Evian revamps its bottle with a little joywashing

BrandChannel has just published a neat piece on the collaboration of bottled water company Evian and designer Paul Smith to put a bit of sparkle not into its products but into its bottle design. The feature notes:

"In the bad old days when water was a status symbol, packaging values emphasized luxe cues: elegant typography, sleek curves, and delicate surface treatments. The purported functional benefit was purity, an image conveyed by a general tendency towards minimalism. But luxe is out, and now that the display of wealth is considered distasteful, premium water is searching for relevance to the cultural mood.

That's why the choice of Paul Smith, a designer known for his whimsical, childlike approach to the world, is interesting. His vibrant stripes, which would have run counter to the pure luxury of the past, now speak to a downtrodden elite eager for permission to let loose a little. The colorful, energetic treatment is also a perfect expression of the new functional benefit embodied in Evian's positioning, "live young," which attempts to shift water away from an association with materialism and overconsumption towards hydration as health and vitality".

This looks like an effective use of design as product differentiation. The fun for legal practitioners comes in counting the number of registered and unregistered rights one can bring to bear when seeking to protect the totality of the newly-designed product and its component parts.

WIPO Design stats

WIPO's statistical report "World Intellectual Property Indicators 2009" has just published on their website. A summary is here. It does cover up to the end of 2008, but not authoritatively: it notes that "the impact of the economic recession in 2008 is not fully reflected in this report, although signs of a slowdown in the use of IP rights can be seen already in 2007."
There is evidence of a significant rise in the rate of design filings over the past decade, with double-digit growth since 2005, reaching 15% in 2007, "thanks largely to increased activity in China".
Use of the Hague system itself is a more complex story. From a total of 4,000 filings a year in 2002, the numbers plummeted to 1,000 a year over 2005 to 2007. As half of those applications are "multiples" containing an average of 8 designs, you need to multiply those figures by 4.5 to get the total number of designs registered via Hague, but it is still pretty pathetic as against 40,000 Madrid trademark filings and 150,000 PCT patent filings a year.
You don't have to look far for the explanation of the 2003 filing collapse; that was the year OHIM opened its doors, so that the predominantly European Hague system had a serious competitor. However, a rise in Hague filings of 32% in 2008, despite the economic collapse, suggests that since the EU joined the Hague system at the beginning of 2008, Hague is clawing back business that would otherwise have gone to OHIM. Presumably, these two will at some point reach an equilibrium - until a serious country such as the US, Japan, Korea or China joins Hague and tips the balance further away from OHIM.
There is an interesting aside in the report on foreign design filings. It notes that: "In 2007, the share of total industrial design registrations by non-residents amounted to just 19.8%, which is below the equivalent shares for patents and trademarks. Industrial design protection is sought less frequently in foreign markets, because the products in question are geared mainly toward domestic commercialization."
I have no idea who came up with this rationalisation, but it has a bogus look to me. I think the reasons for low foreign filing rates are twofold: firstly, the Hague international design registration system (unlike Madrid and PCT) does not cover much of the industrialised world, and secondly, worldwide substantive law is far from harmonised which makes international design filing more complex and hence relatively expensive. Both of these failings are, to some extent, WIPO's responsibility, so I suppose it is not too surprising that the report does not mention them.

RIP London Act, Floreat Hague

Thanks to Class 99-er Graeme Dinwoodie for pointing out this breaking WIPO story.

Life for applicants using the needlessly complex International Design system is about to get a little easier, with the abolition of the 1934 London Act of the Hague Agreement, the first in the tale of five cities (it was followed by the Hague Act of 1960, the Monaco Act of 1961, the Stockholm Act of 1967 and, finally, something approaching modernity in the form of the Geneva Act of 1999).

Class 99 will miss the terse Gallicism of the 1934 Act (despite the name, the UK never acceeded and it was based on the old French system), featuring sealed or open "deposit" rather than filing, and the famous "enveloppe soleau", a double sealed, perforated envelope to be opened on need.

This is clearly the reason for the departure of Indonesia which we noted here on 1st May 2009 - it is the only Hague member which has only ratified the London Act, and so it will have no place in the post-London Hague system.

Even without the London Act, on filing an International Design it will continue to be important to check which potential designated States share the same version of the Agreement as the country of the filer. For example, Brits can only designate Geneva Act states, except in circumstances too complex for this posting. But every little simplification helps.

The ACID petitions: latest news

Back in late July Class 99 reported on the online petitions launched by UK designers' group ACID (Anti Copying in Design). The objective of the first petition was to raise the level of civil infringement damages to deterrent levels for copyright and unregistered designs; the second sought to introduce criminal sanctions for design infringement. Since ACID has just issued a fresh newsletter this week, it seemed appropriate to take a look at the online petitions and see how they're getting on.

Class 99 can report that the uptake has been slow. As of this morning, the number of signatures supporting deterrent damages stood at 196, while supporters of criminal sanctions for design infringement totalled 188. The deadline for signing is 21 April 2010 and ACID has promised a major campaign to attract support, but the early signs cannot be seen as encouraging.

Very interesting -- but where are the designs now?

Drapers Online is one of many sources which reports that British fashion chain Next has alleged that giant retail outlet and online trader Tesco illegally copied up to five separate clothing lines, including shorts, trousers, sandals and shoes, as well as two of Next's design motifs. Undaunted, Tesco is reported to be counterclaiming that, on four occasions in late 2008 and early this year, Next made ungrounded threats to bring infringement proceedings against it.

Next says that Tesco’s Cherokee shoes are based on its own Trekker sandals and that its Strike Babes trainers, crocodile shorts, a hooded cardigan, combat jeans plus two "tractor and a car" clothing motifs have also been unlawfully appropriated. Tesco, itself a significant intellectual property owner, has declined to make specific omment on the infringement allegations.

Class 99 notes that, while this news item has been reported widely in the UK press, none of the reports carries any illustration of Next's products or Tesco's alleged infringing goods. A brief internet image search of both Next's and Tesco's sites proved equally unsuccessful. Can any readers help?

RCDs get a "pick up" from MARQUES

One of the highlights of this year's MARQUES Conference was the workshop by Class 99 contributor David Stone, "Design: pick up where trade marks leave off". The format of the workshop was simple but effective. First David took the workshop participants through the main features of registered Community design (RCD) law regarding registration and scope of protection. Next, dividing the room into in-house legal teams, he gave each an item and asked the team to come up with two Community trade marks and six RCDs to protect it. Then he gave each team the lookalike product against which their theoretically protected product had been matched in recent litigation and asked them to confess as to whether their advice on registration had beenadequate to protect their product against the lookalike.

Right: Pimm's v Pitchers revisited

Although some of the products involved were alcoholic beverages the exercise was a sobering one. For one thing, you soon get the idea as to which players do the work in their offices and which do the social networking. More to the point, the exercise demonstrated how much the protection conferred by the RCD can be likened to a sort of lottery, since so much is dependent on guesswork. The manufacturer of the original product doesn't know which features of his product a me-too maker will borrow, and the lookalike producer doesn't always know which features of his target have been protected, since publication of the RCD may have been deferred.

Left: WIPO design chief Gregoire Besson watches the workshop with detached amusement

My feeling is that the "what shall we protect?" exercise is done best where the in-house team starts off by pretending it's on the other side and asking how close it can get to the original product without risk of legal action, then work backwards towards a design and trade mark registration policy. But that's another matter ...

RCD invalidity through the cases: Rodinger writes

The September 2009 issue of the Journal of Intellectual Property Law & Practice (JIPLAP), published monthly by Oxford University Press, leads for the first time with an article on the validity of Community designs. Entitled "Community design invalidity: the issues, as viewed through the case law", it is authored by Pedro Rodinger (right) who is known to many readers of this weblog as Director of OHIM's Design Department. According to the article's abstract:

"Legal context: In 2003, Council Regulation 6/2002 on Community designs set in motion the Registered Community Design, an IP right that is relatively easy to obtain thanks to the fact that there is no ex-officio novelty examination and to the swift and fast registration procedure. According to the regulation, problems with conflicting design or other rights are solved after registration once they effectively occur. The Community legislator followed the wishes of the European industry and after more than 5 years of experience, the fairly low number of design invalidity claims seems to confirm that this decision was a good one.

Key points: So far, only six design invalidity cases have been presented to the CFI. The basic underlying concepts of the Community Design right are at the core of these cases: the concept of the informed user, the degree of freedom of the designer, the use of proofs, the conflict between designs and trade marks, etc.

Practical significance: The RCD being still a young right, the interpretation of these concepts is of utmost importance for practitioners. The article contributes to the general debate on interpretation".

It's a little-known fact that two members of the Class 99 squad-- David Musker and Jeremy Phillips -- are also members of the JIPLAP editorial team. If you are thinking of writing an article on design law and practice, whether scholarly or practical, please feel free to contact either of them with your ideas.

Coming soon: new design law for China

In around three weeks, on 1 October 2009, the 2008 Third Revision of China's patent law comes into force according to the first in a series of articles written for Intellectual Property Watch by SIPO researcher Wenting Cheng.

Ms Wenting explains that China has an omnibus patent system which incorporates protection of designs and utility models as well as conventional patents. As to patentability of designs she writes:

" ... Patent Law (2008) Article 23 adds a new section, providing that the design on which a patent may be granted must be substantially different from any prior designs or a combination of the features of prior designs. Any design on which a patent may be granted must not be in conflict with any prior legitimate rights of any other person. The prior design referred to in this law means any design known to the public before the filing date of the patent application in China or abroad.

This newly added provision defines two standards to determine the patentability of a design: one is substantial difference and the other is that it is not in conflict with prior rights. Details on these standards are included in the Implementing Regulations of Patent Law and Guidelines for Examination which undergo revisions accordingly. Specifically, major changes take place in the post-grant stage since there is no substantive examination in granting design patents in China".

For further details, including how to tell whether two designs are identical, you can read the full article here.

Maglite illuminate the scope of Swedish copyright

Maglite Instruments won a copyright victory over IKEA in Sweden's Supreme Court, in a case which has been running for a decade, according to the International Law Office report by Håkan Borgenhäll and Lulu Li of Advokatfirman Lindahl. The result is that their mini Maglite(TM) torch, marketed in 1980, will now be protected for life+70 years as a work of applied art.

Is this perhaps a little generous? Should the Supreme Court treat themselves to a reading of the late Sir Hugh Laddie's grouchily brilliant 1995 Stephen Stewart lecture, "Copyright, Over-Strength, Over-Regulated, Over-Rated," 18 E.I.PR. 253 (1996)? Or is this moderate by comparison with the perpetual trade mark protection Maglite have been granted in Japan and elsewhere?

Perhaps there is a gleam of sense in the Swedish judgment - it appears that they noted the relatively low level of originality, and the limited design freedom, and adopted an approach closely resembling that of the Community design regime - limited design freedom lowers the creativity required for protection, whilst shrinking the scope of the protection granted. We can perhaps live with life+70 years (approximately thirty times the protection available via unregistered Community designs, and at least thrice that available to registered designs) if the quid pro quo is narrow infringement rights.

Vitra v High Tech: what the ECJ must rule on

The Curia website has now posted information about Case C-219/09 Vitra Patente AG v High Tech Srl, a reference for a preliminary ruling from the Tribunale di Milano, Italy, which was lodged on 16 June 2009. The questions in this reference are as follows:

"(1) Must Articles 17 and 19 of Directive 98/71/EC [on the legal protection of designs] be interpreted as meaning that -- in implementing a national law of a Member State adjusting the domestic legal order to the abovementioned Directive -- the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which -- albeit meeting the requirements for protection laid down in copyright law -- fell to be regarded as having entered into the public domain before the date on which the national implementing legislation entered into force, in so far as they had never been registered as designs or in so far as the relevant registration had already expired by that date?

(2) If the answer to the first question is in the negative, must Articles 17 and 19 of Directive 98/71/EC be interpreted as meaning that the discretion accorded to the Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection where a third party -- without authorisation from the holder of the copyright on such designs -- has already produced and marketed in that State products based on such designs which were in the public domain before the date on which the national implementing legislation entered into force?

(3) If the answers to the first and second questions are in the negative, must Articles 17 and 19 of Directive 98/71/EC be interpreted as meaning that the discretion accorded to the Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection where a third party -- without authorisation from the holder of the copyright on such designs -- has already produced and marketed products based on such designs in that State, where protection is precluded for a substantial period (a period of 10 years)?"

Notes on the background to this dispute, which involves the design of the Panton chair, can be found here.

Door opens for design owners in Italy

Lualdi's staggeringly individual door design

Trevisan & Cuonzo Avvocati report a Milan design infringement trial on RCD 153333-01 and 02. The door shown in the designs (depicted above) looks very similar to, well, any door you've ever opened but on close scrutiny you can just about see that it stands proud of the door frame. The proprietor, Lualdi S.p.A, sued Dorica Castelli S.p.A., who exhibited their own Quadro' door at a Milan trade fair. They lost in interlocutory proceedings, but succeeded in the end on the merits, over a plea that the design was invalid. It appears that their definition of the "informed user" is essentially the same as that adopted by OHIM and, to a first approximation, in the UK - "a purchaser who is particularly attentive to the goods in question but is not an architect or a designer and who does not leave the choice of purchase to another but informs himself by consulting catalogues, magazines and experts to find the product that best fits his needs".

That is in line with the majority of prior Italian cases, though in one or two apparently the "informed user" has to the contrary been seen as architect or interior designer - see Professor Mario Franzosi's excellent JIPLP article Design Protection Italian Style.

One can only applaud harmony and consistency across the EU. But is this really Italian design at its best? It is hard to tell on the basis of these grainy, monochrome grey pictures, but the design in question appears to fit right into Franzosi's pithy commentary:
"Take a look at what is registered at OHIM in Alicante. ... Most of them are not work of design because they are simply ugly."