Cape Verde gets its priorities right

The Designs (Convention Countries) (Amendment) Order 2009 (SI 2009/2747) coming into force on 12 November 2009, adds Cape Verde to the lists of Convention countries from which priority may be claimed in the UK.
For more background, see David Pearce's page on s13 f the Registered Designs Act 1949, on the Design Law Wiki.

OHIM e-filing update

We covered the improved RCD online filing system earlier this year. Since then, we learned at the last e-Business User Group meeting, OHIM have made some improvements, and more are on the way. Improvements which are already with us are:

• Removal of the maximum number of designs in an e-filed multiple application;
• Multiple image file upload - you can upload all the image files for one design in one hit now, rather than having to do so one at a time;
• "Image editing" - I don't know what this covers, can anyone enlighten us?

On the way is a "save draft" option, allowing you to save a design for a few days (at present you only have a couple of hours). That will allow approval by supervising attorneys or clients - very welcome.

"Hands off my design", OHIM-style

Click www.handsoffmydesign.com and the web page on your screen should resolve to the regrettably less memorable http://oami.europa.eu/t4t/rw/pages/index.en.do#-. There you will be treated to a new OHIM experience,

"e-Learning about European Union Design Protection:

For the designers of the future!!

LOG ON TO SEE THE CONTENTS!!".

It's good to see that, despite the recession, there's still no shortage of exclamation marks in Alicante. It's also good to know that, while your clients are reading all the technical stuff about design protection on Class 99, their children can be learning about BOBLES: WHEN YOU HAVE A GOOD PRODUCT YOU WILL BE COPIED! and PLAGIARIUS - THE PRIZE YOU DON'T WANT TO WIN! (yes, more exclamation marks -- mainly stolen from Joop!, I suspect). There's a Games Zone, a Teachers' Zone and a Students' Zone too. Well done OHIM. Or should that be Well Done!! OHIM!! ...?

Are lawyers' letters protectable as designs?

It takes a craftsman to recognise a craftsman. ACID member Porta Romana recently gained satisfaction in its claim that Dutch company Maretti was selling what appeared to be copies of their sculptured ribbon wall lights and table lamps, without the hassle of a court appearance. Following the settlement, ACID CEO Dids Macdonald said:

“Taking legal action is not necessarily going all the way to Court. Often, as in this case, a series of well crafted legal letters before action can achieve positive results in a timely manner.”

Class 99 wonders whether the generous scope of protection conferred under Community design law is broad enough to embrace "well crafted legal letters", regardless of their functionality in achieving the desired results. Assuming that there's no problem with novelty and individual character, that is. After all, Article 3 of Regulation 6/2002 provides that

"(a) "design" means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation;

(b) "product" means any industrial or handicraft item, ... packaging, get-up, graphic symbols and typographic typefaces ...".

Could be, don't you think?

OHIM Tweets

OHIM joined Twitter yesterday, and this Class 99-er became its 99th follower. Search for OHIM or OHIMTWEETS on Twitter to see a stream of more-or-less useful information. They are also on Youtube, according to their announcement yesterday.

Sue and settle -- but who is the real winner?

Anti Copying in Design (ACID) is just celebrating the news that one of its members, leading contract furniture designer Morgan Contract Furniture, has resolved its claim against PTT Design Limited. Having launched High Court proceedings for design right infringement in respect of seven items of furniture design which PTT supplied to Hyatt Hotels in 2006, Morgan accepted non-infringement undertakings from PTT and its individual directors plus £65,000 towards damages and costs, following a mediated settlement.

Right: 'Como', from Morgan

As with most mediations, the commercial reality that lies behind the settlement remains unknown. Morgan and PTT had both bid for a contract with Hyatt Hotels; PTT got it ahead of Morgan. Was this an instance of an infringement that paid for itself? We may never know. However, PTT's website lists its clients, one of which is the Hyatt Churchill Hotel, London for which it provided casegoods and seating for 398 bedrooms and 40 suites. Anyone with a head for figures and a knowledge of the sector will be able to calculate who got the better deal, Morgan or PTT.

Serbia joins Hague

Serbia joined the Hague Agreement on International Designs on 9 September 2009, and their accession takes effect on 9 December 2009, according to WIPO's Press Release.

Another brick in the wall?

Alicante News reports an invalidation case (ICD 5353 on the validity of RCD 150917-0004) which is interesting from two angles. Firstly, it considers whether a brick is a "component part" in the sense of the Regulation and concludes, quite rightly I think, that it is not because it cannot be assembled and disassembled - it is stuck in place by mortar. The consequence is that the design is not automatically invalid under CDR Article 4 because not visible in normal use.
That may come as a surprise to some, possibly including the French courts which have held the contrary in at least one case on building products, but is in accordance with the view that this is an anti-spare-parts provision rather than a principle of substantive design law.
Secondly, and more contentiously for me, it concludes that a disclosure by availability on the file of a German Utility Model is one which could "reasonably have become known in the normal course of business to the circles specialised in the sector concerned". I personally have no problem with the view that published patents and designs would come to the attention of the circles concerned - if they don't pay attention to IP, they certainly ought to so so. But I don't think it is normal commercial practice to watch the unpublished files of applications - I recall many years back that this is how Derwent got started, in the days when the Belgians used to lay patents open early, but there was a market for their product precisely because individual companies didn't do it themselves.

Nothing to hang on to ...

Earlier this week Class 99 announced that a decision was awaited in the appeal by Virgin Atlantic v Premium Aircraft Interiors against the trial judge's dismissal of its patent and design infringement claims in respect of its Upper Class passenger seats. Since design issues took up such a great space in the original trial, it was expected that we would all benefit from some further explication of design law by the Court of Appeal for England and Wales. Sadly -- for us, that is, and not for Virgin as successful appellants -- today's appeal decision was on the patent infringement/validity issues only, so there was nothing on designs after all.

Designs "very important" says survey, but that's not news to Class 99

"Europeans consider design 'very important' for competitiveness" is the title of the front page feature of the most recent issue of the online Alicante News, released today by OHIM (you can read the issue in all its glory here). According to the article,

A new European Commission consultation on the links between design and innovation [see link below] has shown that the majority of respondents, including companies from outside the design sector [How valuable, or relevant, is their opinion?], consider that design is "very important" for the future competitiveness of the EU economy.

... Since [2003] OHIM has registered just under 400,000 designs on behalf of companies from all over the world.

The RCD has been popular since the start, showing steady annual growth right up until the current global recession. Figures for designs for the year to September show that we have received 53,000 designs, a drop of 11% compared with the same period in 2008 [Is the drop caused by the recession or are other factors also at work, such as greater awareness of unregistered design protection? It would be good to know].

The impact has been greater in some countries than others. In design-conscious Italy, RCDs are down just 7% and overall, there are recent signs that applications are starting to grow again. Design totals are still down in the second and third quarters, but not by as much as in the early part of the year.

The slower speed of recovery of design applications contrasts with the much more rapid return to 2008 levels seen in Community trade marks. CTM applications for the year, helped by strong demand in the second quarter, stand at 58,000 – just 4% down on the previous year [The differential is curious, not least because it can't easily be explained by the post-recession pick-up].

The design consultation received a total of 535 online replies from organisations and individuals. The organisations ranged from national ministries for enterprise and industry to design companies, and a range of large and small European companies.

While overall, more than 91% of respondents gave strong support for the link between design and competitiveness, almost three-quarters of the companies whose main business was outside the design sector also agreed.

When asked to describe why they believed design was so important, many referred to the necessity for Europe to compete on quality and sustainability as opposed to price [Now, why should design be equated with quality?], and the important role of design as a differentiator.

The design of products – goods, services, experiences – was considered an essential driver of technological and non-technological innovation as it increased the probability of market success, shortened time to market [How did it achieve this, one wonders] and potentially cut costs.

In terms of the European-level initiatives desired, the organisations felt “awareness raising and design promotion” was the area where public initiatives in support of design would be most useful (82%). This was followed closely by “design education” (75%) and “design research” (74%). A total of 68% considered that “design support to organisations” was what was needed. Only 1% of organisations considered that public initiatives in support of design were not useful [Is this a sort of public sector self-justification exercise, or what?].

For more details see Results of the public consultation on design".

Recession and retro-design: are they connected?

In a post for BrandChannel, "For Recession, Designers Revert To Longtime Wardrobe Staples", Sara Zucker outlines her thesis that links recession with retro-design. She writes:

"The worst trends never really seem to go away, don’t you think? Fanny packs, bellbottoms, babydoll dresses – they just won’t disappear.

This time, irony is at its peak, but it may not be such a bad thing; designers are finding inspiration in another major American “depression” to fashionably cope with this one. Michael Bastian’s spring 2010 menswear collection will feature a three-piece glen plaid suit.

Sound familiar? Such an outfit has been a staple in the closets of men since the beginning of the 20th century.

Ralph Lauren turned The Grapes of Wrath into a runway of torn overalls, felt hats, floral dresses, and oxfords. The Wall Street Journal hit the nail on the head in observing that every move, especially a trend, has its purpose:

"There's a quest to reassure the consumer that this is safe, this is good, you're putting your money in the right place. You're going to feel good," says Isham Sardouk, senior vice president of trend forecasting for trend-tracker Stylesight.

Footwear in particular is making great strides in stepping back. Timberland Co. recently issued a collection of shoes and boots inspired by styles seen from 1900 to 1945. The company calls that particular period of time "an era of hardship, war and industrialization—marked by a shift to cities and women entering the work force." The economy may not have been sturdy, but the clothing sure was".

I'm not convinced that this slender data, by itself, is persuasive. Retro-design and the drawing of inspiration from the past is not quite as old as design itself but can't be much younger and I suspect that there's as much evidence of retro-design as a novelty selling-point in times of boom and affluence.

The more recent past is also a great inspiration for design, as can be depressingly seen by anyone who looks at the applications for invalidity before the Office for Harmonisation in the Internal Market.

Hang on to your seats ...

The decision of the Court of Appeal for England and Wales in Virgin Atlantic v Premium Aircraft Interiors is expected this Thursday. At first instance Mr Justice Lewison held that Virgin had failed to show that Contour infringed either its unregistered design right or its patent relating to the airline's business class seating system.

In the course of his lengthy and carefully worded decision Mr Justice Lewison reiterated the difficulty of interpreting the unregistered designs provision of section 213 of the Copyright, Designs and Patents Act 1988 and reviewed the role of the expert witness in design infringement proceedings. Class 99 awaits the outcome with excitement.

"... Unless by the judgement of his peers"

Jury trials have long been a feature of the common law, and a right at criminal law enshrined by Magna Carta in 1215. We had juries in England for patent trials right into the 19th century, and of course they remain an active feature of US patent and design litigation (though this is not uncontroversial: see this discussion on Prof. Crouch's excellent Patently-O site).

But does a patentee get "the judgment of his peers"? A standard jury is selected from the general public at random, after exclusion of lawyers and others in the legal trade, and in many cases consists of those who lack the intellect to escape jury duty. Is it fair to expect a decision on a patent or design issue from the man in the street?

It was not ever thus. When jury trials were the norm for civil matters in the UK, "special juries" were often empanelled, consisting of people from the trade concerned. The system seems to have died out (at least for City of London financial cases) as late as the 1970s according to Vidmar.

Professor Mario Franzosi's excellent JIPLP article Design Protection Italian Style discusses the institution of the Italian Design Jury, which provides opinions on design subsistence and validity, and we note that in the recent Swedish Maglite case (discussed on Class 99 last month) the Supreme Court followed an opinion on copyright subsistence of the Copyright Panel of Svensk Form, the Swedish Society of Crafts and Design. Juries, such as for example Red Dot's jury, are common enough in judging excellence in design. Could something like this work for design cases in common law countries? Or would a jury of designers be too harsh a tribunal for an essentially consumer-focussed intellectual property right?

Egyptian Goddess attracts further attention

Above: the ornamental nail buffer, subject of the contentious US design patent in Egyptian Goddess v Swisa.

Class 99 has already had cause to visit the US jurisprudence on design protection in the light of the decision last year in Egyptian Goddess v Swisa Inc (see "US Designs - Validity post-Egyptian Goddess"). That decision preferred a comparison of designs based on the perspective of the "ordinary observer" knowledgeable of the prior art to a test for infringement based on a "point of novelty" inquiry.

Egyptian Goddess has just found herself the subject of contemplation in Europe again, with the publication in the November 2009 European Intellectual Property Review (well done, Sweet & Maxwell, to get the EIPR out so early!) of a substantial note by Bird & Bird's Lorna Brazell entitled "Is Design Law in the United States and European Union Converging? The Egyptian Goddess Faces Up to the Snake". Those interested in pursuing Egyptian Goddess further, from a purely US perspective, may want to take a peep at the note by Charles Macedo (Amster, Rothstein and Ebenstein) in the April issue of OUP's Journal of Intellectual Property Law and Practice (JIPLAP).

Never mind the quality, it's quantity that counts

At the heart of a design rip-off dispute in Canada is the sweater worn by the woman in the centre of the picture above, according to this item on CBC News. According to member of Vancouver Island's Cowichan First Nation, it submitted a bid to knit its traditional Cowichan sweaters for Canada's Olympic uniforms but the Hudson's Bay Company decided to make its own. Say the Cowichans, Hudson Bay's version of the sweater embodies the elk and a maple leaf but lacks authenticity.

Particularly galling is the fact that Vancouver's Olympic Committee has threatened legal action against businesses that use the Olympic logo or even use the word 'Olympic' but apparently made no effort to accommodate the creators of the Cowichan design."

Hudson's Bay has defended its decision and maintains that the big issue was obtaining a sufficient supply.

Design, residuals and the long tail

"If you are not an IP lawyer, please send this post to someone who is. Or you might want to just pitch this idea to them. If you are at all interested in personal fabrication, 3D printing, mass customization etc. it is crucial that such a business be created. If you can, please try to motivate someone you know to start it.

After all as Warhol said, "In the future, everyone will be world-famous for 15 minutes." And everyone won't all be able to make their way to the offices of Fancy, Fancier & Fancy-est esq. on Park Avenue".

So writes Joris Peels on his Shapeways blog, in an impassioned post entitled "The democratization of manufacturing, design residuals and IP". Joris argues for the creation of business models for, among other things, design-based creativity based on the fact of the 'long tail' that follows the exploitation of new designs and the means of extracting income from it. The big problem, of course, is "how?" Joris states:

"Some product designers are also increasingly getting into the royalty game charging between 3-5% on future revenues from their designs".

It would be good to know who they are, how they do it and what happens when the long tail meets the law of diminishing returns: the smaller and more obscure an infringement is, the less cost-effective is its enforcement, particularly where any damages award might reflect the design owner's expectation of receiving a royalty of just 3-5%. Readers' comments are welcome.

Good news for copyright infringers, or a Trapp to Tripp designers?

This posting is by Class 99-er Henning Hartwig.

German case law isn’t famous for awarding exorbitant damages in IP infringement matters. Now, it appears as if German Courts are even going into reverse: Just published, the German Federal Supreme Court has only recently decided, in Case I ZR 98/06 Tripp-Trapp-Stuhl, that copyright infringers are not obliged to render the whole profit made with the infringing copy even when imitating one-to-one the work-in-suit (in this case, the well-known Tripp-Trapp child's chair). The court found that, in such a case, the decision of the consumer to buy the copy (and not the original) was not based “entirely on the infringement” but rather on other factors such as “functionality” or “good price” of the copy. In short, the consumer is buying the copy not only because of it being identical with the original, but because it is cheaper.

This observation doesn’t seem to be new or surprising – why should I buy a copy if it isn’t even cheaper than the original? In fact, there is most probably no copy that isn’t offered at a better price than the original. But this is no excuse for courts to let copyright infringers get away with some of their profits. Should these people really be rewarded by being allowed to keep a part of their profits because they sell their copies for less (and clearly detracting buyers from acquiring the original), whereas infringers selling their copy at the price of the original (highly unlikely, though) would have to render the entire amount of their profits? And how can a court determine and weigh factors such as “functionality”, “low price”, “imitation” etc., factors that are decisive, according to the court, for calculating the percentage to be deducted from the profits?

The decision raises more questions than it answers – including the critical question to what extent this reasoning will be transferred to other IP rights. If German courts answer this in the affirmative, Germany would indeed find itself before a change of paradigm.

"Design for the disabled"

"Design for the Disabled" is the title of a feature in the current issue of the attractive and informative WIPO Magazine. This upbeat article extols the virtues of safety products, therapeutic toys and other items and concludes:

"The good news is that considering the needs of the disabled will ultimately lead to designs that are safer, more flexible and more attractive for all consumers. We are hopefully working towards a world where design solutions are found for people of all degrees of ability".

Sadly, considering that this is a publication from the international agency charged with the protection of the rights of creators and with encouraging innovative activity, there is no glimmer of any "design solution" for those unfortunates who either cannot protect their designs or are unable to enforce the rights they do possess, on account of the expense and difficulty of litigating them.

No-one would seriously disagree with the need for the sort of products discussed in this article, but the market for goods designed for special needs -- particularly among the swelling ranks of the aged and the infirm -- grows increasingly valuable and the activities of manufacturers and distributors are not solely motivated by the promptings of their social consciences.

Getting that colander habit

In Case R 887/2008-3 Normann Copenhagen ApS v Paton Calvert Housewares Limited, 11 August 2009, OHIM's Third Board of Appeal dismissed Normann Copenhagen's appeal against the Cancellation Division's decision that the registered Community design for its lovely collapsible colander (right) was invalid since it was not new.

Of note is the Board's assessment of the identity of the 'informed user' of a colander. In case you ever wondered:

"27 ... The informed user against whom individual character of the contested RCD should be measured is therefore whoever habitually purchases such an item and generally kitchen utensils and puts them to its intended use and has become informed on the subject by browsing through catalogues, visiting the relevant stores, downloading information from the Internet shops, ...

28 The informed user is generally not technically experienced or particularly interested in the technical design of colanders. He will therefore not pay attention to every detail of the device. Instead, he will undertake an overall view including inter alia the attractiveness of the design and the practicability of the device".

I wonder how many people habitually purchase colanders.