Disertační práce Souběh ochrany průmyslových vzorů s ochranou autorskoprávní a známkoprávní

Summary

Intellectual property covers objects that range from works of art and other artistic intellectual creations, to technical solution and signs and business identifiers used in trade to distinguish persons, goods and services. In recent years the protection under copyright law has been supplemented by corresponding industrial property regimes such as trademark and design law. Key issue of the overlap is that trademark law as well as industrial designs law has been used to protect shapes or products that originally might be regarded as objects to copyright protection. Consequently copyright has been broadening to protect works of applied art and the level of originality included in works of fine art has become lower than in the past. This trend caused the overlap with industrial designs protection. At the same time trademark law has defined protectable subject matter to three-dimensional objects and this approach has become ground for overlap with industrial designs protection.

The principal regime of protection in this dissertation is considered the protection of industrial designs. Arguments for such methodological decision are following:

(1) Firstly the protection of industrial designs has its connection to other regimes of protection

- In relation to works of fine art/works of applied art both industrial designs and works of art are products of human creativity.

- In relation to trademark protection both industrial designs and trademarks are used as marketing tools and they play role for the consumers´ identification of certain goods/services or source of quality.

Industrial designs developed into a special object of intellectual property because of their nature and are intend to satisfy aesthetic, functional and marketing purposes. Industrial designs are at the crossroads of art, technology and business, since the designers of industrial products try to create products whose shape or appearance will satisfy the aesthetic preferences of consumers as well as expectations with regard to the functional performance of those products and marketing strategy of the manufacturer/entrepreneur.

(2) Secondly it might be stated that the protection of industrial designs has not been seen as an important subject-matter of intellectual property theorists as well as legal practitioners.

On that ground the industrial designs regime is emphasised in this paper and the attention of the author is aimed at the international and regional protection of industrial designs as well as at the comparison of different forms of protection in key legal systems (France, UK, USA etc.)

Each form of protection provides different kinds of benefit and of course each form has also certain disadvantages. For example the concept of copyright is based on the criterion of informal protection which stipulates erga omnes rights with no need of registration; however the burden of proof in prospective litigation is quite weak. On the other hand the protection through industrial designs sui generis approach is based on registration principle (i.e. the proprietor of design has certificate which confirms his ownership of rights connected to certain useful article), but the maximum length of protection is much shorter (only 25 years beginning from the date of the filling of the application). The protection of trademarks might persist for unlimited period of time however in contrast with industrial designs protection trademarks are compulsorily connected with goods and services for which are registered.

The difference between regimes of protection is thus not only in the length of protection (copyright: 70 years post portem auctoris, industrial designs: max. 25 years form the filing of the application, trademarks: unlimited length of protection depending on the renewal of the registration), but also in the way of revocation of the protection (or invalidation of the registration) as well as in the position concerning the burden of proof in prospective litigation.

As an example of triple protection shall be mentioned the statuette named as “Flying Lady” or “Spirit of Ectasy” (designed by Charles Sykes) which is known as a symbol of Rolls Royce. This object is a sculptural work and therefore it is qualified for copyright protection. It is also an article used as a model for industrial production of similar statuettes (it might be therefore qualified for industrial designs protection) and finally this statuette represents in minds of consumers Rolls Royce brand and quality of certain products (trademarks protection).

2) Industrial designs have been regulated in most countries through sui generis legislation, on the basis of their specialty with respect to other objects of intellectual property. However, the dual nature of industrial designs as expressions that contain both functional and aesthetic features and their occasional assimilation to works of art brings up the issue of the extent to which copyright may overlap with protection of industrial designs.

3) Three approaches may be considered in relating copyright and sui generis design rights: cumulative protection, separate protection and partial overlap. In most countries (incl. Czech Republic) the partial overlap is stipulated: works of art are eligible for industrial designs protection; however industrial designs might be considered works of art only if necessary level of originality embodied in the useful article is met.

4) Overlap of protection of industrial designs is not possible in relation to the protection of technical and functional features which are eligible for protection under patent law. The patent system excludes all other forms of intellectual property when it comes to protecting technical solutions and functional devices (inventions). Any functional or technical features of the configuration of a product will normally not be covered by industrial design protection.

5) Under the recent definition of mark, any sign capable of distinguishing goods or services of business subjects may constitute a valid mark. This broad definition covers also the protection of three dimensional mark (packaging, container).

6) The shape or configuration of a product may be protected as a three dimensional mark if it is sufficiently distinctive and complies with the other conditions stipulated for trademarks protection.

7) Czech legal system does not contain detailed provisions concerning the issue of conflict between regimes of protection.

8) When the invalidation of designs is based on the ground of copyright objection (§ 27 sec. 1 f) Industrial Designs Act [Law No. 207/2000 Coll. as amended], Art. 25 sec. 1 f) Regulation 6/2002) the declaration of invalidity should not be circumventing by arguments relating to the absence of novelty or individual character.

9) If the conflict between trademarks and industrial designs is to be solved the issue of effect of trademarks or industrial designs registration has to be taken into consideration. According to Czech legislative approach (Trademarks Act [Law No. 441/2003 as amended] trademarks protection begins within the date of the registration; however the protection of industrial designs begins within the date of the application filing.

10) The publication of trademark in trademarks bulletin as well as previous public use of the trademark has direct effect on the novelty criterion relating to the industrial designs protection.