Class 99

Shape marks from A to Z (or L?) - the Stokke chair

2013-06-17T15:48:00.000+01:00

Some time ago we covered a German copyright case concerning the famous Tripp-Trapp highchair made by Stokke (depicted left, top). The chair has a nice, striking side view which I think of as Z-shaped, though others call it an L-shape (and maybe it is, if you think in italics).
It was originally patented way back in 1972 (the patent is US4109961/DE2421259 if you are interested), and the patent has therefore lapsed long since expired, leaving Stokke to defend on the basis of various other intellectual property rights - a not unfamiliar story in Europe these days.
Clearly, the Stokke shape itself is not purely functional, and is bought for partly aesthetic, partly functional reasons, but where should the balance lie, when a design has initially been protected by patent but has acquired iconic status? And how broad should the protection be?

Stokke's various (often successful) actions so far were discussed at UNION's Amsterdam Round Table last year, and the presentation can be found by going to this tab and clicking on "Roundtable on Preventing and Combating Look-Alikes, Amsterdam, November 2012". There is some nice further background discussion of the Netherlands copyright cases by Professor Bernt Hugenholtz here.

Amongst other things, Stokke have some trade mark registrations to the chair shape (it is marketed without prominent branding on the product itself, although I am not sure about the packaging. One of these is being litigated in the Netherlands.
The alleged infringement is the Hauck chair (depicted right, below). Not a million miles different (ignore the straps and tray as the Stokke one comes with those too), but the side view looks much more like an A than a Z. There are therefore questions as to how far the scope of the Stokke rights should go; is the front view the most important? Take away the Z and do you just have a functional design? And so on.
We are therefore grateful to the ever-vigilant IPKat for steering us towards a recent ECJ reference from the Dutch Courts, dealing with some fairly fundamental issues for shape marks. Some background to the dispute is on the Nauta Dutilh website here.

The reference asks the following questions, of which for my money the most interesting one is 2(b) - what proportion of the value has to be down to the shape, and what proportion can be due to other factors - since almost all designs are bought for a combination of reasons.

1 (a) Does the ground for refusal or invalidity in Article 3(1)(e)(i) of ... Directive 2008/95, namely that shape trade marks may not consist exclusively of a shape which results from the nature of the goods themselves, refer to a shape which is indispensable to the function of the goods, or can it also refer to the presence of one or more substantial functional characteristics of goods which consumers may possibly look for in the goods of competitors?

(b) If neither of those alternatives is correct, how should the provision then be interpreted?

2 (a) Does the ground for refusal or invalidity in Article 3(1)(e)(iii) of ... Directive 2008/95 namely, that (shape) trade marks may not consist exclusively of a shape which gives substantial value to the goods, refer to the motive (or motives) underlying the relevant public's decision to purchase?

(b) Does a 'shape which gives substantial value to the goods' within the meaning of the aforementioned provision exist only if that shape must be considered to constitute the main or predominant value in comparison with other values (such as, in the case of high chairs for children, safety, comfort and reliability) or can it also exist if, in addition to that value, other values of the goods exist which are also to be considered substantial?

(c) For the purpose of answering Questions 2(a) and 2(b), is the opinion of the majority of the relevant public decisive, or may the court rule that the opinion of a portion of the public is sufficient in order to take the view that the value concerned is 'substantial' within the meaning of the aforementioned provision?

(d) If the latter option provides the answer to Question 2(c), what requirement should be imposed as to the size of the relevant portion of the public?

3. Should Article 3(1) of ... Directive 2008/95 be interpreted as meaning that the ground for exclusion referred to in subparagraph (e) of that article also exists if the shape trade mark consists of a sign to which the content of sub-subparagraph (i) of subparagraph (e) applies, and which, for the rest, satisfies the contents of sub-subparagraph (iii) of subparagraph (e)?

The outcome will likely give some answers (clear or otherwise) as to the extent shape marks can be used to protect "design classics" in the EU. We will keep you posted.

The IP Bill - crouching judge, lurking professor

2013-06-15T11:50:00.000+01:00

The UK IP Bill has this week been through the first and second Committee sittings, on 11 and 13 June. We commented on Monday on a couple of the amendments made. These have been withdrawn - it seems they were intended only to provoke debate. Whew.
Actually, I have been pleasantly surprised by the quality of the debate in the Lords. The right questions have been asked - though the right answers may not have emerged. On most points, the Government is clearly inclined at this stage to hold to its course.
The Delegated Powers Committee has issued a report in which it dislikes the Government's proposed enabling powers to issue future amendments by "negative procedures" and proposes instead "affirmative procedures" - a matter raised generally at the CIPA/ITMA seminar a week ago. We do not yet have the Minister's response.
Various issues were raised in relation to the proposed criminal measures, and clearly the debate has only just started. There was, however, a reassurance from the Minister (the Parliamentary Under-Secretary of State, Department for Business, Innovation and Skills, Viscount Younger of Leckie) that 'the offence depends on the infringing product having been made “exactly or substantially” to the registered design, and this should catch only those who set out to copy a registered design, not those who make distinguishable follow-on designs.' That may well provide one element of the reassurance sought by many at the CIPA/ITMA seminar and elsewhere. The Minister's position was that "...the clause is not intended to have a chilling effect on innovation or legitimate and competitive risk-taking within business. This is something that we were very much mindful of during the drafting of the offence as our policy intention was to target only those people who deliberately use somebody else’s ideas and creativity."
On the issue of extension of the offence to UK UDR, long sought by ACID and others, the Minister pointed out that "This inhibiting effect is likely to be a particular problem in relation to functional designs, which the UK unregistered right also protects. As a functional result can be achieved only in a limited number of ways, the inhibiting effect on innovation is likely to be more serious or pronounced."
So the debate hinges as follows: (a) There is support for retention of UK UDR, not least because it is the only design right which gives (short term) protection for functional designs. That makes it dangerous to criminalise infringement of UK UDR. (b) But if you get rid of protection for functional designs (as one of the opposition amendments proposed), why keep UDR at all? Perhaps there is a way through this dilemma, but it is not immediately evident.
Adding an element of mystery to the proceedings was the reference to "the seven professors who lurk in the background to these and similar amendments". These were the "magnificent seven" who wrote a letter to the Times concerning section 52 (now repealed) of the CDPA - we can reveal their true identities, and the letter in its original form, on the IPKat here. The four patent judges, who also appear to have had a hand in the amendments, were by contrast named individually.
There are encouraging signs that the Lords would like to debate broader issues, such as the nature of protectable matter (Lord Stevenson of Balmacara, formerly at the BFI, was concerned at the protection for props following Lucasfilm) which would engage section 51 of the Copyright, Designs and Patents Act, and the policy behind periods of protection. The next debate is on 18th. We shall keep you posted, if it isn't too unspeakably dull.

Hague: WIPO gives a friendly welcome

2013-06-11T10:09:00.002+01:00

A tweet today from the World Intellectual Property Organization (WIPO) reminds us that the international filing for industrial design protection is easier than it ever has been. A web page, cosily named "Welcome to the E-filing Interface for the International Registration of Industrial Designs under the Hague Agreement", leads to a good deal of useful and interesting information for first-timers and regulars. You can get down down to business or view some 25 minutes' worth of tutorials. Well done, WIPO.

IP Bill - would amendments fall foul of FLOS?

2013-06-10T13:31:00.002+01:00

Amendments (available here) were proposed to the IP Bill last Friday.
Some of these are helpful - for example, a definition of the rights of joint owners. However, one displays clearly the dangers of unintended consequences.
The Copyright, Designs & Patents Act defines "design" for the purposes of what is included within UK Unregistered Design Right at s213. A similar definition exists in s51, for what is correspondingly excluded from copyright.
At present, broadly speaking, 3D designs are included in Unregistered Design Right and excluded from copyright; for 2D designs, the reverse is true. The amendments propose to change s213 to align the definition of UK Unregistered Design Right with that of Unregistered Community Designs (and UK and Community Registered Designs). That sounds laudable, in principle, but ...
The main effect is to also include 2D designs within the protectable subject-matter of UK Unregistered Design Right. However, the knock-on effect of thus including all registrable designs within the definition of UK Unregistered Design Right is that they would all be EXCLUDED from copyright protection under s51.
This would have several interesting consequences. The first is that the Government's recent abolition of s52 (and consequent extension of copyright protection) in the Enterprise and Regulatory Reform Act 2013 would be entirely negated, as no design would survive s51.
The second is that the UK would clearly be in breach of its obligations under the Design Directive 98/71 and the Community Design Regulation 6/2002, both of which require the "principle of cumulation" and forbid the denial of copyright to designs in general, as explained in the EU FLOS case (C-168/09 Flos SpA v Semeraro Casa & Famiglia SpA), discussed here and here.
I have some other areas of significant concern:

The amendments would remove protection via UDR for functional designs.
They would remove the "must-match" exclusion without, however, replacing it with a "repair clause" defence - thus making spare part competition impossible.

Let us hope these amendments get a thorough airing rather than being rushed through - there are unexpected dangers in disturbing the equilibrium of one part of the design system without thinking about the impact on others.

Imperfectly remembered => perfectly invalidated

2013-06-06T17:37:00.001+01:00

The General Court recently ruled in Case T-55/12, Su-Shan Chen v OHIM, AM Denmark A/S intervening, on the impact of an earlier shape trade mark on a later Community Design. Those who spend sleepless nights on Class 99 may recall the General Court Case T-148/08, Beifa Group Co. Ltd v OHIM, Schwan-Stabilo Schwanhaüßer GmbH & Co. KG intervening, which looked like a "shape mark" case but turned out to involve a wrongly cited 2D mark. This is therefore, strictly speaking, the first time the General Court has ruled on the impact of shape marks, though T-148/08 has plenty of obiter dicta.
This case concerned RCD 1027718-0001 (depicted right) to a cleaning device of some kind. The citation was earlier CTM 5185079, likewise a cleaning device (depicted below) - filed just a few months earlier. It was held invalid at first instance in Decision ICD 000007030, which was upheld on appeal in Decision R2179/2010-3. The General Court these days has a fairly low reversal rate, so it is perhaps no surprise that they too held the design invalid.
The decision clarifies some points previously in doubt.

Firstly, it clarifies that "use" of a prior sign (here: CTM) does not require identical reproduction - the question is one of infringement. "Imperfect recollection" has a significant role to play.
Secondly, it clarifies (though there was really no doubt about it) that merely asserting invalidity of a prior CTM is insufficient. Design proprietors are going to have to file an invalidation action, and attempt to stay the design invalidation in the meantime.
Thirdly, the presence or absence of minor textual matter is irrelevant. That will perhaps come as no surprise to those who have read the UK Whirlpool v Kenwood decision - it means that a "shape-plus-a-little-text" mark has virtually the same scope as a pure shape mark, and may be much easier to obtain.
And fourthly, when considering whether a later RCD is invalidated by an earlier mark, the question of whether the later RCD is "trade mark use" (i.e. has an origin-indicating function) is irrelevant. A clean sweep. Design cancelled.

Stays? Watch this space, say General Court

2013-06-06T16:55:00.000+01:00

OHIM's Alicante News for May notifies us of a new General Court decision on Community Designs - Case T-80/10; Bell & Ross BV / OHIM, Klockgrossisten i Norden AB intervening; Judgment of 25 April 2013. Unfortunately, as so often, it is available only in French at this point so the following is based on OHIM's summary, my poor French, and Google Translate. If any French readers would care to add anything, feel free.
The name may be familiar to you. If so, it is because you remember the sad story of Bell & Ross' previous visit to the General Court, and thence to the Court of Justice.
The design in this case, RCD 342951-0002 (depicted to the right), is one of two closely similar watch designs which were challenged by Klockgrossisten i Norden.
The first, RCD 342951-0001, was heard before the first instance as ICD 4299, then before the Board of Appeal as R1267/2008-3. Bell & Ross then filed an appeal to the General Court, but only the fax and not the signed original arrived in time. By decision in Case T-51/10 the General Court therefore threw out their appeal on formal grounds. The Court of Justice upheld the General Court in Decision C-426/10P. Got that? Well, that was the end of the road on that design, but its sister design went along the same path: first instance decision ICD 4307; Board of Appeal judgment R1285/2008-3; and now, at last, the General Court decision T-80/10 which, since everything was timely filed, is on some interesting procedural and substantive issues.
Initially, the decision deals with some procedural issues. The proprietor sued the applicant for invalidity in the Commercial Court in Paris, six years ago in 2007. The applicant for invalidity responded by filing an OHIM invalidation action - but in the wrong language. They then counterclaimed for invalidity, but asked for a stay before the Paris Court. Meanwhile, they were told by OHIM of their error, and reapplied in French. Instead of the OHIM proceedings being the first-filed (which would have mandated the Court to stay the proceedings under CDR Art 91(1)), they were second-filed, so OHIM had to consider whether or not it should stay instead under CDR Art 91(2). OHIM decided not to. They were upheld on this by the General Court. My French is not up to understanding precisely why, but it is potentially an interesting issue for litigators. The reasoning included - sensibly enough - the fact that the French Court had decided to stay their own proceedings pending the decision to be taken by the Invalidity Division (para. 52-53).
There was then an argument about a late-filed bit of evidence - cited at the appeal stage. Bell & Ross cited Article 6 of the European Convention on Human Rights which, as higher-ranking legislation, is always possible but generally smells of desparation. It got them nowhere. From the point of view of the General Court, both instances of OHIM are administrative so the Board of Appeal is required to conduct essentially a re-hearing rather than a mere review, and failure by the first instance does not impact the legality of the Board’s decision, which is what is under appeal (para. 88-90). In any event, it was admittedly the case that Bell & Ross knew about the evidence concerned from the French proceedings.
On to the substance. The prior art, below, was apparently a prior Japanese aircraft panel clock. So the design had been "transposed" from one sector - aircraft - to another - watches. Which can, sometimes, be quite an innovative thing to do. However, in this case the evidence showed that there had in the past been "pilot watches" and other transpositions from the aircraft sector to the watch sector. This dog therefore did not fight.
Bell & Ross argued that the high cost of quality watches would mean that the informed user would pay particular attention and therefore see more differences - a pretty reasonable trade mark argument. They also claimed that the price was so high that one bought the watch purely for aesthetic reasons, as an item of jewellery, the function of reading the time being more or less irrelevant.
The General Court disagreed - "the examination of the individual character of a design is whether the overall impression produced by this latter differs from overall impressions produced by the designs previously disclosed, regardless of aesthetic or commercial considerations" (para. 107-108). The informed user was reasonably but not particularly observant. Further, the process of creation, the commercial success and the degree of market recognition of the design among the public are irrelevant when comparing designs (para. 145-146).
The front faces of the two designs were fairly similar, but there was an issue about the side views (specifically, the thickness). However, the General Court concluded that (to quote with thanks from OHIM) the difference in the thickness has only a ‘weak influence on the overall impression’ given that a cockpit clock is designed to be inserted in the aircraft’s dashboard, with the result that the profile view is mostly invisible during normal use thereof (para. 132-135). Likewise, the thickness of a wrist watch determines only to a marginal extent the impression left by this watch (para. 136). The key was the impression created by each of the designs when in use.
On the other hand, the Board of Appeal had held that aspects of the hands were to be disregarded as being functional (the function of telling the time). The General Court accepted Bell & Howell's argument that the Board was wrong - these elements did contribute to the overall impression. However, they didn't contribute very much since they were commonplace, and also rather small and inconspicuous (para. 151-159). So the two created the same overall impression. Collapse of design, and presumably of infringement action too. As we may have said before, the timings of this invalidation track are problematic in the real world of designs, which may last only a few seasons. The whole invalidation process so far has taken six years, and we still potentially have a Court of Justice stage to go. The General Court are busy people, but the process before them has taken 3 years. Isn't there any way that the process can be sped up where, as here, there is parallel litigation?

Overlapping IP Rights - chapter here

2013-06-03T19:15:00.002+01:00

Neil Wilkof and Shamnad Basheer, both bloggers themselves (on, respectively, the IPKat and Spicy IP), have put together this tome on OUP.
The whole book is very readable; the specifically design-related chapters are:
2: The Overlap between Patent and Design Protection
8: The Design/Copyright Overlap: Is there a Resolution?
12: Overlapping Rights in Designs, Trade Marks and Trade Dress

My chapter, "The Overlap Between Patent and Design Protection" is available free here. Chapter 1, "Navigating the Interface between Utility Patents and Copyright" by Andrew Bridges, is also free here, and Chapter 6 "Patents and Regulatory Data Exclusivity for Medicinal Products, Oxford University Press" is here.

The all-star contributors list is as follows:

Tara Aaron, Aaron Sanders PLLC
Jonathan Band, Jonathan Band PLLC
Andrew Bridges, Fenwick & West LLP
Lionel Bentley, University of Cambridge
Brandon Butler, Association of Research Libraries
Anna Carboni, Redd Solicitors LLP
Dev Gangjee, London School of Economics
Duncan Curley, Innovate Legal
Sheldon Halpern, Albany Law School
Robert Harrison, 24IP Law Group
Belinda Isaac, Isaac & Co Solicitors
Mark Janis, Indiana University Maurer School of Law
David Llewelyn, King's College London
Craig Mende, Fross Zelnick Lehrman & Zissu, P.C.
David Musker, R G C Jenkins & Co
Alan Nemes, Husch Blackwell L.L.P.
Axel Nordemann, Boehmert & Boehmert
Mark Partridge, Partridge IP Law
Sam Ricketson, University of Melbourne
Mira Sundara Rajan, Honorary Member of Magdalen College, Oxford University
Uma Suthersanen, Centre for Commercial Law Studies, Queen Mary, University of London
Marleen van den Horst, BarentsKrans NV
Ashwin van Rooijen, Clifford Chance L.L.P.
Thomas Vinje, Clifford Chance LLP

On the subject of overlapping IP, Neil and Shamnad were beaten to the punch by a very different but also very good book, Estelle Derclaye and Matthias Leistner's "Intellectual Property Overlaps: A European Perspective", on Hart Publishing. More academic, more systematic, more European, less practitioner-oriented, with fewer examples. Well worth a read.

WIPO Hague seminar: time running out to book ...

2013-05-22T10:23:00.002+01:00

Time's running out ...

If there has ever been a more unappealing and unappetising manner of presenting information concerning forthcoming events than that employed by the World Intellectual Property Organization (WIPO), this blogger has yet to find it. Nonetheless, many an interesting and attractive event has been garbed in the dull wrapping of formality and WIPO's Seminar on the Hague System for the International Registration of Industrial Designs (for that is its title) takes place on Friday 31 May in Geneva and there are just three short days left for registration.

Details of the programme and registration may be obtained by clicking here.

IP Bill Seminar - 7th June, London

2013-05-14T15:28:00.005+01:00

Your chance to learn about the UK IP Bill will come on 7th June, when CIPA and ITMA will bring you an afternoon seminar on it.
The Bill proposes significant changes to UK design law including criminal sanctions, and also to patent law. The seminar will address both.
We will bring you details of time, place, content and price shortly - watch this space. Places will be limited, so book early.

The UK Intellectual Property Bill 2013 is here!

2013-05-10T13:13:00.000+01:00

Well, following the announcement in the Queen's Speech, the text of the IP Bill is now available on a progress page here, in html and pdf formats. Our comments on the preceding consultation are available here.

The next stage is the second reading in the House of Lords - the general debate on all aspects of the Bill - on 22 May.

An innovation is the introduction of a duty on Government to make regular reports on whether, and to what extent, IP has helped foster economic growth. That may require some very creative accounting. We wonder why shouldn't the same apply to all legislation, not just IP?

The Bill covers patents and designs in equal measure, and adds a dash of copyright. The patent side implements the Unitary Patent, together with some minor bits and pieces. On the design side, it does what was promised, in:

Providing a criminal offence;
Allowing future Hague accession;
Making ownership consistent with Community Designs by removing "commissioning";
Introducing an Opinion Service like that for patents;
Introducing a prior use defence;
Broadening UK Unregistered Design Right qualification criteria.

Primary IP legislation is a very rare beast in the UK these days, so this is quite a big deal. If any readers have UK IP issues that need tidying, this is the moment to get lobbying.

UK Copyright extension - transitional provisions

2013-05-02T14:22:00.000+01:00

We recently noted that the Enterprise and Regulatory Reform Act 2013 had been passed, and have now reviewed some of the Parliamentary debates. The Minister, The Parliamentary Under-Secretary of State, Department for Business, Innovation and Skills (Viscount Younger of Leckie), made some relevant comments on the timing of the repeal of Section 52 of the Copyright Designs & Patents Act (and consequent copyright term extension) on 11 Mar 2013 at Hansard Column 19:

We want affected groups to have adequate time to adapt but we also take seriously the fact that rights owners are pressing us for early implementation. That is why the Government have committed, as I said in Grand Committee, to consult all interested parties on the timing of the change. To decide those timings now would prejudge the consultation, and any transitional period will allow appropriate time to implement changes to copyright exceptions.
...
I can confirm that any copy made, distributed or imported into the UK or communicated to the public while Section 52 is in effect will be unaffected by the change in the law. However, if, for example, a book containing photographs of artistic works is reprinted after Section 52 is repealed, permission will need to be sought from the relevant rights owners unless a copyright exception applies. So, it seems that implementation will not come immediately, but when it comes it will bite on copies made after implementation. Concerns were raised, by Professor Lionel Bently amongst others, that extension of s52 could impact books carrying images of three-dimensional works. The Jules Rimet decision, which would deal with this, has been doubted, so it is perhaps just as well that the Government appears to have got the point, and promised to look at this in the forthcoming proposed legislation to implement copyright exceptions which they announced in December 2012 (announcement here, policy document here). It therefore seems likely that nothing is going to happen immediately. Watch this space for news.

World IP Day (sort of), as recorded by the design community

2013-04-30T20:46:00.005+01:00

This blogger was pretty much off-colour last Friday with the result that all of his good World Intellectual Property Day resolutions came to nought, including keeping up with topical blogposts. Inevitably he received many interesting items of email on that day, not least of which was the following media release from ACID, kindly penned by Jane Banyai. Now back in better health, this blogger has decided to post it in full, partly because it's a shame to waste it and partly for today's red-hot news -- which you can find in the bold red bit in the middle:

IT’S WORLD IP DAY TODAY 26 April 2013!

The Next Generation – Creators: What is the future?

The World Intellectual Property Organisation (WIPO) holds an annual global initiative to celebrate intellectual property. This year the theme is “The Next Generation – Creators: What is the future”.

On 24April IPAN celebrated its World IP Day with a high profile event at the House of Commons hosted by Pete Wishart, MP, Vice Chair of the All Party Parliamentary Group and the theme was, “How clear IP rights for innovation and brands help export-led growth.” An impressive line-up of speakers included the IPO’s CEO John Alty, who ably stood in for the Minister for Intellectual Property who had to cancel at short notice. John outlined the IPO’s corporate strategy for 2013/14. He was joined by FT Columnist, former Chairman of Channel 4 and now Chairman of Capital Risk Partners, Luke Johnson, whose article in yesterday’s Daily Mail slated Google as a gigantic parasite. They were joined by the much applauded new designer on the block, award winning Lee Broom (ACID member) and his partner Charles Rudgard who gave an impressive speech to key influencers on the IP infringement challenges facing original designers and SME’s and the difficulties in cost, time and energy in fighting battles. They also touched on the scale of the perpetrators who appeared to produce the “remarkably similar copies” of their original designs.

Design and IP is a classic example where establishing clear policy has been neglected for 2 decades, according to Professor Ian Hargreaves. So, it could not be a more propitious time for Government and policy makers to take stock of the value that design brings to the UK, not least its £33.5 billion contribution. Let’s hope that after 18 years of ACID campaigning, Government will, in its announcement due next week, confirm the introduction of "criminal sanctions for persistent design infringement to have parity with copyright [para.87 of today's government response paper says: "The Government intends to introduce a criminal offence which identifies the copying (rather than infringement) of a registered design in the course of business, knowing or having reason to believe that it is registered. The offence will have certain defences attached to it, for example, to reflect reasonable belief on the part of the potential infringer that the design in question was invalid]. The fact that the UK is actually rather good at design resonates in that it is one of the few growth sectors. Ranked highly in the world, the incredible UK design army of 350,000, need to be recognised, not only in the traditional areas of design, but as leaders in socially responsible and environmentally sustainable innovation.

So what actually is the future for this next generation of growth creators, how high profile is IP in this country and does the UK Government ‘get it’ and take it seriously enough? Laudably, the USA has long put IP high on its list of national priorities.

The UK’s unique selling point is that we are the only country in the world to have an IP Minister [It might be a selling point, but who's buying? Other countries seem to manage better without one, and the US has a far better concept with its IP Enforcement Coordinator] and so ACID’s message to Viscount Younger is, “Pick up the mantle as IP champion for the UK, where others have failed, and communicate IP’s positive message across all Government departments about the value it brings to the UK economy, society and culture. Ensure, also, that this becomes a consistent global message about the UK’s importance as leading exporters of IP”

Dids Macdonald, ACID’s CEO said, “That wouldn’t be a bad start to support the next generation of creators”

UK Government proposals on Design Law Reform published

2013-04-30T15:34:00.000+01:00

Exciting news just in.

Today the UK Government published its formal response to the Consultation on the Reform of the UK Designs Legal Framework. The response broadly falls into three categories: modernising, enforcement and process. It contains policy decisions which will be taken forward by the IPO at the earliest opportunity.
The full response can be found at http://www.ipo.gov.uk/types/hargreaves/hargreaves-designs.htm. We will review it and bring you our comments as soon as we can.

Five days till logo design competition closes

2013-04-28T17:33:00.003+01:00

Not ours ...

Last week we reported that, since the Class 99 weblog will be migrating to MARQUES, where it will be hosted as a sister blog to the Class 46 European trade mark law weblog, it was high time that Class 99 had its own logo.

Class 99 is accordingly running a little competition for anyone who'd like to have a go at designing a Class 99 design blog logo. As last week's post states:

Not ours either

There aren't any prizes, I'm afraid, other than the kudos of being the winner and the international fame and celebrity which will inevitably follow from that. The closing date for entries is midnight on Friday 3 May, and they should be emailed to me here, with the subject line "Class 99 design". Assuming that we get enough interesting entries, we'll publish them online (licence to publish, please!) and then run a non-binding readers' poll to see which is or are the most popular. Oh, and we'll be asking you to assign your intellectual property rights to MARQUES, so that the organisation can use the winning entry online, on printed materials, T-shirts, key-fobs, you name it ...!

The flow of entries has suddenly dried up -- and there's still a working week to go. Come on, have a go!

Farewell, Section 52

2013-04-26T12:31:00.002+01:00

With the passing into law of the Enterprise and Regulatory Reform Bill 2012-13, which apparently recieved the Royal Assent yesterday, Section 52 of the Copyright, Designs and Patents Act was abolished. Some newly created designs will therefore be protected for the full term of copyright rather than 25 years as at present. We will keep readers updated on the transitional provisions as they become clear.

"Design a design for Class 99": a little competition

2013-04-22T12:46:00.000+01:00

In the fullness of time, the Class 99 weblog will be migrating to MARQUES, where it will be hosted as a sister blog to the Class 46 European trade mark law weblog. We hope that Class 99 will continue to flourish with the ever-popular input of founder and MARQUES member David Musker (Jenkins), with a bit of backroom help from Jeremy Phillips.

There's something which Class 46 has but which Class 99 still lacks, and that's a logo. Class 46 has long enjoyed the benefit of its polar bears (right), which first appeared on that blog after a spate of polar-bear-cub-branding episodes appeared on it. So wouldn't it be great if Class 99 had a logo of its own?

We're having a little competition for anyone who'd like to have a go at designing a Class 99 design blog logo. There aren't any prizes, I'm afraid, other than the kudos of being the winner and the international fame and celebrity which will inevitably follow from that. The closing date for entries is midnight on Friday 3 May, and they should be emailed to me here, with the subject line "Class 99 design". Assuming that we get enough interesting entries, we'll publish them online (licence to publish, please!) and then run a non-binding readers' poll to see which is or are the most popular. Oh, and we'll be asking you to assign your intellectual property rights to MARQUES, so that the organisation can use the winning entry online, on printed materials, T-shirts, key-fobs, you name it ...!

Two little things ...

2013-04-12T17:34:00.001+01:00

1. "The Cheshire Cat design -- use of dotted lines in representations" was posted earlier today on the IPKat weblog by Darren Smyth (EIP). Since it is so obviously of specific interest to readers of this weblog, I thought I'd flag it. You can read it here.

2. There's a very full one-day programme on the protection of designs and trade marks in the Russian Federation coming up. The date is 30 April and the place is the Claris Hotel, Barcelona. Further details are available via the MARQUES Class 46 weblog here.

How can the Registered Community Design system be made even better?

2013-04-12T15:50:00.000+01:00

Members of that most non-exclusive club, the Society of Intellectual Property Social Media Enthusiasts, were much in evidence in Alicante earlier this week (for an explanation as to why they should collectively wish to exchange cyberspace for Spain, see below). One such member is blogger, tweeter and patent attorney Darren Smyth (EIP), who has taken some time off from his other commitments (he is a fully-fledged Kat) to write the following piece about how we can so very easily improve the current functionality of the EU registered Community design system. This is what he says:

Your humble servant was honoured to be present and speaking at the recent conference organised by OHIM in Alicante to celebrate 10 years ofthe Registered Community Design.

There was much tweeting of the conference by your correspondent, @OAMITWEETS, and others (see the hashtag #RCD10), and the presentations themselves will shortly be present on the conference website where the speaker has consented.

Sir Robin Jacob attended the conference, and championed the idea that the conference should not be retrospective, looking back over the past 10 years, but rather should look to the future and see how the system could be improved to be made even better. This idea was taken up by the OHIM president António Campinos, so that with commendable celerity a suggestions box appeared. This correspondent thought that it would be good to share with the Class 99 readership his proposals, starting with the probably rather uncontroversial, and ending with the positively polemical.

1) End the seven representation limit

OHIM places an arbitrary limit of seven representations per design. While this is adequate in relation to a simple design, it fails in the case of designs where more than one perspective view is needed, where one or more enlarged views are required, where exploded views are appropriate, or in the case of kinetic or modular designs. More particularly, application regularly arrive from jurisdictions like Japan where the local office mandates particular views, even when uninformative, and these can regularly contain 10 to 15 representations. It is time-consuming and unproductive to analyse these representations to simply re-order them to conform to the limit, and mistakes can easily be introduced by this process.

I therefore propose either to raise, or completely remove, the limit. It may be necessary to keep some high limit to avoid applicants using a ridiculous number such as 100.

2) Publish the description, and increase its significance

Article 36 of the Community Design Regulation states that the description “shall not affect the scope of protection of the design as such”. Opinion is divided among practitioners whether this means that the description is completely ignored, or whether it can be used to interpret the representations, albeit not to give them a meaning that they do not already potentially have. Your correspondent was informed by a German judge who has heard hundreds of designs cases that she had never been presented with a description for consideration.

I consider that certainty would be increased by allowing the description to be used to clarify the representations, for example by explaining any drawing conventions used (eg that the shaded portion is disclaimed). The description should then be published, and Article 36 amended accordingly. The description should not be permitted to be used to change the design from that shown in the representations, only to clarify it. Thus, for example, the description would not be permitted to say “The design is that shown in the black-and-white drawings, except that it is coloured red”. In such a case the drawings themselves would have to be red.

I appreciate that there may be an issue concerning translation. Since the description will be short and generally use routine phrases, I hope that this can be addressed.

3) Limit the registration to the named product

There is an unhappy inconsistency at the heart of EU Design Law which, in the opinion of your correspondent, will continue to create unhappiness and uncertainty for as long as the law remains in its current form.

Before the Community design system, many European countries limited the scope of a design registration to the situation where the design was applied to the product named in the registration. The new law in 2002 changed this, and removed the product limitation, expanding the scope of protection of the registration, as well as the relevant prior art.

However, numerous commentators have pointed out that this sits very unhappily with the aspects of EU design law where the product is still clearly relevant, for example in establishing the degree of freedom of the designer, and the “circles specialised in the sector concerned”. There has been debate as to how the product is permitted to be identified, given that the named product shall, according to Article 36 “not affect the scope of protection of the design as such”. The best view is possibly that the product is permitted to be identified from the representations, but this is hardly satisfactory.

The hugely expanded scope of protection from one product to everything causes theoretical and practical problems, and yet is probably rarely important – usually the proprietor wants to stop competing products, where the product definition will be the same. Therefore the mischief is disproportionate to the benefit.

I don’t expect that this suggestion will be well received, but I do think it makes sense. It places the whole system on a much more sensible and solid foundation. The detachment of the design from the product was always an odd idea with both theoretical and practical problems, and it is time for it to be ended.

Design law: a Fordham Conference session

2013-04-05T14:45:00.000+01:00

Trying to understand EU design law: before (left) and after (right)

A session of this year's Fordham IP Conference was devoted to design. Moderated by Professor Jeremy Sheff, the session was opened by Gordon Humphreys (OHIM), who explained the mysteries of Case C-102/11 P (Baena Grupo, see illustration of grumpy gnomes above), together with the unfathomable topics of the informed user, crowded prior art, freedom of design and the consequences of using dotted lines in Community design registration.

Gordon was followed by Alain Strowel (Covington & Burling, right), who touched on the key issues relating to the "battle of the tablets" between Apple and Samsung. Alain investigated the "new animal in the zoo", the "informed user", in the light of the CJEU ruling in PepsiCo v Grupo Promo (the Pogs case, here). The collision between design right and copyright also affected the Apple-Samsung dispute, since the EU's unharmonised copyright law will protected manufactured products in some countries.

US design patents formed the subject of John Richards' talk. Emphasising the patent dimension to the protection, John observed that obviousness was increasingly being raised as an objection. The protection is not for articles themselves, but for designs for articles if they are ornamental. The claim is crucial, since it defines and limits the protectable ornamental content of the design patent. So far as infringement is concerned, expert evidence is disfavoured: the test is that of the consumer who might purchase the one product believing it to be the other.

The session then turned to discussion. Myles Jelf (Bristows) noted that, with markedly different laws, the US and EU came to broadly the same conclusions as to the Apple/Samsung infringement issue. Annette Kur pointed out the flaw of EU design law, which measures the degree to which an earlier registered trade mark is unprotected against a later design application in terms of the test of design infringement, not trade mark infringement. Jeremy Phillips emphasised the degree of potential overlap which is available to products in the EU. Remedies were then discussed: Jeremy spoke of the successes of the Patents County Court, and Alain observed that interim injunctive relief was key.

If you liked the book, you'll love the movie ...

2013-03-19T09:25:00.001Z

Sorry, Robert De Niro -- David
plays himself in this series

If you ever wanted to know a bit more about what Class 99 team member David Stone (he of the big new red book) thinks about current design issues, or were merely curious to know what he looks like, here's a chance to find out. His publishers, Oxford University Press, have organised a set of five video clips in which he stars:

* Introduction to the EU design law regime

http://www.youtube.com/watch?v=nz9rx3dPFa8&list=PL38D38960BB15AD83&index=12

* The Court of Justice clarifies EU design Law

http://www.youtube.com/watch?v=U_S-pGDO8SY&list=PL38D38960BB15AD83&index=13

* EU design law decisions from the General Court

http://www.youtube.com/watch?v=VwIdwKBUwe0&list=PL38D38960BB15AD83&index=14

* Two case studies on EU design law

http://www.youtube.com/watch?v=5uI9mcTw8Dw&list=PL38D38960BB15AD83&index=15

* Some practical tips on EU design law

http://www.youtube.com/watch?v=nczs4WEh52o&list=PL38D38960BB15AD83&index=16

You can watch these in the comfort of your own home/office. There should be no issues of parental guidance (even from the Court of Justice bits) -- but you'll have to make your own provision for popcorn ...

INTA Europe Roundtable on the Protection of product appearance: a report

2013-03-15T15:34:00.002Z

The INTA Europe Roundtable on the protection of product appearance using trade marks and designs (on which see the earlier blogpost on Class 99 here) was held in Amsterdam yesterday. We have just heard from William Cobbett (Simmons & Simmons LLP) that the event was a success. Will has kindly furnished us with the following report:

Laurens Kamp opened the event and welcomed guests to the Amsterdam offices of Simmons & Simmons LLP. David Stone, who was wearing multiple hats as a member of the board of directors of INTA, partner at Simmons & Simmons, and speaker at the roundtable, then welcomed people on behalf of INTA. Hidde Koenraad kicked off the substantive session by giving an overview of the possibilities under trade mark law to protect product appearance (including topical issues such as whether the absolute grounds for exclusion of shape marks apply to 2D shapes or only 3D shapes, and the scope of the substantial value exclusion). David Stone then discussed the different opportunities provided by design law and consequential filing strategies (generally: file as many variations and separate elements as budget permits).

The audience then divided into groups and were given real products in need of IP protection (thanks to all those who assisted with replacing products intemperately destroyed by the Royal Mail). Groups had to protect the appearance of the product they were given by filing two trade marks and two registered designs. After a short coffee break, lookalike products were revealed and the groups were able to see whether their filing strategy was sufficient to protect their product against the lookalike (success rates were varied!). The greatest debate arose in connection with The Coca-Cola Company's 2009 victory against Yoplait in relation to RCD 389101-1 for aluminium bottles (The Coca-Cola Company v Yoplait France; Cour D'Appel de Paris, 27 May 2009; Case FR 09 00283). The case demonstrated the ability of design law to provide a remedy despite different branding, and the importance of identifying the innovative concept behind a new product (in this case a bottle made from aluminium).

The session concluded with further updates from Hidde Koenraad and David Stone on recent developments in trade mark and design law respectively. The design update generated an interesting discussion about what the informed user did and did not assess (overall impression v. everything else e.g. technical function) and who they were and were not (a legal construct v. a child in the approximate age range of 5 to 10). After the event guests retired to the handy on-premises bar.

OHIM's design conference: will you be there too?

2013-03-14T23:11:00.002Z

It's no secret that OHIM is holding a 10th birthday conference for the Community Design System in Alicante on 8 and 9 April -- but what not everyone may appreciate is that there are well over 400 registrants, including representatives from 17 national offices. As one respected observer of the design scene put it, "This event is looking like being the design law event of the decade, which is quite exciting".

The Class 99 team will be represented there too. Will we see you there? We do hope so!

If you have not yet clicked for further details, you can make up for lost time by clicking here.

Can you donate 15 minutes to WIPO?

2013-03-04T10:31:00.001Z

Our friends at WIPO have just tweeted an emergency plea for registered design applicants to share their views on changes to registration procedures. We are naturally pleased to alert our readers whom, we are sure, have plenty of thoughts to share with the only UN agency that takes responsibility for design protection. The WIPO tweet leads to this message on the organization's website:

Surveys on Industrial Design Registration Procedures re-opened

The Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) requested the Secretariat to extend for an additional period of two months the two surveys that were conducted in April and May 2012, as part of the Study on the Potential Impact of the Work of the SCT on Industrial Design Law and Practice (document SCT/27/4). Accordingly, the two surveys, namely one for Offices and another for Users, have been reopened for completion until March 7, 2013.

The WIPO User’s survey takes approximately 15 minutes to complete the questionnaire. If you have any questions, please write to sct.forum@wipo.int.

Note: When completing the survey in one go, please only use the “next” button and disregard the “save and close” button. At the end of the survey please click on the “submit” button.

WIPO thanks all responding users for their time and cooperation.

A is for Australia ...

2013-02-28T23:34:00.000Z

One of Australia's best-known designs: these concrete sharks
scare the real ones away from Sydney's sandy beaches ...

We have recently received from the excellent Warwick A Rothnie (scholar, barrister and, more importantly, ipwars.com blogger) a hint that ought to do something about not having a link to the Australian Designs Office home page. Thanks for supplying the link, Warwick -- we've now added it to the Class 99 side bar. If you can't be bothered to look for it in the alphabetical list of design registries, which it heads, the link is here too.

For good measure, Warwick has sent us a link to the Aussie Designs Act as well.

Nordock: the attorney as expert on 'function' and 'functionality'?

2013-02-28T23:16:00.002Z

It's a little while since this blog has had the chance to post an item by Sarah Burstein -- but she has just resurfaced and we are delighted that she has sent us this:

Can a patent attorney testify as an expert on functionality?

Earlier this week, U.S. District Judge Rudolph T. Randa issued a notable opinion in a design patent and trade dress case. (The full opinion is posted here.)

In the case, Nordock Inc. alleges that Systems Inc. infringes its dock leveler design. Here is an illustration from the patent-in-suit:

The parties filed cross-motions for summary judgment. Judge Randa denied both motions with respect to Nordock’s infringement claims. That’s not particularly unusual or interesting—the tests for both design patent and trade dress infringement are very fact-specific. If there are genuine disputes about those facts, then summary judgment is not appropriate.

What is interesting is the fact that Judge Randa allowed Systems to offer—and, in fact, relied upon—expert testimony about design patent and trade dress law.

Under U.S. evidence law, attorneys cannot usually testify about the law per se. In practice, though, it’s not unusual for patent attorneys to testify as experts on “Patent Office procedure.”

In this case, Systems retained a patent attorney, Adam L. Brookman, to testify as an expert witness. Brookman prepared reports stating, among other things, that Nordock’s design patent and purported trade dress were invalid because the claimed design is functional.

Nordock moved to strike Brookman as an expert. Nordock argued, among other things, that he was not qualified as an expert because he had no special experience or knowledge about dock levelers or product design.

Judge Randa did not agree, finding that Brookman “has sufficient knowledge, experience, and education to testify as an expert on function and functionality” because:

Brookman obtained a Bachelor of Science Degree in Industrial Engineering from the Georgia Institute of Technology in 1983, which involved course work in mechanical, electrical and civil engineering. For two years, before attending law school, Brookman worked as a project engineer and manager for the Frito Lay Company.

In 1987, Brookman obtained a law degree from George Washington University, and, for more than 25 years he has practiced intellectual property law. Brookman was previously qualified as an expert witness and consultant with respect to trademark, trade dress, and design patent issues in intellectual property cases. He taught trademark law as an adjunct professor of law at Marquette University, frequently speaks on intellectual property subjects, and wrote Trademark Law: Protection, Enforcement and Licensing, published by Wolters Kluwer Law & Business.

With respect to the particulars of this case and dock levelers in general, Brookman’s report . . . discloses that . . . he has prepared himself by obtaining the complete file history of the [patent-in-suit] and all related patents and applications, and copies of the pleadings in this case, including exhibits associated with them. He also reviewed Nordock’s website, the websites of third-party dock leveler providers, and numerous third-party design and utility patents relating to dock levelers and lug type hinges, reviewed the transcript of [a Systems engineer’s] deposition, and spoke to him about the design in issue and the construction of dock levelers generally.

But do these credentials really qualify someone to testify as an expert on “function and functionality”? That is an interesting question. If this case doesn’t settle, I hope Systems will raise it on appeal.

Do readers have any experiences of attorney-as-expert issues in design litigation in other jurisdictions? If so, we'd love to hear from you.