AIPPI 2018 - Study Question - Partial designs
Study Question
Submission date: April 30, 2018
Sarah MATHESON, Reporter General
Jonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters General
Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants to the Reporter General
Partial designs
Responsible Reporter(s): Yusuke INUI and Ari LAAKKONEN
National/Regional Group / BrazilContributors name(s) / ALVAREZ, André; MURAKAMI, Juliano Ryota; VIANNA; Cristiane Ruiz de Moraes; YAMASHITA, Alexandre Fukuda; RODRIGUES, Anselmo Ribeiro
e-Mail contact /
I. Current law and practice
Please answer all questions in Part I on the basis of your Group's current law and practice.
1. Is protection given to Partial Designs, and if so, are the laws for the protection of Partial Designs different to the laws for the protection of designs generally? If YES, please explain.
No
Please Explain
No, as a general rule, Partial Designs are not allowed in Brazil since the Brazilian PTO has a conservative approach regarding Article 95 of Brazilian IP Law, as transcribed below:
Article 95 - An industrial design is considered to be any ornamental plastic form of an object or any ornamental arrangement of lines and colours that may be applied to a product that provides a new and original visual result in its external configuration, and that may serve as a type for industrial manufacture.
According to the Brazilian PTO, the “ornamental plastic form of an object” may be considered as an Industrial Design. Actually, there is no provision regarding the possibility of protecting a portion of an object by means of an Industrial Design.
Nevertheless, if the part of an object can be dissociated/separated from the article as a whole, it may be protected in a separate Industrial Design. In other words, a part of an object may be protected in a specific application if it is independently manufactured.
It should be also noted that, according to Article 20 of Brazilian Normative Instruction 44/2015 (below), the Industrial Design should show the object in an assembled manner, without highlighting details or parts separately, only with solid and continuous lines (dashed or dotted lines are not allowed).
Article 20 – The figures should:
…
II – illustrate the object exclusively with continuous and regular lines, without using dashed or dotted lines;
III – present, in the applications of three dimensional objects, exclusively the assembled shape of the external configuration, without highlighting details or parts separately;
….
2. How are Partial Designs specified, described and/or graphically depicted?
Not applicable (see answer for item 1).
2.a. Is there a visual indication, e.g. by dotted or dashed lines, or shading or colouring, of those components that are not included in the Partial Design, i.e. of the Unclaimed Part?
No
Please Explain
Not applicable (see answer for item 1).
2.b. Is there a written description of the Product, of which the Partial Design forms part?
No
Please Explain
Not applicable (see answer for item 1).
2.c. Can verbal disclaimers be used?*
*Verbal disclaimers may be used in Brazil. For example, in the case of a handle for a pan, the entire pan is shown but the applicant may indicate in writing that protection is sought only for the handle.
No
Please Explain
Not applicable (see answer for item 1).
3. Can a Partial Design forming part of a Product X be infringed by the use of the same Partial Design on a Product Y? If so, please explain any required link or nexus between X and Y.
No
Please Explain
Not applicable (see answer for item 1).
4. Can a Partial Design forming part of a Product X be considered not novel in view of the same Partial Design in prior Product Y? If so, please explain any required link or nexus between X and Y.
No
Please Explain
Not applicable (see answer for item 1).
5. Please explain if your Group’s laws take into account elements outside the scope of the Partial Design (i.e. the Unclaimed Part) when considering the application of Design Constraints, such as must fit / must match exceptions.
Not applicable (see answer for item 1).
II. Policy considerations and proposals for improvements of your Group's current law
6. Are there aspects of your Group's current law or practice relating to Partial Designs that could be improved? If YES, please explain.
No
Please Explain
Not applicable (see answer for item 1).
7. Is the way of specifying, describing or depicting Partial Designs satisfactory?
No
Please Explain
Not applicable (see answer for item 1).
8. Should the Unclaimed Part influence the protection of the parts of the design that are claimed? Please explain why or why not.
No
Please Explain
Not applicable (see answer for item 1).
9. Should Design Constraints restrict the subsistence and scope of protection of Partial Designs? Please explain why or why not.
No
Please Explain
Not applicable (see answer for item 1).
10. Should the assessment of whether a design is for a portion of a whole Product, i.e. that design is a Partial Design, take into account:
10.a. the design as shown and any Unclaimed Part; and/or
No
Please Explain
Not applicable (see answer for item 1).
10.b. whether the Product is normally sold separately?
No
Please Explain
Not applicable (see answer for item 1).
11. Are there any other policy considerations and/or proposals for improvement to your Group's current law falling within the scope of this Study Question?
No
Please Explain
Not applicable (see answer for item 1).
III. Proposals for harmonisation
Please consult with relevant in-house / industry members of your Group in responding to Part III.
12. Should a Partial Design be registrable as an independent design?
Yes
Please Explain
Yes, provided that the design of any parts or visual portions of a product could be also protected by a registered design for the entire product and not only separately. Actually, protection of partial design could be made using both possibilities in order to facilitate its enforcement.
13. Is harmonisation of the law of Partial Designs desirable?
Yes
Please Explain
YES, there is a need for a regulation and/or guidelines with clear provisions concerning this matter.
It is our understanding that the Brazilian IP Law does not provide clear directives. The adoption of such a guideline would be helpful for examiners and owners of IP rights. In this sense, a harmonized procedure with clear regulations to be followed by the Brazilian PTO, would facilitate the examination as well as an infringement analysis.
If YES, please respond to the following questions without regard to your Group's current law or practice.
Even if NO, please address the following questions to the extent your Group considers your Group's current law or practice could be improved.
14. Please propose a suitable framework for specifying, describing and/or graphically depicting (a) the Partial Design and (b) the Unclaimed Part.
Due to the absence of guidelines, on December 07, 2015, the Industrial Design Committee of the Brazilian IP Association (local group of AIPPI) submitted a draft guideline as a proposal, in which, among other aspects, recommended the adoption of standard procedures on how to analyse Partial Designs. The draft was originated from a work group of members of such association. A passage detached from the draft is transcribed:
The protection for parts of a product is allowed in case they are susceptible to be manufactured independently, for example, a display or keyboard for a telephone or similar device, which can be integrated to the device independently. This understanding is also applied to a tire tread, that can be manufactured separately and joined to a tire by a vulcanization process. In case of portions and parts that are not dissociable from a product, it is necessary to show the whole product. However, the parts that are not relevant to the design may/should be shown by broken lines, in which the portion considered irrelevant to the design should be excluded from the scope of protection.
Tooth brush handle
Telephone keyboard
Tire tread -
15. Taking the example of a Partial Design for a handle for a pan, and an accused product consisting of a sieve with the same handle, the:
· Unclaimed Part (UP) of the Partial Design is the pan without the handle;
· Surrounding Context (SC) is the part of the accused product without the protected Partial Design, i.e. the sieve without the handle,
Please explain whether differences between the SC and UP should be relevant when considering the overall impressions of the accused product and the Partial Design, in the following circumstances. In each case, please briefly explain why.
15.a. SC is the same as UP
If the handle can be dissociated/separated from the article as a whole, independently manufactured and it was protected in a separate Industrial Design, the fact of being coupled to a sieve or a pan is irrelevant. In such situation, the accused product infringes the Design since both are identical in aesthetic/ornamental aspects.
15.b. SC is not the same as UP, but SC and UP relate to products that are used in the same way
See the information provided in item a) however, the use per se should not be considered in an infringement analysis since designs are intended to protect the aesthetic/ornamental aspects of a product and not its functionality.
15.c. SC is not the same as UP, but SC and UP relate to products that look the same
There is infringement if the accused product comprises a portion that substantially imitates the Design that may lead to error or confusion to the user. See answer provided to item a).
15.d. SC is not the same as UP, but SC and UP relate to products that categorised in the same way when registering designs
Same answer of item c) above.
15.e. SC is not the same as UP, and SC and UP are entirely unconnected.
Same answer of item c) above.
16. In light of your answers to Question 15, please propose appropriate rules specifying whether and how the Unclaimed Part should be taken into account when analysing the overall impression of a Partial Design for both individual character and infringement.
The Unclaimed Part should not be considered in the context of assessing infringement and validity since it cannot be individually claimed. Thus, it will just consist in an example of an article that may be connected/joined to the handle, not limiting the scope of protection.
17. Please propose appropriate rules specifying whether and how Design Constraints arising from the Unclaimed Part should affect a Partial Design. In particular, please explain whether and how must fit / must match Design Constraints affect Partial Designs.
Based on the same reasons explained in the answer to Question 16 above, Design Constraints that are related to an Unclaimed Part should not be considered in the context of assessing infringement and validity.
18. Please comment on any additional issues concerning any aspect of Partial Designs you consider relevant to this Study Question.
Currently, in some situations, the Brazilian PTO accepts turning the dashed/dotted lines of the priority drawings into solid lines (dashed/dotted lines are not accepted in Brazil). However, deleting the dashed/dotted lines are usually not allowed since the Brazilian PTO understands that the application drawings would represent a different object from the one shown in the priority.
There is an ongoing discussion regarding the validity of the priority claim when the dashed/dotted lines are turned into solid lines. However, the Brazilian PTO has not issued a definitive decision about this matter yet. Our Group is of the opinion that it would be a misinterpretation of the Law and has already submitted a petition against this strict understanding.
19. Please indicate which industry sector views are included in your Group's answers to Part III.
The views of agents and attorneys of various industry sectors such as automotive, aviation, among others, are included in our Group’s answers.