A recent decision of the European Court of Justice sheds new
light on the unregistered design right that exists in the European
Union and may make Canadians envious.
The plaintiff in the case designed and sold women's
clothing, which was both stylish and popular. The defendant is a
substantial retailing group in Ireland who sells, among other
things, women's clothing. In 2005 the plaintiff designed and
commenced to sell in Ireland a striped shirt (in a blue and stone
brown version) and a black knit top. The defendant purchased
samples of these garments and had copies manufactured outside of
Ireland and then began to sell them in its Irish stores in late
The plaintiff commenced proceedings in the Irish High Court and
succeeded on the basis that it's unregistered design in the
garments had been infringed. The defendant appealed from the
judgement and continued to dispute the validity of the unregistered
community designs. The appellate court stayed the appeal and
referred questions to the Court of Justice of the European
The Legal Framework
In the recitals to the E.U. regulation the following
observations are made:
Some of those sectors produce large numbers of designs for
products frequently having a short market life where protection
without the burden of registration formalities is an advantage and
the duration of protection is of lesser significance. On the other
hand, there are sectors of industry which value the advantages of
registration for the greater legal certainty it provides and which
require the possibility of a longer term of protection
corresponding to the foreseeable market life of their products.
This calls for two forms of protection, one being a short-term
unregistered design and the other being a longer term registered
A community design should not be upheld unless the design is new
and unless it also possesses an individual character in comparison
with other designs.
In the course of its judgement the court clarified what was
required to be shown in order to establish that a design had
"individual character". Commentators in Europe suggest
that the decision will assist right holders in protecting their
designs in the EU whether in the fashion industry or otherwise.
In Canada there is no equivalent of an unregistered design
right. In order to obtain protection for an industrial design it is
necessary to file an application in a timely fashion and then
obtain a registration. While the term of protection is potentially
ten years the process is time consuming and can be relatively
expensive, although not so expensive as obtaining a patent.
As a result developers of designs that will have a short market
life are left in a relatively difficult position since they are
faced with the expense and time required to obtain an industrial
design registration. In addition, in many cases they are generally
left without any protection under the Copyright Act since
protection is restricted for eye appealing features of useful
articles. While a common law claim for passing off is possible such
a claim can be tenuous for new products.
It would be useful if a consultation could take place to
determine whether Canada needs an unregistered design right
particularly since it is anticipated that some changes will be made
to the Industrial Design Act. It does not appear that Comprehensive
Economic and Trade Agreement with the European Union deals with
this issue although the full text of treaty has not been
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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