04 October, 2013

Retrospective - Distinctiveness of Appearance

Often called the "...less glamorous cousin of other intellectual property regimes", the law protecting designs is overlooked by most as being a less 'sexy' point of discussion among more prevalent copyright and patent legislation. Amongst this one has to note that designs are something that most of us will deal with almost daily, as it pertains to how things look. This simple, yet very important aspect of intellectual property is taken for granted by most, however still much appreciated by those who work in the fashion industry and other fields which heavily rely on distinguishing their goods from others because of their distinctive appearance. Keeping this in mind, what does this regime protect then more specifically?

This matter was tackled in the 1970s case of AMP Inc v Utilux Pty Ltd. The case concerned the Registered Designs Act 1949 in the UK, under which any 'design', as defined as "...features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye", would be capable of being registered. The design which was sought to be registered by AMP was the shape of an electrical terminal for a washing machine, which was used to join electrical wiring. AMP entered into a contract with Hoover to produce such a terminal for them, which was subsequently registered under the Act as a registered design. In taking action against Utilux, AMP's designs validity under the Act was questioned. Could an electrical terminal have 'eye appeal'  under the Act, and therefore have been registrable to begin with?

Eye appealing, or just overcompensating?
Evidence was produced as to the similarities of electrical terminals made by others and AMP, all possessing different features and looks while still performing the same essential task. Lord Reid however found similarities amongst the terminals despite their varying styles. In a similar vein, these varying features had to play a part in the consumer's decision over which washing machine to buy in order for it to fall under the Act. Designs are concerned with physical appearances and their enticing nature, not its function.

In his judgment Lord Reid saw that "[f]or a design to be protected there must be a special or distinctive appearance, something in the design which captures and appeals to the eye. To have that effect, the design must be noticeable and have some perceptible appearance of an individual character". What his Lordship refers to is the eye of the consumer, not merely an aesthetic or artistic eye, further highlighting a need for it to catch the consumer's eye, not just be eye-catching. As the terminal in question was an internal component, it might not be fully visible, if at all, to the consumer, therefore not necessarily falling under the Act.

In the matter the infringer, the party claiming the terminal was not a registered design, would have to prove on a balance of probability that the article would not have greater appeal to any member of the public than an article which did not have that particular design which it possessed. In the case the House of Lords saw that the terminal did not fulfill this requirement, and the defendant had not subsequently infringed on their design rights.

One has to note that even if a design does not fall under a potential registered designs regime, it might still infringe the copyright of the entity in question. Should the design fulfill all the requirement of copyright, there could be an avenue of recourse through this measure. This pertains more to aesthetic elements, such as intricate patterns and such, but does not necessarily exclude other factors.

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