Protection of Designs on the Basis of Use

The protection of designs on the basis of use concerns mainly unregistered designs. However, in the EU, since unregistered designs can be converted into registered designs within 12 months of its disclosure (in Europe or abroad), in practice, such rights based on mere use also interact and overlap with registered designs. Use is meant, in a broad sense, as a simple disclosure of a product’s shape in order to establish a design right. The relevant provision, from a European perspective, is Article 11 CDR, which states in relevant part:1. A design which meets the requirements under Section 1 shall be protected by an unregistered Community design for a period of three years as from the date on which the design was first made available to the public within the Community.2. For the purpose of paragraph 1, a design shall be deemed to have been made available to the public within the Community if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the Community. Article 11 CDR must be read in conjunction with Article 110a (5) CDR which provides: “Pursuant to Article 11, a design which has not been made public within the territory of the Community shall not enjoy protection as an unregistered Community design”. This chapter will largely deal with the interpretation and effects of these provisions but also look at non-European jurisdictions (see II), in particular when considering the nature of establishing acts and possible territorial implications (see III) and including potential disadvantages for non-EU entities (see IV). A comparative review of related areas of law, providing, in principle, protection for designs on the basis of use, shall conclude this chapter (see V).


I. Introduction
The protection of designs on the basis of use concerns mainly unregistered designs.However, in the EU, since unregistered designs can be converted into regi s-tered designs within 12 months of its disclosure (in Europe or abroad) 1 , in practice, such rights based on mere use also interact and overlap with registered designs. 2 Use is meant, in a broad sense, as a simple disclosure of a product's shape in o rder to establish a design right.The relevant provision, from a European perspe ctive, is Article 11 CDR, which states in relevant part: 1.A design which meets the requirements under Section 1 shall be protected by an unregistered Community design for a period of three years as from the date on which the design was first made available to the public within the Commun ity.
2. For the purpose of paragraph 1, a design shall be deemed to have been made available to the public within the Community if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business , these events could reasonably have become known to the circles specialised in the sector concerned, operating within the Community.[...]" Article 11 CDR must be read in conjunction with Article 110a (5) CDR which provides: "Pursuant to Article 11, a design which has not been made public within the territory of the Community shall not enjoy protection as an unregistered Community design".
This chapter will largely deal with the interpretation and effects of these prov isions but also look at non-European jurisdictions (see II), in particular when considering the nature of establishing acts and possible territorial implications ( see III) and including potential disadvantages for non-EU entities (see IV).A comparative * Professor of Intellectual Property Law, University of Nottingham.The author welcomes comments and can be reached at estelle.derclaye@nottingham.ac.uk or ederclaye@hotmail.com.My thanks go to HENNING HARTWIG for providing details of decisions.
1 See Article 7 (2) lit b Community Design Regulation (CDR): "A disclosure shall not be taken into consideration for the purpose of applying Articles 5 and 6 and if a design for which protection is claimed under a registered Community design has been made available to the public (…) during the 12-month period preceding the date of filing of the application or, if a priority is claimed, the date of priority" (so-called "grace period").
review of related areas of law, providing, in principle, protection for designs on the basis of use, shall conclude this chapter (see V).

II. Unregistered design rights in the EU and elsewhere 1. Unregistered Community design rights
In the EU, an optional two-tiered system is in place.First, a so-called single right scheme is applicable and enforceable all over the Union.

National unregistered design rights or similar protection in Europe and elsewhere
In Europe, only the United Kingdom provides protection by way of a national unregistered design right 6 (continental European countries have unfair competition regimes providing protection against imitation of 2D and 3D objects in somewhat similar ways although often not limited in time 7 ).
Hong Kong's Copyright Ordinance has a section similar to the old Section 52 of the UK Copyright act (CDPA) 8 which provides that if an artistic work has been exploited industrially by or with the licence of the copyright owner and was also regi stered as a design, the term of protection is reduced to 25 years from the end of the calendar year of the first marketing. 9When the artistic work was not registered as a design, the term is reduced to 15 years (again calculated from the end of cale ndar year when the articles were first marketed).
New Zealand's Copyright Act has a similar provision: Section 75 Copyright Act provides a defence against copyright infringement to third parties who make an a rticle (in three dimensions) to the design if the design has been exploited industrially anywhere in the world (i.e., articles were made) for more than 16 years if the design is for a sculpture or more than 25 years if the design is for a work of artistic craftsmanship. 10 In South Korea, a three year protection against copying is provided for unregi s-  There is at least one case where a court required the right holder to also prove that the design was "disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the Community" (Article 11 [2] Sentence 1 CDR). 23The design owner had deposited the design at issue in the Chamber of Commerce of Waalwijk in the Netherlands and claimed that this was sufficient di sclosure under Article 11 (2) CDR.The Commercial Court of Alicante, however, disagreed stating that there was "no evidence as to how the deposited design could have become known to the circles specialised in the sector concerned." 24cording to STONE, the decision "appears to be unnecessarily harsh"; if copying could be proved, it seemed "(…) churlish to deny relief on the basis that there is no evidence that the circles specialized in the sector concerned could reasonably have known of the earlier disclosure of the unregistered design." 25

c) Ownership of an unregistered Community design right
The very nature of the unregistered Community design right brings it with it that the mere act of disclosure does not make the disclosing party automatically the owner of such right.
Rather, according to the findings of the German Federal Supreme Court in the Bolero Jacket case, deciding on the ownership of an unregistered Community design must be distinguished from the identity of the person who first made the d esign available to the public within the Community.As a rule, the owner of an alleged unregistered Community design must prove (without any privilege of legal presumption) that the asserted rights vest in the claimant.This means clear evidence covering disclosure of the design and, in case of non-identity between designer and claimant, transfer of rights is required and may cause major problems in daily practice (in the Bolero Jacket case, non-identity between the disclosed "drawing" and the asserted "earlier design" presented a further obstacle). 26  In terms of subject matter, the major difference between both registered Community and national design rights on the one hand and UK unregistered design right on the other hand is that the latter does not apply to two-dimensional designs as the overwhelming majority of them are surface decoration and even to those three-dimensional designs which decorate the surface of an object (e.g., grooves).
Rather, UK unregistered designs are protected if they are fixed and original (Se ction 213 [1] and [6] CDPA).These are the exact same requirements as under cop yright law. 31In other words, the design must not be copied and display sufficient skill, judgement and/or labour. 32In addition, the design must not be commonplace in a qualifying country and "qualifying country" has the meaning given in Section 217 (3) (Section 213 [4] CDPA).
The owner of a UK unregistered design right has the exclusive right to reproduce the design for commercial purposes, inter alia, by making articles to that design (Section 226 [1] CDPA).Reproduction of a design by making articles to that design is defined in Section 226(2) as meaning "copying the design so as to produce articles exactly or substantially to that design".The test is therefore different from that under copyright law, which requires copying of a substantial (i.e.original) part, and from that under registered Community or national design law which does not require copying.
If the shape of an article is protected both by copyright and UK unregistered design right, copyright prevails at the stage of infringement (Section 236 CDPA). 30 Very few such works are protectable owing to a very high threshold of artistic character.This does not mean that UK unregistered design right disappears but only that it yields at the infringement stage, avoiding thereby cumulation of rights.
Finally, the CDPA provides the same defences to the alleged infringement of a UK unregistered design right as those existing in the CDR and design directive (s.place of business at which substantial business activity is carried on."Thus, it is not necessary that the substantial business activity takes place in the same country where the legal entity was formed, nor that the business activity relates to articles made to the design.In addition, even if the CDPA specifically excludes "dealings in goods which are at all material times outside [the qualifying] country" (Section 217 [5] CDPA), it does not exclude services carried on outside the country. 34"Business" includes a trade or profession and "marketing in relation to an article" means selling it, letting it for hire, offering or exposing it for sale but excludes merely colourable marketing (Section 263 CDPA).Finally, while it is necessary that the qualifying person has exclusive marketing rights in the UK, if he markets the articles for the first time in another qualifying country even if he does not have authorisation to market there, the UK unregistered design right will su bsist. 35The problem is that the CDPA's first marketing requirement may breach EU law because it discriminates against distributors who have exclusive rights in the UK and those who do not. 36e UK has modified these sections.Citizenship no longer appears but only habitual residence or place of "substa ntial business activity".In the new Section 220 the words "by a qualifying person who is exclusively authorised to put such articles on the market in the United Kin gdom" as well as the definition of "exclusively authorised" are deleted.The provision is thus more generous to foreigners; it is not necessary that the legal entity be bears the burden of proving such facts which support a claim for injun ctive relief according to said provision by demonstrating that the contested use results from copying the protected design. 39Moreover, according to the England and Wales High Court of Justice, the question of whether a design had been copied is a question of fact, which has to be proved by the claimant on the balance of probabilities.
Furthermore, in considering the question of copying, the function of the e xperts is not to evaluate the factual evidence, but to point out to the Court the sim ilarities and differences between the design and the alleged infringement; and the sig nificance of those similarities and differences so that the Court can come to a view on whether they are such as to lead to a rebuttable inference that the defen dant has copied the claimant's design.opposing party" 42 (i.e., not the design right holder).

V. Disadvantages for non-EU entities?
It has been argued that the state of affairs created by Articles 11 and 110a (5) CDR is protectionist and disadvantages non-EU designers. 43Non-EU designers, or successors in title, have to disclose their designs in the EU for the first time in order to be protected 44 (or might disclose them outside but then must apply to register a Community design within the 12 months "grace period" to have any sort of design protection in the EU).Alternatively, non-EU entities may file a prior design application abroad before disclosing the design outside the EU and then file a registered Community design right within six months claiming priority from the first filing made outside the EU. 45pyright protection is not a viable alternative as the rules for works of applied art are not harmonised in the EUunless the Court of Justice in Infopaq and Flos has done so indirectly as regards the originality requirement, which is controve rsial 46and thus protection may not be available in some countries for some designs (e.g., Italy or the UK which have higher level of originality applicable), subject to Article 2 (7) Berne Convention.Designers must thus also be very careful where they do their advertising 47 and not only their marketing.
However, in effect, the Community Design Regulation is not really prote ctionist."A Community design should, as far as possible, serve the needs of all sectors of i ndustry in the Community.Some of those sectors produce large nu mbers 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 si gnificance.On the other hand, there are sectors of industry w hich value the advantages of registration for the greater legal certainty it provides and which require the possibi lity 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 design." The Community Designs Regulation does not distinguish between EU and non-EU entities but addresses "all sectors of industries in the Community" which, in principle, can be driven or dominated by EU or non-EU entities.
Even if the designer is an EU-national or habitual residentif he first starts his advertising or marketing campaign outside the EU because he wants to market the design there as well, he may destroy his own design's novelty. 48For the same reasons, if the design also embodies or functions as a trademark 49 and/or is protected by copyright, again the designer would be well-advised to disclose the copyright work or use or register the trademark first in the EU because it will trigger the application of Article 11 CDR in case the trademark or copyright work can qualify as a design.
Furthermore, as WATSON and CARTER 50 point out, it is not correct to say that "the system is a 'first publication in a qualifying country' system just like copyright or UK unregistered design right" because "the reason for such provision in the copyright systems is to encourage non-Berne Convention countries to join the Berne convention

48
ROBERT WATSON and STEPHEN CARTER, Unregistered community designs: does the first disclosure have to occur in the EU? [2006] CIPA Journal 402, 404: "Furthermore, the 'first disclosure' basis is not effective discrimination against non-EU designers as many EU designers would routinely first disclose their designs outside the EU at, for example, the major trade shows in the US." abroad for UK designers.However, it is not as if any country can join the EU, nor is this the wish of the EU." Some authors 51 have, thus, proposed to interpret, or better, modify the Community Design Regulation so that "(…) the date of first disclosure of a design anywhere in the world (provided the design could reasonably thereby have become known to EU 'sector -specialists') should be the relevant date for assessing both novelty and commencement of UCDR." Finally, a non-EU company or individual is not that much better off if it relies on the UK unregistered design right.On the one hand, there is no obligation to first disclose the design in the UK or EU but only to first market it there.On the other hand, the CDPA is more stringent on one point: before 2014, the person had to be exclusively authorised by a qualifying person or individual to market at least in the UK the product embodying the design.Under the Intellectual Property Act 2014, the foreign designer must habitually reside in the UK or elsewhere in the EU or have a substantial place of business in the UK or elsewhere in the EU.This is not required by the Community Design Regulation.try).Thus, if a non-EU resident unfortunately first disclosed its design outside the EU he can, at least rely on copyright in many countries. 52

Trademark law
If the design also serves as a trademark ("badge of origin") and the latter is regi stered, then the right holder can rely on such right in addition to copyright even if first disclosure did not happen in the EU. 53 general, a Community trademark (be it a word, figurative or shape mark) can only be acquired through registration.However, all Member States must provide protection without registration for well-known marks (cf.

b) Unfair competition
In many civil law countries, even in case where a product (but not an intangible product idea) is protected neither as a registered design, nor as a work in the cop yright sense, nor as a three-dimensional trademark, nor as a utility model or patent, the product shape may nevertheless be protected against imitation. 59 By way of example, the legal basis in Germany is the German Act against Unfair Competition, which protects the product against imitations if such are capable of generating, in the purchaser's imperfect recollection, an incorrect notion as to the origin of the imitation and if the imitator had reasonable opportunities to avoid such an error.Such protection against imitation also takes effect if the imitation exploits the reputation of the product or is capable of impairing the reputation of the original.To establish the reputation of the imitated product, in assessing an avoidable deception as to origin, the degree of reputation must be established among the relevant public.However, it is not necessary that the relevant public is able to associate the imitated product with the name of a specific company. 60Thus, even if the designer, or his successor in title, has disclosed the product design outside the EU, so long as a competitor copies it and final consumers risk being confused, the designer can protect the design under unfair competition law.
There is also no need that the design be well-known.Rather, it suffices that it is known enough to create a risk of confusion in the consumer's mind. 61wever, a positive precondition is that the contested product is an imitation of the original and that the manufacturer of the imitation was aware of the original when developing the contested product.Consequently, if the designer of the co ntested design, who bears the corresponding burden of proof, did not have such knowledge and if instead the contested design is a work created independently, an imitation is excluded.In particular, according to the German Federal Supreme Court, misappropriation cannot be assumed where the contested design is a work created independently, irrespective of the time of its market launch.To this extent, the decisive factor is not the time of the market launch but rather the time when the contested design was developed. 62

VII. Conclusion
Does Article 11 and Article 110a (5) CDR really create an unfair state of affairs?
Even if "first disclosure in the EU" does not mean that businesses have to establish themselves in the EU, it is a bit artificial.It advantages big companies who have savvy in-house intellectual property lawyers and disadvantages SMEs and individual designers who lose their novelty without knowing it and then are unable to e nforce their rights in the EU.
It may appear at first sight that the regime of the unregistered Community d esign right is protectionist but when one scrutinises the right more closely , it is not as it also applies to those EU designers who unfortunately choose to disclose their design outside the EU, unaware of the consequences, e.g., via advertising or marketing.So the provision benefits neither EU nor foreign designers. 63 that respect, the UK unregistered design right, on the one hand, is more protectionist but also more consistent: It aims at attracting businesses to the UK or forcing other countries to enact a similar sui generis unregistered design right.On  to register their rights which gives them a stronger right and enables everyone to know which designs are actually granted and in force.
So while the system is in some way protectionist, it may be seen as an encouragement to register to provide more certainty and transparency.However, the question then is: Why on earth was the unregistered Community design right created?We go back to square one: It was created really only for EU designers and to boost the EU's design sector while allowing EU designers to copy with impunity (yet) unknown foreign designs, when copyright, trademark, passing off or unfair competition laws are not there to fill the gap.But, there is a "but "with the unintended consequence that the unregistered Community design right also does a disservice to EU SMEs and individual designers who are unaware of the first discl osure requirement.Therefore, the Community design regulation should be mod ified to allow designs to be disclosed anywhere in the world in order to establish unregistered Community design rights.This is true because it is unlikely that the CJEU would interpret Articles 11 and 110a (5) CDR, in view of their clear wording, diffe rently than the literature and courts.
This would also make sense when considering that Article 7 (1) CDR and Art icle 11 (2) CDR both use the same language ("events reasonably have become known in the normal course of business to the circles specialised in the sector co ncerned, operating within the Community") when testing whether a unregistered Community design has been validly established and whether a registered or unre gistered Community design is valid over a specific prior art.The question is simply whether the standards for establishing unregistered and challenging registered or unregistered Community design rights shall be comparable or even identical.In terms of reciprocity, this seems to make complete sense. 64 Introduction II.Unregistered design rights in the EU and elsewhere 1. Unregistered Community design rights 2. National unregistered design rights or similar protection in Europe and else where III.Establishing unregistered design rights in the EU and UK -Nature of establishing acts and territorial link 1.European Union a) Territorial aspects when establishing unregistered Community design rights b) Nature of acts establishing unregistered Community design rights c) Ownership of an unregistered Community design right 2. United Kingdom a) Nature of the UK unregistered design right b) Requirement of a "qualifying design"IV.Proof of copying and remedies in case of an infringement of unregi stered design rights V. Disadvantages for non-EU entities?
scheme is applicable and enforceable all over the Union.It is the Community d esign right.Two versions exist, the registered Community design right, registrable at one single office (OHIM 3 ), and the unregistered Community design right. 4Second, in addition to these Community rights, national registered rights exist in the Me mber States of the Union. 5A designer, or successor in title, can therefore opt to register only at a national or Community level or at both levels.Registe ring at both levels has the advantage of avoiding the EU-wide effect of the invalidation of the Community design, as the national right may survive in all or some Member States while the Community right may not (provided the standards for finding valid ity, in despite of their harmonisation under the Designs Directive, are different to a certain extent).
tered designs through the Unfair Competition Prohibition and Trade Secret Prote ction Act from the moment of disclosure in or out of Korea.The United States have a registered right for designs (the design patent 11 ) and a sui generis design right registrable at the Copyright Office for vessel hull designs 12 but no unregistered design right. 13III.Establishing unregistered design rights in the EU and UK unregistered Community design right one has to disclose the d esign in the EU.
of the UK unregistered design right This section will introduce the main features of the UK unregistered design right and highlight the main differences between its registered counterpart.UK unregistered design right is regulated in Sections 213-264 CDPA.28It was introduced in 1988 to remedy the absence of copyright protection for functional a rticles that the British Leyland ruling took away. 29"Design" means the design of shape or configuration (whether internal or external) of the whole or part of an art icle.As with copyright, the right arises automatically; no formality is nee ded and no eye appeal required.Therefore, both functional and aesthetic designs are covered, thereby filling the gap left by copyright law in relation to works of artistic craftsma nship.30The right lasts ten years from the date when articles made to the design are first marketed.Licences of right are available the last five years of the unregistered design right's term, thus in effect further reducing the scope of the right.Four types of designs are excluded from protection: (a) methods or principles of construction, (b) features of shape or configuration of an article connected to, placed in, around or against, another article so that either article may perform its function, or (ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part, and (c ) surface decoration (Section 213 [3] CDPA).Section 213 (3) (b) (i) CDPA is often referred to as the "must-fit" exclusion and Section 213 (3) (b) (ii) as the "must-match" exclusion.

31
At least prior to the Infopaq case which has imposed for copyright works the criterion of the author's own intellectual creation instead of the lower one of sufficient skill, judgment and/or labour.See Case C-5/08 Infopaq International A/S v Dankse Dagblades Forening [2009] ECR I-6569.32 C&H Engineering v Klucznik & Sons [1992] F.S.R. 421.
Not every original unregistered design will be protected by the UK unregistered d esign right.Besides the fact that the design has to be recorded in some form (Section 213 [6] CDPA), Sections 217-221 CDPA require that the design must be a "qualifying design".This is because the UK unregistered design right is a sui generis right and, therefore, not covered by any international treaty.The principle of nat ional treatment, thus, does not apply.There are three ways to qualify: (a) the designer is a British citizen or a citizen of a Member State of the EU, (b) a habitual resident of these countries, or (c) if either a) or b) is not fulfilled, then Section 220 CDPA provides that the design qualifies if the first marketing of articles made to the design is done, under specific conditions, by a "qualifying person".Such qualifying person (citizen, habitual resident or exclusive licensee) can be a legal or natural person.The requirement under Section 220 CDPA is less stringent as it might first appear.Indeed, the definition of a "qualifying person" in Se ction 217 (1) CDPA requires such individual to have "(…) in any qualifying country a Under copyright law, the national treatment principle provided in the Berne Conve ntion (Article 5 [1]) and TRIPS (Articles 1 [3]) and 3) applies.Therefore, as long as a person is a national or habitual resident of a member country (a vast majority of countries in the world), such a person will enjoy automatic protection in any other member country wherever the work was published (even if in a non -member coun-51 PLAISTOWE and HERITAGE (n 14) 189.
the other hand, the Community design regulation's provisions may force designers 62 See Icon, German Federal Supreme Court, 26 June 2008, Case No I ZR 170/05.As regards parallels to the unregistered Community design right see HENNING HARTWIG and ADRIAN KLEINHEYER, Design Protection in Europe, Volume 4 (Carl Heymanns Verlag 2012) 50 et seq.

b) Nature of acts establishing unregistered Community design rights
14This is the result of the combined application of Articles 11 and 110a (5) CDR.Even if Article 110a (5) CDR does not mention first disclosure 15 , if the design is disclosed first elsewhere, the only way to obtain protection in the EU On February 13, 2014, the Court of Justice of the European Union followed the Advocate General and found: is to register the design as a registered Community design right within the 12 months "grace period" under Article 7 (2) lit b CDR.This is how the German Federal Supreme Court 16 , various authors 17 and OHIM itself 18correctlyinterpreted Article 110a (5) CDR.Even if Article 110a (5) CDR is an amendment to the Community design regulation inserted at the end (under the Title "Provisions relating to the enlargement of the Community"), the German Supreme Court held that it was meant to apply to all Member States.The Court 14 DAVID C. MUSKER, Community design law: principles and practice (Sweet & Maxwell 2002) 107fidentiality, in the case where it has been made available to only one undertaking in the specialised circles or exhibited in a showroom of an undertaking which is not domiciled in the territory of the European Union and lies outside the scope of normal market analysis.(1)Onaproperconstruction of Article 11 (2) CDR, it is possible that an unregistered design may reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union, if i mages of the design were distributed to traders operating in that sector, which it is for the Community design court to assess, having regard to the circumstances of the case before it.(2)Onaproperconstruction of the first sentence of Article 7 (1) CDR, it is possible that an unregistered design may not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union, even though it was disclosed to third parties without any explicit or implicit conditions of confidentiality, if it has been made available to only one unde rtaking in that sector or has been presented only in the showrooms of an undertaking outside the European Union, which it is for the Community design court to assess, ha ving regard to the circumstances of the case before it.While this ruling provides helpful guidance on specific aspects of Article 7 (1) and Article 11 (2) CDR 22 , the overall question still arises whether disclosure in the EU is not only a necessary but a sufficient condition.22FordetailsseeHENNING HARTWIG, Case Comment on Case C-479/12 Gautzsch GroßhandelGmbH  & Co. KG v Münchener Boulevard Möbel Joseph Duna GmbH [2014]GRUR 368.
May 2014 the Intellectual Property Act 2014 received Royal Assent after being introduced on 9 May 2013.The purpose of this act was to update copyright law, in particular design and patent law.Nevertheless, most of its sections apply only to designs created after the date of commencement of the act.For designs created before the date of commencement of the Intellectual Property Act 2014, the old law still applies.-Onthe effect of this amendment see alsoDKH Retail Ltd v H.
, which (i) enable the article t o be 26 For details see HENNING HARTWIG, A Knotty Problem: How to establish unregistered design claims [2013] WIPR (September/October) 80. 27 Regarding this section it should be noted that on 14 29 British Leyland v Armstrong [1986] RPC 279.-For more details on the UKUDR see, e.g., LIONEL BENTLY and BRAD SHERMAN, Intellectual property law (4th edition, Oxford University Press 2009) 686 et seq.; WILLIAM R. CORNISH, DAVID LLEWELYN and TANYA FRANCES APLIN, Intellectual property: Patents, copyright, trademarks and allied rights (8th edition), para.15-38 et seq.; PAUL TORREMANS and JON HOLYOAK, Intellectual property law (7th edition) 403 et seq.

Proof of copying and remedies in case of an infringement of unreg- istered design rights
under the law of part of the UK or another qualifying country, and there is no requirement of exclusive authorisation to market.The only requirement would be for a qualifying person to market the articles made to the design first in the UK or another qualifying country.Thus, the proposed new provision also eliminates the discrimination mentioned above.Whether in its current or its new version, the CDPA does not require that the UKUDR is disclosed for the first time in the UK or EU.It can for instance be made by a British or EU national or habitual resident elsewhere and disclosed ou tside the UK or EU.More importantly, if the person is neither of these, i.e., it is a foreigner, then it can only qualify under Section 220 CDPA.But again, if the foreign design is disclosed outside the EU but not yet marketed, it can still qualify.The only r equirement is that the design is first marketed in the EU.
34 HUGH I. L. LADDIE, PETER PRESCOTT and MARY VITORIA, The modern law of copyright and designs (4 th edn, LexisNexis 2011) 1811-1812.35 Ibid 1812-1813.36 Ibid 1815.formed IV. "(…) unregistered Community design shall, however, confer on its hold er the right to prevent the acts referred to in paragraph 1 only if the contested use results from cop ying the protected design.The contested use shall not be deemed to result from cop ying the protected design if it results from an independent work of cre ation by a designer who may be reasonably thought not to be familiar with the design made avai lable to the public by the holder."37 See http://services.parliament.uk/bills/2013-14/intellectualproperty.html(accessed 16 December 2014).38 Case C-479/12, H. Gautzsch Großhandel GmbH & Co. KG v Münchener Boulevard Möbel Joseph Duna GmbH [2014] available on www.curia.europa.eu(accessed 17 December 2014).
40On February 13, 2014, the Court of Justice of the European Union held 41 :This ruling provides a harmonised evidential rule all over the EU as no such rule was expressly stated in Article 19 (2) CDR and this rule makes it easier for the holder of a Community unregistered design right to prove copying of his design.
On a proper construction of the first subparagraph of Article 19(2) CDR, the holder of the protected design must bear the burden of proving that the contested use results from copying that design.However, if a Community design court find s that the fact of requiring that holder to prove that the contested use results from copying that design is likely to make it impossible or excessively difficult for such evidence to be produced, that court is required, in order to ensure observance of th e principle of effectiveness, to use all procedures available to it under national law to counter that difficulty, including, where appropriate, rules of national law which provide for the burden of proof to be a djusted or lightened.39 Case C-479/12 Gautzsch Großhandel GmbH & Co. KG v Münchener Boulevard Möbel Joseph Duna GmbH, Opinion of Advocate General MELCHIOR WATHELET, 5 September 2013, para 75.40 See J Choo (Jersey) Ltd v Towerstone Ltd and others [2008] EWHC 346 (Ch).41 For details see HARTWIG (n 22).
Article 6 bis [1] Paris Convention and Article 16 [2] TRIPS Agreement).Also, some countries award protection on the basis of use in commerce.In Germany, for instance, protection is granted when the mark has become established in the trade, which requires know ledge of the mark by a significant proportion of the relevant public (cf.Section 4 No 2 German Trademarks Act).If the mark was not registered, then the designer, in principle, might rely on claims under the tort of passing off in the UK, Ireland and other common law jurisdictions or on claims provided under unfair competition law in other civil law countries.To prevail in a passing off action in the UK, one needs to prove goodwill, misrepresentation and damage.Goodwill can transcend borders and therefore, if a foreign sign (this includes designs, get-up or packaging) is known abroad and within the UK too, even if the company does not yet trade in the UK, it s goodwill can be protected.55InMaxim'svDye, the High Court of England and Wales even said that ignoring the goodwill of a company trading in another EU Member State was in breach of the Treaty of Rome being at the same time a disguised trade r estriction, a distortion of competition and a restriction to the freedom to provide se rvices within the EU. 56wever, if the foreign company's sign is not known in the UK, it has no goodwill there and protection by the tort of passing off cannot arise.57Thekey component therefore is for the foreign design to be known in the UK as a sign identifying goods or services.So if the designer has not disclosed its design for the first time in the EU, he can still benefit from a passing off action if the design is known in the EU.In addition, if the design is also serving as a mark, and (the mark) is well-known but not registered in the UK, no one is allowed to use such a mark (or a similar mark) for identical or similar goods in the UK if this use is likely to cause confusion (Section 56 1994 UK Trademark Act which implements Article 6 bis Paris Convention).Thus, even if the mark owner has neither business nor goodwill in the UK, Section 56 1994 UK Trademark Act may come to his rescue.
Under that assumption, obscurity in the sense of Article 7 (1) CDR 65 should be treated and found the way it is practiced under Article 11 (2) CDR, i.e., if an event is found insufficient to estab-an unregistered Community design right, the very same event can barely serve as a basis for challenging a registered or unregistered Community design.66 64For details see HENNING HARTWIG, Reciprocity in Design Law (Chapter 5).65 See, for instance, Magmatic Limited v PMS International Limited [2013] EWHC 1925 (Pat).lish66 See also HARTWIG (n 22), 372.