Time for coterminous exclusions from protection?

Speaking this afternoon at the CLT Annual Intellectual Property conference, Class 99 founder David Musker gave a round-up of recent design law developments in the UK -- and a bit beyond -- over the past year. In the course of doing so, he revisited the European Court of Justice decision in Case C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd, contrasting the exclusion from registration of trade marks consist of shapes that obtain a technical result with the exclusion of designs from protection on the basis of the much-debated "form-follows-function" formula, contrasting it with "form-is-functional-but-could-have-been-different".

David's analysis raised some unanswerable questions concerning the rationale that results in the same shape being either protectable or the exact opposite, depending on whether trade mark or design law is invoked as the basis for its protection, and depending on which sort of design it is.

It seems to me that the logical conclusion to be drawn is this: if it is either right or wrong for a business to be able to monopolise a shape in the marketplace, the needs of the marketplace should be identified first and then filtered back into the exclusions from protection for both trade marks and designs, so that they are as far as possible coextensive [adds David, "so long as it's not the ECJ's criteria in Philips ..."].

Norway to join Hague?

We hear that Norway may soon join the Geneva Act of the Hague Agreement. Norway's accession means that all the EEA countries (the EU, Iceland, Norway, Switzerland and Lichtenstein) are members of Hague - if and when it happens, it starts to add up to a sensible reason for using the Hague route to cover "greater Europe" and the European borders.

Korean Design Act changes

We noted some minor changes to Korean practice last year. Some more significant ones, operative from 1st January, are drawn to our attention by Sohn Kim & Partners in their newsletter. These are:

1 - KIPO will accept 3D drawings in DWG(Drawing), DWF(Design Web Format), and 3DS(3D Studio) format. A welcome emergence from the 19th century! Let's hope other offices follow suit.

2 - The former requirement for 6-orthogonal-plus-1-perspective views has been removed. You can submit as few drawings as you wish if they "explain the design and fully express the essentials of the creation" (to quote Sohn Kim). Again, welcome flexibility - something the UK has had since the decision in Ford's Application [1972] R.P.C. 320, [1971] F.S.R. 314.

3 - Changes (expansions, it seems) to the goods classification.

4 - Expansion of the numbers of articles allowable in sets.

Some Korean resources:

• Korean IP Law Blog
• Korean IP Law wiki
• Sean Hayes' Korean Law Blog
• KIPO

European Court of First Instance design appeals

There are now 125 design decisions of the OHIM Boards of Appeal reported on OHIM's website. An appeal lies to the General Court (as the Court of First Instance is now known after the Lisbon Treaty). Thus far, for designs, however, only 7 of 125 appear to have been appealed - a remarkably low figure (even allowing for some delay in listing appeals on the OHIM site). What is going on? Are parties happy that OHIM has got it right, is CFI procedure intimidating and expensive, or are designs simply not worth the money and the wait?

Here are the "magnificent seven" design appeals listed by OHIM so far:

Appeal Nº: R1323/2008-3 Date: 14/10/09
Application Nº: 4885
RCD: Ornamentation
Language: ES
CFI: T-0513/09

Appeal Nº: R1411/2007-3 Date: 07/07/08
Application Nº:
RCD: (flacons)
Language: FR
CFI: T-0450/08

Appeal Nº: R1437/2006-3 Date: 11/02/08
Application Nº:
RCD: communications equipment
Language: EN
CFI: T-0153/08

Appeal Nº: R1352/2006-3 Date: 31/01/08
Application Nº:
RCD: instruments for writing
Language: EN
CFI: T-0148/08

Appeal Nº: R1337/2006-3 Date: 08/10/07
Application Nº:
RCD: Internal-combustion engine
Language: EN
CFI: T-0010/08

Appeal Nº: R1380/2006-3 Date: 08/10/07
Application Nº:
RCD: Internal-combustion engine
Language: EN
CFI: T-0011/08

Appeal Nº: R1001/2005-3 Date: 27/10/06
Application Nº: 74463-0001
RCD: metal rappers
Language: EN
CFI: T-0009/07

What should we expect of these? CFI statistics show that IP cases (OHIM appeals) now make up a third of its workload. The Court has become pretty acclimatised to trade mark cases, and pursues a similar line to OHIM, so that the reversal rate is low - 12% in 2008. Perhaps low expectations are the real reason for the low design appeal rate.

Functional designs at OHIM again

Alicante News reports another OHIM Board of Appeal case R 1114/2007-3 on functional designs, following their earlier "Chaff cutters" decision in requiring the presence of some feature "chosen for the purpose of enhancing the product’s visual appearance" to avoid rejection as being dictated by technical function. We shall see whether the Court of First Instance follows the same line in the Chaff cutters appeal.

This case is a little unusual on the facts in that the design, RCD No. 273644-0001, is a single, sketchy, line drawing (apparently done freehand with a ruler) showing nothing much over the voluminous cited prior art - with such a minimal design, there was perhaps little prospect of validity, even though by citing so many close prior documents the opponent might otherwise have shot themselves in the foot by showing a "crowded field".

There was also an interesting finding on the "informed user". As the indication of product was directed to "packaging for foodstuffs", the Board found that the informed user was a trade user not an end-consumer:

"The informed user in this case is likely to be a production manager in a company that makes food products that are packaged in pouch-like containers, rather than an ordinary consumer who buys pre-packaged food products. The design represents ‘packaging for foodstuffs’, not finished products for sale to the end user."

China's new Supreme Court interpretation of Scope of Designs

We learn from the excellent IP NEWS published by Linda Liu & Partners that the Chinese Supreme Court has published new interpretation of the scope of patents, designs and utility models. These took effect on 1st January 2010. Articles 9 to 11 are particularly relevant to designs. A Chinese version is here.
We reproduce below, with thanks, the translations by Linda Liu & Partners, noting that those parts amended since the consultation document in June 2009 are underlined. From a European point of view, we note the "overall impression test", but also the significance of the written description of the design in defining its "essential features".

Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law to the Trial of Patent Right Disputes
(translation by Vera WEI of Linda Liu & Partners)

Article 9 The People’s Court should determine “the scope of protection afforded by a design patent” prescribed in Article 59.2 of the Chinese Patent Act with reference to an identical or similar design with the patented design used on the identical or similar categories of product as the design patent product. Where the categories of products are identical or similar but the allegedly infringing design is not identical or similar to the patented design, or where the allegedly infringing design is identical or similar to the patented design while the categories of products are not identical or similar, the People’s Court should hold that the allegedly infringing design does not fall into the protection scope of the design patent.

Article 10 Products within the same category referred to in Article 9 of this judicial interpretation means products for the same use; products within similar categories means products for similar uses. The People’s Court can determine the use of a product by referring to the International Classification of Designs, the name and function of the product described in the brief description, and other factors such as sale and actual use of the product.

Article 11 The People’s Court should determine whether designs are the same or similar based on the perceptions of the relevant public to the product of the design. “Relevant public” referred to in the preceding paragraph means one who has basic knowledge about the conditions under which the patented design was created and is able to distinguish the divergences in shape, pattern, and color amongst different designs but who will not pay special attention to minor differences in the shape, pattern, and color of designs.

Article 12 The People’s Court should determine whether designs are the same or similar by considering the overall visual effect of designs and all the design features within scope of protection afforded by the design patent. However, the only one design feature that can achieve the technical effect of the product and those features that cannot affect the overall visual effect, such as the material and internal structures, shall not be taken into consideration. Where the allegedly infringing design and the patented design are so similar that it can confuse the relevant public, the People’s Court shall hold the allegedly infringing design is similar to the patented design. Where the allegedly infringing design does not contain the essential features of the patented design, it should be assumed that the allegedly infringing design will not cause confusion to the relevant public with regard to its overall visual effect. The essential features of a design referred to in the preceding paragraph means the features of a patented design that causes a prominent visual effect in the relevant public when compared with existing designs. The People’s Court can identify the essential feature by referring to the brief description.

US's "de facto design registration system"

Dennis Crouch -- author of the iconic Patently-O US patent law weblog -- has written to Class 99 as follows:

"[Words of generous flattery deleted for the sake of modesty]. You might be interested in a recent post of mine that looks at design patent prosecution. I come to the conclusion that the US is operating a de facto registration system (although expensive and somewhat slow)".

Having sifted through the file histories of 1,049 design patent issuances, he concludes:

"It is typically easier and cheaper to prosecute a design patent to issuance than to register a product design as trade dress. To be clear, I support the idea of a design patent registration system".

More research is promised. Thanks, Dennis!

French appellate court upholds Raindance claim

Yesterday's International Law Office release carries a casenote by Marie-Aimée de Dampierre and Camille Pecnard (Lovells LLP) on the protection of shower head designs in France.

In short, German manufacturer Hansgrohe was the proprietor of a Community design for its Raindance hand shower. Together with its French distributor, Hansgrohe sued DGK Productions Europe SARL, Carrefour Hypermarchés France SAS and MTK Import Export for design infringement and unfair competition, seeking to prevent sales of the Lagoone hand shower, which was protected as a French design.

Hansgrohe's claims were dismissed at first instance, the court holding that both parties' design registrations were invalid. Hansgrohe's Community design registration was invalid since it reproduced an earlier registered third party design. The Cour d'appel de Paris reversed this finding: while the functional features of the Raindance shower head, in particular the elastic spikes and wedges, could not be taken into account for the examination of novelty and individual character, the design was characterized by its lines, contours, chrome finishing and shape. On account of these characteristic features, the Raindance design was new and had individual character. Comparing that design with the allegedly infringing Lagoone product, even though the two had different numbers of spikes and differently-shaped wedges (which were not highly visible), the overall impression of the designs appeared similar to an informed user and Hansgrohe's design was infringed.

Unfortunately International Law Office does not provide illustrations. A picture of Raindance appears above (from which it's not clear what is meant by 'spikes' and 'wedges') , but I've been unable to dig up a picture of Lagoone at all. Can any reader oblige?

This week - European CFI hears design appeal

Tomorrow Tuesday 19th January is the Hearing date for European Court of First Instance case T-153/08, Shenzhen Taiden v OHIM - Bosch Security Systems intervening. This is the second stage appeal on RCD 214903-0001, a conference call speakerphone. The design was upheld at first instance by the Invalidation Division of OHIM, but that decision was reversed on appeal, the Board of Appeal (in Decision R 1437/2006-3) taking a much broader view of the design freedom available to the designer of such products and hence finding the design too similar to the cited prior art. Since in Europe essentially the same test is applied for infringement as for validity, the CFI decision will affect both. Will they find the design valid (and consequently of narrow scope) or invalid (but potentially of broad scope)? Watch this space.

And now for a Polish round-up

Only a week ago, Class 99 wrote: "It's not often that Class 99 gets to report on design law developments in Poland". Well, either because he has been inspired by design law or delighted to receive so many click-throughs to his own site from Class 99's design law addicts, Polish IP blogger Tomasz Rychlicki has struck again, with his "Selected and short review of Polish case law on industrial designs" (here). Tomasz introduces his article with a warning:

"Below, you will find couple of judgments decided inadministrative proceedings. Finding cases that were decided in civil proceedings is more problematic because they are not so often publicly available".

This is a problem not just in Poland but in most of the EU's medium-to-smaller national jurisdictions, from which decisions on matters such as registrability or cancellation can often be found but valuable decisions regarding the application of tests of infringement, and of correlated evidential and procedural issues, can be very hard to find.

New design law for Serbia

In case you missed it, a whole batch of new intellectual property laws came into force in Serbia on 24 December 2009. The include not only fresh trade mark, copyright and semiconductor topography legislation but a new Law on Legal Protection of Industrial Design.

This information was gathered via the useful newsletter of PETOŠEVIĆ (the firm only seems to exist in capital letters now, together with its ancillary glyphs), from whom further information may be obtained.

Designs in Israel

Class 99ers with an interest in Israeli design law should take a regular look at The IP Factor, Dr Michael Factor's excellent blog, which covers several recent design decisions.
We are fascinated to learn that "Israel’s archaic design law is covered by the Patent and Design Ordinance that was last amended in 1937, and the Design Regulations of 1925." Those old UK-based design laws have proved difficult enough in the UK, and we heartily agree with Michael that Israel would do well to modernise them. On the other hand, it sounds as if you can do great things with unjustified enrichment there, at least at the interlocutory stage. Apparently, protection of Aluminium (or should it be "Aluminum"?) roof extrusions is as popular there as in the endless UK Ultraframe design litigation, and the issue of design disclosure on the Internet is as hot there as it currently is at OHIM in the CROCS appeal. Maybe there is more fun to be had with old design laws after all.

Design, freedom and Polish law

It's not often that Class 99 gets to report on design law developments in Poland, but celebrated Polish English-language blogger (and Class 46 team member) Tomasz Rychlicki has just provided this comment on a decision of the Voivodeship Administrative Court (VAC), Warsaw, judgment of 21 July 2009, case act signature VI SA/Wa 518/09. In that case the court ruled that, where the scope of creative freedom is greater, the assessment of the originality of the design may justify the thesis that the differences should have an easily-discernible character. In contrast, in the case of a design where there exists a small range of creative freedom, even small differences will not remain unnoticed by the oriented user. Says Tomasz, the court explains that

"The design must be different from the pattern already known and cannot create the impression that a product of such a form of a design (product) has already been seen. It is necessary to study compared designs, including the overall impression which is triggered by the design in terms of the so-called “oriented user” and the term “oriented user” indicates the person who uses the product/design on a permanent basis, so it is not, nor is the average consumer, or the average expert".

Germany joins Geneva Act

Germany has signed up to the Geneva Act of the Hague Agreement, which will take effect on February 13th. It is hard to see what benefits this will bring German applicants, as Germany has since 1928 been a member of all previous versions of Hague, and has (via OHIM) been effectively a party to the Hague Act since January 1st 2008. However, for members of Geneva Act-only countries, it will open the "national route" to cover in Germany if that is preferred to going through the OHIM route. One reason for going the national route might be to get improved protection for spare parts since Germany has not adopted a "repair clause" under its national design law equivalent to the EU Community Design provisions of CDR Art 110.

Late-filed evidence: sofa, so good ...

The December 2009 issue of OHIM's Alicante News carries a little feature entitled "New evidence in design invalidity proceedings". It reads as follows:

"In a recent decision [15 June 2009 -- more than half a year ago, which is a long time ago in trade mark law but pretty recent if measured in Design Years] concerning a declaration of invalidity of the registered Community design (RCD) No. 456140-0001 the Third Board of Appeal gave a detailed explanation of how to deal with evidence which was not introduced in the first stage of the invalidity proceedings before the Invalidity Division but came up later in the appeal.

The case involved a dispute between two manufacturers of furniture about the novelty of a sofa design called “Eva” allegedly launched on the market before the date of filing of the contested RCD. In this case, the Board of Appeal decided that while it was not obliged to consider evidence submitted late, it could do so if reasonable notice had been given to the parties involved and if, on the face of it, the evidence was likely to be relevant to the outcome of the invalidity case. Since the decision is in Danish, the relevant paragraphs 25 through 30 are cited literally in the following:

25 During the invalidity proceedings and within the set time-limit the appellant argued that the contested RCD lacked novelty and individual character and that it should be refused under Article 25(1)(b) CDR. During the appeal proceedings, i.e. together with the statement of grounds, the appellant submitted some new evidence in support of its previous assertion that an identical design has been made available to the public prior to the date of filing of the RCD and/or that the overall impression that the contested design produces on the informed user does not differ from the overall impression produced on such a user by a prior design which has been made available to the public.

26 In accordance with Article 63(2) CDR the Office may disregard facts or evidence which are not submitted in due time by the parties concerned. However, the Office is not prohibited from taking into account facts and evidence which are submitted or produced late.

27 The Board considers that, in the case at hand, the further evidence is admissible for the following reasons. Firstly, the new evidence was regularly notified to the respondent. The respondent did not, at least explicitly, dispute the possibility to file further evidence. On the contrary, it agreed to the suspension of the proceedings so that the further evidence could be submitted [This suggests that best practice is to make sure a respondent gets to hear of the out-of-time evidence as early as possible; if it doesn't have time to dispute the admissibility of the further evidence, you can't argue that it has been implicitly or explicitly accepted].

28 Secondly, there is no time limit for bringing an invalidity action before the Office and therefore taking into account facts and evidence submitted late by the appellant, could contribute to ensuring that a RCD whose use could later successfully be challenged by means of further invalidity proceedings does not stay on the register [True, but unlikely to appeal to a typical SME which may be reluctant to go through the whole thing again].

29 The Board also finds it appropriate to admit at this stage the new evidence since it is supplementing evidence to the evidence already provided by the appellant during the invalidity proceedings especially concerning the sofa model ‘Eva', and seems, prima facie, to support the appellants previous assertion that an identical design has been made available to the public prior to the date of filing of the RCD and/or that the overall impression that the contested design produces on the informed user does not differ from the overall impression produced on such a user by a prior design which has been made available to the public. This evidence might prove the appellant's assertion and it is, on the face of it, likely to be relevant to the outcome of the invalidity case it has filed. The Board stresses that a prima facie relevance of the evidence does not imply that it is conclusive to the outcome of the present case [Well, that's a relief!].

30 With a view to the above, the Board deems it appropriate to admit the additional evidence filed with the statement of the grounds of the appeal, by exercising its discretionary power, under Article 63(2) CDR".

The decision in question is R 1713/2007-3.