Class 99

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.

Individual character, design freedom and saturation

2013-02-22T09:55:00.001Z

Crowded field -- but still room for everyone?

"The individual character of a design: freedom and the ‘saturation of the state of the art’" is the title of a Current Intelligence note by Italian attorney Stefano Barazza (Studio Legale Barazza, Udine) and which will soon be published in the Journal of Intellectual Property Law & Practice (JIPLP). The piece can be read in its entirety on the jiplp weblog here. The subject of this note is the recent brace of decisions of the General Court of the European Union in Joined Cases T-83/11 and T-84/11, Antrax IT Srl v OHIM, 13 November 2012. According to the abstract:

The General Court, reviewing a decision of the OHIM's Board of Appeal on the lack of individual character of a design concerning a thermosyphon for radiators, provides a thorough assessment of the notions of ‘informed user’ and ‘degree of freedom of the designer’, observing that the ‘saturation of the state of the art’ (crowded field) may be relevant to assess the degree of awareness of the informed user.

Another design seminar: now it's ADIPA's turn

2013-02-11T07:52:00.000Z

From ADIPA, the Association of Danish Intellectual Property Attorneys, comes -- you guessed it -- another design law event, this time in the lovely and design-conscious city of Copenhagen. If you miss the INTA roundtable in Amsterdam, news of which was posted on Class 99 yesterday, this event may offer good compensation:

10 Years -- Experience of Community Design Law

Design rights in the Union have been ruled by Community law for 10 years; by a regulation providing for both registered and unregistered Community design rights and a directive approximating national registered design law. The effect is a harmonized design system within the Union.

But what is the experience and result of the system; how does it work and what about the enforcement/case law throughout Europe and last but not least what is the value of a Design right?

Hopefully these questions will be answered by a team of three different professionals from the European region.

Speakers:

Ulla Wennermark, Member of 2nd Board of Appeal at OHIM, will give a legal introduction to the Design system within the European Union and focus on important Invalidity Division/ Board of Appeal decisions and judgments from the Court of Justice.

David Stone,Class 99 blog team member and partner, Simmons & Simmons, London, will give a practical view and interpretation of legal context, such as scope of protection and infringement matters of design rights, based on case law from national courts and Community design courts. David chairs the MARQUES Designs Team, and author of European Union Design Law: A Practitioners’ Guide (Oxford University Press, 2012).

Susanne Skov Ægidius, Legal Manager at Rosendahl Design Group A/S, will give an in-house view – including practical examples – of the possibilities, challenges and value of design protection within a design based company.

Date: Friday 12 April 2013

Time: 14.00-17.30

Venue: Bella Sky Comwell, Center Boulevard 5, 2300 Kbh.S

Price: Members of ADIPA: DKK. 500,00. Others: DKK 750,00

You will receive an invoice from ADIPA upon your registration.

Registration: As soon as possible via e-mail to info@adipa.dk

Roundtable: where designs meet trade marks

2013-02-10T21:28:00.002Z

The almost unprecedented run of top-notch conferences, seminars and other events in recent months continues with the announcement of this forthcoming INTA roundtable. Sadly, the complexity of the subject matter and the grey area in which trade mark rights and design rights either overlap or don't quite meet up means that we need a great deal of prompting to get our heads around the topic.

The roundtable featured below is sadly not a piece of furniture at all, but a forum for disseminating further information about the tectonic plates of European design and trade mark law and the manner in which they grind against each other:

INTA EUROPE ROUNDTABLE

Protection of product appearance

using trade marks and designs

Thursday, 14 March 2013

14:30 – 17:00

Venue: Simmons & Simmons LLP, Claude Debussylaan 247, Amsterdam

It is almost seventeen years since the first Community Trade Marks and almost ten years since the first Community Designs were registered by the Office for Harmonisation in the Internal Market.

The protection of product appearance by trade marks and designs however remains a hot topic in the European Union. Over the last two years, the first design judgments have been handed down by the Court of Justice of the European Union. Also the second major pan-European dispute on design infringement has created significant new case-law.

The roundtable will be an interactive session, whereby the speakers will discuss filing strategies for trade marks and designs. After the presentations, the participants will be divided into small groups and will be asked to come up with the best possible protection for their client. Their protection strategies will be then be tested: have they provided their clients enough protection to stop infringement?

The roundtable will end with a discussion of the most recent case law in relation to the protection of product appearance. The sessions will be conducted in English.

Speakers include:David Stone (Class 99 team member; partner at Simmons & Simmons LLP in London and an expert on design law; member of the Board of Directors of INTA, he also chairs the designs team of MARQUES and is author of three MARQUES reports on OHIM Registered Community Designs invalidity decisions).

Hidde Koenraad (Senior-Associate, Vondst Advocaten, Amsterdam, with extensive experience in litigating and advising in the field of intellectual property, with a strong emphasis on trade marks, designs and copyrights. Active member of AIPPI, the Dutch Copyright Association, BMM and ECTA).

Places are limited: applications for the roundtable can be sent via email to INTAroundtable@simmonssimmons.com

Unfaer-oe competition? Islanders make a Killing as Danish court tells infringers to get knitted

2013-02-08T14:27:00.001Z

No, this isn't just an excuse to post a picture of Sarah Lund. According to an article in the Guardian, "that sweater" (left) was designed and hand-knitted by Faeroe Island designers Gudrun & Gudrun, who have succeeded against competitors Stof og Sy ("fabric and sewing") in Copenhagen. The infringers sold patterns and wool rather than complete jerseys.
Apparently,
(a) the design was inspired by traditional Faeroe Island patterns, but
(b) fitted to Ms Lund, and
(c) hand knitted on the Faeroes.
The Guardian says it was a copyright infringement case (but newspapers do get these things wrong). What would the outcome have been in the UK? No doubt that the result as shown is aesthetically appealing, but is it the jersey, or "the package" (as Walton J put it in Merlet v Mothercare in the UK)? Particular hand-knitted jerseys were found to be "works of artistic craftsmanship" in New Zealand (Bonz v Cooke), but the traditional nature of the pattern in this case perhaps calls into question the level of artistry. So, does the sweater merit life-plus-70 years of protection? What do readers think? Comments (particularly from Scandinavian readers) welcome.
On the general subject of knitwear as infringement, it seems that the BBC amicably settled their notorious 2008 claim against knitter Mazzmatazz over her knitwear Dalek. Once more, ADR knits up the ravelled sleeve of care. Indeed, their US site now has a knitting circle page featuring all manner of Whovian knitwear.
And on the general subject of Scandinavia, Class 99-er David Stone will be joining others at a seminar entitled "10 years – experience of Community Design law", run by the Danish Association of Intellectual Property Attorneys ("ADIPA") in Copenhagen on 12 April. The flyer is here, and ADIPA want your money as soon as possible. Since OHIM's own 10 year celebration is on 8-9 April in Alicante, you may wish to keep that week clear and check the flight times well in advance.

Robin and Alex debate Cinderella

2013-02-08T12:32:00.000Z

"Trade Marks and Designs: Overlaps and Boundaries" is the title of a debate hosted by Edwards Wildman on 16 April. The venue is Stationers' Hall, London, and the debaters are Sir Robin Jacob and Alexander von Muehlandahl. The background to this event runs like this:

Debating the Cinderella of IP law: no mean feet ...

"Recent case law throughout the world has brought design law to greater prominence. The Cinderella of intellectual property law has finally arrived at the ball. In this context, the relationship between designs and trade marks has assumed increased topicality and significance. Our debate will look at the rationales for these two intellectual property rights and at the boundaries and overlaps between them. It will also consider strategies for dealing with their relationship in a commercial context.

Can a design function as a trade mark? Should design protection trump the application of trade mark law? Can the two co-exist in parallel?

Can trade mark protection follow a term of design protection? These are some of the questions that our speakers will address.".

I have been personally assured by John Olsen that everyone over the age of five is welcome. Full details of the programme and how to register for it are here.

Garden Pavilion: a case note

2013-02-07T23:10:00.000Z

"Unregistered and registered Community design rights: further guidance expected from CJEU" is a piece by Class 99 blog team member and Bardehle Pagenberg partner Henning Hartwig. The subject of this piece, which is now available online as part of the Advance Access service of the Journal of Intellectual Property Law & Practice (2013), reviews Garden Pavilion, Case No I ZR 74/10, Bundesgerichtshof, Germany, Decision of 16 August 2012. According to the abstract:

"Germany's Supreme Court (Bundesgerichtshof) seeks helpful clarification from the Court of Justice of the European Union (CJEU) on standards for establishing, challenging and enforcing unregistered and registered Community design rights".

Henning's case note has been supplied to JIPLP by leading German title GRUR Int. under the partnership programme between the two journals.

Flat-screen design infringement fails -- not with a Bang but a whimper

2013-01-31T11:09:00.003Z

From Marlou L.J. van de Braak (Hoyng Monegier, Amsterdam) comes news that her firm's clients (Loewe Opta Nederland BV and two German sister companies) prevailed in proceedings brought by Bang & Olufsen in the Netherlands over Loewe's shortly-to-be-introduced Reference ID flat screen TV. B&O claimed that Loewe infringed their European registered design rights and copyright in the design of the BeoVision10 television, seeking a European cross-border injunction.

Says Marlou:

The President of the District Court of The Hague was of the opinion that he had cross-border jurisdiction to examine not only the claims lodged against the Dutch Loewe entity but also the claims lodged against the German Loewe entities. He subsequently rejected the claim that Loewe's Reference ID television infringed B&O's design. B&O's argument that its registered design constituted a design registration consisting of multiple designs and that, accordingly, only the picture of the front view of the television could be taken into account, was rejected.

According to the judge, the design right relates to a single design; the various pictures merely show the design from different angles and all pictures thus have to be taken into account. The judge was of the opinion that the design invoked did not have a very strong unique character and thus did not have a broad scope of protection. He agreed with Loewe that certain features of the design were already known from the prior art, in part even in combination. The unique character of the design was found to primarily manifest itself in a feature (a passe partout accentuated by a protruding speaker front) which was in fact lacking in the Reference ID.

B&O's copyright claims were also rejected since B&O had not proved that it was the copyright owner under Danish law.

Thanks so much, Marlou, for letting us have not only a copy of the original decision but a crisp, fresh English translation too! English translation here Original judgment