the General Court decided this:

“Therefore the Board of Appeal did not err in stating … that the non-visible characteristics of the product, which do not relate to its appearance, could not be taken into account in the determination of whether the contested design could be protected, nor in concluding … that ‘it [was] not necessary to take into account, in the examination of the individual character of the design, of the filling inside the cookie, as portrayed’.”

Thus the interior fondant was ignored, even though it appeared quite strikingly on the registration certificate, because of some notion of it not being visible at some point.

The General Court’s decision is clearly wrong – and it is a shame that Biscuits Poult didn’t appeal further to the Court of Justice to have it overturned.

Where does that leave the study? It is widely expected that the study will not suggest a wholesale re-write of EU design law. By many accounts, the key issue is harmonising spare parts law as between member states. As mentioned above, the Designs Regulation removed EU-wide protection for invisible spare parts. But at member state level, the Designs Directive took a different approach, leaving it to member states to decide. Until that can be harmonised, there can be no single EU market in any product with spare parts. Currently some member states provide protection for spare parts, and stop the shipment of non-originator spare parts across their territories. Whichever side you’re on, a single system across the EU has to be better for consumers than the current complicated patchwork.

The result of trying to obtain harmonisation of the national spare parts regime is that we’re unlikely to see any attempt to remove design protection from invisible designs that are not spare parts. But if that is proposed, serious thought will need to be given to the concept of “normal use”. When applied to spare parts, that’s pretty obvious – the normal use of a car will be driving it. And in most cases with machinery, the interior spare parts won’t be visible whilst in normal use. It’s a little harder with a biscuit – many would say that normal use is eating it – when the interior will be visible.

The report of the study is due out shortly.

Featured image credit: ‘Festive cookies’, by stevepb. Public domain via Pixabay.

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  1. […] Although many EU IP lawyers are currently concentrating on the trade mark reforms, the Commission is quietly getting on with its study of the design protection system in Europe. The remit of the study is wide-ranging, but perhaps the most surprising issue that has arisen is whether design law in the EU should protect things that you can’t see. Design law has long been considered the junior partner to some of the other IP rights … (more) […]

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