Norway names the day

Norway's courtship of the Hague Agreement, soon to be consummated, has been closely followed on this weblog (see here and here). The final chapter is now in sight, according to The Hague Notification No. 99: on 17 March the Government of the Kingdom of Norway deposited its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, which will enter into force via-a-vis that most affjordable of jurisdictions on 17 June 2010.

ACID making a mark ... on exhibition organisers?

A press release from Anti Copying in Design (ACID) announces that key Spring Fair exhibitors who are also ACID members have accepted an invitation from ACID to join a new intellectual property steering group -- the ACID Spring & Autumn Intellectual Property Steering Group. This group's aims are to build on existing progress and cooperation with the event organiser Emap (which also runs Autumn Fair) and to develop new initiatives to address concerns on the increase of copying within this sector. According to ACID CEO Dids Macdonald:

"Having worked positively with Spring & Autumn Fair for the past decade, I am delighted that, together with the IP Steering Group, we can identify specific concerns and drive forward improvement via positive dialogue with the organisers. Raising awareness about the need for increased respect for Intellectual Property is a real issue for design led companies. After all, the Fairs are one of Europe's leading showcases for the launch of new and innovative products and it is critical to each and every exhibitor investor that they can trade in an environment where there is an absolute zero tolerance of IP theft.”

An ACID Accredited Exhibition Organiser achieves this status by adopting criteria which promotes the communication of a zero tolerance of IP infringement through all levels of the exhibition communication network. These Exhibition Organisers also support and adopt the ACID Exhibition Protocol for complaint handling – a grass roots alternative dispute resolution framework. To date, across all ACID Accredited exhibitions, there have been over 2,000 mediations, with less than 30% requiring further legal action. Of those 30% the majority have been settled following a letter before action.

The most telling part of this press release is the bit where it says:

"LSA's Penny Laughton added, "I would like to see an Emap board director fully engaged with ACID and the issue of IP"".

Is this a polite way saying "we're involved in fighting copying and we jolly well think that exhibition organisers -- who probably make a lot more out of their exhibitions than most of their creative exhibitors will benefit from exhibiting in them -- ought to be taking some of the responsibility too?"

Pepsico fail the Court's taste test in first design appeal

The European General Court (formerly the Court of First Instance or CFI) today ruled on the "Metal Rappers" case, T-9/07, Grupo Promer Mon Graphic SA v OHIM, PepsiCo Inc., intervening. This concerned RCD 74463-0001 filed by Pepsico, based on a Spanish priority application.   Having been revoked at first instance, Pepsico won their appeal at OHIM. However, Grupo Promer Mon Graphic's appeal to the General Court has just been allowed, overturning the Pepsico registration once more. It remains to be seen whether Pepsico will take this to the top with an appeal to the European Court of Justice (ECJ).

The main reason for reversal within OHIM was a narowing redefinition of the class of article considered from "promotional items" (the indication of product for which the design was registered) to "metal rappers" (aka "tazos" or "pogs") in particular, with the consequence that the "design freedom" available was held to be narrow rather than broad and the threshold required to differ from the state of the art was therefore lower. The ECJ upheld the Board of Appeal on this point (as it did on most of the legal issues in play in the appeal), but nonetheless found the design similar enough to the prior art to lack individual character.

Some specific points of interest:

1. Grupo Promer Mon Graphic tried to introduce new documents in the appeal to the General Court - apparently in reply to the OHIM appeal decision below. These were "excluded, without it being necessary to assess their probative value (see, to that effect and by analogy, Case T-346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891, paragraph 19 and the case-law cited)." (Decision para 24).

2. Grupo Promer Mon Graphic argued some bosh based on "bad faith" (which always tends to sound a little desparate to these Anglo-Saxon ears), in that there was an alleged confidential disclosure to Pepsico before they filed. According to the General Court, the grounds listed in Article 25(1) of Regulation No 6/2002 "must be regarded as exhaustive, since Article 25 provides that a Community design may be declared invalid only on one of the grounds specified therein." (Decision para 30).
Perhaps the same fact-pattern could have formed the basis for a copyright infringement (Article 25(1)(f)) or entitlement (Article 25(1)(c)) challenge - the latter, however, could not have been brought at OHIM until after a national Court decision.

3. The Court considered one of the many bizarre language discrepancies which plague the Regulation (and the corresponding Directive 98/71); "in the vast majority of the language versions, the wording of Article 10(1) of Regulation No 6/2002, like that of Article 9(1) of Directive 98/71, indicates that the issue is one of a ‘different overall impression’. Two language versions (namely the French and Romanian language versions) in the case of Article 10 of Regulation No 6/2002, and one language version (namely the French language version) in the case of Article 9 of Directive 98/71, state that the issue is one of a ‘different overall visual impression’." They considered that there was no difference of substance as the "overall impression" must be a visual one (Decision para 50).
That appears to lay to rest an interesting discussion, going back to the earliest preparatory documents, as to whether the sense of touch can play a part in assessing overall impression, given that features such as "material" and "texture" form part of the definition of a design.

4. "Conflict" with an earlier-filed unpublished design as a ground of invalidity (Article 25(1)(d)) arises when the later falls within the scope of protection of the earlier by creating the same overall impression, as OHIM have consistently held since their 2004 Eredu v Arrmet invalidity decision.

5. Although the indication of product given in connection with a RCD does not affect the scope of protection, it can be used to determine the product used in various parts of the "overall impression" test, such as the "design freedom" subtest. However, where there is a particular category of products within a broad category defined by the "indication of product", this also can be used, as the Board did in this case (Decision paras 59-60). Applicants will therefore need to give a little thought to indications of products in future, as we have thought possible since OHIM Appeal Decision R 1421/2006-3, the Cash Register case.

6. As to the "informed user", the General Court held that "the informed user is neither a manufacturer nor a seller of the products in which the designs at issue are intended to be incorporated or to which they are intended to be applied. The informed user is particularly observant and has some awareness of the state of the prior art, that is to say the previous designs relating to the product in question that had been disclosed on the date of filing of the contested design, or, as the case may be, on the date of priority claimed." (Decision para 62). That much is certainly in accordance both with OHIM and UK case law, and the phrase "particularly observant" could be read as supporting Lord Justice Jacob's view in Procter & Gamble v Reckitt Benckiser that the person concerned is more acute than her trade mark counterpart.

7. In this case, the "promotional product" was an intermediate product which was for advertising other things. Thus, the "informed user" could be either a child of 5-10 (the end user) or a marketing manager of some other product (an intermediate trade user), as the Board of Appeal had said, although it made no difference in this case (Decision para 64). I do not read the decision as indicating that the "informed user" is in trade in the goods themselves (i.e. the metal rappers).

8. In relation to "Design Freedom", the crux of the case, the Court referred (Decision paras 67-70) to the following factors as limiting design freedom:

• features imposed by the technical function of the product;
• statutory requirements applicable to the product;
• cost (these items had to be inexpensive);
• safety for children;
• fitness to be added to the products which they promote.

9. The effect of limited design freedom is to increase the odds that small differences will produce a different overall impression (Decision para 72).

10. In relation to the comparison itself, the Court gave a number of pointers:

• Similarities in features common to a class of product (here: the metal rappers) will have only minor importance in the overall impression (Decision paras 72, 76 &; 77);
• Similarities in features imposed by constraints on design freedom will not attract the informed user's attention (Decision paras 72 & 78).
• Similarities in the most visible portions (here: the upper surface) will attract the informed user's attention (Decision para 82).

UK readers will be watching for similarities and differences from the approach of the UK Courts. Two strike me. Firstly, the reference in para 77 to imperfect recollection: the Court says that a similarity in a common feature "would not be remembered by the informed user in the overall impression of the designs at issue".
Secondly, the Court's analysis does not start by defining in vacuo an overall impression produced (a) by the design and (b) by the prior design, and then comparing the two: instead, the Court proceeds to look at paired features of the two as similarities and rule on each in turn, giving each an appropriate weight. I suppose this might arise from the function of conducting a review of the decision below, but it is a different algorithm, which might lead to different results.

What do you all think? Should Pepsico appeal? Comments welcome!

 

First Court decision on an OHIM design appeal this Thursday

We are grateful to our friends at OHIM for informing us that the first appeal decision of the General Court (formerly the Court of First Instance) will be handed down on Thursday, in case T-9/07 Grupo Promer Mon Graphic v OHIM - PepsiCo intervening (Représentation d'un support promotionnel circulaire - the Tazos, Rappers or Pogs case).  This is an appeal from Decision R 1001/2005–3 of OHIM's Third Board of Appeal of 27 October 2006, which was itself a reversal of the OHIM Invalidation Decision ICD 000000172 of 20 June 2005, holding RCD 000074463-0001 invalid.
The main reason for reversal within OHIM was a redefinition of the class of article from "promotional items" in general to Tazos in particular, with the consequence that the "design freedom" available was held to be narrow rather than broad and the threshold required to differ from the state of the art was therefore lower.  This is an interesting point but a narrow one.  We therefore hope that the Court will take the chance to educate us more broadly on the "informed user", her differences, if any, from the average consumer who is the trade mark test person (and a familiar figure to the General Court), and the general approach to comparison with the prior art.  Watch this space for an analysis of the decision.

Council approves Member States as Paris-ites

Even eager, eagle-eyed readers may have missed something spotted by Chris Torrero (LGC Ltd): the Proposal for a Council Decision authorising Member States to accede to the Convention relating to international exhibitions signed at Paris on 22 November 1928 and supplemented by the Protocols of 10 May 1948, 16 November 1966, 30 November 1972 and the Amendment of 24 June 1982 and the Amendment of 31 May 1988.

Under our own, good old Paris Convention on the Protection of Industrial Property, Article 11 stipulates as follows:

Inventions, Utility Models, Industrial Designs, Marks: Temporary Protection at Certain International Exhibitions

(1) The countries of the Union shall, in conformity with their domestic legislation, grant temporary protection to patentable inventions, utility models, industrial designs, and trademarks, in respect of goods exhibited at official or officially recognized international exhibitions held in the territory of any of them.

(2) Such temporary protection shall not extend the periods provided by Article 4. If, later, the right of priority is invoked, the authorities of any country may provide that the period shall start from the date of introduction of the goods into the exhibition.

(3) Each country may require, as proof of the identity of the article exhibited and of the date of its introduction, such documentary evidence as it considers necessary.

Right: Paris has long been associated with exhibitions of a less formal variety too ...

The treaty dealing with "goods exhibited at official or officially recognized international exhibitions" under our Paris Convention is the other one, the Paris Convention on international exhibitions (confusingly similar? Ask OHIM). Now Latvia wants to accede to the exhibitions treaty. No problem, you might think. However, as the Paris Convention on international exhibitions regulates aspects falling within the European Union customs legislation, any Member State that wants to accede to that Convention requires the blessing of the European Union. This is because Article 16 (of the other Paris Convention) and its Annex on "Customs Regulations for the importation of articles by the participants in international exhibitions" require countries organising exhibitions to allow for temporary admission of objects by the participants in international exhibitions. This activity, however temporary, is regulated in Articles 137 to 144 of the Community Customs Code, Council Regulation 2913/92, which is implemented with regard to exhibitions by Article 576 of the Implementing rules to the Community Customs Code, Commission Regulation 2454/93.

The Council proposal recommends that all European Union Member States and not just Latvia be authorised to accede to the other Paris Convention even though the Union itself is barred from doing so since it's not a sovereign state. Accordingly it proposes a two-Article Decision which reads simply as follows:

Article 1

Member States are hereby authorised to accede, for the parts falling under European
Union competence, to the Paris Convention.

Article 2

This Decision is addressed to the Member States.

This recommendation is unlikely to be the cause of too much diplomatic activity since, of the 27 Member States of the Union, 24 have already acceded to the other Paris.

Stanley FuBar Utility Bar Not Fubar According to U.S. Federal Circuit

This time it is not about Crocs, but the plaintiff is fubar. The U.S. Court of Appeals for the Federal Circuit issued an opinion yesterday March 9, 2010, in Richardson v. Stanley Works, Inc., upholding a lower court's decision that Stanley's FuBar tools do not infringe a design patent for a combination hammer-crowbar-stud climbing tool. The design patent is U.S. D507,167 for a Stepclaw tool.
Stanley has 5 version of its FuBar tool. The basic FuBar product is illustrated above. (Stanley also obtained U.S. D562,101 for the design, but it is not related to the case.)

Although considering the design as a whole in accordance with Egyptian Goddess, the district court distinguished and separated out those elements of the design that were primarily functional during claim construction of the patent. After discounting the functional elements of the design, the district court analyzed the accused products in view of the ornamental aspects of the claimed design. The district court cited differences in the ornamental designs, and concluded that an ordinary observer would not be deceived into thinking that any of the Stanley FuBar tools were the same as the claimed design.

The Federal Circuit upheld the claim construction, quoting that "[w]here a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent." See OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1456 (Fed. Cir. 1998)(en banc). The Federal Circuit explained that when a design contains both functional and ornamental aspects, the scope of the design patent is limited to the ornamental aspects alone and "does not extend to any functional elements of the claimed article." The Federal Circuit pointed out "several elements that are driven purely by utility" and that "elements such as the handle, the hammer-head, the jaw, and the crowbar are dictated by their functional purpose."

The Federal Circuit also upheld the infringement analysis applied by the district court. Just as applied at the district court, the Federal Circuit considered whether an ordinary observer would be deceived into thinking that any of the Stanley FuBar tool designs were the same as the patented design. The Federal Circuit concluded that, "ignoring the functional elements of the tools, the two designs are indeed different" and that "the overall effect" of the accused products is "significantly different" than the patented design.

While the underlying law set forth by the decision appears sound and infringement may properly have not been found, the decision may cause problems for future cases. The decision uses several different words to describe how functional elements are treated (e.g., "discounting," "separating," "limited," and "ignoring"). Each of these treatments of functional elements may lead to different infringement analyses. Further, when considering the functional elements, the Federal Circuit identifies elements "driven purely by utility" and that are "dictated by their functional purpose," and concludes that these elements are "purely functional elements." And it seems the Federal Circuit treats "element" in the physical sense of a piece of the product, rather than a design feature. As a result no aspect of these functional elements appear to be considered in the infringement analysis, which seems an overly-narrow construction of designs with both functional and non-functional features. While this may not be the intended result, the decision may be interpreted to preclude consideration of non-functional ornamental aspects applied to a functional (useful) physical element, but with a design that is not solely or primarily dictated by function. For example, while a handle may be purely function, the design or ornamentation of a handle seems appropriate to consider. Both the claimed design and the Stanley FuBar tools have handles (driven purely by utility) and that perform the same function, but the handles have different designs. The district court's statement of "discounting" functional elements may be a more appropriate characterization than "ignoring" functional elements. The prior case law of OddzOn does not state that functional elements are ignored, but instead that "the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent." Thus, rather than identifying and entirely ignore functional elements, a more accurate claim construction may instead seek to identify the non-functional aspects of the design, which may include non-functional aspects of the design applied to a functional element. Under such an analysis, a functional element will only be ignored if the design of the functional element is dictated by function, in which case the design would be functional and appropriate to ignore.

Even discounting (or ignoring) possible different interpretations and applications of the decision, additional cases to construe design case law, such as the Egyptian Goddess decision, are welcome guidance for counseling clients, preparing applications, and litigating design patents. Each provides additional examples for interpretation and application of the prior decisions.

OHIM and Professional Representatives

Readers may be interested in the following text of a paper prepared by OHIM for the upcoming User Group meeting.

"Subject: Professional representation of non-EU applicants for CTM

Article 92(2) CTMR provides “…natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the Community must be represented before the Office in accordance with Article 93(1) in all proceedings established by this Regulation, other than in filing an application for a Community trade mark.” A similar provision exists in the CDR (Article 77).

This provision can be interpreted in a number of ways. In the absence of deficiencies the process between application and publication might not be considered “proceedings”. However, the Office has been interpreted the provision from the beginning as requiring the appointment of a representative even if there were no deficiencies. The Manual of Trade Mark Practice (examination) reflects this:

2.6. Professional Representation

2.6.1. Natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the Community must appoint a qualified representative to act for them in all proceedings except the filing of an application for a Community trade mark. If an application is made in these circumstances and a representative has not been appointed a notice of deficiency will be issued asking the applicant to do so.

There is little objective justification for insisting on representation when there is no need for exchanges between the Office and the applicant. The rationale behind requiring professional representation relies on two principal ideas. Firstly, non-EU entities should have advice available from EU professionals in dealing with their applications. There is no requirement for representation at the point of application. If there are no deficiencies there is no need for advice. The second, outdated, idea is that communication should take place only within the EU. Today communication is as easy externally as it is within the EU.

In the light of this the Office proposes to change its practice and will no longer insist on professional representation of non-EU entities where an application for a CTM or RCD has no deficiencies. The Office considers deficiencies to include not only substantive issues (e.g. absolute grounds) but also formalities (e.g. fee deficiency). The Office will continue to insist on representation where there is a deficiency or where inter partes proceedings (e.g. an application for invalidity) are launched.

The views of user organizations are welcome."

The corresponding Community Design provision is:

"Without prejudice to the second subparagraph of paragraph 3, natural or legal persons not having either their domicile or their principal place of business or a real and effective industrial or commercial establishment in the Community must be represented before the Office in accordance with Article 78(1) in all proceedings before the Office established by this Regulation, other than in filing an application for a registered Community design; the implementing regulation may permit other exceptions. "

The wording of the CDR is different to the CTM - no wonder it was cited in the brief OHIM paper.

Those with views on this proposal should submit them via an appropriate User Group.

Design patents: a new article

An article in the March 2010 issue of Patent World, published ten times a year by Informa, touches on design protection in the United States. "Revisiting design patents -- good protection at a reasonable cost", by John S. Pratt and Michael A. Bertelson (Kilpatrick Stockton), explains that design patents are cheaper and more straightforward both to obtain and to enforce than are utility patents: they provide "substantial protection against competitors" (Well, that's good news! I'm not sure I'd want one if they didn't) and "should not be overlooked" (Class 99 overlooks nothing). For those who appreciate the aethetics of law journal publication, there are some good rabbit sketches too ...

You can see the contents of the current issue of Patent World here.