Almost true -- but still welcome -- news of OHIM recordals

You may have missed this news -- as I did -- but it's not a rumour, it's almost absolutely true. The design bit of the Office for Harmonisation in the Internal Market (OHIM) has finally confessed:

"As of 10 January 2012, recordals concerning Registered Community Designs (entries made in the Register, renewals and information on expired registrations, Restitutio in Integrum) will be published on a daily basis in the RCD Bulletin as opposed to the once weekly Friday publication that has taken place up until now.

With this change, all items for publication relating to CTMs and RCDs are now published on a daily basis".

More information can be found on the OHIM website here. Visit it and you will find that the truth is not quite as exciting: recordals are only published each working day, which means that you can forget about getting your favourite online publication on weekends and holidays. Sorry!

Hands off our design

Back in sunnier times, in June of last year to be precise, Class 99 brought its readers news of the HandsOffMyDesign competition which the Office for Harmonisation in the Internal Market (OHIM) has been running in order to promote the message that copying and counterfeiting is bad and should be avoided.  We now know the results of this competition. As OHIM explains:

"Winners named in "HandsOffMyDesign" Competition

The winning entries in the "HandsOffMyDesign" competition received awards in a special ceremony in the European Parliament today. Almost 60 student and professional designers took part in the contest, which was designed to generate high-impact “guerrilla or viral” marketing tools with the potential to capture the imagination of users of social networking tools on the Internet.

The event ... was organised by the European Observatory on Counterfeiting and Piracy and DG Internal Market and Services with the support of OHIM and endorsed by the Cumulus International Association of Universities and Colleges of Art, Design and Media. The winners were selected by an international panel including independent figures from the design industry and academia as well the stakeholders of the Observatory.

OHIM President António Campinos said that one of the major challenges ahead for the EU was to determine how to protect the rights of creative people while maintaining the free exchange of information on the Internet:

“In the digital era, we need to find a fair way to remunerate artists, musicians, authors and film-makers. This competition represents the personal perspectives from designers working in every part of Europe. Whether or not everyone agrees with the messages, I am confident they will play a valuable role in helping to stimulate the kind of constructive debate on this issue that we need in the EU".

... The winning participants, divided into two categories – one for design students and one for professional designers, were awarded prizes of €8,000 (1st prize), €2,500 (2nd prize) and €1,500 (3rd prize).

Design students:
1st Prize: Julien Moreau, from the ECV Atlantique school in France.
2nd Prize: Nejc Levstik, from the Academy of theatre, radio, film and television in Slovenia.
3rd Prize: Lauri Särak, Daniel Levi Viinalass and Elmo Soomets, from the Tartu Art College in Estonia.

Professional designers:
1st Prize: Gergely Szőnyi and Tamás Helényi from Green Lake Pictures in Hungary.
2nd Prize: Christoph Brehme of German nationality from Piopictures in Italy.
3rd Prize: Dimitris Haidas from dhaidas in Greece.

For more information and to view the videos click here".

Thanks go to Sally Cooper for drawing our attention to this news.

"Have you ever wanted to get inside David Beckham's pants?"

In the days before Beckham:
Arsenal's legendary Alex
James, wearing his own
choice of famously long
shorts ...

Listeners to BBC's Radio Five, sleepily turning on their radios this morning, might have been startled into full wakefulness -- as indeed this blogger was -- by the question posed by the title of this blog post. The question was not however directed at sufferers from beckamphilia. Rather, it was a literal indication that a range of David Beckham underwear has just been launched, amid great media excitement and the usual hype. According to this morning's Independent:

"For a man so often seen modelling pants David Beckham was noticeably shy at the launch of his own range of underwear yesterday. Hundreds of fans hoping to catch a glimpse of "Goldenballs", as the footballer is known to his wife, had to make do with posters and nine-foot-tall silver statues. ... Putting his name to pants was perhaps a logical step for Beckham, the footballer, model and now hosier. His wife has put her name to an award-winning label and almost sold out of her second line when it launched earlier this week.

In a simple colour palette of grey, black and white, the nine no-frills cotton designs (which also include pyjama bottoms and vests) have a classic, sporty feel but there's none of the hi-tech fabric that Beckham will be more used to wearing in his day job. David has high ambitions for his brand. "I've been around for 36 years, I've seen my fair share of underwear," he said at a press conference. "I'd love to be as big as Calvin Klein."

The clamouring crowds that have become a familiar sight outside H&M on launch days were replaced by 300 people queuing patiently to get their hands on Beckham's underwear before today's global launch. ...

Matt Adams, 23, a graphic designer, and Leah Hummerston, 23, a fashion PR assistant, both professed their love for the star. "He's a massive celebrity and incredibly talented but seems humble with it", said Matt. "He's not just a successful businessman, he's a brand. I'd still buy H&M anyway because it's reasonably priced." Leah added: "It's more tongue-in-cheek than serious." ... ".

According to the discussion on the Five Live Breakfast programme, Beckham is reputed to have designed the underwear himself. The Beckhams appear to be remarkably talented in this sphere of activity, since David's wife, one-time Spice Girl and model Victoria, is also described as a designer in her Wikipedia entry.

What interests this blogger is the point at which design and brand meet and, it seems, merge.  It may well be that the Beckhams actually perform acts of creative design, possessing the necessary skills to execute the designs which they have conceived.  At a more distant level, they may have secured the services of amanuenses who put into visual form the notions which the Beckhams explain to them. More distantly still, they may simply be shown a range of products independently designed by third parties, from which they exercise their aesthetic and/or commercial judgment in determining which deserve the accolade of being sold under one of the Beckham brand names.

In commercial terms it may not matter which of these procedures has resulted in  new pair of pants, a dress or anything else appearing on the shelves and websites of retail operations.  In legal terms, it can make quite a difference, though, as the securing of interests of brand owners against independent designers, the possibility of moral rights issues where copyright is involved and other related issues must be addressed.

Geneva Spring set to sweep Tajikistan

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

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

Apple loses Dutch iPad appeal to Samsung

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

Taiwan design law reforms

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

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

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

EU looks at lookalikes

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

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

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