Virtualising designs

Designs are about protecting manufactured products, right?  Well, up to a point.  “Virtual Design Theft – Can it be stopped?” will be the topic of a panel discussion on Thursday, September 9, at the FICPI 12th Open Forum in Munich, Germany, September 8-11, featuring Robert Katz of Banner & Witcoff and David Musker (your humble correspondent).
Rob addresses aspects of the topic in his paper (with Daniel Cardy) "Virtual Design Theft: Is It Legal? Can You Stop It?", Innovation magazine, winter 2009, online here.  Fascinating stuff, but those who would like to learn more would do well to come along to the FICPI session.
Venturing somewhat further into the future, Simon Bradshaw, Adrian Bowyer and Patrick Haufe consider the IP ramifications of a world where everyone has their own 3D printer and can make anything they want directly, rather than having to buy it.  That might sound like Star Trek, but the technology is closer than you'd think.  Their thought-provoking paper, "The Intellectual Property Implications of Low-Cost 3D Printing", (2010) 7:1 SCRIPTed 5, DOI: 10.2966/scrip.070110.5, is available here.
They conclude that the effect of "private and non-commercial" and other exclusions from design infringement would likely take home-printers out of the scope of design laws - quite a contrast to the position of home-tapers and downloaders of music and film.  The likely corollary would be "design-sharing" sites, where instruction files for the 3D printer were uploaded, so that home users could download and reproduce the design.
In other words, just as with music and (increasingly) film, a market has moved from sale of products in the real world to sale of the designs of those products in cyberspace, where (Bradshaw et al argue) it is far from clear that the rights-owner has effective redress.

Registered Community designs "popular in Slovakia"

Are you one of those readers who love anything to do with designs in Europe and cherish an unfulfilled wish to discover, well, what they actually do about registered Community designs in Slovakia? If so, you need wait no longer to gratify your curiosity. OHIM's Alicante Newsletter makes the little landlocked state the focus of its attentions (here). According to this most official of sources on the subject,

"With just under 700 registrations since 2003, the registered Community design has proved to be popular with Slovakian undertakings. Last year there was a record 167 RCD filings with classes 8, 25 and 6 in highest demand.

The majority of Slovakian filers prefer the online route, with over 90% now using e-filing and the remaining applications coming by mail".

Top 10 Slovakia-based owners, by number of RCDs filed, are as follows:

Èervenko (54)
BIOKAMIN S.R.O. (40)
EVONA ELECTRONIC SPOL. S.R.O. (37)
ZT Slovakia trading, a.s. (36)
SUTARIK (23)
BODET & HORST Mattress Ticking k.s. (22)
SEZ a.s. (20)
CMX Electronics, S.r.o. (17)
Matador a.s. (17)
Kopiar (16)

Conference systems and informed users

"Design for conference unit held to lack individual character" is the title of this note for World Trademark Review by Franck Soutoul and Jean-Philippe Bresson (INLEX IP EXPERTISE, France). Published last week, it picks up the story in Shenzhen Taiden Industrial Co Ltd v Office for Harmonization in the Internal Market (Case T-153/08, 22June 2010, mentioned at an earlier stage on Class 99 here), in which the General Court held that a registered Community design for "units for conference systems" was invalid. In support of its challenge, Bosch pointed to an earlier international design, also for "units for conference systems", as well as documentary evidence in the form of a brochure, press cuttings and advertisements and showing the design of a conference unit which, said Bosch, was identical to the Community design at issue.

The Invalidity Division rejected Bosch's challenge, but the company had better luck with OHIM's Third Board of Appeal. While the Board held that Shenzhen Taiden's Community design was new, since it was not actually identical to the earlier international design, the challenged design lacked individual character, the differences between the two designs being insufficiently noticeable to produce a different overall impression on the informed user.

On appeal, the General Court first established that the informed user was "anyone who regularly attends conferences or formal meetings at which the various participants have a conference unit with a microphone on the table in front of them". After agreeing with the Board that the degree of freedom of a designer of conference units was relatively wide, the court found that the speaker, microphone, buttons, screen and card slot did not have a significant impact on the general appearance of a conference unit. Further, Taiden had produced no evidence that technical or functional requirements restricted the degree of freedom of the designer, or that there was a trend favouring small, flat, rectangular devices on the market at issue. Accordingly the court concluded that the Community design and the earlier design produced the same overall impression on the informed user: the sole difference between them related to the lid of the hinged speaker, the importance of which being reduced because of the limited visibility of the conference unit’s cover when the device is in use.

What I find interesting here is the identification of the informed user with "anyone who regularly attends conferences or formal meetings at which the various participants have a conference unit with a microphone on the table in front of them". Such people are certainly users, since it is they who press the buttons and speak into the mike. But is there then any meaningful difference between an "informed user" and a "user"? The person who is informed is probably a person employed by a conference organiser or conference venue provider, who will be concerned with the appearance, functionality and technical specifications of such systems -- but who doesn't "use" them in the generally accepted colloquial sense of the word.

UNION Turin Round Table

UNION, aka UEPIP, aka the Union of European Practitioners in Intellectual Property, is holding a Round Table meeting in Torino (Turin to Anglophones) on 7th October 2010.  Here is a link to the flyer. It promises to be a significant occasion for design-lovers, with influential speakers and panellists from industry and the judiciary as well as private practice.  Please come if you are anywhere near.  Several Class 99ers will be there to welcome you.
For those visiting Europe to attend AIPPI's Paris meeting, it is an easy flight on to Torino the following day.

Entitlement to employee designs

Thanks to the IPWars blog for reporting an Australian design entitlement case, Courier Pete Pty Ltd v Metroll Queensland Pty Ltd [2010] FCA.  The Federal Court reviewed a decision of the Deputy Registrar (reported as Collymore v Courier Pete Pty Ltd [2008] ADO 9; (2008) 79 IPR 608) on ownership of Australian designs 312217 and 312218 on rainwater tanks. 
Section 13(1)(b) of the Australian Act states that the owner is:
(b) if the designer created the design in the course of employment, or under a contract, with another person – the other person, unless the designer and the other person have agreed to the contrary...
Following Spencer Industries Pty Ltd v Collins [2003] FCA 542; (2003) 58 IPR 425, an Australian patent case which itself followed the UK case Patchett v Sterling Engineering Co Ltd  (1955) 72 RPC 50 (HC), the Federal Court held that the relevant tests were whether the employee was employed in a capacity where designing would be expected, or whether he had been specifically instructed to make the design:
"I accept the applicant’s submission that the approach of the Courts to the question whether an invention is created “in the course of employment” is to ask, “what was the employee employed to do?” If the employee was employed to make or discover inventions of the type ultimately produced, then that is work for which the employer has paid and the employer is entitled to the benefit of the invention. If the employee does not have any general duty to invent or duty of creativity, then the only basis upon which an invention can be said to have been created “in the course of employment” is if it has been created pursuant to a specific direction by the employer to undertake work which results in the creation of the invention."
In this case, Colleymore, the designer, was indeed an employee, but a factory worker who, the Court held, would not have been expected to make designs and was not instructed to make this one.  According to the judgment, "... he came up with the idea for the design for modular rainwater tanks as a result of watching one of his horses playing with a hose in the water trough on his property ... he then sketched his idea and refined it over a period of 10 days in his own time after work."  It had not been made in the course of his employment, and the design was therefore his property, not that of his employer. (Apparently neither horse nor hose made any claim to ownership).
Whilst some in-house colleagues might prefer a broader approach to the "course of employment" test, personally, I think the Court applied the right test, and one that applies as well or better to Europe's Article 14(3) RCD: where a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to the Community design shall vest in the employer, unless otherwise agreed or specified under national law.

Prior Art from the Ark - are old Community Designs legally new?

We see that an enterprising Evangelical church is to rebuild Solomon's Temple in Brazil (though shaved, in the Brazilian manner, of its gold - a notoriously poor structural material).  We wonder whether an exact replica could be novel over the original lost, lamented Temple, or the descriptions of the same in Scripture to which the church is presumably working? 
Lacking, as we do, the wisdom of Solomon, we are happy to see that according to Hogan Lovells' excellent newsletter, the Milan Court wrestled with somewhat the same question in Fortune S.r.l. v. Schneider Italia S.p.a (Court of Milan, Decision of 3 March 2010, N. 2843/2009), a case concerning rival watchmakers. I can't find either an online copy of the judgment or details of the Community Design concerned - can any of our readers assist? 
Quoting with thanks to the authors Maria Luce Piattelli and Alberto Bellan of Hogan Lovells, "The court clarified that "the informed user was not a person skilled in the art who has a deep knowledge of prior designs including very early patent rights filed and only marketed outside the European Community". Therefore the informed user did not necessarily have knowledge about "designs filed in very old times" which have not been used in the relevant market."
Which raises the question: can old prior art really vanish from the public mind after a while?  And if so, for novelty, individual character, or both?
In this case, the citations were apparently US patents from the early 20th century.  They would not, of course, have come to the attention of readers in the European Union for alas, dear readers, at the time there was no such beast.  However, they would have been deposited on public display a few days after publication in the reference libraries and Patent Offices of the UK, Germany, the Netherlands, and, we suppose, Italy, where they have remained available ever since.
There used to be explicit "time bar" rules for excluding prior art - for example, the UK had a 50-year time bar on citation of earlier patents (s50(1)(a) of the Patents Act 1949) and, I believe, the Benelux design law excluded designs more than a century old.  There isn't anything explicit in the current EU design laws, but the Commission commentaries on the draft laws did discuss excluding prior art which was only to be found in museums, or had otherwise disappeared from the market and the mind of the public.  But should exclusions of that type bite on patent publications which have always been available and which, thanks to the efforts of Google Patents and others, have now been resurrected on the Internet (somewhat in the manner of the Brazilian Temple)?  Our collective heart is with the design owners and the Milan Court, but our collective head is unpersuaded.  As to the principle, if the prior art is a knockout, why reward re-monopolising that which the public already had as of right? and as to the practicalities, where would the line be drawn - does prior art have to be as old as Methuselah to be excluded?  Oh for the wisdom of Solomon.

S T R E T C H E D credibility

It is one thing to rip off a competitor.  But filing your own lookalike design in their home market surely stretches the bounds of credibility.  We are indebted to Dr Mark Schweitzer, of Meyer Lustenberger (sorry, "meyerlustenberger"!) and even more so to Mareike Hunfeld of Hogan Lovells, for drawing our attention to German Federal Court of Justice Decision of 22 April 2010, I ZR 89/08 (Stretched limousines).  Here is a link to the excellent Hogan Lovells newsletter report of the case.
By a spooky coincidence it features the S Class stretch limo, which we covered incidentally in our "leaks" posting last week.  However, that posting concerned the updated S Class.  The German case concerned infringement of the original S Class stretch limo registration, RCD 000173166-0007.  This was applied for in May 2004 under "deferred publication" to keep it secret until the 2005 launch.  It must therefore have surprised DaimlerChrysler to see that Centigon, a competitor for limos and armoured vehicles, had applied in January 2007 to register pretty much the same thing as German design 40700389.  Perhaps unsurprisingly they sued for infringement, and, perhaps unsurprisingly, they succeeded.  The prior art cited included Daimler's own earlier models, but they overcame the kind of issues that sunk them in Sweden back in the day, and were upheld on validity. 
We have suggested several times recently that design infringement is on the up in the auto market, see here and here.  So far, the automakers seem to be winning these spats, where they have registered their designs. 

WIPO and design law convergence: some paper ...

Apologies -- I should have drawn the following to the attention of readers of Class 99 a little while ago to the following documents from the 23rd session of the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, whose meeting concluded in Geneva on 2 July:

* A 15 page document, "Possible Areas of Convergence in Industrial Design Law and Practice" (here), prepared by the WIPO Secretariat

* A 7 page submission made by MARQUES (here)

All documents submitted to the 23rd session Meeting can be found on the WIPO website here. A succinct summary of the Session by David Stone can be found on the MARQUES website's Design Team pages, but it's available to MARQUES members only.

Bloggers or Blaggers? Stalkers or Leakers? Have OHIM stolen Europe's Auto Secrets?

There is nothing the auto industry enjoys so much as the razzamatazz of a new car launch.  Yet as mass expulsions remind us of the spy era, there are rumours that OHIM has a mole, who leaks new car designs to auto bloggers.  "It's no great secret that the European Union's patent office has more leaks than a Soviet submarine" writes Noah Joseph of Autoblog, according to whom OHIM "has more leaks than a colendar".  Alex Ricciuti of  Worldcarfans  claims to be publishing pictures "... courtesy of a leak from the European Office for Harmonization of the Internal Market (OHIM), where trademark records are kept."
Rather than take these alarming claims at face value, in this blog-eat-blog world a few quick searches enable us to reveal the truth.
Take first Ricciuti's claim to have published leaked designs of the Opel Ampera.   His blog article is dated 18th February 2009.  However, the pictures he shows had already, quite properly, been published by OHIM several days earlier on 11th February as RCD 001086300-0001.
On to Autoblog (motto: "We Obsessively Cover the Car Industry").  On August 13th 2008, Noah Joseph claimed that the "EU Patent Office" had leaked the design of the restyled Mazda MX-5.  In fact, OHIM had published the design on 11th August as RCD 000977384-0001.  Autoblog revealed the design of the Suzuki Kizashi on 11th September 2008, acknowledging their source as OHIM's records, and not at that time claiming that there had been a leak.  OHIM had published the design in question the previous day, as RCD 000990122-0001.  On 18th January 2009, they broke news of the design of the Nissan 370Z Roadster, Joseph this time claiming that it was from an OHIM leak.  In fact, lower down the article they quote their source as The Motor Report blog, on which the relevant article (also of 18th January) cites OHIM but does not claim a leak.  And, indeed, OHIM had published the design as RCD 001030282-0002 on 14th January.
Joseph's "Soviet submarine" claim was made in the course of his disclosure of the design of the "stretch" Pullman Mercedes reported on 4th May 2009.  But, as you are by now no doubt expecting, OHIM had published the design as RCD 000999024 (several parts) on 30th April.
In the same article, Joseph referred back to the Nissan Roadster "leak", and one other, dated 11th August 2008, concerning the "facelifted" Mazda 3.  The Mazda 3 article quotes as its source an article on the Carspyshots blog.  OHIM appears to have published the design in question as RCD 000974795-0001 on 6th August. 
Putting these claims together, there is no evidence that anyone has published OHIM applications before OHIM itself has done so.  On the other hand, there is ample evidence that the blogs are closely monitoring publications in the car class (Locarno class 12.08) and publishing within a few days, or even hours. Foremost is Autoblog's  Alberto Ballestin, who has an OHIM watch page.   One could be forgiven for assuming that they were tipped off in advance, but the evidence does not require that assumption.  Unless Joseph or Ricciuti care to reveal their sources, it seems likely that they are simply passing off stalking as leaking.
To take one last example, on 13th July, the Carscoop blog published an article disclosing some Chevrolet designs.  OHIM had published these on 12th July, as RCD 001729088-0001 & 2.  The filing date was ... only five days earlier, on 7th July.  
The moral?  OHIM is now publishing e-filed applications in a matter of days.  Carmakers who want to keep their designs under wraps would do well to use OHIM's "deferred publication" system, to keep the publication date in their own hands.

WIPO committee recognises "importance" of design convergence work

A recent WIPO media release, "Member States Address Non-Traditional Marks, Advance Work on Industrial Designs" (Geneva, July 2, 2010, PR/2010/650) contains the "D" word in its title but is mainly about trade marks. In short, WIPO’s Standing Committee on Trademarks, Industrial Designs and Geographical Indications (SCT) met last week to address (among other things) "industrial design law issues". At the conclusion of its 23rd session, SCT Chairperson Adil El Maliki (Director General of the Patent and Trade Mark Office, Morocco) said

“All delegations attached great importance to the work of the SCT on possible convergences in the industrial design law and practice of member states and that the SCT supported the advancement of that work.”

This is probably a coded message that means "We think we're going to need a few more trips to Geneva to discuss this one ...". Despite the great importance of the subject, no further reference to it could be found in the media release.