Gentlemen prefer blondes, but Swedes prefer faxes ...

The brand-new issue of OHIM's Alicante News dedicates its monthly design focus to the largely blond(e) jurisdiction of Sweden, the monarchy where the krona is king.  Says the report:

"With over 10,000 registrations since 2004, the registered Community design is popular with Swedish undertakings. Last year there were more than 1,400 RCD filings with classes 8, 14 and 23 in highest demand.

The majority of Swedish filers prefer the online route, with over 65% now using e-filing. However, fax continues to be popular at 23% and mail accounts for 12% of filings".

Can any reader account for the mysterious popularity of faxes in Sweden?  Why should it be so different from Spain, where e-filings and traditional post account for 96% of filings?  Does this reveal something of the Swedish psyche?  I think we should be told.  Anyway, the Top 10 Sweden-based owners of registered Community designs, by number of RCDs filed, are as follows:

SCA HYGIENE PRODUCTS AB 621
Sony Ericsson Mobile Communications AB 571
Aktiebolaget Electrolux 550
Dresser Wayne AB 548
Svedbergs i Dalstorp AB 403
ANZA AB 352
Gambro Lundia AB 342
Eggtimer Kitchengadgets Inter AB 321
HTC SWEDEN AB 320
HL Display AB (publ) 308

Mystery traffic device design case: can anyone help?

I've just received an email circular from the UK's very helpful Intellectual Property Office which reads as follows:

"We have received notification of a new case referred by Juzgado de lo Mercantil de Alicante - Spain, to the Court of Justice: C-488/10. The case regards the possible infringement of a Community design for a traffic signalling device and the application of prevention of use by a third party under Article 19(1)

The Court have been asked for a preliminary ruling on Article 19(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs

This case and the questions referred to the Court can be viewed on our website at:
http://www.ipo.gov.uk/pro-policy/policy-information/ecj/ecj-2010.htm

If you would like to comment on this case please e-mail policy@ipo.gsi.gov.uk before 29 November 2010.

Regards
International Policy Directorate
Intellectual Property Office"

I clicked the website and the case wasn't listed.  I then tried the case number on the Curia website and couldn't find it either.  Have I been pressing the wrong buttons? Can anyone help -- quickly, since time is of the essence ...

Italian Copyright in Transition

We have previously reported on several references from the Italian Courts to the European Court of Justice concerning "resurrected" copyrights. Before the Design Directive 98/71, copyright was largely denied to designs, but this was incompatible with the "cumulation" provided for by Article 17 of the Directive. But what to do about those resurrected copyrights, particularly those where infringement had already started, given the lack of transitional provisions in the Directive?
Professor Cesare Galli of IP Galli Law Firm reports, in the International Law Office newsletter, that following the Flos case there is a new Italian law providing for a five year transitional run-in period for continuing infringement - expiring in 2006, however, so that anything on the Italian market in future should be copyright-cleared.

Pilgrim's Pyrrhic victory?

"I bought it in China - I had no idea it was a copy". Can a company these days pass the buck to their Chinese supplier, or should they not at least ask the question? This seems to have been the issue in Pilgrim A/S v Dansk Smykkekunst A/S (Maritime and Commercial Court, August 17 2010, Case V-6-09), reported by Mads Marstrand-Jørgensen of Norsker & Co in the ever-helpful International Law Office newsletter.
Pilgrim sued on the basis of a men's necklace. They failed to cross the copyright threshold, and Denmark's usually-reliable Marketing Practices Act let them down because they did not establish Danish sales, apparently. However, subsistence and infringement of Unregistered Community Design right were found. A good result? Alas, no. The Court held that Pilgrim should have no damages or compensation because "the Court is not satisfied that Dansk Smykkekunst has known or should have known Pilgrim's necklace" and, indeed, they made Pilgrim pay Dansk's costs.
Somehow, it seems wrong to us that the proprietor, after infringement has been shown, has to pay the infringer's costs because the infringer did not determine that the goods were infringements. On the one hand, of course, it is generally better to chase the copyist and manufacturer rather than the retailer. But on the other, that is far from easy when they are located abroad - and they know it. So we think it is just a bit too easy these days to play the innocent or ignorant importer. Is there anyone out there who is unaware that fakes can be bought in the Far East? We doubt it.
But what do you think?

UK government gets acid response from ACID

Criminal deterrent --
or just a hung parliament?

On Friday Class 99 reported on the UK government's unenthusiastic response to the proposal, backed by ACID's petition, to introduce criminal sanctions for design right infringement.  According to the government, the current civil-based provisions provide a suitable IPR framework -- even though copyright infringement (which requires no substantive examination) attracts criminal sanctions. As ACID points out, this gives rise to anomalies and inequality of treatment which, the organisation states, "are very damaging to hundreds of small businesses and designers across the UK and restrict the level of legal protection and support they can expect to receive".  A press release in response to the government's reiteration of its current position reads as follows:

"Dids Macdonald [ACID CEO], commenting on the Governments’ response and, in particular, the statement that unlike trade mark and copyright disputes, design right can often be inadvertent said, “In my 20 years personal experience as a designer and latterly as CEO of a 1,000+ member organisation (the majority of whom have joined because of design infringement threats), copying is generally deliberate and blatant rather than inadvertent [If it were not, one might expect commercially unsuccessful and unpopular designs to be copied as frequently as successful ones]. I would be interested to learn more about the Government’s evidence to support their statement [the UK government has committed itself to "evidence-based" IP policy formulation -- though one suspects that this only applies to proposals to change the law, not proposals to leave it as it is ...]. However, I am encouraged to continue the debate via the recently announced review of the UK’s IP and by the Government’s commitment to explore any (and all) suggestions for improving the designs framework for the benefit of the UK design industry.”

Nick Kounoupias, ACID LOBBY’s legal counsel and an expert in IP infringement said, “We are only suggesting that design rights should be criminalised where there is actual knowledge like copyright. There is no obvious reason for the disparity of protection. This may have been overlooked during the frenzied last minute lobbying and amendments made to the [Copyright Patents and Designs Act] CDPA in 1988 as it was passing through Parliament. Design right protection was a relatively late innovation in 1988 and at the time it was probably felt that it was a step too far to extend to design right the new improved protection introduced for copyright in 1988. Certainly no rational basis for the inequality has been advanced by Government.” [Nor has it been suggested that, since deliberate design infringement is not criminal; corresponding types of copyright infringement should be decriminalised too]

The simple legal solution would be to introduce into the CDPA two new Sections to mirror S.107(1) and 110 ... The wording would be almost identical to Sections 107(1) and 110 and would be designed to criminalise the infringement of the design right subsisting in 3D designs. This can be done very simply by replacing the word “copyright” every time it appears in Sections 107(1) and 110 with the words “design right” and the words “copyright work” with the word “design.” It would then be necessary to make consequential amendments to mirror Sections 107 (4), 107 (5) 107A, 108 and 109 CDPA. As with copyright infringement this would criminalise blatant and deliberate copying but not copying inadvertently.

The Alliance Against IP Theft representing 20 organisations (of which ACID is a member) has recognised the need to ensure legal parity across IP rights as a key campaigning principle with a need to address the inconsistency in protection for design rights agreed as a specific objective. ...

In 2008 there were only 2,798 designs registered in the UK and in 2009 2,111. Most of the UK’s 250,000 designers would appear to rely on unregistered rights. This is contrary to the Government statement that IP, including design rights, should serve to stimulate an environment in which new design ideas can flourish, whilst also providing a robust means of protection for existing design rights. ACID receives approximately 30,000 designs per year to its Design Data Bank for unregistered designs".

The government's reluctance to remove the anomaly may have, at base, a fear that if deliberate trade mark, copyright and design infringements were all criminalised, the controversial proposal to criminalise patent infringement might again be raised (on which see here, here and here, among other places).

Hargreaves to enter the UK's IP Maze

Following Gordon Brown’s Gowers Report, it has clearly become a British constitutional convention that the oft-repeated task of reviewing IP law be given to a financial journalist - no experience of, or qualification in, law, IP, business or economics required.
Andrew Gowers himself left his job as editor of the FT (in his own words “not entirely voluntarily”) and, after the Gowers Report, went on to work at Lehmans, then BP, and academia. New Labour, Lehmans, BP ... a whole flotilla of sinking ships. In the end, Mr Gowers didn't do such a bad job on IP, so we wish him well in future, and hope he can swim.
His counterpart on David Cameron's hastily-announced IP Review (described in the Daily Telegraph as an "ineffectual waste of money") is to be Ian Hargreaves, who, after working at the FT, was editor at the Independent before being parachuted into editing the ever-ailing New Statesman by Geoffrey Robinson (New Labour’s Paymaster General); since then he has held a number of lobbying and consulting posts in and around Whitehall, and is a Professor within the Meeja Studies group at Cardiff University.
Hargreaves sounds, from his appearances on Radio 4's Moral Maze, like a nice, liberally-inclined fellow - but is he ready for the IP Maze? His only prior connection with the task seems to be a report he did called "The Heart of Digital Wales" (that beating heart is, we presume, located not too far from Cardiff), which was more concerned with spending Welsh funds within the existing system than with reforming it.
We suspect that this is just another "mission impossible" which will enable poor Hargreaves (like his predecessor) to blast the IP ball deep into the long grass for a while, like any good enquiry should.
As Gowers said, after completing his work, "You have to start from the realisation that intellectual property is in fact a global system. It just happens to operate through national jurisdictions. So the idea that dear old Britain would somehow reinvent the rules of the road and in just one country is almost laughable you know." Prepare to laugh.

Criminal design infringement: UK government says "No, er, maybe, er .. well let's see ..."

Some readers of this blog may wonder what happened to the petition, one of two pioneered by anti-infringement champion Dids Macdonald of ACID, to criminalise design right infringement (see earlier Class 99 post here).  The petition is now closed and the UK government has responded here. For those too lazy to click through, the current state of play looks like this:

Petition to create a law which introduces criminal sanctions for design right infringement

This petition is now closed, as its deadline has passed.

We the undersigned petition the Prime Minister to Create a law which introduces criminal sanctions for design right infringement. More details

Submitted by Dids Macdonald of ACID (Anti Copying in Design) – Deadline to sign up by: 03 June 2010 – Signatures: 580

More details from petition creator

Design law today has a far greater importance in terms of protecting new designs than it has ever done in the past. The four most copied industries within ACID’s membership are the furniture, textiles, interior accessories and giftware industries. A visit to any major High Street retailer will clearly demonstrate the importance of these sectors of the design industry to the UK economy. ACID is very concerned that there are currently no criminal sanctions whatsoever under the UK unregistered and registered design right, the unregistered or registered Community design. Accordingly, anyone dealing in pirated goods that are protected by one of the design rights rather than by copyright or trade marks are at no risk of criminal proceedings being brought against them. Since ACID's formation in 1996, it has seen a huge escalation of copying taking place within the design industry. ACID firmly believes that the introduction of criminal sanctions for design right infringements, will have a significant effect on the reduction of copying and dealings with pirated goods in the UK, consequently strengthening the British design industry.

http://petitions.number10.gov.uk/DesignRight/

Government response

Thank you for your e-petition on the issue of introducing criminal sanctions for design right infringement. Given the strength of the UK's design industry, the Government firmly believes that the legal framework for protecting intellectual property - including designs - should serve to stimulate an environment in which new design ideas can flourish, whilst also providing a robust means of protection for existing design rights.

At this time, the Government believes that the current civil-based provisions provide a suitable framework for dealing with, and resolving, disputes relating to allegations of design infringement within the UK.  Unlike the majority of trade mark and copyright disputes, design infringement can often be inadvertent, involving no intent to damage or exploit the property of a third party. Furthermore, the fact that current UK design law provides for only a minimal degree of substantive examination (without any assessment of novelty) prior to the grant of registration means that a high number of registered designs have a low presumption of validity. Given these factors, the Government is naturally cautious about the merits of increasing the severity of potential sanctions against those alleged to be infringing existing design rights.

Nevertheless, the Intellectual Property Office (IPO) is currently engaged in a review of extant design law, and has recently consulted with a number of stakeholders on a range of issues including the introduction of criminal sanctions. Notwithstanding the signatories to this petition, the IPO has found that many practitioners and design right holders have serious doubts as to the value and practical benefits of introducing such measures - largely for reasons similar to those stated above - and would prefer to see improvements made to the existing civil provisions. As the IPO is still gathering evidence, the Government is yet to draw any conclusions from this designs review. It will, however, continue to explore any and all suggestions for improving the designs framework for the benefit of the UK design industry.

Hague will not not apply to Greenland, say Danes, but Faroes remain in the cold

Summerwear for Greenland, where
the July temperature averages 7 degrees

Across the civilised world, design experts are poring over Hague Notification No. 103, their hands trembling with unfeigned excitement as they scour its text in search of its deeper meaning. Yes, the story can now be told. The government of the Kingdom of Denmark, the land of the Bang & Olufsen, has made  a declaration before the World Intellectual Property Organization. Referring to its historical instrument of ratification of the Geneva Act -- the one which affirmed that the Hague's Geneva Act would not apply to the Faroe Islands or to Greenland -- the Danes have withdrawn the bit of the ratification that says it doesn't apply to Greenland. This declaration takes effect from 11 January 2011.

The reactions of the design communities of Greenland and the Faroe Islands are not yet known.

This author sincerely wishes that, in the 21st century, an era of brief, direct and meaningful communication, the formal, convoluted and pompous language of WIPO ratifications and declarations could be discarded entirely.  If not, perhaps it could be confined to the nether regions of OHIM's Boards of Appeal, from which in probability it will never be entirely eradicated.

Note: a corresponding declaration has been made in relation to the Madrid Protocol.

Technical functionality? Start using the correct fax number!

What a missed opportunity for the world of design law – the first case on a Community design’s mere technical functionality having reached Luxembourg, with the vague hope that the apparent disharmony between what the England and Wales Court of Appeal decided in Landor on the one hand and OHIM’s Board of Appeal (here) and, very recently, the England and Wales High Court of Justice in Dyson (reported by class99 here) on the other would yield to Europe’s General Court Solomon-like final chord.

However, the Swedish owner of the invalidated Community design and applicant in the following court proceedings failed to lodge the action at the Registry of the Court in time. Rather, the applicant conceded that the action was lodged late, this lateness resulting from a “genuine misunderstanding of the established practice” for lodging an application with the General Court. In fact, the applicant had lodged the application well within time but only at the offices of OHIM, “in accordance with a well established practice in Sweden”

Unsurprisingly, the General Court dismissed the action as “manifestly inadmis-sible”, meanwhile having been confirmed by the Court of Justice of the European Union rejecting the two grounds of appeal as “clearly unfounded”.

And the lesson of all this? Formalities are much more important than lawyers may believe (and than they tell their clients) – further need for harmonization?

Bahrain - new Implementing Regs enter force

Thanks to AGIP's newsletter for pointing out that the February 2010 Implementing Regulations to Bahrain's 2006 Design Law were brought into force on 20 October, increasing lifetime from 10 to 15 years, introducing multiple design applications (up to 50 designs) and changing the annuity fee arrangements. Background here.
Not so long ago we reported on Oman's design law. The position in the UAE is discussed on Emirates' website. Design law is obviously on the move in the Middle East, and there are plenty of design-oriented consumers in the Gulf States, so this is going to be an increasingly important territory for design right protection.
A good, detailed, tabular summary of design protection across the Middle Eastern region is in Tamimi's Patent and Design brochure, and AGIP have a country-by-country IP survey in their 2010 Handbook.

Print-your-own RCD Registration "Certificates"

A month or so back we reported here that OHIM were adding electronic Community Design registration certificates to their website. They will now stop sending out paper ones as of next Monday, according to this notice.

Progress at WIPO

Two of your bloggers (David Stone representing MARQUES and Robert Watson representing FICPI) have just returned from the SCT meeting at WIPO in Geneva.

We are pleased to report that progress was made at the meeting, mainly due to the bold move of the International Bureau in providing a set of draft provisions on design formalities (found here).

Both MARQUES and FICPI are actively participating in the SCT, having submitted written comments on the design issues in advance of the meeting (FICPI paper & MARQUES paper)

The draft provisions prepared by the IB were discussed generally in a positive manner by the Member States, and the discussions provide plenty of food for thought for the International Bureau.

It was agreed to continue with the work of the Committee, and for the International Bureau to provide for the next meeting a two level document to provide a potential dynamic structure. This would mirror the approach taken for the Singapore Law Treaty.

This is clearly good news for formalities harmonisation and will hopefully bring benefits for the users of design systems in due course

End of the road for Evets

Old musos will remember Danelectro's classic guitars - the mark has been in use for over 60 years now. But the ECJ (Decision C-479/09 P), supporting OHIM's hard-line policy on restitutio in integrum, has recently cancelled this old and valuable mark for failure to pay the renewal fee, on grounds that appear to put applicants in a very precarious position - on the basis of a legalistic interpretation approach that, we have argued in the past, is focussed on OHIM themselves and opposed to commercial reality and the needs of the marketplace.
In the Danelectro cases, the applicant adopted the practice (near-universal in large companies) of handling renewals through an agency. OHIM's correspondence, however, went to the appointed representative. The issue was, when was the "cause of non-compliance" removed? Was it when the representative heard from OHIM, or when the client (or the renewal agency) were told? The Court's mechanistic approach was simply to quote the rules which put the representative in the shoes of the client for OHIM's purposes. Thus, the relevant two-month time limit started to run when the representative got the letter from OHIM, even though the representative was completely out of the renewal loop and had no authority from the client to act on renewals. The same logic would apply even where, in reality, the representative had no further authority to act, if OHIM had not yet been notified of that fact.
When applying a highly penal provision, can it really be right to ignore the reality behind the rule, which is that, where it is the applicant who failed to comply with a deadline, the removal of non-compliance must also be referred to the applicant? Should a 60-year old mark be lost, in a first-to-file system, where the applicant is not at fault? The answer seems self-evident to us.
Our concern on Class 99 is that, since the Community Design provisions are identical to those for CTMs, and the reasoning of the Court is so mechanistic, they will apply the same approach to design renewals. The results would be disastrous. A trade mark can be re-filed, and unless someone else has acquired intervening rights, will be re-registered. But any design, by renewal time, will have been published by OHIM so that a re-filing would lack novelty and the design would be irrevocably lost.
Is it too much to hope that the Court might issue a divergent opinion for designs? Well, it remains at least a theoretical possibility. One of the suggestions raised by the appellant was that EPO case law under the identically-worded EPC provisions should be followed. OHIM and the Court, at all instances, refused to do so. One of the reasons given by the Court of First Instance (now the General Court), in their decision T 20/08, was that:
...even if Article 78 of Regulation No 40/94 was drafted on the basis of a patent law model, there is nothing to suggest that the respective provisions must be interpreted identically, since the interests at issue in the two areas may differ. The legal context of patent law is different, and the provisions governing patents seek to regulate procedures different from those applicable in the area of trade marks (Case T‑136/08 Aurelia Finance v OHIM (AURELIA) [2009] ECR II‑0000, paragraph 21)."
Well, following that reasoning, designs are different to trade marks - in fact, as to the novelty issue, they are much more like patents. So ... is anyone prepared to try to tell the Court to apply their own words to designs, and follow the EPO's more applicant-friendly approach where the consequences of failure are so much more penal than for trade marks?
In the meantime, what about resuming the filing of authorisations at OHIM - specifically limited to exclude renewal business? We might try that ourselves, if no one else can be found to do so.
Please do keep us informed of any restitutio cases in the pipeline, as we have had widespread expressions of concern from applicants since our last item on this topic.