Claus Barrett Christiansen Bech-Bruun 1. Design protection In Denmark, design protection is regulated by the Designs Act (1259/2000), as amended up to January 28 2009. 1 The act implemented the EU Designs Directive (98/71/EC). The EU Community Designs Regulation (6/2002) has a direct effect in Denmark. A design right is created by the first party to file or use the design within the jurisdiction. If a design is new and has individual character, it may be registered either as a national design under the Designs Act or as a registered Community design under the Community Design Regulation. If the design is new, has individual character and has been made public within the relevant jurisdiction, it may also be protected as an unregistered Community design under the Community Design Regulation effective for Denmark. 2. Registered design rights 2.1 Nature of rights Under Section 1 of the Designs Act, the creator of a design may acquire an exclusive right to the design by registration in accordance with the act. Design means the appearance of a product or part of a product resulting from the features of the product itself or its ornamentation, in particular with respect to lines, contours, colours, shape, texture or materials. 2 2.2 Qualification A design right will be granted only if the design is new and has individual character. A design is considered to be new if no identical design has been made available to the public before the application for registration is filed or the date of priority, if priority is claimed. A design is considered to have individual character if the overall impression it produces on an informed user differs from any design made available to the public before the filing of the application for registration or the date of priority, if priority is claimed. 3 1 See the Consolidated Designs Act (89/2009). 2 Section 2 of the Designs Act. 3 Ibid, Section 3. 99
2.3 Registration procedure Provisions on the application and registration procedure of Danish designs are contained in Chapter II of the Designs Act and in the Order on Application and Registration of Designs (1099/2008). 4 Applications for the registration of a design must be filed with the Danish Patent and Trademark Office. 5 No formal requirements exist for the application, which may be filed as a paper version or submitted online. Standard application forms are available from the office. An application must contain the following details, set down in Section 2 of the order: the name or firm and postal address of the applicant; reproductions illustrating the design and a specimen of the design, where applicable; an indication of the product in relation to which the design is intended to be used (product specification); an indication of the appropriate class or classes of the product according to the Locarno Agreement Establishing an International Classification for Industrial Designs; a request for priority if the applicant wishes to claim priority; the name or firm and postal address of the agent if the applicant is represented by an agent, and a power of attorney if the applicant is represented by a trademark/design agent or lawyer, no power of attorney is required; the name and postal address of the designer, including designer group or firm, if a request is made for the recording of one or more designers in the Register of Designs; information as to who will be authorised to receive communications from the Patent and Trademark Office on behalf of all the applicants if the design registration is applied for by several applicants jointly and they are not represented by an agent; a statement of the period for which publication of the registration is to be deferred if the applicant requests deferment; and a statement that the design is to be registered in colour if the protection is to comprise the design in colour. The Patent and Trademark Office has stated that the registration of a design in black and white will usually confer protection on all colour combinations of the design. The application will only be granted legal effect from the date that either a reproduction or a specimen of the design is included in the application. 6 A design may only be granted protection from an earlier date if so claimed in the application. An application may contain more than one design provided that the designs 4 The application and registration procedure for a Community design is identical to the Danish procedure. However, the application is filed with the Office for Harmonisation in the Internal Market. See Titles IV to V of the Community Design Regulation. 5 Section 13 of the Designs Act. 6 Ibid, Section 14, paragraph 1. 100
Claus Barrett Christiansen applied for can be referred to the same class in the Locarno Classification. 7 It is possible to separate out a multiple design registration. Deferment of the publication may be requested only in the application; later requests will be disregarded. Request for deferment may concern only some of the design in a multiple application. Deferment of publication is possible for up to six months and the applicant is asked to include a fixed date for publication in the request for deferment. The Patent and Trademark Office will examine an application when it is filed. The application is checked mainly for formalities. No substantive examination 8 is carried out that is, no search is made for novelty or individual character except to verify that the application relates to a design and that the design is not contrary to public policy or morality. If requested by the applicant, and upon payment of a fee, the Patent and Trademark Office will perform an extended examination, 9 which includes a search with respect to existing design registrations as well as pending design applications. However, an extended examination is not a substantive examination since the Patent and Trademark Office does not submit any conclusions as to whether earlier registrations or applications are considered harmful to the novelty or individual character of the design applied for. If the application complies with the formal requirements, the design will be registered. If the application does not meet the formal requirements, an objection will be raised by the Patent and Trademark Office. The applicant will be notified of this and will be allowed to file its observations or take steps to correct the application within a time limit stipulated by the Office. 10 This will lead either to an amendment of the application and thereby registration or to its refusal in the case of noncompliance with the formal requirements. 2.4 Term of protection A design registration is valid for five years from the filing of the application. The term of protection is always from the day of the application, even if priority is claimed. The registration may be renewed for four consecutive periods of five years on request, providing a total term of protection of 25 years. 11 In relation to spare parts, the term of protection is limited to a total of 15 years. A request for the renewal of a design registration is made by payment of the renewal fee to the Patent and Trademark Office. The payment may be made within three months before and six months after expiry of the registration period. 12 2.5 Rights granted Protection under the Designs Act means that no other person may exploit the registered design without explicit consent from the rights holder. No other 7 Section 15 of the order. 8 Section 17 of the Designs Act. 9 Ibid, Section 17, paragraph 2. 10 Ibid, Section 19, paragraph 1. 11 Ibid, Section 23, paragraph 1. 12 Ibid, Section 24, paragraph 1. 101
individual or company can make, offer, market, import, export or use a product for which the design is applied or stock such a product for one of these purposes. 13 The exclusive rights of the rights holder are limited in respect of: acts done for private purposes; acts done for experimental purposes; acts of reproduction for the purpose of making citations or for the purpose of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice normal exploitation of the design, and provided that the source is acknowledged; the equipment on ships and aircraft registered in another country when these temporarily enter Danish territory; and the importation to Denmark of spare parts and accessories for the purpose of repairing and the execution of repairs on such ships and aircraft. 14 A principle of European Economic Area regional exhaustion applies to designs under the Designs Act. 15 2.6 Infringement Any design that does not produce on an informed user a different overall impression constitutes an infringement of the design already registered. The scope of protection of the design is determined by the description of the design in the registration and the classes for which the design is registered. The degree of freedom of the designer in developing his design will be taken into consideration. 16 2.7 Damages and other relief Under Section 37 of the Designs Act, any person or legal entity intentionally or negligently committing design infringement is liable to pay reasonable compensation for the exploitation of the design and damages for any further injury the infringement has caused, taking loss of profit suffered by the injured party and the illicit profit obtained by the infringer into consideration. However, it can be seen from the case law that compensation and damages are usually inadequate, not even equalling the profits obtained by the infringer. Liability under the Designs Act corresponds to the general principles of liability in tort, requiring negligence, causality and adequacy. Design infringement may involve criminal liability. If a person or legal entity intentionally or with gross negligence infringes a design right, they may be fined. If the infringement has been committed under aggravating circumstances, the penalty for a person may be increased to a term of imprisonment for up to 18 months. 17 A preliminary injunction is available under the Administration of Justice Act for cases concerning infringement of intellectual property rights, to prevent future infringement. 13 Ibid, Section 9, paragraph 1. 14 Ibid, Sections 10 and 11. 15 Ibid, Section 12. 16 Ibid, Section 9, paragraph 2. 17 Ibid, Section 36. 102
Claus Barrett Christiansen 2.8 Licensing The design right may be licensed, but the Designs Act does not contain any provisions on licences and, consequently, under Danish law there are no formal requirements for licences. Licences are governed by the general principles applying to intellectual property licences. 18 On request, the grant of a licence will be entered in the Register of Designs. 19 2.9 Compulsory licences There is no general limitation on the scope of protection in the Designs Act in respect of licences. The act does not contain any provisions on compulsory licences. 2.10 Validity issues If the design is not renewed within the time limit stipulated, or renewal is not possible because the maximum term of protection has been exceeded, the design registration is no longer valid and it is cancelled. A design registration may be cancelled by the Patent and Trademark Office or by way of a court decision. 20 3. Unregistered Community designs 3.1 Nature of rights In Denmark, the design law regime does not contain any provisions on unregistered designs. A design must be registered in order to be protected under the Designs Act. However, since the Community Design Regulation has direct effect in Denmark, an unregistered Community design does enjoy protection in Denmark. 21 The meaning of a design, product and complex product is the same for unregistered Community designs, and also the protection requirement/qualification. The two main differences between registered and unregistered designs are that unregistered designs will only be infringed by direct or indirect copying and that the term of protection is only three years from the date the design was first made available to the public. 22 3.2 Qualification In order for an unregistered Community design to be granted protection, the same requirements apply as for registered designs: the design must be new and have individual character on the date when the design for which protection is sought is made available to the public. 23 However, an additional requirement set down in Article 11 of the Community Design Regulation must be fulfilled for unregistered Community designs. The 18 See section 7 below. 19 Section 51, paragraph 1 of the Designs Act. 20 An unregistered Community design cannot be subject to administrative proceedings in Denmark. An objection must be filed with the Danish courts. 21 Article 27 of the Community Design Regulation. 22 Ibid, Article 11. 23 Ibid, Article 6, paragraph 1. 103
Community Design Regulation stipulates that unregistered Community design protection is not established until the design has been made available to the public within the European Union that is, it has been published, exhibited or otherwise made public in a way that the design, in the normal course of business, could reasonably have become known to the circles specialising in the sector concerned. 24 If the design is first made available outside the European Union, it is not protected as an unregistered Community design. 3.3 Term of protection An unregistered Community design is protected for three years from the date when the design was first made available to the public. Registration of an unregistered Community design may be applied for within one year of it first being made available in the European Union. 25 3.4 Rights granted An unregistered Community design enjoys the same rights as those granted to registered designs and is subject to the same limitations (see section 2.5 above). The rights holder has the exclusive right to use the design and can prevent any third party from using the design in a commercial setting without its consent. 26 However, a holder of an unregistered Community design right may only prevent third parties from using the design if the contested use results from direct or indirect copying of the design. It is not sufficient that the contested design produces the same overall impression on an informed user as the unregistered Community design. It is not considered copying if the design is an independent work of creation by a designer who may reasonably be thought not to be familiar with the design made available to the public by the rights holder. 27 Thus, the protection granted to an unregistered Community design is not a priority right, but only a protection granted against copying. 3.5 Infringement An unregistered Community design may be infringed by the same types of acts that constitute infringement of registered designs. However, in theory it has to be proved that the alleged infringer has copied an unregistered Community design since independently created designs do not constitute infringement of an unregistered Community design (see section 3.4 above). Case law indicates that Danish courts apply similar infringement criteria irrespective of whether the allegedly infringed design is registered or unregistered. 3.6 Damages and other relief The Community Design Regulation does not include any provisions on sanctions for 24 Ibid, Article 11, paragraphs 1 and 2. 25 However, protection under the Designs Act does not preclude protection from copyright. Therefore, protection could possibly be granted under the Copyright Act when the term of protection of a design has expired. 26 Article 19, paragraph 1 of the Community Design Regulation. 27 Ibid, Article 19, paragraph 2. 104
Claus Barrett Christiansen infringement, so the laws of the country in which the infringement was committed will apply to an unregistered Community design. This means that the same sections regarding damages and other reliefs for a national registered design and a registered Community design apply to the unregistered Community design (see section 2.7 above). 3.7 Licensing An unregistered Community design right may be licensed under Article 32 of the Community Design Regulation. Article 32 does not contain any formal requirements in relation to licences, so the licensing of an unregistered Community design is governed by the general principles applied to intellectual property licences 28 in the various jurisdictions covered by the licence. Since the right is not registered, the grant of a licence cannot be entered in the Register of Designs. 3.8 Compulsory licences There are no rules regarding compulsory licences in the Community Design Regulation. Thus, an unregistered Community design is not subject to compulsory licensing, as for other intellectual property rights. 4. Qualification for protection The conditions for protection are novelty and individual character for the registered design rights (see section 2 above), as well as having been made available to the public for the unregistered Community design. 4.1 Novelty A design has been made available to the public if it has been published or if it has been exhibited, used in trade or otherwise disclosed. However, a design is not deemed to have been made available to the public if the design even though it has been published could not reasonably have become known in the normal course of business to the circles specialising in the sector concerned and operating within the European Union. 29 Thus, even if a design is published, it has not necessarily been made available to the relevant public and is not necessarily a hindrance for registration. The design is not made available to the relevant public if it has been disclosed to a third party under explicit or implicit conditions of confidentiality. 30 Section 6 of the Designs Act stipulates a grace period. A design will retain its novelty if disclosure of the design occurs no later than 12 months before the date of filing an application for registration or the date of priority. This gives the rights holder time to consider whether the design should be registered or whether an unregistered Community design offers adequate protection. A design of a component part of a complex product may only be considered to be new and to have individual character provided that the component part, once it 28 See section 7 below. 29 Section 5, paragraph 2 of the Designs Act. 30 Ibid, Section 5. 105