New Definitions
Limitations on Scope
Conditions of Registration
Rules of Disclosure
Other Amendments
The recently amended Finnish Design Right Act implements the provisions of the EU Design Right Directive (98/71/EC). The new provisions bring changes to certain key definitions of design legislation, including the registrability of a design and the scope and term of protection of a registered design.
In contrast to the previous legislation, the new act defines key design legislation terms, such as 'design', 'product' and 'complex product'. The new definitions are expected to extend the protection offered by design registration.
The definitions of 'design' and 'product' correspond to those in the EU directive. A 'design' is defined as the appearance of the whole or part of a product which results from its features or decoration, and a 'product' is defined as any industrial or handcraft item. Design protection may also be extended to a non-disconnectable part of a product, such as a bottleneck. Under the previous rules only separable parts were protected.
A 'complex product' is defined as a product composed of multiple replacable components, permitting the disassembly and reassembly of the product. This is a new concept in design right legislation and may include, for example, a mountable bookshelf composed of multiple parts. Parts of a complex product may also be protected, as long as they are visible during the normal use of the product. For example, wing mirrors of a car may enjoy design protection as parts of a complex product.
As in the EU directive, computer programs are not protectable, but icons or menus displayed may be registered as graphical products.
Under the amendments, design right protection will not extend to physical features which are solely dictated by technical function, such as the round form of car tyres.
The new act also contains the same 'must-fit' clause as the directive, under which the design right will not protect features that must be reproduced in their exact dimensions in order to be mechanically compatible with another product. The purpose of the must-fit clause is to prevent a manufacturer from gaining a monopoly by registering spare parts which are restricted to a certain form. An exception to this is the design right protection of module systems (eg, Lego blocks).
The new provisions stipulate that a design must both be novel and possess individual character to be protectable. A design is 'novel' if (i) no similar design is in the public domain, and (ii) it has features which differ materially from state-of-the-art designs. A design has 'individual character' if the overall impression that it produces on the well-informed user differs from the overall impression produced by previously known designs on that user.
This assessment by 'a well-informed user' is new to Finnish design legislation and may broaden the scope of design protection. It extends protection to all designs that a well-informed user does not consider different, in overall impression, from the design in question. Previously, design protection covered only the same or similar goods which were covered by registration.
The term of the design protection is extended from 15 years to 25 years, running in five-year periods subject to renewal of registration.
Provisions on public disclosure limit a design's registrability and correspond to the rules in the EU directive. The principle of relative disclosure set out in the amended act states that a design is not disclosed to the public if it can reasonably be argued that parties operating in the same field within the European Union would not have become aware of such disclosure in the regular course of business.
Additionally, the new legislation contains a grace period, which is an exception to the general rule of disclosure. The grace period allows a design to be used for 12 months prior to the date of filing for registration without losing its novelty.
Other amendments were made independently of the directive. They concern the registration procedure and allow the inclusion of several designs in the same application, provided they belong to the same class of products. Renewal of a registered design is possible by paying a fee rather than having to file an application.
For further information on this topic please contact Rainer Hilli or Jenni Kyntölä at Roschier Holmberg, Attorneys Ltd by telephone (+358 20 506 6000) or by fax (+358 20 506 6100) or by email ([email protected] or [email protected]).