CTM cases on the OHIM website: can you help?

I've just been scouring the web page of the OHIM website which is devoted to "Judgments of Community Design Courts concerning Community Designs". Frankly, it's in need of an infusion of help and assistance from the design community. Problems are not limited to the following:

* only 12 countries are represented at all -- and several significant jurisdictions have no cases listed at all;

* you need to be a talented linguist, since each decision is only recorded in its national language. A one-line summary in the OHIM working languages would be a great improvement on this;

* Each case is listed by Member State, Date, Language(s) and a heading called 'Concerning' -- which doesn't refer to the legal issue (eg validity, infringement, informed user) but to the subject on which the design is found (eg Flacon de parfum, Iltahämy-/aamunruskosimulaattorit, Naptidi pochette).

What we have to do is to ensure that OHIM gets plenty of decisions to post on this page, that it is given more information which it in turn can pass on to users of the site, and that it be encouraged to understand that, while we are grateful for what is available so for, we hope that the page will aspire to greater heights of achievement.

Community designs, now in French

MARQUES, the normally Anglophone organisation of trade mark owners and practitioners in Europe, is ambitiously organising a French-only seminar in Paris on Community designs on Tuesday 19 January 2010. The event is advertised as a "free evening seminar" so, if you have a free evening, this may appeal to you.

The Guide pratique du droit des dessins et modèles communautaires pour les titulaires de marques is being conducted at the offices of law firm Simmons & Simmons. The full programme may be viewed ici.

Stormtrooper helmets, sculptures and designs: appeal court rules

Lucasfilm Ltd, Star Wars Productions Ltd and Lucasfilm Entertainment Co Ltd v Ainsworth and Shepperton Design Studios Ltd [2009] EWCA Civ 1328, yesterday's lengthy decision of the Court of Appeal for England and Wales in the "Star Wars" stormtrooper helmet dispute, conceived by the claimants but made and sold without authorisation by the defendant, has now been handed down. A note on the full decision, together will further facts, appears on the IPKat weblog here.

Of specific interest to designers and their representatives is the court's treatment of sections 51 and 52 of the Copyright, Designs and Patents Act 1988.

Section 51 provides that "It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design". The court said at paras 85 to 87:

"This [section] ... is directed to the production of a three dimensional object in accordance with a design which is itself the subject of copyright. Except where the design is one for an artistic work, the use of the design to make what is illustrated is not an infringement.

The judge held that the ... paintings and other drawings were design documents within the meaning of s.51 and were used by Mr Ainsworth to create the stormtrooper helmet and armour. On the basis of his finding that the helmet and armour were not sculpture or works of artistic craftsmanship, s.51 therefore provided a defence to a claim of infringement based on his use of those works.

The judge's decision that the ... paintings and drawings were design documents has not been challenged on this appeal. The application of s.51 was resisted only on the ground that the helmets and armour were sculpture. The judge was therefore right to find that it provides Mr Ainsworth with a defence to the UK copyright claim.".

Section 52(2) provides that

"After the end of the period of 25 years from the end of the calendar year in which .... articles [which are copied from an artistic work and which made by an industrial process] are first marketed, the work may be copied by making articles of any description, or doing anything for the purpose of making articles of any description, and anything may be done in relation to articles so made, without infringing copyright in the work".

Since the stormtrooper helmets were not 'sculptures' their industrial multiplication by Ainsworth was always going to be permitted. Even if they were protected works, since the alleged infringements were governed by the transitional provisions relating to copying done while the Copyright Act 1956 was still in force, the period after which it was safe to make copies was the shorter period of 15 years, which had long since passed.

Design protection as an incentive? Not to be taken lightly

An unusual initiative from the ever-innovative ACID caught my eye today. According to that organisation's press release,

"ACID (Anti Copying in Design) leads the way with the announcement of a National 2010 campaign to introduce intellectual property ... as another tier onto the criteria for judging design awards in the UK. First to take up the mantle is ACID trade association partner, The Lighting Association’s UK Student Lighting Design Awards 2010. The objective is to ensure that all entrants identify the IP they created, demonstrate what they have put in place to protect their IP and have an IP strategy and communications policy in place. An ACID representative will be appointed to the judging panel to assess the level of awareness. Awards organisers who include this ACID IP tier in their judging criteria will be able to display the ACID IP Accredited Awards logo on their website and marketing material. ...

ACID has carried out 1,000s of one-to-one IP Health Checks at their IP Clinics for over ten years at exhibitions; it makes sense to broaden this out to a National campaign to raise awareness about the importance of IP as a valuable asset through a National awards campaign. Through ACID Accredited Awards schemes, this may encourage more universities to include an IP module as part of the curriculum for courses representing the creative industries. The UKIPO have expanded ACID’s initiative positively with the launch of their own online IP health check, making IP awareness available to many more of the UK’s micro and SMEs.

Many award winners are unaware that in a recent Judgment [Procter & Gamble v Reckitt Benckiser 2007: noted here; full text here], Lord [Justice] Jacob created a welcome precedent for designers, particularly those who have protected their design via a registered Community design. It allows those designers who have won accolades, such as awards, to use this as evidence of commercial success, showing that their design is novel (and enforceable). Previously such evidence would have been largely ignored by the Court in deciding novelty, much to the understandable annoyance of the designer".

The idea of drawing design protection into the awards criteria is commendable: not only does it enhance the awareness of design protection on the part of contestants themselves, but it puts the relevant market sector on notice of the facts that (i) a particular design is protected and (ii) the protection is backed by a legal strategy. However, the evidential value of an award should not be overestimated. All that Jacob LJ said in Procter & Gamble v Reckitt Benckiser was this:

"7. ... Of more relevance (though even this is secondary) is the fact that the P&G design (in the form of its physical embodiment) received some independent accolade. The Judge records this at:

[10] The Febreze product was well-received within the packaging community. At the end of 2004 it won the New Jersey Packaging Executives Package of the Year Award. In 2005 it won the Ameristar Award within the category of household products. The citation for the latter award said:

"Febreze Air Effects is packaged in a uniquely shaped aerosol can that breaks category norms, stands out on the shelf, is easy to use and delivers a superb scent experience for consumers. Febreze redefines the difference a great product and a unique package can make in a customized container and actuator".

Having assessed this evidence, he found that the award-winning design was not infringed because it would produce a different overall effect on the informed consumer to what the trial judge felt was a poor imitation of that design. I suspect that the claimants in this litigation would rather not have won the design award if their failure to do so enabled them to succeed in the infringement proceedings.

UK Litigation Statistics - we stand corrected

Trevor Cook of Bird & Bird points out that the EMW Picton Howell litigation stats we quoted in our recent post tell an unrepresentative part of the whole story. The Lord Chancellor's Dept/DCA/Ministry of Justice statistics on IP litigation (which we summarise in tabular form) show that 2006 was a terrible baseline year to choose - the increases in 2007 and 2008 merely restore the position earlier in the decade. These and many other fascinating things are to be found in Trevor's very readable "Users' Guide to Patents". Thanks, Trevor, for putting it in perspective. Are these variations statistically significant at all, or just noise? Comments welcome as always.

Hague Agreement: you win some, you lose some ...

From Hague Notification No. 97, released by WIPO today, Class 99 learns that

"The Director General of the World Intellectual Property Organization ... presents his compliments to the Minister for Foreign Affairs and has the honor to notify him of the deposit by the Government of the Federal Republic of Germany, on November 13, 2009, of its instrument of ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, adopted at Geneva on July 2, 1999 ...".

The Geneva Act will enter into force in respect of the Federal Republic of Germany, on February 13, 2010".

That's just one day before St Valentine's Day. Meanwhile, perhaps inspired by the magnificent gesture of its large and design-rich neighbour, the Swiss Confederation has decided to do some tidying-up. By Hague Notification No. 98, also released today,

"The Director General of the World Intellectual Property Organization ... presents his compliments to the Minister for Foreign Affairs and has the honor to refer to the deposit by the Government of the Swiss Confederation, on October 24, 1939 and November 7, 1962, of its instruments of ratification of the London Act of the Hague Agreement Concerning the International Deposit of Industrial Designs of November 6, 1925, as revised at London on June 2, 1934 (the "London Act"), and of the Additional Act of Monaco of November 18, 1961, to the said Agreement (Additional Act of Monaco), respectively.

The Director General of WIPO has the honor to notify that the Government of the Swiss Confederation deposited, on November 19, 2009, an instrument of denunciation of the London Act and of the Additional Act of Monaco. Pursuant to Article 22(4) of the London Act, the said denunciation shall take effect, in respect of the Swiss Confederation, on November 19, 2010".

The author of this post wonders whether he is alone in wishing that WIPO and all the other UN agencies would be able to cut out all the formalities and pomp and just give the facts.

Passing-off in Germany – To trade or not to trade?

So far, according to Germany’s Supreme Court’s decision Viennetta from 2000, infringers were allowed to use deviating designations on similar or even identical packaging to avoid consumer confusion under German unfair competition law (“passing-off”). Obviously brand owners weren’t happy with that case law.

Nine years later, the very same Court got the long-awaited opportunity to provide further clarification (Garlic Sausage). At first, the Court confirmed that indirect confusion as to origin may occur if consumers perceived the imitation as the original being sold under a sub-brand, or if consumers assumed a business or organisational link between both companies. Such indirect confusion as to origin, however, may be avoided if the imitation shows a deviating manufacturer’s brand. But is it the same with private labels?

The Court clarified that private labels, rather common nowadays in the food trade sector, per se would not help avoiding indirect confusion as to origin. However, as a pre-condition, private labels were perceived as such only if they refer to a specific retailer (in the underlying case, however, the defendant was able to demonstrate that his sub-brand “Namli” was not perceived as a private label but as a manufacturer’s brand).

This is good news but only for brand owners who do not deal with discount retailers. Others following a two-track policy (i.e., selling the original under the manufacturer’s brand and a second line under a private label) will barely dare challenging their own discount retailer for selling a similar packaging. Isn’t it part of their game that consumers will associate the private label with the original?