The threshold for design rights protection in the UK and EU is low. For a design to be registered it must be novel and have individual character (Section 1B Registered Designs Act 1949 (RDA), and Article 4(1) Community Design Regulation (CDR)). This requirement will be satisfied if: “no identical design or no design whose features differ only in immaterial details has been made available to the public before the relevant date.” (S.1B(2) RDA1949) and (Art. 5(1)(b) CDR and Art. 6(1)(b) CDR).
The exception to this is S.1B(6)(c) RDA/ Art.7(2) CDR which provides a 12-month grace period for the designer, his successor or 3rd parties to disclose publications before the design application's filing or priority date. The grace period allows the designer to showcase their design on the public market to see if it will be a commercial success before deciding whether to proceed to register.
Mindful of the exception, as required by the need for the design to be novel, the grace period does not protect against all disclosures which might occur, ‘unless they are made by the designer, or their successor in title, of the design; or by a person other than the designer, or their successor in title, and which are made in consequence of information provided or other action taken by the designer or their successor in title’. Disclosures not falling within such criteria may therefore be prejudicial to the validity of the UK design registration
But what happens if the designer, the person disclosing the design, and the applicant of the design registration are not identical? Can they rely on S.1B(6)(C)? This question was explored by the General Court in the April 2023 judgement of Activa–Grillküche v EUIPO – Tanga (T-757/21).
T-757/21 Case Summary:
In June 2015 a designer published an image of their grill, the defendant, Tanga, then filed an application for the registration of the design in April 2016, following which the designer assigned their IP rights over the design in the EU to Tanga in November 2016. 2 years later the applicant, Activa–Grillküche, filed an application for the invalidity of the design due to a lack of novelty and individual character because of the 2015 disclosure.
The general court held that it was undisputed that the 2015 publication by the designer constituted disclosure. The question was whether Tanga could rely on the disclosure under Article 7(2). Despite the transfer of rights not being complete until after the disclosure and registration application, it was held that Art.7(2) CDR protects the rights of the designer and their successor in title.
At the time of filing it can be argued that Tanga was not the successor in title of the design rights, as the transfer was not complete until after the transfer. However, based on a 2014 prior agreement between the designer and Tanga, the intention to transfer the title was established and was in fact concluded even if not formalised. Reaffirming the strength of the 12-month grace period for the publication and registration of designs, even where registered by 3rd parties.