Novelty and originality of the industrial design. Practical problems and solutions.

Following recent amendments to the Law on Industrial Designs ( ZPrD ) , entered into force on 12 February 2011. , The Patent Office has not made ex officio examination of absolute grounds regarding how a declared design meets the mandatory requirements of the novelty and referred down in Article 12 and Article 13 of ZPrD . In the previous edition of the Design Act and its previous Article 37 (from SG 81 of 14 September 1999 . To Am . - SG . 73 of 2006 , effective 06.10.2006 , amended . - SG . 35 of 2010 , in force from 12.02.2011 ) was expressly provided that the substantive examination should verify all applied for and the earlier identical designs on the territory of the Republic of Bulgaria, and globally in order to give an opinion on the case of Article 3, Article 11, Paragraph 2, Article 12 and Article 12 , paragraph 2 of ZPrD . If in this context, the expert discovered grounds for refusal of registration of the design, or part thereof , the applicant shall be informed of the reasons for the Patent Office and shall be provided a three month period for objection. After Discussed changes from 2011. in ZPrD of expertise is essentially passed to the registration system of the design applied by national order. This new legislation was enforced mainly due to the need for harmonization of national legislation with the system of registration of Community designs pursuant to Regulation № 6 /2002 EC .


Currently, domestic production of registration of a design involves checking whether the application meets the formal requirements for its administration and whether it falls within the provisions of Art . 3 and Art. 11 , para . 2 , item 1 of ZPrD , ie whether the requested object is a design within the meaning of the law and if not contrary to public order or morals . If you dump the requirements are met in relation to design application to render a decision on registration, which shall be published in the Official Gazette of the Patent Office. The logical conclusion of what is the purpose of this new mode of registration is mainly to reduce the length of proceedings . This yields a security document, in a shorter time , as a result of the claimed rights derived from the design can be performed more efficiently. Interesting point is that after dropping the substantive examination concerning the study of novelty and originality of design ( previously performed by the Patent Office) for holders and other commercial entities need arose of its own motion to ensure publications ordered and / or registered identical designs in the Official Gazette of the Patent Office. So, in practice, to provide services " monitoring design " because the monitoring was particularly important for the entities in order to prevent violations of the rights of others or turn the option to initiate proceedings for eventual deletion of already registers a design based on the request for alleged violations of the novelty or originality . What practical problems that the new order for the registration of industrial designs and what exactly are the terms "new" and originality " and why are they so important ?

Innovation in designs . As already noted , the novelty and originality are the legal standards of the category of so-called " absolute grounds for registration ." Absence or presence justify their registrability   of a design or not. The legislature adopted a mandatory rule that a design is new if, before the date of filing or before the priority date is not known identical design which has been made publicly available through publication , use, disclosure or registrations in any otherwise anywhere in the world ( Article 12 , paragraph 1 of ZPrD ) . Vitiate novelty may cause legal actions , which are design publications in press or in the technical catalogs, leaflets and representable material exposure to fairs and industrial exhibitions , its use in marketing or publicity in the media , not only in Bulgaria, but also in the world. An interesting point is that vitiate the novelty of this not only if these actions are performed by the applicant himself of the design , but if made by any third party or company that justify the existence of facts and circumstances leading to the conclusion the use or disclosure of identical design before the application date or priority . Also contemplated herein are the so-called . " Convention priority " arising on the basis of Article 4 of the Paris Convention for the Protection of Industrial Property of 1883 . , And the corresponding " Exhibition " and " national priority" that apply to designs * . All this means that the date of filing of the applicant recognizes the right of priority over subsequent applications for registration of identical designs for any application for which priority was claimed , Patent Office of its own motion whether the requirements of art. 35 , para . 2 ZPrD and right of priority shall be recognized if :

  1. Previous application was properly filed in the Republic of Bulgaria , in part - to the Paris Convention or the World Trade Organization;

2 . Previous application is the first application within the meaning of Art. 4 of the Paris Convention and relates to the same design ;

3 . Request is filed with the Patent Office within six months from the date of filing of the earlier application ;

4 . The priority claim is made at the latest two months from the filing date of the application under Art. 31 , para . 2 , indicating the date and country of the first application; and

5 . Within 3 months from the date of filing, the applicant pay a fee for priority and priority submit a certificate issued by the competent authority of the country where the first application was filed .

 A major highlight of the actual composition of any alleged " flawed novelty " is that both design compared must be identical . In Article 12 , paragraph 2 of ZPrD clipped imperative rule that designs are considered to be identical if their features differ only in immaterial details . According to Article 3 paragraph 1 of ZPrD design represents the appearance of a product or part thereof, certain features of the shape , line, pattern , ornamentation , color or combination of them , ie if two designs are considered as matching overall impression with regard to part or all of target criteria , these designs were identical . The evaluation is done on identity in terms of the so-called " informed consumer " and that the persons who work or consume services traded with the goods in a specific area of the economy. The same view is confirmed by § 1 , item 14 of the ZPrD who says that " informed user " is a user who has the knowledge , experience and interest in the business sector to which the product belongs to which it is incorporated or applied design . If this narrow range of consumers can be confused about the origin of one of the two comparable design , based on their total visual similarity, then the conclusion is that the designs are identical . "Informed consumer" within the meaning of Article 10 para . 1 of Regulation № 6/2002 on Community designs vigilant and have some knowledge of previous development, ie the achievements in the field of design , related to the product which became generally available on the date of filing of the contested design , or where there may be, the date of priority claimed . Ie the assessment criteria of identity are more psychological and concern the way in which a design is positioned product in the market, and psychological criteria of the user associated with its visual assessment as a complete image.

Clean hands are particularly interesting point , which relates to the disclosure of the design , which does not affect the novelty , ie does not lead to its distortion . In article . 14 ZPrD explicitly referred to the fact that the disclosure of the design - the subject of an application for registration does not affect the novelty him where disclosure is made in the 12 months before the date of filing or the date of priority , but only if this disclosure was made by the author, his successor or a third party as a result of information or action of the author or his successor in title or by a third party to the detriment of the author. First, with regard to the applicability of that provision is to be noted that it makes it possible to offer the designer or his successor in title to present a design on the market for a period of twelve months , before proceeding to the application for registration in order to examine the demand for a particular product mostly for commercial reasons . Thus, during this period the author or his successor may have confidence in the commercial success of a design before making registration costs and without fear that the information became public in connection with this disclosure can be successfully used in a possible future proceedings deletion initiated after registration of the design. In my view, and therefore , if a third person proves that he acted in good faith on the territory of Bulgaria and commented 12 months has produced a design identical to the declared of its own motion , without any information about the design of the applicant or inadvertently these actions can damage it new in all cases should be considered tainted . This is my vision is particularly true in cases where it is proved that globally a product with an identical design has been requested on the market before the date of application and 'regulations before the priority date , as it was marketed very conscientious before the requested national design (or equivalent design of the Community).

Originality in the designs . According to Art. 13 , para 1 of ZPrD design is considered original if the overall impression it produces on the informed user differs from the overall impression created by design, become public before the date of application for registration or, where priority is claimed before the date of priority. In considering the originality into account the degree of freedom of the designer 's design ( Article 13 , paragraph 2 of ZPrD ) . Hence the reasoning that between the two designs is a contradiction when they create the same overall impression on the informed user , and that in this regard should take into account the degree of freedom of the designer in developing the contested design . The figure " degree of freedom of the designer in developing the design " is defined , in particular , starting from the requirements imposed by the technical function of the product or item of product characteristics , or applicable to the product laws. These requirements lead to standardize some features , which are thus common to the designs applied to the product . Therefore, in determining the criteria " Originality " is to define the product , which is intended to be incorporated or to which it will apply the contested design , taking into account pertaining to this guidance contained in the application for registration of that industrial design. If necessary, should be studied industrial design itself , insofar as it specifies the nature of the product , its purpose or function. Indeed, examining the common vision of a design may allow the product to be customized to a broader category of products provided during registration , thus actually fix informed consumer and therefore the degree of freedom of the designer in developing the design . As to the interpretation of the concept of the informed user should assume that "user " implies that the person using the product in which the design is incorporated in accordance with the purpose for which it is intended this product. The definition of "information " relative to the criterion of " originality " in addition suggests that without the inventor or a technical expert , the user must be familiar with existing in the sector different designs have a certain level of knowledge about the items that are usually included in these industrial designs because of its interest in the products show a relatively high degree of caution when using them (see judgment of the Court of 22 June 2010 in Case Shenzhen Taiden / OHIM - Bosch Security Systems (Équipement de communication), T -153/08 ) . For the reasons set motives in practice in cases concerning dispute over identity between two designs often employ forensic technical and sometimes forensic sociological expertise in order to allow adequate assessment of experts or directly from the users of the identity of the compared designs on the basis of creating the overall impression .

Novelty and originality of the design of a product that is part of a complex product . When the design is applied to or incorporated into a product that is part of a complex product , it is considered new or original , if incorporated into the complex product , remains visible during part of the normal use of this product and the visible features of the component part fulfill the requirements of novelty and originality ( 13a ZPrD ) . In so claimed novelty and originality should analyze whether the design incorporating a product contributes to the different total point of view, which creates the latter in the informed user . An example of such a decision in the case law is that in Case T-10/08 of the Court of Justice. Parties to the proceedings are the proceedings are the applicant "Kwang Yang Motor Co.", Ltd (Kaohsiung, Taiwan) and respondent Office for Harmonization in the Internal Market (OHIM). Assist a party in the proceedings before the Board of Appeal of OHIM and the intervener before the General Court "Honda Giken Kogyo Kabushiki Kais" ( Tokyo , Japan). The subject of proceedings for the annulment of the Decision of 8 October 2007 on the Third Board of Appeal of OHIM ( Case R 1337/2006-3) relating to proceedings for a declaration of invalidity of a Community design between "Honda Giken Kogyo Kabushiki Kaisha and Kwang Yang Motor Co. ", Ltd. Process design concerns an internal combustion engine with a fan above . The party requesting the declaration of invalidity of the Community design is "Honda Giken Kogyo Kabushiki Kaisha Co." Ltd. The previous design of this regards national design company registered in the United States for " an internal combustion engine with a fan above" patent № D 367 070 . Division of OHIM invalidity completely rejects the request for a declaration of invalidity . OHIM Board of Appeal to quash the decision , however, the Department of invalidity and declared invalid design as pleas are a violation of article 4 and article . 6 of Regulation ( EC ) № 6/2002 concerning Community designs . OHIM Board of Appeal to explain its decision to the conclusion that in respect of the disputed design lacks individual character within the meaning of Article 6 of Regulation 6/2002 , as the playing on the informed user an overall impression does not differ from that Cotto creates early design . So OHIM explains reflected in the decision that the process image of an internal combustion engine is an integral part of a complex product within the meaning of Article 4 ( 2 ) of Regulation № 6 /2002 of (paragraph 15 of the contested decision). None of the parties dispute that complex product to which it is applicable engine lawn mower . When the engine was installed on the lawnmower engine components that are visible during normal use of the complex product are mainly in the upper part . The mechanical parts of the front side and the lateral sides and the rear face are less visible , and the lower side is not visible at all . As to the overall impression of the contested design , the Board of Appeal of OHIM has decided that the same should be evaluated on the basis of the overall vision that gives mainly the upper side of the engine, perceived notify users of lawnmowers . This user is defined as someone who wishes to use mowers and be informed on this issue.

The Board of Appeal also held that the assessment of the overall impression created by the Opposition and the earlier design on the informed user of lawnmowers should the focus be directed mainly to the overall appearance of the upper side of the engine and placement of the various engine components , their shape and size relative to one another , rather than on a number of technical details. The Board of Appeal of OHIM also notes that when comparing design using components such as shape are very similar. The only difference concerns the placing on the starter , but this difference does not change the overall impression created by the engine to the informed user . In conclusion, the Board of Appeal held that the designers of internal combustion engines have a high degree of freedom and this reinforces the conclusion that the identity of the compared designs , as it is looking for innovative solutions to the top of the contested design. Therefore, in the operative part of its judgment the Court of Justice after the fact , as a last resort in a dispute rejected appeal of "Kwang Yang Motor Co.", Ltd, submitted by the Board of Appeal of OHIM and order the appellant to pay the other side production costs.


Author : Mr. Atanas Kostov – patent attorney


* Kostov. At. - "Right of domestic , conventional and Exhibition priority concerning the trademarks . Right of priority under the brands of the community. The Magazine "Property and Law " 2012.