US design validity

Thanks to the very wonderful Patently-O blog for pointing us to this recent draft article by Mueller & Brean on US design patent validity - arguing, as we have done here, that there is little or no place for the obviousness-style approach used in utility patent cases, and that the "ordinary observer" test ought to rule validity as it does infringement.
Also on Patently-O, an illuminating aside on the US approach to the conflicting (or are they?) drivers of functionality and ornamentation, with reference to Bissell Homecare v. Wildwood Industries - it bears careful comparison with the approach of the OHIM Board of Appeal in the Chaff Cutters case reported here a little while back.

Design and copyright litigation on the rise in the UK

UK IP litigation is on the rise, according to law firm EMW Picton Howell. IP cases in the High Court rose from 230 in 2006 to 422 in 2007 (up 83%) and 562 in 2008 (another 33%).

Within these figures, design and copyright litigation rose 43% in 2007 and a further 66% in 2008.

X5 and CEO – Are they still riding side by side?

Design fetishists and car maniacs will certainly remember those puzzling news from Munich and Turin, with the Munich District Court (Landgericht München I) confirming a claim for design infringement raised by the famous – Munich based (!) – car factory BMW against the Chinese version of its X5 model called CEO, while the Turin District Court (Tribunale di Torino) had dismissed the very same claim against the very same contested design a few months earlier. The truth is that both courts addressed validity but draw deviating conclusions. While the Italian court found the ML novelty-destroying over the X5, the Munich judges did not. The defendant – the German importer – appealed to the Munich Appeal Court (Oberlandesgericht München). After a hearing on May 14, 2009, it took quite a while for the court but now the dismissal of the appeal has become public. Good news for BMW: X5 apparently does not infringe ML but CEO still infringes X5!
Since the first generation of the X5 is protected only by German national and corresponding Hague designs (not: Community designs), the Munich Appeal Court couldn’t render a Europe-wide ban on the CEO. Hence, BMW will have to go on a country-by-country ride and attack the CEO wherever a judge will be prepared to grant injunctive relief …

OHIM Board of Appeal rules on functional designs

According to Alicante News, OHIM's Board of Appeal has invalidated a design on the basis that it is dictated by technical function (Decision of the Third Board of Appeal of 22 October 2009 in case R 690/2007-3). This is unsurprising - but what certainly is surprising is that the Board has not followed the Opinion of the Advocate General in the Philips case, nor that of the UK Court of Appeal in Landor & Hawa v Azure (which followed the A-G in Philips) but has gone its own way. To quote:

“That provision [i.e. CDR 8(1)] denies protection to features of a product's appearance that are ‘solely dictated by its technical function'. Those words do not, on their natural meaning, imply that the feature in question must be the only means by which the product's technical function can be achieved. On the contrary, they imply that the need to achieve the product's technical function was the only relevant factor when the feature in question was selected.”

To UK ears, this sounds much like the House of Lords in Amp v Utilux. It is also, of course, consistent with the treatment of trade marks by the ECJ in Philips, as suggested by the Dutch courts.

The complete decision is not yet available on the website. In the meantime, here is a link to the first instance decision. Will this be appealed to the CFI? Will the ECJ follow OHIM, or its own A-G? We await these answers (and your thoughts, dear readers) with bated breath.

Giving advice on Community designs: what can we learn?

The editorial of this month's Journal of Intellectual Property Law & Practice (JIPLP), "Community design and design community", focuses on David Stone's excellent workshop session on Community designs at this year's MARQUES Conference (see earlier post on Class 99 here) and on the lessons learned from it, both in terms of the law itself and in regard to the psychological dimension of giving design law advice.

You don't have to subscribe to JIPLP to read the editorial: you can access it at no charge here.

Novelty v individual character – It’s the nose, stupid!

In one of the most recent decisions of OHIM’s Board of Appeal interested readers will find juicy comments on novelty and individual character. While, says the Board, Article 6 (individual character) refers to the notion of the “informed user” to be “identified on the basis of the class of products within which, according to the application for registration, the design itself is intended to be incorporated”, Article 5 (novelty) allegedly does not specify such a referenced person. OHIM, therefore, would be asked “to assess the differences on the basis of the overall appearance of the designs in question”. Furthermore, according to OHIM, the informed user is generally “not technically experienced or particularly interested in the technical design” of colanders (this is what the invalidated Community design was registered for). Hence, says OHIM, this user won’t 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.”

While this guidance on delimiting novelty and individual character is helpful per se, it appears questionable how to take it into account in daily business. If OHIM is right, the novelty test would have to be carried out by each individual judicial body (OHIM or a Community design court), whereas the individual character test would require to don the spectacles of an informed user – but isn’t it in the end still the nose of the judicial body on which the spectacles would be found?

Making life more comfy for designers?

In the wake of its role in the settlement of the Morgan/PTT comfy hotel furniture dispute (reported by Class 99 here), ACID CEO Dids Macdonald tells me:

"Hotel groups seem to want the design and engineering credentials that companies like Morgan create but then go to alternative suppliers with a remarkably similar spec.

We have just introduced a system where, in future, ACID members who pitch for contracts can send copies of their pitch free of charge to the ACID Design Data Bank. On the front of the pitch/tender documents they communicate that they are ACID members and have sent a copy to the ACID DDB. In this way we hope that this might be a subliminal or not so subliminal message that a 3rd party has also seen the response to pitch or tender!"

This is such a simple idea that it seems absurd that did has not become standard practice years ago. It won't stop a determined copyist from infringing. However, in terms not just of subliminal warnings but evidential value it is bound to improve the business environment in which designers make their pitches. Will insurance companies who dabble in anti-infringement cover, and lenders advancing sums on the security of a designer's IP portfolio, also want to encourage this practice? They should.

"For pig farmers, read potato farmers"

Thanks to Class 99er Jeremy for drawing our attention to Grimme v Scott, hot off the press today, a patent and UK Unregistered Design Right case on potato separators which separate spuds from "weeds, earth, clods, stones and haulm". Very agricultural.

On the design side of the case, the Claimants won a slightly pyrrhic victory, given that their rights were held to have expired in December 2008, on one out of three of the alleged infringements, and the defendant conceded that another had infringed, leaving one found not to infringe. The Defendant had admitted copying, so the design case revolved around similarity.

The Defendant raised a "threats" counterclaim under s253 of the Copyright, Designs & Patents Act on the basis of threatening letters from the Claimant's lawyers to the Defendant's customers. Slightly surprisingly he succeeded, since the judge held that the wording of the letter implicitly applied to all three of the allegedly infringing rollers, whereas one had been found non-infringing, so that the threat was not justified.

Here is the Defendant's "Original" roller, held to infringe:

And their "Second" roller, which escaped infringement on the basis that the internal chambers and rib shapes were different:

The case makes no new law, but illustrates the extent to which UK Unregistered Design Right protects even the internal parts of even purely functional designs, subject to the exclusion of "must fit" and "must match" features. The judge drew on the analysis of the pig fender in C & H Engineering v. Klucznik [1992] FSR 421 - but for pig, read potato.