The Polish government is currently working on a set of proposals for amendments to the Industrial Property Law. These amendments concern, among other things, regulations on industrial designs and result, mainly, from the case-law of the CJEU. The aim of the proposed amendments is, amongst other things, to bring Polish laws further in line with EU regulations and relevant international IP treaties.
Some of these amendments not only concern laws on designs, but also the copyrights law. For example, based on the rulings in the C-198/10 Cassina, and C-168/09 Flos cases, the draft bill proposes the removal of art. 116 of the Industrial Property Law which currently disapplies copyright protection for works embodied in products manufactured according to an industrial design and marketed after the expiry of the registration of such design. If accepted by Parliament, design protection – also in respect to the manufacturing and distribution of objects implementing the design – will be extended to up to 70 years from the death of the author of the design.
Further amendments regarding design protection also result from EU laws. In particular, a new interpretation of the Polish translation of Directive 98/71/EC on the legal protection of designs resulted in the proposal to remove art. 102 sec. 3.3 of the Industrial Property Law stating that a product/item (within the meaning of said Directive) also means a component, if that component can, on its own, be a subject of trade. Based on the new interpretation, it has also been proposed that:
- the “new appearance” of a product is defined by the notion of, among other things, the “texture” (not the “structure”)
- and the product/item should be understood as any “replaceable component of a complex product”, not just a “component” capable of being traded.
The draft bill also provides for regulations regarding the acknowledgment of designs registered in accordance with the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. The effect of this change will be to facilitate, and maybe even to encourage entities to use this procedure aimed at simplifying applications for design registration in various jurisdictions (including Poland), i.e. by filing of a single application designating states (parties to the Agreement) where such design is to be registered. After examination of the application by WIPO, the national IP offices of each state designated by the applicant must declare whether or not they accept (acknowledge) registration decision issued by WIPO.
Although the Geneva Act of the Hague Agreement has been in force in Poland since 2003, interest in the international procedure regarding designs was marginal. Existing doubts as to the national phase of this procedure (lack of any provisions on how Polish Patent Office should deal with acknowledgement requirement after positive decision by WIPO) contributed to lack of popularity of this path for obtaining protection. The introduction of new regulations is to ensure greater transparency of the procedure in its national phase, which may increase the interest to use it.
If the amendments summarised above are accepted by the Parliament, they will affect both the scope and duration of a design’s protection in Poland. It seems that the new approach towards a design’s copyright protection after the expiry of the design registration itself may have a particular impact on businesses by increasing the interest in securing the economic copyrights to designs – in addition to rights granted by the registration.