Class 99

Geneva Spring set to sweep Tajikistan

2012-01-25T19:21:00.000Z

By The Hague Notification No. 112: Hague Agreement Concerning the International Registration of Industrial Designs, the World Intellectual Property Organization has the pleasurable task of notifying Class 99 readers, and indeed others, of the deposit by the Government of the Republic of Tajikistan, towards the tail-end of last year, of its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. Good news for anyone seeking protection in Tajikistan is that the Geneva Act will enter into force, in respect of the Republic of Tajikistan, on 21 March 2012.

For the record, the Class 99 weblog is accessed by readers from over 100 countries. These include Kyrgyzstan, Nepal, The Maldives and Cambodia -- but up till now we've never had a hit from Tajikistan. Naturally the Class 99 team assumes that, from 21 March onwards, all this will change. Meanwhile, if you happen to find yourself in the capital -- Dushanbe -- Khujad, Kulob or Qurghonteppa, if you find yourself near a computer linked to the outside world, please feel free to click on us so we can add to our list of conquests.

Apple loses Dutch iPad appeal to Samsung

2012-01-25T07:43:00.000Z

Yesterday, 24th January, the Court of Appeal of the Hague rejected Apple's appeal, finding no infringement of their Community Design covering the iPad. For background, see our previous postings here, here, here, here, and here. The decision in Dutch is here, and clicking on this link should bring you a Google Translate version in English.
The Court cited the EU Court of Justice PepsiCo / Grupo Promer case (Case C-281/10) for the identity of the informed user, and the EU General Court case T-68/10 Sphere Time v OHMI - Punch (Watch attached to a lanyard), together with OHIM's Guidelines for Examination, on the effects of dashed lines in disclaiming parts of the design - although in this case, it is far from clear whether that was Apple's intent.
The meat of the decision seems to be in the interplay between infringement and the prior art cited by Samsung. The Dutch court cited and followed, to some extent, German Federal Supreme Court decision in Case I ZR 71/08 Untersetzer/Table Mat (English summary by Class 99 member Henning Hartwig in Bardehle's IP Report 2010/V here) to the effect that the distance of a design from the prior art can be taken into account in judging its scope.
In the Hague appeal, the following prior art was cited:
I. U.S. Patent Application U.S. 2004/0041504 A1 (Ozolins');
II. The Knight Ridder Tablet;
III. The HP Compaq TC1000 (the TC1000);
IV. Canadian Design Patent 89,155 ('155 Design);
V. Japanese design number 887 388 ('388 Design);
VI. Japanese design number 1142127 (Design 127).
The Court held that although every significant feature of the design was shown in at least two of these citations, this did not imply that the design lacked individual character since none showed them all in combination and the combination created its own overall impression. However, it had a narrow scope and the (to this untrained eye) small differences between the iPad and its Samsung Galaxy competitor were therefore sufficient to avoid infringement.
The Court relied on CJEU statements from the Pepsico case on the informed user - because the informed user is "highly attentive" (paragraph 53 of PepsiCo/Grupo Promer), or at least "demonstrates a fairly high level of attention" (paragraph 59 of that decision), he will take into account the back and side view of a tablet and not just the front. That seems at odds with the approach of the General Court in Shenzhen Taiden Industrial Co. Ltd v OHIM Communications equipment/Conference unit Case T-153/08 at para 65 to the effect that the features not visible whilst the product is in actual use are discounted in the comparison.
We still await another German decision. In the meantime, can anyone add more information about the Dutch case?

Taiwan design law reforms

2012-01-24T15:41:00.002Z

Thanks to Tsai, Lee & Chen for news that Taiwan (aka Republic of China/Chinese Taipei according to your political viewpoint) has updated its design registration system by passing an amendment to the Taiwan Patent Act on November 29, 2011, to be implemented over 2012. Their informative article is here. My summary of the major points is as follows:

GUI/icon designs should be registrable, unlike the present situation. Future rules this year will indicate the conditions under which they are registrable.
"Partial designs", i.e. designs of parts of products, should in future be registrable, as in Europe or Japan. TLC have some advice on how to handle the transitional situation.
There will be a six month grace period over any printed publication by the designer - much broader than at present.

This all sounds very helpful for designers. We'll try to update you when it comes into force.

EU looks at lookalikes

2012-01-20T17:53:00.000Z

The EU Commission has published a report on "parasitic copying" by Hogan Lovells (or HogLove, as everyone now seems to be calling them). For the benefit of those, like me, who cannot say precisely what parasitic copying is, the report adopts the following definition:
"parasitic copying refers to situations where a product is offered for sale in a packaging which resembles an already existing branded product, influencing consumer behaviour to its benefit, without infringing any intellectual property rights such as trade marks, design rights or copyright."
The headline report document itself is perhaps a bit bland, but there is a wealth of interesting information in the Annexes, particularly Annex 8 which contains a comparative exercise involving analysing four different sets of lookalike packaging across Bulgaria, Germany, the UK, Spain, Italy, and Sweden, with extensive references to case law on unfair competition, marketing practices legislation and so on. Annex 6 is less detailed but contains a summary of the relevant laws across pretty much the whole of the EU.
The case studies indicate three different effects on the relevant consumers:

Effect 1 - At least some of the consumers who purchase product B do so on the assumption that they are purchasing product A (even if they may realise after purchase that this is not the case) - i.e. classic "passing off";
Effect 2 - At least some of the consumers who purchase product B do so on the assumption that products A and B have the same commercial origin, or come from economically linked undertakings (even if they may realise after purchase that this is not the case) - i.e. "association";
Effect 3 - At least some of the consumers who purchase product B do so on the assumption that products A and B, having different commercial origins, are substitutes, being identical or highly similar in their specifications, nature and quality. As a result, price becomes the sole or main criterion under which the choice between the two products is to be made - i.e. erosion or dilution

The analyses show the protean nature of unfair competition - different cases, different states, different answers, and the German responses suggest (as I have heard from other sources) that it is becoming progressively more difficult to rely on unfair competition in lookalike cases. As you would expect, it is in the area of "Effect 3" that there is the greatest difficulty, but (as we have commented in earlier posts here and here) having your distinctiveness eroded and your designs commodified is, for designers, quite a significant problem.
We clearly do not have a unified EU regime, nor do any of the countries studied appear to offer a perfect regime. Should the EU attempt new law in this area? Or would this do more harm than good?

Hair of gold, cloth of silk, heart of darkness

2012-01-17T17:09:00.003Z

This is a sad yet amusing tale of greed, stupidity and economic colonialism. To begin saga-wise, there once was a Danish designer called Annette Egholm (depicted) who founded a company called Fabric Copenhagen ApS.
In her own words, courtesy of Google's translation facility: "Back then textile designer Annette Egholm discovered not only Vietnam's natural beauty and the unique and friendly inhabitants, but at a local market, she found a silk fabric that was so beautiful and soft that she just had to own it."
And a few years later, own it she did, by filing in 2010 two Community Designs, numbers RCD 001230254-0001 and RCD 001230254-0002 in the name of her company, naming herself as "designer".
Once upon a time in the UK, you could be considered the "true and first inventor" even if all you did was introduce a foreign invention into the Realm. However, the world has moved on a bit from those days, and IMHO you have to do more than take fabrics from foreign lands with friendly inhabitants to get to be a designer.
Anyway, the Vietnamese have form at resisting the clutches of the West. A Swedish company called Minh Du Alneng AB took offence and filed invalidation actions at OHIM. According to their website, again courtesy of Google's translation facility, "The basic idea of the activity is to promote art and rich cultural tradition from a country that otherwise most associated with war and poverty. Another important aim is as far as possible to assist Vietnam's talented but poor artisans ..." Amen to that.
They got certificates from the Van Phuc – Ha Dong Silk Weaving Craft Village Association which showed that one of the Association's artisans had created and sold the design internally and for export, since 2000. They also put in evidence that Annette Egholm herself had been selling it in the EU for some years.
Her response was aimed straight at her own feet. Design -0002 “was discovered by me in Vietnam and imported by my company Fabric Copenhagen since 2006.” With the RCD the Fabric Copenhagen “claimed the right to distribute this product.” Design -0001 was “an old Vietnamese pattern which I discovered on one of my many travels to Vietnam […] and sold it in the EU since 2006. My company was founded back in 2011 and I have ever since then imported and sold 2 different patterns in the EU. This particular pattern has since 2006 been the backbone of my company.”
Unsurprisingly, OHIM found the designs to lack novelty (invalidation decisions 8337 and 8338). But what would the position have been if the designs had been used only on a local scale in Vietnam? Would that deprive a later Community Design of novelty? If not, could Egholm have validly claimed to be the "designer" and secured rights to the designs in Europe? No doubt she or someone else will provide us with a case in due course.

Celebrity designs: Twilight in perspective

2012-01-16T18:29:00.000Z

The recent popularity of the "Twilight" movies may just have provided part of the motivation behind this piece by Rachel Cook (Associate Solicitor, Fox Williams LLP), which Class 99 is delighted to host:

"Fashion and IP – “protection” of high profile designs

Celebrity fashion is big business with people increasingly wanting to look, dress and smell like their favourite celebrity. While this opens up opportunities for brands and individual celebrities, it also increases the likelihood of copycat products and attempts by copycats to benefit from an implied association with them. How do fashion designers combat such issues?

Providing designers with sufficient protection to encourage innovation while not restricting others from creating products has always been a legal conundrum in an industry which some consider has its foundation in reusing trends and being “inspired” by others. Designers have found their position much improved since the introduction of a new unregistered Community right which caters for the seasonal production of ranges. This is in addition to UK unregistered design right, which however exclude surface decoration and copyright which only protects artistic works to the extent that they are not defined by the product on which they are incorporated.

However, is reaction the best form of protection?

Bella's dress

2011 was the year of the high profile celebrity wedding. Kate Middleton and Prince William, followed by Kate Moss and Kim Kardashian and then, on the big screen, Bella and Edward in The Breaking Dawn: Part 1. All had the same surrounding media hype being beamed around the world with accompanying photographs and magazine spreads.

Another aspect they shared was a demand for replicas of what the bride was wearing. How does design law protect such sought after designs?

Wedding dresses, while high price tag items, are far more likely to reference classic design elements. For example, the use of lace in the shoulders and sleeves, a sweetheart neckline and an incorporated train in the back of the skirt of the dress (Kate Middleton), a sheer bias cut panel dress with an overlay embellished with sequins (Kate Moss) and strapless fitted bodice with a full tulle skirt (Kim Kardashian). Arguably, none of these elements alone is novel and therefore capable of protection.

But design rights can subsist in the whole or part of an article -- and the combination of a number of commonplace elements, if put together, can result in a protectable design. As many practitioners would agree the skill in design right cases is often defining the elements, or their combinations, in which design right is being claimed, and even in the most unlikely of areas there remains scope for detailed design work to be undertaken.

However, following on from the judgment of the Court of Appeal for England and Wales in Dyson v Vax, the more restrained the defined freedom and the more specific the right claimed, the more difficult a designer may find it to show both validity and infringement.

But are cease and desist letters and threats of litigation the only way? Both Kim Kardashian and Summit Entertainment (the distributors of the Twilight film) anticipated that there would be a demand (although this may have diminished following the quick collapse of KK’s marriage). Therefore, rather than letting third parties take lead on the production of replicas, both commissioned their own authorised cut price versions.

Summit in particular hit the ground running with their imitation dress going on sale shortly after the opening weekend (US$139.5 million in ticket sales) of the film. Months prior to the release of the film in strictest confidentiality, they had worked with Alfred Angelo to develop a version of the Carolina Herrara dress from the film. At US$799 it is reasonably positioned to cash into the romantic capital of Twilight’s predominantly female following.

BB Dakota Twilight jacket

Separately, Summit have again shown that they know the value of their Twilight “brand”. Summit owns various trade mark registrations in the US in relation to “Twilight” and was unhappy when it discovered that BB Dakota, a clothing brand which had produced a jacket worn by Kristen Stewart in the first Twilight film, was using its trade marks to promote and market the jacket. The Leigh jacket had been discontinued prior to the release of Twilight but, seeing it in the film, BB Dakota had put it back on sale. So far so good for BB Dakota. However, having done so they renamed it the “Twilight” jacket and started using various of Summit’s trade marks and copyrighted images to sell it.

No licence agreement had been entered into and Summit successfully claimed infringement against BB Dakota on the basis that their use went beyond what was reasonably necessary to identify the jacket (“as worn by Bella Swan in the movie Twilight” would have probably been sufficient) and suggested some form of association or permission to use the marks.

The right approach will vary from situation to situation; for example, offering authorised replicas of the royal wedding dress would have not been appropriate. However, a designer and/or brand may want to consider, provided it is commercially viable, whether their money is better invested in joining, and ideally eclipsing, those offering a cut price version, thereby taking back some control, rather than chasing them through the Courts".

Hidden design decision visible at OHIM

2012-01-10T17:11:00.000Z

OHIM's December 2011 Alicante News reports a decision on designs not visible in normal use in violation of CDR Art 4(2). This was a Pole-on-Pole dispute (A.C.V. Manufacturing vs. AIC, ICD 8325, not yet on the website), concerning RCD 1618703-0001. It depicts a heat exchanger, which is the tubular part shown in situ to the left - the drawings of the registration show the product in isolation, so I imagine the picture here was supplied by the opponent.
OHIM's decision followed their earlier case law (Case ICD 5502 concerning RCD 831995-0002, discussed here) in requiring not merely the theoretical possibility that a part might be visible in some notional use, but proof that the normal use would be visible. Before they ceased to examine applications, that was also the practice of the UK IPO (See Designs Practice Notice DPN 1/03).

First cellphone invalidation at OHIM?

2012-01-10T16:49:00.000Z

Thanks to reader (and Finnish design guru) Nina Mikander for bringing to our attention OHIM Invalidation Case ICD 8242, concerning RCD 001734401-0001, depicted. It was opposed by Nokia on the basis of their own earlier designs RCD 000790589-0001 and RCD 000766332-0002.
No fundamental point of law arises in the decision, but it makes interesting reading against the backdrop of the Apple/Samsung litigation. According to OHIM's decision in this case at paras 20-21:
"However, as far as the size of the screen, the lines and the place of each and every key of the keypad are concerned, the designer can exercise freely his right to creativity and add unique features that will make his mobile phones distinguish it from others. Therefore, the functionality as well as the design quality of telephones is the prime concern of the informed user. The various designs sold in the market have shown that the telephone companies have succeeded in integrating these features in their mobile phones without ever losing the identity of their design and, inevitably, the informed user will pay attention to the design details that attribute a distinctive character to the mobile phone of a certain company and act as a guarantee of origin of the product.

The RCD presents certain features such as a front panel, screen and control keypad. The presence of these features above is undoubtedly imposed by the technical function of a telephone. The absence, for example, of the keypads would alter the character of the product and most evidently would lead to a malfunction of the mobile phone, not being able to dial or text any messages. Nonetheless, the end purpose of a telephone could be achieved by many equally valid solutions and produce a design objectively attractive as well as functional."
Thus, the fact that there are some highly technical aspects to the design was not relevant - there was actually considerable design freedom, and the similarities between the phone and the citations were not dictated by function, so the design was invalid.
The comments about the design acting as a guarantee of origin are interesting - that is normally a trade mark function. If that is a legitimate function of a design, it may be that erosion of such a guarantee by infringements would be a ground for an interlocutory or interim injunction, as was (unsuccessfully) argued in the US Apple case we reviewed recently here.
In passing, it is interesting to note that the opposed design was a "hybrid" - it consisted of six line drawings and a rendered image (above). OHIM lets you do this, but the protection is presumably limited to the features shown in the rendered image. So, is there any point in preparing and filing line drawings?

AIPPI to analyse the design/copyright borderland

2012-01-10T14:22:00.000Z

Thanks to The Copyright Symbol Webpage

AIPPI's July 2011 Newsletter reveals that the 43rd Congress in South Korea will examine Q231: The interplay between design and copyright protection for industrial products - a topic which is hotting up in Europe, particularly the UK.

AIPPI's initial summary of the question, here, is as follows:

"At the 26th Congress of Tokyo, 1966, a resolution was reached on Q34, “Studies on the unification of the law on industrial designs and models”.The resolution noted, “Industrial designs must be protected by a system of their own which can co-exist with the copyright protection system in accordance with domestic laws” and set forth basic conditions for such protection. Forty-five years hence, the form and degree of protection afforded to designs of industrial products may vary widely among different jurisdictions. Q231 will examine the nature of this protection under both design and copyright law with emphasis on the interplay between these two forms of protection. The extent to which both design and copyright protection are available, and the degree of any overlap between these forms of protection, will be an informative issue to consider under the national laws.

The term “industrial” as used in the title of this question is intended in a broad sense. While examining this question as to all types of “products” would be overly broad, inclusion of the term “industrial” is not intended to narrow the question so far as to be limited only to products for industrial use. Rather, “industrial products” shall be considered to include all products for which protection is available based on appearance, shape, or ornamentation, including, for example, handicraft products."

The 1966 Tokyo resolution referred to above is here, and a subsequent relevant resolution from the 1985 Rio de Janeiro Congress is here.

If any UK reader wishes to post a relevant comment, I'll forward it to the AIPPI UK working group.

Hungary fee changes for Hague filings, renewals

2011-12-28T08:25:00.000Z

From PETOSEVIC comes this news of some fee changes for anyone designating Hungary in an international application or renewal under the Hague Agreement. They come into effect this Sunday, 1 January, so don't day you haven't been warned ...

Blooming heck - who can shed light on this slightly potty decision?

2011-12-21T17:41:00.001Z

Many thanks to several readers for directing our attention to an anomaly in a decision by the otherwise normally sensible Hague Court of Appeal.
The issue concerned arose in Case 200.060.916/01 Slewe Beheer & Bloom Holland v The Groove Garden, judgment of 13 December 2011, concerning illuminated flower pots (yes, really - they take their flowers pretty seriously in the Netherlands).
If your Dutch is good, there is commentary here and here. I believe (but check with the Dutch sources if you are interested) that the outcome was good for the plaintiff in that copyright infringement was found. This comment just concerns the Registered Community Design.
The plaintiff's pot, known as the BLOOM, is, it would appear, not dissimilar to the defendant's.

A straightforward design infringement, as with the copyright? Apparently not.
The RCD, number 000122189-0001(reproduced below), "merely discloses a pot made of transparent material containing one or two sources of light. There is no evidence to suggest that the illumination is integrated and closed in between a double bottom." These features were present in the Bloom product, and indeed may have been invented by the plaintiff, but since they were not explicitly visible they were not taken into account in assessing the design.
Apparently, the Court would have been satisfied with some verbal description of these features, for they commented that "Pursuant to Article 36(2) of the Regulation, the application shall contain an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied. Although paragraph 3 allows the option for the application to contain a description explaining the representation, Slewe restricted itself to the following "Indication of the product": "Pots (household), Pails, Plant pots, Flower boxes (outdoor), Lamps, Cribs for animal fodder". A description as a explaining the representation is absent, and the indication of the product is inaccurate or incomplete in that it fails to state that the product is a plant pot which can simultaneously act as a lamp. As a consequence, the Court of Appeal finds that it is to be assumed that the design merely discloses a pot made of a transparent material and containing one or more light sources, which is what the informed user must base his comparison of this pot and the VAS-ONE and the GG pot on (not a pot with integrated illumination contained in a double bottom)."

Then comes the unkind part: since the infringement, which they had found to be copied from the plaintiff, did "feature an integrated closed white bottom containing integrated illumination, with the light source itself not being immediately visible (only its light shining through the double bottom) in (the visible inside of) that pot. In that pot, there is a white, closed, smooth (double) bottom. This entails that the design rights have not been infringed"

None of that is the contentious point, however. That arises from a matter seemingly not in issue: the relevant date for assessing prior art, discussed in para 26 of the decision: "Pursuant to Article 7(2)(b) of the Regulation, the relevant date for assessing the novelty and individual character is the date 12 months before the date of filing of the application ...". They repeated the erroneous date at para 36.

Article 7(2)(b) CDR is, of course, the grace period provision. As (*ahem*) I noted back in 2002 at para 1-065 of my book, "The grace period exempts disclosures from invalidating; it does not use them to establish a starting date for protection (a priority date or a date of conception)." It appears that the Court have fallen into the error I warned against there. Or have I missed something?

Montenegro accedes to Hague

2011-12-20T09:59:00.000Z

Black mountain --
but not Montenegro

Earlier this year the Class 99 weblog reported here on some modifications to Montenegro's design protection regime. Now there's even more good news from the tiny state which translates into English as 'Black Mountain' and into German as 'Schwarzberg': by The Hague Notification No. 111, the World Intellectual Property Organization announces that Montenegro has deposited its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, which will enter into force there on 5 March 2012.

UK "intends to publish consultation on how to go forward"

2011-12-19T18:36:00.000Z

Going forward: often
easier to say than to do

The UK government's Designs Review Team emailed this Class 99 Team member today with the following news:

"You may be aware that the Government's response to the Hargreaves review required us to publish our assessment of the case for simplification of the design right system, and in particular whether there is a need for a UK unregistered right alongside the EU right, by the end of 2011. The information submitted through our recent 'call for evidence' and associated on-line survey has provided us with vital contribution which has enabled us to meet this commitment.

We have now compiled a position paper (http://www.ipo.gov.uk/types/hargreaves.htm) which, as you can see from the assessment, shows our intention to publish a formal consultation on how to move forward".

Also received today, and very much hot off the mark, is the following statement from Anti Copying in Design (ACID):

"Today Government is announcing its first assessment of the need for reform of the design intellectual property framework. In May 2011, in his report to the Prime Minister, Professor Hargreaves concluded that design had a “very important contribution to make to growth” to the tune of £33 billion to be precise (and still a growth area!) and yet he was critical of the policy makers whose role in supporting IP in this significant branch of the economy had been neglected. So, the good news for designers is there has been a flurry of activity and ACID welcomed the opportunity to paint the picture of SME reality by providing solid evidence from a diverse set of case studies. These highlighted the often grim problems that design-led companies face. This, we were told, has provided a valuable and credible foundation for future policy in this first IPO assessment. Government plans to publish a formal consultation on how to proceed in late spring 2012".

This is accompanied by a comment from ACID’s CEO Dids Macdonald:

"I welcome this assessment for design reform. However, it is important that any further research makes clear the relationship between (registered) design rights and innovation in the context of product design. The majority of the UK’s 232,000 designers (in 55 different design disciplines) rely on unregistered (copyright, design and trade marks) and informal rights. In this initial assessment, it is clear that UKIPO has listened and understands the problems facing many SME’s within design. Now the challenge will be to address them sensibly, practically and proactively with more action and less words”.

Class 99 will be following events carefully and hopes to report on developments as soon as they occur.

UK conference - Branding in a Modern Economy 2 - IPO design plans

2011-12-15T18:43:00.002Z

Andy Layton speaking about design rights and registration

The UK IPO organised a second Branding in a Modern Economy conference - their page with a link to the Minister's keynote speech (which was actually pretty good, as these things go) is here.
The contributions are not yet up, but I thought I'd summarise the design portions. Tony Clayton's voice was suffering, so the economic research on designs was wittily and pithily summarised (no easy task) by Ben Mitra-Kahn. There was then a panel discussion chaired by Phillip Johnson and involving ITMA President Maggie Ramage, ACID founder Dids Macdonald, and myself for CIPA.
Andy Layton, the Director of the Trade Marks and Design Registry at the IPO, then gave some thoughts about the way forward, and I have extracted these from the IPO's Twitter stream in case there are others like myself who aren't up to the mysteries of tweeting, as follows:

Next Up: Andy Layton - Director Trade Marks & Designs (IPO) - 'Reform of Design IP Framework' presentation
Today, going to talk about some of the probs with design IP system, that we have identified as result of research…
1st will talk about why we are going to such effort here. “Design” is wide concept incs broad spectrum of ind’s…
In 2008, investment in design alone = 1.6% of GDP. Design investment in UK in 2008 = £33.5bn…
Design empls lot of people in UK. Design Council surv = 230,000 designers in UK. Undervalues design activity in Britain…
UK design registrations fell steeply after intro of EU Comm Design System in 2003, this was to be expected...
Foreign co’s seeking protection in UK now said to be almost universally filing at OHIM rather than with us (IPO/UK)…
8k to 9k UK Design apps per yr, split appx 50/50 between IPO & OHIM, not consistent with vol of design activity in UK…
For TMs, IPO seen consistent growth in the no. of UK TM filings despite advent of CTMs.
Research suggests <1% of UK biz’s use registered designs currently...
At the time Hargreaves did not think he had enough evidence to make a call on whether current design IP system works…
Hargreaves said not knowing how design rights affect innov + not knowing how best to improve framework was unsatisfactory
Research we mentioned earlier shows that for many biz’s, benefits of design protection are not clear…
Over 59% of respondents to one researcher reported they have had their designs copied…
Our research suggests many companies only get up to 4 yrs value from their designs…
So what should we do to fix design IP system & what ideas emerging as result of our recently issued Call for Evidence?…

1. Needs to provide clear & simple choices how to safeguard value of design; harmonising UK design rights with OHIM…

2. Need to be relevant to current needs of biz & indiv; implications for how we struc serv we offer + speed we provide it

3. Need design IP framework to be known about – we need a good level of business awareness…

We are compelled by EU directive to offer design reg serv, & to harmonize where poss with service being offered by OHIM…
Many resp to Surv & Call for Evidence make clear that RCD offered by OHIM is attractive in scope of protection & cost…
Andy closes presentation by stating big challenges to overcome, IPO working on them using evidence. He welcomes external input.
Call for evidence next steps will be preliminary statement, will be out in due course.
Anyone wishing to contribute evidence/research etc to TM or DESIGNS teams at IPO, email: communications at http://IPO.gov.uk
Andy Layton - Director Trade Marks & Designs (IPO) is bringing conference to close. Thanks all for attending and contributing.
Output of today will form conference report in the New Year. Some of today's content will be avail on IPO website soon

Apple fail to get US interim design injunction against Samsung

2011-12-15T13:36:00.006Z

Our thanks to our sister blog Patlit for drawing our attention to the judgment in the first round of Apple/Samsung in Northern California. Like the German and Netherlands cases we have reported so far, Apple have cited their iPad design US D504,889 (equivalent to RCD 181607-0001) and their iPhone designs US D618,677 and D593,087 (probably equivalent to RCDs 748280-0006 and 888920-0018).
Apple lost the preliminary injunction case largely on economic factors. One of the points argued was whether erosion of the uniqueness of a design could cause irreparable harm sufficient to warrant a preliminary injunction - a fascinating argument which was seemingly not rejected out of hand, but found not persuasive.
On the substance, the Court swiftly and crushingly rejected Samsung's claims that the designs were invalid as being functional merely because minimalistic - quite correctly, IMHO. However, some aspects were functional and this limited the scope of the designs.
The iPhone designs were thought likely to be valid over Samsung's evidence, and also likely to be infringed. The iPad design, however, was held likely to be invalid over a 1994 Fidler/Knight-Ridder tablet device, which had also featured in the Netherlands litigation. Had it been valid, it too was also likely to be infringed. There were some interesting comments on the case law post-Egyptian Goddess (see postings passim) including the "crowded field" effect in narrowing the scope of designs hemmed in by close prior art.
There was also an interesting side issue on the use of broken lines. The '087 patent indicated that these were to disclaim part of the product, whereas the '677 made no such statement. The Court followed authority to the effect that in the absence of a clear indication to the contrary, dashed line portions could be taken into account as part of the design, but held that in this case, it was likely that the '677 patent intended to use them as a disclaimer.
For readers who wish to know more, there is an excellent analysis of the case in "Apple v. Samsung: Intelligence on Apple’s U.S. Design Patent Offensive" C. V. Carani, BNA’s Patent, Trademark & Copyright Journal, 82 PTCJ 906, 10/28/2011. A copy (seemingly non-licensed) is on Docstoc if your conscience and your legal code permit you to use it.

Who said there was no such thing as a free lunch? WIPO backs Hague Workshop

2011-11-24T16:50:00.000Z

This blogger has just been perusing an advertisement, below, for a forthcoming workshop on the international registration of designs which takes place in the very near future, on 12 December in -- where else? --The Hague itself, the lovely city which gave its name to the Hague System for the International Registration of Industrial Designs (here). WIPO is offering a "free walking lunch". Not having heard this term before, I did some research on it. You can find some guidance here, here and here. Walking lunches are said to ward off deep-vein thrombosis (DVT) -- but I rather assumed that they might induce indigestion ...

WORKSHOP ECTA – BMM – WIPO – BOIP
INTERNATIONAL REGISTRATION OF DESIGNS
The Hague, 12 December 2011

After successful events in London in February, Rome in March, Paris in July and Hamburg in September 2011, ECTA is pleased to invite you to attend a further workshop on international registrations of designs in order to promote the Hague System and to evidence its great advantages. This workshop, held in collaboration with our Sister Association BMM, WIPO and BOIP, will take place in The Hague on 12 December 2011. The language of the event will be English. WIPO are kindly offering a free walking lunch prior to the event.

See detailed Programme and Registration form.

Location:
BOIP
Bordewijklaan 15
NL-2591 XR Den Haag
The Netherlands

Priority and partial designs in China

2011-11-24T12:08:00.002Z

One of the joys of design practice is that everywhere is different. And one of the joys of Chinese practice is that, as in the old days in the UK, you cannot get protection for the design of just a part of a product, in isolation. We are, as always, grateful to Linda Liu Group in China for permission to reproduce the following article from their recent Newsletter 51.

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How to file a Subsequent Design Application in China When the First Foreign Application is for Partial Design

--Wang Xue

Unlike the situation in Japan, the U.S. and Europe, partial design is not protected in China. Both the applicant and the patent attorney are most concerned about or confused with the question of how to file a subsequent design application in China to enjoy priority and obtain a scope of protection as large as possible when the first foreign application is for partial design. This article makes a brief analysis and explanation over this issue, and I welcome your precious comments.

How to modify the drawings or photographs of the partial design in the first foreign application so that they can be used in a subsequent design application in China to enjoy priority and obtain an expected, reasonable scope of protection? In fact, the focus of this question is the determination of the same subject matter for designs. The SIPO’s Guidelines for Patent Examination prescribes the determination of the same subject matter for designs as below:

“The determination of the same subject matter for designs shall be based on the design application subsequently filed in China and the content indicated in the first foreign design application. Designs of the same subject matter shall meet both of the following two conditions:

(1) both of the designs are for the same product; and

(2) the claimed design in the subsequent application in China is clearly shown in the first foreign application.

When the drawings or photographs of the claimed design in the subsequent application in China are not completely consistent with those of the first foreign application, or the subsequent application in China contains a brief explanation while the first foreign application does not have the related brief explanation, but based on the application documents of the two, the claimed design in the subsequent application in China has been clearly shown in the first foreign application, it may be determined that the claimed design in the subsequent application in China has the same subject matter as that of the design in the first foreign application, and thus may enjoy the priority of the latter.”

The following are two examples.

Case 1

As shown in Fig. 1, the first foreign application claims partial design for a handle, wherein the dotted lines show a cabinet. When filing a subsequent design application in China claiming the priority of the first foreign application, the applicant may change the dotted lines into solid lines to file a design application for a cabinet. Alternatively, the applicant can delete the cabinet and only retain the handle to file a design application for a handle. Since both the two modified designs are clearly shown in the first foreign application, they can enjoy the priority of the first foreign application. Compared with the design application for a cabinet by changing the dotted lines into solid lines, the design application for a handle by deleting the dotted lines can obtain a larger scope of protection.

Fig. 1

Case 2

As shown in Fig. 2, the subsequent application in China deleted the two round holes indicated by dotted lines as well as the border lines between the dotted-line portion and the solid-line portion from the first foreign application, and changed all the remaining dotted lines into solid lines.

Fig. 2

Currently, the examiners for preliminary examination also allow the modifications as shown in Fig. 2. With regard to such modifications, the examiners for preliminary examination normally acknowledge that the shape of the modified design in the subsequent application has been shown in the design of the first foreign application and that the subsequent application can enjoy the priority of the first foreign application. Further, if the views submitted upon filing of the subsequent application are the same as those of the first foreign application, the applicant may also make the modifications as shown in Fig. 2 in subsequent procedures, and such modifications will not be considered as going beyond the scope of the original application. However, at present, there is no such case happening in the invalidation procedure.

As shown above, when filing a subsequent design application in China claiming the priority of the first foreign application for partial design, the applicant can make the following changes—changing all the dotted lines into solid lines to file a design application for the entire product; or deleting all the dotted lines if the solid-line portion also qualifies as a product for filing a design application; or modifying the dotted-line portion in a limited manner. If the modified designs meet the unity requirement, the applicant may also incorporate two or more designs in the same application. This is especially beneficial for the applicant who files a subsequent design application in China claiming the priority of the first foreign application for partial design.

The above is my view about how to file a subsequent design application in China claiming the priority of the first foreign application for partial design. I hope that this article is helpful for you and we can have further discussions about this issue in the future.

Keep taking the tablets? Yes .. and no

2011-11-24T10:07:00.000Z

"Euro-injunction mechanism in Community designs: Samsung Galaxy Tab European ban partially lifted", by Séverine Mas, is the title of a Current Intelligence case note which will be published in the print version of the Journal of Intellectual Property Law & Practice in due course. This note discusses Apple Inc. v Samsung Electronics GmbH and Samsung Electronics Co. Ltd, a decision of the Düsseldorf Landgericht of 9 September 2011. According to the abstract,

"The 14th Civil Division of the Düsseldorf Tribunal of first instance confirmed an interim decision preventing the German firm Samsung Electronics GmbH from selling the Samsung Galaxy Tab 10.1 in the whole of the European Union, on account of a potential infringement of a Community design registered by Apple. The ban was, however, restricted to the German territory for sales by Samsung Electronics Co. Ltd, based in South Korea".

David Musker has already posted a note on this dispute on Class 99 here. You can now read Séverine's analysis in full on the jiplp weblog here.

"Exclusive right" does not cover the right to infringe till one's own design is invalidated, advises AG

2011-11-08T11:28:00.000Z

Earlier this year, Class 99 mentioned a reference from the Alicante Commercial Court to the Court of Justice for a preliminary ruling on a point of registered Community design infringement in Case C‑488/10 Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamientos SL. This morning the Advocate General's Opinion was published in a selection of EU official languages, but not English.

The reference turns upon Article 19(1) of Regulation 6/2002, which states:

Rights conferred by the Community design

1. A registered Community design shall confer on its holder the exclusive right to use it and to
prevent any third party not having his consent from using it. The aforementioned use shall cover,
in particular, the making, offering, putting on the market, importing, exporting or using of a
product in which the design is incorporated or to which it is applied, or stocking such a product
for those purposes.

The referring court asked:

"1. In proceedings for infringement of the exclusive right conferred by a registered Community design, does the right to prevent the use thereof by third parties provided for in Article 19(1) of Council Regulation ...6/2002 ... extend to any third party who uses another design that does not produce on informed users a different overall impression or, on the contrary, is a third party who uses a subsequent Community design registered in his name excluded until such time as that design is declared invalid?

2. Is the answer to the first question unconnected with the intention of the third party or does it depend on his conduct, a decisive point being whether the third party applied for and registered the later Community design after receiving an extra-judicial demand from the proprietor of the earlier Community design calling on him to cease marketing the product on the ground that it infringes rights deriving from that earlier design?"

So does a later registered owner of a Community design, by virtue of his exclusive right to use it under Article 19(1), have an enforceable entitlement to carry on using it even in the face of infringement proceedings brought the the holder of an earlier right which does not produce on informed users a different overall impression? According to Google Translate, the Advocate General thought not:

"The right to prohibit the use by others of a registered design by virtue of Article 19(1) ... can also be invoked against a third party who uses his own registered design later. It is not necessary for that purpose to first obtain a declaration of nullity of that design.

In this context, both for the third party that the registration of the design of the latter has taken place or not in response to a notice, by which he was asked to stop marketing of its product, are irrelevant".

If the court agrees with the Advocate General's Opinion -- which happens in around 80% of references for preliminary rulings -- this will be good news for plaintiffs in Community design infringement proceedings since they won't need to knock out the defendant's later registration before bringing an infringement suit.

Functional designs - the Invalidity Division draw the line, but will it hold?

2011-11-01T12:42:00.001Z

Alicante News carries an English-language report of decision ICD 8225 (in German), in which OHIM's Invalidity Division re-drew the line on functional designs. The decision concerned RCD 001213904-0001, registered for “pallets” as shown on the left.
The Alicante News summary indicates that the Division have re-cast the question as one of design freedom. In my view, that is the correct approach. It is consistent with the previous "multiplicity of forms" test (adopted in the opinion of Advocate General Ruiz-Jarabo in Philips v Remington (Case C-299/99) and followed in UK cases such as Landor & Hawa v Azure) as where a product can only be made in one shape, clearly no design freedom can exist, but seems likely to enable a more flexible approach which may deal with some of the criticisms of the multiplicity of forms" test without opening the door to the kind of subjective aesthetic judgement which can so easily result in refusal of protection to deserving and novel designs. Can any German-speaking readers comment further on the decision?

Caravan cover - no cover-up

2011-10-31T16:08:00.000Z

We are pleased to report what may be the first judgment of Richard Meade QC sitting as a Deputy Patents County Court judge, in Pro-Tec Covers v Specialised Covers [2011] EWPCC 23. Quite a long decision, but it seems that the parties put a lot into the case, which ran for three days.
The case concerned covers for the front of caravans, and involved an ex-employee, some keen caravanners and a certain amount of bad blood. The major problem faced by the claimant was that, although they had shown access and similarity, that is nowadays not enough to get you to proof of copying because in a functional design, similarities can arise out of necessity as well as out of copying. In this case, according to Mr Meade, "the allegation is of a concerted campaign of copying by at least four people, followed by a concerted campaign of lying about it and covering it up. I would only accept such an allegation if there were compelling evidence in favour of it." And, in his view, there was not.
As a practical matter, it is hard to know how one would ever be able to pin down a really unscrupulous copyist under these circumstances, for as he says, "If it were true that the Defendants and Mr Lord made a conscious plan to copy which they followed through and then concealed then one would not expect any evidence of actual access to survive." If access and similarity are insufficient, and the defendant has covered his design trail, what is left to the plaintiff?
The case resurrects an interesting debate on the scope of the UK Unregistered Design Right "must fit" exclusion (CDPA s. 213(3)(b)(i)), which might also be applicable to the corresponding provisions of the EU Community Design Regulation and the Registered Designs Act. Put simply, the question is: if all the component parts of a complex product are excluded from protection as being "must fit", can the whole nonetheless be protectable? The Court held not in Baby Dan v. Brevi [1999] FSR 377. However, as Mr Meade notes, "Baby Dan has received some adverse comment in the textbooks (e.g. Laddie, Prescott and Vitoria, 4th Ed. paragraph 45.35), and has been suggested to be inconsistent with Electronic Techniques (Anglia) Limited v. Critchley [1997] FSR 401." The question was left undecided in Ultraframe v. Eurocell [2005] RPC 36, [2005] EWCA (Civ) 761 and, having not heard full argument on it, Mr Meade left it undecided also.
But is it really still an undecided point? It appears to have been dealt with, as clearly and succinctly as one would expect, by Sir Robin Jacob LJ in Dyson v Qualtex [2006] EWCA Civ 166 at paras 20-21:
"Before going to the detailed points, it makes sense to consider Mr Carr's opening, general point – one by way of reductio ad absurdum. He submitted that if Mr Arnold were right about his construction of "must-match" it would be open to a third party to produce all the parts which go to make up the external appearance of the machine. And if he were right on his construction of "must-fit" the same would apply to all the working parts. So, if Mr Arnold were right, people would simply be able to copy the whole machine itself. That is absurd and cannot be so. I do not think this general argument assists. One answer (there are others) is because a separate UDR will subsist in that aspect consisting of the appearance of the whole article, it does not matter if none subsists in the individual parts. That UDR is not a feature of shape which is dependent on the appearance of anything."
That must surely be right in logic. Each part may dictate features of another, but the whole is not dictated by the parts. But does that defeat the object of the provisions, or are they aimed only at the parts per se?
Finally, an interesting point on cross-examination: to what extent can you surprise a witness with cross-examination documents in the UK? The element of surprise has largely been removed from UK patent litigation. However, in an unregistered design case, it is not uncommon (at least at the beginning of the case) for defendants to be economical with the actualité, and if it is the claimant's case that they are lying, then they may need to be able to trip up a lying witness with no notice in advance, as was reluctantly but perhaps tacitly accepted by the judge in this case:

"Perhaps this will refresh your memory! James Thurber, 1935

"It would perhaps have been fairer and more efficient to provide the materials in the cross-examination bundle to Mr Proctor in advance in the way now common in patent actions, but I think the degree of surprise was modest and Mr Proctor did not appear thrown by it."

Dyson v Vax - Court of Appeal clarifies

2011-10-31T14:13:00.001Z

We covered the first instance judgment in Dyson v Vax here. The appeal judgment has just issued (Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206 (27 October 2011)), and we are pleased to see that Sir Robin Jacob has been able to spare a little more time for guidance on designs.
On the main issue, the Court of Appeal found that Arnold J had been entitled to reach the conclusion that there was no infringement - he had made no error of principle. His rather controversial findings on functionality (following the OHIM Lindner Chaff cutters decision R 690/2007-3 discussed here) form no part of the appeal judgment, since his first instance decision does not rest on them - he found the Dyson design non-functional even on his test.
The points we found of interest were, firstly, a retraction of Sir Robin's (obiter) remarks on Recital 13 of the Design Directive 98/71 in Procter & Gamble v Recikitt Benckiser. The difference in wording he had analysed appears to have been sloppy drafting (according to Alex von Mühlendahl in Design Protection in Europe, 3^rd Edn. (2009 at pp.232-3).
Secondly, another review of the position on expert evidence. Anyone running a design case should read this carefully. According to Sir Robin, "It is highly desirable in a registered (or indeed unregistered) design action that, if permission to give expert evidence is to be given at all, the precise ambit of that evidence should be defined. This was the procedure adopted in the present case by order of Arnold J who heard the Case Management Conference. The expert should be told what question or questions he is addressing and confine himself to these. The same is often true in other cases: left to their own devices experts all too often address questions of their own choosing."
Jackson LJ (who should know, if anyone does) added that "It is anticipated that next year CPR Part 35 will be amended in a number of respects. One amendment will require a party, on a permission application for expert evidence, to specify the issues which the expert will address. Another amendment will encourage, but not compel, any court giving permission for expert evidence to specify the issues which the experts should address. Courts already have the power to limit and focus expert evidence. If they do so more often (which I hope will be the effect of the forthcoming rule amendments) substantial costs will be saved."
Finally, a minor point on how to treat colour representations of a design: "Although these are in colour it is common ground that the colour (of both the registration and the alleged infringement) should be ignored for the purposes of considering the scope of registration. This is because the statement of novelty says: "The features of the design for which novelty is claimed reside in the shape and configuration applied to the article as shown in the representations." In order to obviate any risk that colour might enter into the comparison, the physical articles we compared were spray painted grey all over (including those parts visible through the clear dust collecting bins)."

Design and IPR - What are your views?

2011-10-30T20:59:00.000Z

The following is a plea from Dids Macdonald (ACID) for a more realistic approach to design protection in the United Kingdom, where anyone who reads judicial decisions in cases involving the UK registered design right must wonder how far removed so many of the issues before the court seem to be from the daily activities of designers and copyists:

"In view of the current UK Intellectual Property Office (IPO) “Calls for Evidence” and prior to a possible full consultation on designs recommended by Ian Hargreaves and now part of Government's 10 IP recommendations, some IP stakeholders and designers have discussed the idea that simplification of what is to many a complex set of design rights is desirable.

Protection for designers could be made more simple with the abolition of UK unregistered design rights so long as they could rely on copyright protection instead.

This would achieve many objectives, not least parity of rights between unregistered design right and copyright. After all, what is the difference in creative input between an iconic furniture designer and an artist or songwriter and yet in the UK, without registrations, the former relies on ten (realistically five!) years of unregistered protection in the UK and three in Europe -- whereas an artist/songwriter benefits for the life of the author plus 70?

It is also very difficult for some small organisations like ACID to provide evidence-based information about Court cases when very few design cases ever reach a final Court hearing, the majority of them being settled at various stages.

How many letters before action or cease-and-desist letters have YOU sent out in the past past years?”

Dids explains: while ACID has used all its extensive connections in the design community to work in collaboration and assist the UK IPO to reach a broad base of the design community to complete its questionnaire, we can’t help feeling that the basis of this research is inconsistent with designers’ needs for clear policy.

The Minister has asked for research on the connection between registered design rights and innovation. The majority of designers in the UK and, indeed globally, rely on unregistered and informal rights. Having said that many designers rely on all the formal rights registered trade marks, copyright and to a much lesser extent patents, why then single out design right in the context of innovation through design?

Innovation "speedy"

Innovation happens at an amazingly speedy pace and happens regardless of IP. The language and dialogue should be about innovation, business and commercialisation through the creativity which translates design into tradable IP. That needs the support of a user friendly IP framework when designers (the majority of them small businesses) are copied, and the majority of which is blatant. Damages to dissuade the consistent protagonists, many of them in our own back yard. Effective training of IP intermediaries who can help small businesses creates a proactive IP strategy as part of their marketing and communications plan. These three steps alone would encourage growth and make jobs more secure.

It is amazingly frustrating to see research after research prior to a needless consultation when all the figures thus far produced are in the public domain, some of the statistics on which initial research has been produced are both inaccurate and anecdotal and the basic premise for this self-serving research is, quite frankly, way out of kilter with the requirements of small business entrepreneurs in design.

Polls

In the side bar to the right of this weblog you will also find two polls in which you can offer your considered opinion as to the utility of the UK registered design right in a jurisdiction which already offers unregistered design rights at UK and EU level, the Community design right and, at an underlying level, regular copyright. The first poll gives you a chance to say what you feel about the Registered Designs Act 1949, which provides the legislative basis for UK registered design right. The second poll gives you a chance to reflect on what you might like to see in place of that Act, if UK registered designs were scrapped.

Do let us know what you think!

Why pay for it when you can get it free?

2011-10-30T20:34:00.000Z

One man's prudent financial management
is another's lack of a spirit of generosity ...

"Rolling Stone: Obama Hits Up Designers to Work for Free -- On Jobs Poster" is the striking headline of this article by Ken Wheaton on the Ad Age Blog, kindly drawn to my attention by Creative Barcode's ever-attentive Maxine Horn. The essence of this piece is that Rolling Stone, the now veteran title which supplied both good taste and attitude to a generation of college students in the 1960s and 1970s, has criticised the Obama for America movement for turning to unpaid crowd-sourcing for a jobs poster. The original piece states, in relevant part:

"The Obama campaign has more than $60 million cash on hand. In an economy this bad, you'd think a presidential campaign that flush would be happy to pay good money for a talented designer to create a campaign poster. But the folks at Obama campaign have taken a page from the Arianna Huffington book of economic exploitation and called on "artists across the country" to create a poster ... for free.

And here's a bit that might strike a sour note with many ad-agency folks out there: Even if you don't win the contest, Obama for America, according to the fine print, owns your intellectual property".

Wheaton concludes with the observation that

"members of the design and ad community did a great deal of free work for Obama in 2008. But at the time, [Obama] was selling hope and change to people eager to buy. With too much of that change going in the wrong direction, this time they're eager to get paid--especially if the campaign in question is sitting on a war chest that makes it "the 1%" of the political field."

Prudent IP managers are probably nodding their heads in approval at the notion of Obama for America controlling the IP rights of losing designers as well as winning ones, to avoid any of the hassles and embarrassments of allegations by losers at a later stage that any part of their designs have been appropriated in whole or part for campaign purposes -- but wouldn't a short-term exclusive licence to use for the purposes of the campaign be just as efficacious, and create a good deal more goodwill? And wouldn't some sort of prize or compensation send out a positive message concerning the value placed by the Obama administration on the creative industries?

But the last word goes to Maxine:

"The same happens in the UK where public sector in particular often insists not only in speculative creative work to be submitted in tenders but also that IP rights are assigned to the commissioning government agency as a condition of tendering, irrespective of whether the contract is awarded or not. This is largely a stipulation only applied to the design, advertising and architecture sectors

How can we have an IPO office which spends millions of tax-payers' money on encouraging SMEs to protect and exploit their IP and for which it gains revenue -- if other government department take IP off of the same SME sector through its unfair procurement policies?

And likewise how can the government stand on platforms and take PR plaudits for crowing about the value and growth of the creative industries when they themselves are stifling growth and potentially damaging the same sector through unfair procurement policies?

It’s surely got to change!".

Postcard from Munich: ACID on SME and micro business design policy

2011-10-27T10:26:00.000+01:00

ACID has been making its mark on WIPO, it seems. According to a media release from Anti Copying in Design,

Following an invitation from the World Intellectual Property Office (WIPO) at a two-day World SME and IP Forum, Dids Macdonald CEO of ACID took the opportunity to raise awareness of the extensive use of unregistered and informal IP rights by the creative industries in the UK.

The Forum was organised by the European Patent Office (EPO), sponsored by WIPO and held in Munich last week. Statistics from around Europe reinforced the fact that the UK is not alone in the distinct lack of formal IP registrations to support their business models.

Representatives from many National IP Offices and other relevant institutions in the Organisation for Economic Cooperation and Development (OECD) shared their experiences of work being undertaken to help raise awareness about the significance of IP training, particularly for those involved in training the intermediaries who interface with SMEs in business mentoring. “Train the IP Trainers effectively” was one of the key messages being discussed by delegates. The EPO IP4inno [which you can check out here] is an excellent website offering training modules for those involved in IP mentoring. ip4inno is a project funded by the European Commission as part of the Sixth Framework Programme for Research and Technological Development. Its main aim is to help small and medium-sized enterprises (SMEs) enhance their understanding and use of intellectual property rights with a view to promoting innovation and competitiveness in line with the European Commission's Lisbon goals.

Dids Macdonald talked about ACID’s experiences, emphasising the importance of providing one to one IP clinics on a wide variety of intellectual property based subjects. Access to expert help at the end of a telephone and a proactive approach to the communication of an IP strategy, both internally and externally through the supply chain, is paramount for SMEs [Here again funding, training, monitoring and risk management of one-to-one expert advice are all issues. Some can be addressed by collaboration between small design businesses; others not].

Speaking at the event, Dids said, “The UK comprises of many micro and small businesses and designers account for approximately 232,000 of these. However, the majority of them have less than 4 employees and for most it is impossible to take legal action against infringement [The need to distinguish between 'big' SMEs and micro businesses -- in which design seems to be disproportionately represented -- may be important here. Businesses with 4 employees or fewer generally also lack the facility to absorb and update complex legal advice, let alone the ability to make informed strategic design-right based business decisions or fund litigation]. As such, many small firms are isolated and IP law can seem very complex, so it is important to move towards uncomplicated user friendly access to practical IP help and information. Future IP policy must reflect support for commercial growth in business and economic terms and get away from “IP Rights” dialogue. ..."