Dyson set to clean up on registered design?

UK IP hero James Dyson has sued competitor VAX for infringement of one of his UK registered designs. The VAX Mach Zen product does, to this untutored eye, bear some resemblance to Dyson's UK design 2043779 (which is probably the one in suit), but there are also some differences, notably the position of the hose.

VAX's Press Release, however, merely blathers on about how much they respect Dyson, how the design wasn't copied, and how great their product is. Given that imitation is the sincerest form of flattery I suppose one can accept the first point; the second two, even if true, appear irrelevant.
The case appears to be HC10C00126 TLC /10, and from a professional point of view we are delighted to see that it will be fought between heavyweight teams: Dyson are represented by Wragges (who largely succeeded for them against Qualtex on pattern spares) and VAX by EMW Picton Howell. Advocacy will be an 11 South Square party, headed by Henry Carr and Ian Purvis respectively. It should be an interesting case on scope of what was, in its time, a fairly striking design - watch this space, and pray it does not settle.

Community Designs a good fit for G Star

Trade-mark-oriented readers may recall the ECJ G-Star decision concerning jeans (Benetton Group v G-Star International, ECJ case C-371/06, 20 September 2007) in which the shapes of stitching and other aspects that gave substantial value to the jeans were unregistrable as marks despite subsequently acquired reputation.
The Class 46 blog carries an Italian sequel. In January, in the absence of copyright or trade mark protection, the Milan Court allowed G-Star's unfair competition claim based on copying of their "Elwood" jeans.
It is pleasing to see that G-Star also successfully enforced the design of the "Limit Regular" jeans, registered as Community Designs at OHIM (where they have registered more than 100 RCDs).

Crocs Bite ITC

Another round in the endless litigation on those love-'em-or-hate-'em fluorescent plastic clogs made famous by Crocs Inc. Both a utility patent, number US6993858, and a design patent, number D517789, were asserted. For Hal Wegner's comment, follow this link to IPFrontline.

The CAFC reversed the ITC's finding of non-infringement on the design patent, applying the Egyptian Goddess "ordinary observer" test of similarity. In so doing, they criticised the trial judge's reliance on a detailed verbal description of the design - rightly, we think, as putting the essential "look and feel" of a visual design into words is often very difficult as witness the difficulties of the European courts in the Procter and Gamble v Reckitt Benckiser cases, where snakes and lizards slithered their way into a dispute over air freshener spraycans.

A more interesting issue, perhaps, is the reversal of the obviousness finding on the utility patent; essentially the issue was that Scott Seaman, the Crocs inventor and founder, added a foam heel strap to the prior-marketed foam "Acqua Clog" (which he did not design). Heel-straps on clogs were known from, for example, US6237249. However, the ITC held the combination non-obvious - partly because of evidence of the massive commercial success of the Crocs Inc. products corresponding to the patent.

It might have been still more interesting to see whether the design patent would have withstood an obviousness attack under the Egyptian Goddess "ordinary observer" approach. Broader scope entails a lower likelihood of validity, so does a "plain vanilla" heelstrap at the back of a distinctive clog, often pivoted out of view onto the clog itself, make much difference over the prior art to the wearer (who can't see it in use) or those around her? Perhaps this issue will be resolved in the pending OHIM European appeal.

Fair? Unfair!

Pro-designer action group Anti Copying in Design (ACID) has just issued another warning regarding guides with easy-to-miss small print. According to its recent circular:

"Following our previous campaign against the Fair Guide, produced by a company called Construct Data Verlag GmbH based in Austria, we are aware of a similar exhibition guide called Expo-Guide, produced by a company registered in Mexico, which appears to be virtually identical.

Exhibitors at major exhibitions are sent a mailshot for 'free' advertising space in an 'exhibitors directory'. They are asked to check that the accompanying order form has the correct data on it after which 'your free listing will be activated' However, some people use the attached form to make corrections to their 'free listing' and submit it, unaware that they are using the form which requests a 'payable insertion'. As the offer is sent at roughly the same time as official exhibition documentation, the confusion occurs because the Expo Guide offer letter is headed 'Exhibitors Directory in the Expo-Guide' and also states the name of the exhibition where a stand has already beenbooked.Many people sign the document believing that their name will appear in the actual exhibition 'list of exhibitors' guide for the exhibition.

The cover letter has clear notification that the ‘Expo Guide’ is ‘independent, objective and not related to any organiser or marketing association.’ However, this information is set out in the body of the text, and is not immediately obvious to the reader.

The order form itself, where you are encouraged to ‘please confirm the accuracy of your details’ also states ‘This form is only for your correct listing as an individual advertisement entry’ and this is also misleading. The actual payment terms and length of the agreement are in smaller print at the end of the document.

There it states that the cost of the listing in the Expo-Guide will be 1181 Euros, that it is a 3 year contract and will continue for that period unless ‘cancellation notice is given in writing by letter at the latest 3 months before order’s expiry’ which is not a clear statement and liable to misinterpretation.

If you sign a contract without having thoroughly read all the small print, you are legally responsible. You cannot argue that you were unaware of any of the obligations that will then bind you. Your only option will be to argue that there is something fundamentally wrong with the contract, such as a failure of consideration, or a breach of the contract. Even then, the contract may be deemed only ‘voidable’ and not totally void or invalid. Click here for a downloadable version of this advice and an example of the form and the cover letter".

Class 99 wonders whether any of its readers have been in dispute with the publishers of guides of this nature and what was the outcome of such disputes. Do let us know (there is no charge for telling us ...)

Norway goes all the way ... to Geneva

Last month Class 99 asked if Norway was about to join the Geneva Act of the Hague Agreement, thus completing the set of European Union and non-EU EFTA states. Well, Solvår Winnie Finnanger (Senior Legal Advisor, Design and Trademark Department, Norwegian Industrial Property Office) has emailed to say that Norway is indeed finally acceding to the Geneva Act ("We have been waiting for this for a long time!", she adds), pointing out that her office's website has all the necessary information ready and available in English here.

Statements of novelty

The ever-informative International Law Office newsletter carries a report by Lauren Eade and Lisa Lennon of Gilbert + Tobin on recent Australian case law, within which there is a useful discussion on Chiropedic Bedding Pty Ltd v Radburg Pty Ltd [2009] FCA 1163 that serves to illustrate the effect of a "Statement of Novelty".

The Australian Designs Act 1906 (now superseded but applicable to old designs) required a Statement of Novelty. In this respect it was the same as the UK design statutes (until the 2001 amendments which brought the UK Registered Designs Act 1949 into line with the new EU design law), and those of many other countries having a historical relationship with the UK. In the Designs Act 1906, “Statement of Novelty” was defined as "a statement relating to the representations of an article to which the design is applied that indicates those features of the representations in respect of which novelty or originality is claimed".

The general intention of a statement of novelty is to direct attention to particular aspects of a design registration, but its specific effects on validity and on scope of protection for infringement purposes have long been the subject of confusion. Very often, a Statement of Novelty would simply state that "The novelty resides in the shape and configuration [or pattern and ornament, or both] of article shown in the representations", but such statements could also be used to draw attention to particular parts of a design. For a fairly recent New Zealand case on wording and amending the Statement of Novelty, see AEP v Scholle IPONZ, 1/2002.

Chiropedic Bedding's design was for a single-sided 'posture top' mattress, incorporating a separate sprung section on top of the main body of a sprung mattress, and contained the following statement of novelty:

"Novelty is claimed in the shape and configuration of the upper layer of the mattress portion of the mattress and base as indicated by the beading as shown in the representations."

In the UK it was generally thought that, for validity purposes, the statement of novelty acts as a "disclaimer". That is to say, it acts as an admission that all other aspects of the design not mentioned in the statement are not novel. This was to lead to a catastrophe in the case of Evered & Co Ltd's Application (Design), 1961 RPC 105 (differing from older case law), in which an applicant filed two designs showing the same product but with different statements of novelty each directed to a different part - each denied the novelty of the other, so neither was valid.

After a detailed review of the Australian and UK authorities, the Federal Court in Chiropedic cited with approval the remarks of Slade LJ in Sommer Allibert (UK) Ltd v Flair Plastics Ltd [1987] RPC 599 to the effect that "While the court does not have to assume that it [the statement of novelty] is correct, it precludes the proprietor, who has obtained his registration on the grounds that certain features of the design give novelty to it, from thereafter denying their novelty and asserting their immateriality, so as to extend the scope of the protected design."

In considering the scope of the design for infringement purposes, UK case law wavered. Generally there could be no infringement if a competing design did not take the features referred to in the statement of novelty, as the remainder of the design, lacking novelty, could not be validly protected on its own. But the situation of a competing design which takes only the the features referred to in the statement of novelty and not the entirety of the design has been treated inconsistently. The UK case law (for example in Sommer Allibert) appeared to have reached a state where greater weight was attached to the features referred to in the statement of novelty, but the remainder of the design could not be ignored, though it was downplayed.

The question of the effect on infringement did not directly arise in Chiropedic, but the Federal Court in Chiropedic quoted paragraph 100 of the Australian Designs Law Review Committee Report (Report on the Law Relating to Designs, the "Franki Report") of February 1973 to the effect that "in testing the novelty and originality of the design, attention would be directed to the two front legs and that this feature of the design would be given particular weight in testing infringement, although an infringement could not be proved unless the relevant tests were satisfied in respect of the whole chair." This would seem to be broadly in line with the UK Court of Appeal in Sommer Allibert.

This case therefore usefully highlights the difference in effect between a "partial design" and a Statement of Novelty. The former defines the part of what is shown which is the subject of the design monopoly, under laws (such as the new EU law) which permit protection of the designs of parts of products.

By contrast, when the latter is used, it is the entire design of the product which is protected; under the old UK law, parts of products could not generally be registered in isolation and, according to the Evered case, a Statement of Novelty could not be used to achieve the same effect.

Pancake designs and verbal descriptions

Today, 16 February, is Shrove Tuesday -- the day before Ash Wednesday, better known in some quarters as Pancake Day.

To mark this event, Class 99 draws the attention of its readers to the concept of the designer pancake (shown, right; recipe here). This raises a perennially popular question for the intellectual property fraternity: to what extent may design protection or artistic copyright protection of a completed three-dimensional object such as a pancake be secured through a merely verbal account of its construction, such as a recipe?

While there appears to be no common approach to this issue within the Single European Market, Class 99 is pleased to report that the European Commission has yet to receive any specific complaints regarding this manifestly non-level part of the economic playing field, at any rate from consumers ... of pancakes. Have a lovely day!

New design law proposed for UAE

Rob Deans and André Human (Clyde & Co.), writing for International Law Office, have produced today this summary of proposed amendments of intellectual property laws in the United Arab Emirates. Regarding designs they mention

"(i) an increase in the term of protection for designs from 10 to 15 years; and (ii) clarification on the basic standards of registrability, which were not expressly stated in previous versions of the Patent Law. The Patent Law will require novelty to be judged on an absolute, worldwide basis.

Similar to the position in relation to patents, this is welcomed, although some additional clarification and further changes would also be beneficial. For example, the provision which excludes infringement by users of a design whose use pre-dates the filing or priority date for the application should be removed. It is hard to make sense of this provision as such prior use would appear to destroy novelty, rendering the design unregistrable".

It's not clear when any legislative changes will take effect, though. As the authors add:

"The government is ... engaging in a consultation process, which is ... welcome news and which may result in further positive amendments to the legislation. However, much will depend on the implementing regulations, which are yet to be published and which will have a significant impact on how the amendments are to work in practice".

Litigate or Twitigate?

Yesterday's Guardian reports the Davina-and-Goliath battle between designer "Hidden Eloise" and stationery giant Paperchase. The designer claims (understandably, to anyone with eyes in their head) that her character in the left hand picture was copied by Paperchase in the right hand picture. She complained to the company, but they declined to cease sales and told her that they had bought the image in good faith. Here is a link to their statement, which quotes the agency they bought the artwork from, who in turn pass the buck to the individual third-party designer.

Unable, as it seems, to afford litigation, she started a Twitter campaign. According to the Guardian, it became one of the top trending stories on Twitter - something that could cause reputational damage no company can afford in the long run. The third-party designer concerned has apparently written to Hidden Eloise to apologise for copying too closely.

Moving away from the specifics of this case, in general what should a large company do when faced with the all-too-common fact that one of their products involves, to the untrained eye, a prima facie infringement of copyright and/or design right of X? To say "I bought it from Y in good faith" and carry on selling is really not good enough.

Apart from being legally and morally wrong, it is a bad commercial solution, because the company is liable when on notice, and is racking up damages which, no matter how onerous their procurement contract conditions, they may not be able to pass on to Y if Y is a small designer. If X ultimately musters the courage and the finances to sue, X, Y and the company will all lose money, and the only winners are the legal professionals. It is also a bad reputational solution, because companies selling well designed products benefit from their association in the mind of the consumer with designers whose products they market - and lose that benefit with the speed of a deflating Zeppelin when they visibly condone IP infringement.

There is only one answer - act quickly and in good faith, and take down the product while you investigate.

And for the small designer: Twitigation - an alternative to litigation?

Egyptian Goddess clogs up the CAFC

Like 'em or loath 'em, those plastic clogs keep IP lawyers in business. In International Seaway Trading Corp. v. Walgreens Corp., No. 2009-1237 (Fed. Cir. December 17, 2009), the issue was validity of three US Design Patents Nos. D529,263, D545,032 and D545,033, which were held to have been anticipated by an earlier patent U.S. Design Patent No. D517,789 (assigned to, yes, you've guessed it, Crocs Inc.). The registered designs looked much like the prior art, except for the pattern on the soles.
The major issue on appeal was whether the first instance had been correct to apply the "ordinary observer" test (recently held by the CAFC in Egyptian Goddess to be applicable to infringement) to validity, as we have argued on this blog.
Pleasingly, the CAFC decided exactly that:
"In light of Supreme Court precedent and our precedent holding that the same tests must be applied to infringement and anticipation, and our holding in Egyptian Goddess that the ordinary observer test is the sole test for infringement, we now conclude that the ordinary observer test must logically be the sole test for anticipation as well. In doing so, we will prevent an inconsistency from developing between the infringement and anticipation analyses, and we will continue our well-established practice of maintaining identical tests for infringement and anticipation."
A secondary issue was whether the first instance had been correct to decide that
“the law requires a court to consider only those portions of the product that are visible during normal use, regardless of whether those portions are visible during the point of sale.”
The CAFC decided that they could not ignore the pattern on the soles, as this would not be visible in use. The CAFC held that this could not be ignored, as "use" included point of sale, at which the soles would be visible, and that previous case law requiring all features shown in a design patent to be considered was applicable. They therefore referred the case back for reconsideration of the effect of the difference in the soles on validity.
There was a minority partial dissent on one point from Judge Clevenger. He considered that the majority had created a rule allowing parts of the design to be ignored and allowing the district court on summary judgment to determine that "individual features of the design are insignificant from the point of view of the ordinary observer and should not be considered as part of the overall comparison."
We tend to think both sides have a point here. The issue isn't as simple as whether you should just allow or ignore features - a more sophisticated analysis would weight them, ignoring none but according less significance to some. So, for example, I have filed car designs which include a view of the underside of a car - but does anyone know or care what it looks like? (This is a rhetorical question, before all you car buffs reply!) Any thoughts from US readers?

Claiming priority: PCT to RCD

A colleague has recently been successful in persuading OHIM/OAMI to allow a priority claim to a PCT application in a RCD application. "How?", you ask.

PCT applications are applications for patents and other rights, and therefore include an application for a utility model in Germany. Keen readers of the Paris Convention will be aware that design applications can claim priority from utility model applications. Hey presto ... a valid priority claim.

This leaves open the questions of what 'design' is disclosed in a PCT application, and what if the PCT claimed priority from an earlier patent application ....

It does show the powers at OHIM/OAMI can be persuaded.