The protection of industrial designs in Romania is of a recent date and was based on the provisions of the Law no 129/1992. The greatest majority of the provisions of this law fulfilled the requirements of a market economy in the making and they were harmonized with the international treaties and conventions to which Romania was a party in that period.
But the evolution in the field of protecting the industrial designs both nationally and internationally was an imperative for amending the national legislation for a full harmonization with the new or amended international agreements and treaties, including the specific European legislation, which were enforced after 1993.
To that end, the following were considered for drafting the amendments of the Industrial design Law no 129/1992:
The Agreement Concerning the Trade-Related Intellectual Property Rights (TRIPs), ratified by Romania through the Law no 133/December 22 1994;
The Locarno Agreement establishing the International Classification for Industrial Designs, to which Romania adhered through the Law no 3 of January 8 1998
The Geneva Act of The Hague Agreement Concerning the International Registration of Industrial Design Deposit, ratified through the Law no 15/February 22 2001;
EC Directive no 98/71 of the Parliament of Europe and of the European Union Council concerning the juridical protection of the designs;
EC Regulations no 6/2002 of the European Union Council of December 12 2001 concerning community designs.
This paper will present, in a general manner, the main amendments to the Law no 129, which are contained in the new amended Law no 585/2002 and enforced on February 7 2003.
Definitions
It was necessary to redefine the notions of industrial design, product and complex product in order to comply with the EC Directive 98/71.
Thus, the industrial design (design in short) is defined as the new appearance of a product (in two or three dimensions) or of a part thereof, resulting from the combination of the main features, particularly lines, outlines, colours, shape, texture and/or materials and/or ornamentation per se.
A product is defined as any article produced through an industrial or hand-made process which contains among other things elements designed to be assembled in a complex product, packages, forms of presentation, arrangements, graphic symbols and typographic characters.
There can be noticed a clearer defining of the industrial design and the specification of the characteristic elements to be taken into account for establishing the protection.
Requirements for granting protection
The object of an application, which corresponds to the definition above, is new and has an individual character, may be registered as an industrial design.
An industrial design shall be deemed to be new if no identical industrial design was rendered available to the public prior to the date of filing the application or, if a priority was claimed, before the priority date. The industrial designs are deemed to be identical if their characteristic features differ only in insignificant details. The insignificant details are those graphic or shape elements that do not determine the individual character of the industrial design. An industrial design is considered to have an individual character if the overall impression it produces on the informed user differs from the impression made upon such a user by any industrial design rendered available to the public before the date of filing the application for the registration or, if the priority was claimed, before the date of priority.
For complex products there is a specific provision, namely: if an industrial design applied on a product or incorporated in a product constitutes a component of a complex product, this will be deemed to be novel and have an individual character only if the following conditions are fulfilled cumulatively:
the component part once incorporated in the complex product remains visible during the whole normal use of said product; normal use means the utilization by the user, without including the maintenance or repairs;
the visible features of the component parts fulfil the conditions concerning the novelty and the individual character.
For the unitary treatment of the conditions for protection, disclosure conditions were adopted as follows:
an industrial design is deemed to have been rendered available to the public, if this has been published or displayed, used in the trade or disclosed in any other way, except when these actions could not become known in the usual activity performed in said field, before the date of filing the application for the registration or, if the priority was claimed, before the date of priority.
an industrial design is not deemed to have been rendered available to the public, if it was disclosed to a third party in explicit or implicit confidentiality conditions.
disclosure shall not be deemed to have occurred, if the industrial design for which protection was claimed has been rendered available to the public by the author, the successor in title thereof or a third party, as a consequence of the information offered by the author, or of the action performed by the author or his successor in title within 12 months preceding the date of filing the application or the priority date.
the disclosure resulting from an abuse to the author or to his successor in title, occurred within 12 months preceding the date of filing the application or the date of priority shall not be taken into account. An abuse is deemed to be the rendering of the industrial design available to the public as well as its capitalization without the author's authorization.
Consequently, industrial design rights protect the new and original visual aspect of a product or of its packaging. It can be noticed that the requirements for protection borrow concepts both from the patent law (novelty) and the copyright law (originality). At the same time, the industrial design eligible for design protection will display aesthetic features and will not be predated by a known overall identical or similar design. It shall be taken into account that the industrial designs can be expressed in two-dimensional (drawings) or three-dimensional (models) format.
Multiple deposit - condition of unity
The Hague Agreement amended by the Geneva Act provides for a unity condition for multiple deposit. For harmonizing with the Hague Agreement, the amended Law no 129 introduced a similar provision, namely it is stated that:
a multiple deposit may contain more industrial designs intended to be incorporated in the same category of products, in compliance with the international classification of industrial designs. The industrial design which is the subject-matter of a multiple deposit shall meet the condition of unity of design, unity of production and unity of use and it shall belong to the same set or composition of items.
The right to receive a registration certificate
The right to be issued with the registration certificate belongs to the author of the design for industrial designs created independently.
An independently created industrial design means a design which was not carried out on the basis of contracts with a creative mission or by employees within their employment duties.
When the industrial design results from a contract with creative mission, the right to be issued the registration certificate belongs to the person who commissioned the carrying out of the industrial design. When the industrial design is carried out by the employee within his employment duties explicitly entrusted to him, the right to be issued the certificate belongs to the employer.
Presumption in the applicant's favour
This is an interesting provision originating in the amended law, and largely complies with in the EU concept.
Until otherwise proved, the applicant is presumed to be entitled to the issuance of the industrial design registration certificate. Under these conditions the Patent Office shall not request any document attesting the applicant's position as the person entitled to be issued the registration certificate.
In the event of litigation regarding the position of the owner of the registration certificate, if, by a decision of the law court it is established that another person than the one mentioned in the application for registration or in the registration certificate is entitled to be issued the registration certificate, the Patent Office shall issue the registration certificate to the person entitled and shall publish the change of the owner.
Scope and duration of protection
The scope of protection is normally established by the graphic representations of the industrial design.
However, there exist serious trends of opinion which sustain that by the description the granted protection can be extended over the elements determined by the published graphic representations of the industrial design.
The provisions of the EU Directive 98/71 were adopted for amending the Romanian Design Law, it being stipulated that:
the scope of the protection is determined by the graphic representations of the registered industrial designs;
the protection granted to an industrial design shall extend to any industrial design which does not produce a different overall visual impression upon an informed user;
when establishing the scope of protection, the creator's degree of freedom in carrying out the industrial design shall be taken into account.
In order to establish the duration of the protection, the provisions of the EU Directive 98/71, of the Hague Agreement and of TRIPs shall be taken into account.
Consequently, the validity period of the industrial design registration certificate is 10 years starting from the date of the filing and may be renewed for three successive five-years periods, that is, the validity period can be extended from 15 to 25 years.
Limitation of rights
During the whole validity period, the registration certificate confers on its owner an exclusive right of exploitation of the industrial design and the right to forbid third parties from reproducing, manufacturing, marketing or offering for sale, using, importing or storing the products which incorporate or have the industrial design applied thereon.
There are still some limitations of these rights conferred by the registration certificate for a series of actions which can be carried out because they do not jeopardize the exclusive rights of the owner, namely:
acts performed exclusively for personal, non-commercial, experimental, research or education purposes, provided that these acts do not jeopardize the normal exploitation of the industrial designs and the source should be mentioned;
temporarily transiting the territory of Romania by the shipping or air transport vehicles having equipment registered in another country, or importing spare parts and accessories for repairing these vehicles or for carrying out repairs on such vehicles;
use or taking effective and serious steps for use of the industrial designs by third parties, within the time period from the forfeiture of the owner's rights to the reinstatement of the certificate of registration;
use the industrial design in good faith within the period from the forfeiture of the owner's rights and the date of publishing the reinstated right.
Exhaustion of rights
Being in fact a measure to limit the exploitation monopoly and to encourage the trade, the theory of the exhaustion of the owner's rights occurs when the products incorporating industrial designs are placed on to the market by the owner or with his authorization. Express provisions concerning the exhaustion of the rights are introduced in the legislation of European states as well as in the EC Directive no 98/71.
Law no 129/1992 was amended by introducing an article which mentions that the rights deriving from the industrial design registration certificate cannot be exerted in case of putting on market, on the territory of Romania, the products incorporating protected industrial designs previously sold by the owner of the registration certificate or with his authorization.
Legal measures for protecting the rights
The provisions of the TRIPs Agreement were taken into account - in particular the section relating to the enforcement means of the intellectual property rights, which contain special provisions relating to Customs measures.
Pursuant to these provisions, Law no 129/1992 was amended in order to allow a better protection of the owner's rights, as follows.
The owner of a registered industrial design may request the law courts:
to decide preventive measures when there exists a risk of infringement of the rights of a registered industrial design and if this infringement is susceptible of irreparable damages or if there exists the risk of destroying the probative means;
to decide, immediately after the Customs clearing measures to cease the facts of infringe the industrial design rights, committed by a third party, upon introducing in the commercial circuit some imported goods which involve an infringement of these rights.
In order to dispose the preventive measures, the common law provisions shall be applicable. Upon taking the preventive measures ordered by the law court, the plaintiff may be asked to constitute a sufficient guarantee for preventing the abuses.
The court may require the plaintiff to supply any probative elements available to him in order to prove the ownership of the infringed right or if infringement is unavoidable.
When the probative means for sustaining the claimant's claims are under the control of the defendant, the law court may decide the proofs to be produced by the defendant, provided that the confidentiality of the information is guaranteed according to the law.
The law court shall decide that the infringer of the rights deriving from a registration certificate should supply immediate information concerning the origin and the distribution circuit of the counterfeited goods as well as information on the manufacturer's or trader's identity, provided that such a measure is not excessive related to the gravity of the owner's right.
The Customs authorities may dispose, either ex officio or upon request by the industrial design owner, to suspend the Customs clearing upon the importation of goods which may infringe the rights thereof, until a decision of the court is pronounced.
Regulations with other forms of protection
It was necessary to set up some clear regulations with the copyright and other forms of protection (inventions, trade marks, etc) for full harmonization with EU regulations.
To this end, an article was introduced in the amended Law stipulating that:
the recognition of the rights provided by the present law do not jeopardize and exclude the protection granted by other legal provisions concerning intellectual property, particularly with reference to copyright and the ones relating to trade marks, patents utility models, typographic characters, topographies of integrated circuits and unfair competition.
Other amendments
Law no 129/1992 amended and completed by the Law no 585/2002 further comprises other improvements such as:
the possibility of submitting industrial design specimens (pursuant to the Geneva Act of the Hague Agreement);
the possibility of not mentioning the authors in the application (according to the Hague Agreement);
introducing some minimal conditions for constituting the national filing with the Romanian Patent Office;
the necessity of observing the provisions of Art 6 ter from the Paris Convention for the protection of the industrial property (also) in case of granting protection to the industrial designs;
introducing a provision referring to the registration certificate of the industrial design in force, which represents non-tangible assets to be registered to the patrimony of the owner as a legal person.
Conclusions
This article presents some amendments considered to be necessary for the harmonization of the design law with the provisions of the EC Directive 98/71 of the EU Council Directive, of the EC Regulations no 6/2002, the TRIPs Agreement and of the Geneva Act of the Hague Agreement. It is hoped that the amendments will be useful to Romanian and foreign applicants who desire to protect their creations in the territory of Romania.
Rominvent
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