Germans, Italians put the rest in the shade

Also published in this month's Alicante News is this attractive chart which shows that direct applications to OHIM from important markets for designs such as Germany, Italy, Spain and the US showed a slight decline compared with earlier years, while those from France and the UK have risen a little.

The Grace-Period Trap -- or "don't say it's a copy and you'll be all right"

The current issue of OHIM's Alicante News, having run out of countries on which it can report, has issued a friendly warning to the Office's "esteemed users" [this term is sadly undefined; Class 99 is not sure whom it excludes] that they should not despair of the Office if it rejects an application for a declaration of invalidity against a registered Community design due to lack of novelty even when there's "solid proof that the RCD is an identical copy of a prior design".  The Office explains:

"Out there, in the numerous articles of the Community Design Regulation (CDR) lies a trap you’d better be prepared for.

Its latest prey is an application which included evidence for the exhibition of a prior design identical to the contested RCD at an International trade fair in Germany around six months before the filing date of the RCD. The applicant claimed that the holder of the RCD has copied the prior design as a result of having seen it at the fair.

The Invalidity Division rejected the application (decision ICD 6682; in Spanish) because of Article 7(2) CDR which stipulates that a disclosure of a prior design is not taken into account if it happened less than 12 months before the filing date of the RCD and if it is a result of information provided by the designer of the RCD. Since the applicant insisted that the RCD is a copy of the prior design the Invalidity Division took it that the designer of the RCD must be the same person as the designer of the prior design and that the exhibition at the fair must be ignored because it was a result of information provided by the designer of the RCD [if you've read this sentence several times and still don't get the logic don't worry -- you're not alone].

In a similar case (decision ICD 5627, in German) two brothers were arguing about who copied whom. One was trying to invalidate the RCD of the other based on lack of novelty in view of his identical prior design. The evidence submitted by the applicant to prove the disclosure of the prior design was perfect but nevertheless the application was rejected due to Article 7(2) CDR.

The provision of Article 7(2) CDR, in particular the 12-months term, is called the grace period. It was intended as a remedy allowing designers to test the success of new creations on the market first and decide later – within 12 months – whether to seek protection by registering with OHIM. The grace-period clause secures that designers do not endanger the validity of their protection rights by making their designs available to the public prior to registration.

However, Article 7(2) CDR is of no help where another person, having learnt of the new design during this 12-months period, registers it with OHIM earlier than the designer. The only venue for the designer to be heard with a claim of ownership is an action before a national court under Article 15 CDR.[sounds like a design fault in the CDR]

An action under Article 15 CDR requires solid proof for the ownership. Without such proof it is better to file an application for a declaration of invalidity which includes all the evidence for the disclosure of the prior design but does not comprise any arguments as to a possible connection between the prior design and the contested RCD.

In the example above (ICD 6682) the Invalidity Division would have accepted the application and cancelled the RCD for lack of novelty if the applicant had not felt the need to give an explanation why the RCD is identical to the prior design, namely the first being a copy of the latter allegedly. Likewise in the case of the two brothers (ICD 5627) the fight over the ownership of the design was not helpful for the cause.

The grace period of Article 7(2) CDR can be a trap for an application easily triggered with unnecessary arguments of ownership in invalidity proceedings where those arguments do not belong".

This blogger hopes that the Alicante News will produce a feature soon on traps which the system can set for the villains of the peace to fall into, rather than traps to ensnare the innocent and the deserving.

99 mentions of 'design', but it's really a copyright case

Case C‑168/09 Flos SpA v Semeraro Casa e Famiglia SpA, a reference to the European Court of Justice for a preliminary ruling from the Tribunale di Milano (Italy), is really a copyright case but the 'd' word appears in it exactly 99 times.

As the headnote states, the case concerns a "National law [that of Italy] precluding copyright protection or rendering it unenforceable for a certain period in the case of designs which entered the public domain before the entry into force of the law".  The court considers the effect of Article 17 of Design Directive 98/71 on Italy's copyright law, Article 17 being the provision that permits cumulative protection by design and copyright law and, by inference, which also permits protection by copyright even where the work in question was formerly protected by an expired design right.  There's also some interesting analysis of the principle of the protection of legitimate expectations, a doctrine of which I suspect we have yet to hear the last.

Background and illustration here.

Take that expression off your face - if you want to keep your design

The General Court has taken its fourth substantive Community Design appeal decision, Baena Grupo v OHIM T-513/09, on these two rather angry gnomes (or "lutins grognant"as the French text has it) - here, in French (Spanish also available).
The case has had a rather erratic history. The citation, on the right, is a published Community Trade Mark (CTM 1312651), and at first instance the Community design (RCD 426895-0002, on the left) was invalidated over the citation considered as a prior right, as being a mis-use (i.e. an infringement) of the trade mark.
The Appeal Board overturned that in Decision R 1323/2008-3 (here, in Spanish), ruling that "use" of an earlier mark in this context did not cover use of something similar (in contrast to the well-known MIDAS decision?) but held it invalid nonetheless, this time on the basis of lack of individual character over the citation considered as prior art.
What did the General Court say? They reversed the Board of Appeal, despite what one might reasonably think to be the overall similarity between the two. The twin bases were: firstly, the identity of the informed user - a teenager or a younger child (the latter was quite important), and secondly, the importance of the angry facial expression (and perhaps pose also) in the citation, as being the thing which would stick in the memory of that informed user.
From a UK point of view, it therefore makes an interesting contrast with the approach in Procter & Gamble v Reckitt Benckiser, firstly because this "informed user" is not stated to be attentive or particularly interested in design issues (and is hence pretty undiscriminating), and secondly because of what seems to be quite a strong role for the doctrine of "imperfect recollection", held in P&G to have lesser significance in design cases.
As with several earlier General Court and OHIM decisions, the citation was taken "as a whole" and no thought was given to comparing like with like - since the design has no mouth, surely the fair comparison is to compare that part of the citation without a mouth to the design? In the context of an infringement, the implication of the General Court's approach is that one could take the entirety of a design, add something and thus avoid infringement. Is that right? What do you think, dear readers?

Now Korea does it with class

One further small piece has just been slotted into place in that great jigsaw of international intellectual property. The World Intellectual Property Organization (WIPO) has issued a media release to the effect that the Republic of Korea is signing up for the Locarno Agreement Establishing an International Classification for Industrial Designs; this Agreement will enter into force with respect to the Republic of Korea on April 17, 2011.

Go with the Flos -- unless you're English

A quick reminder: the Court of Justice of the European Union is scheduled to give its ruling this Thursday in Case C-168/09 Flos SpA v Semeraro Casa & Famiglia SpA, a reference for a preliminary ruling from the Tribunale di Milano (Italy) lodged on 12 May 2009.
In case you've momentarily forgotten the questions, let Class 99 jog your memory:

1. Must Articles 17 and 19 of Directive 98/71 be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which - albeit meeting the requirements for protection laid down in copyright law - fell to be regarded as having entered into the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force, in so far as they had never been registered as designs or in so far as the relevant registration had already expired by that date?

2. If the answer to the first question is in the negative, must Articles 17 and 19 of Directive 98/71 be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which - albeit meeting the requirements for protection laid down in copyright law - fell to be regarded as having entered into the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force and where a third party - without authorisation from the holder of the copyright on such designs - has already produced and marketed products based on such designs in that State?

3. If the answers to the first and second questions are in the negative, must Articles 17 and 19 of Directive 98/71 be interpreted as meaning that, in implementing a national law of a Member State which has introduced copyright protection for designs into its legal order in accordance with that Directive, the discretion accorded to such a Member State to establish independently the extent to which, and the conditions under which, such protection is conferred may include discretion to preclude such protection in the case of designs which - albeit meeting the requirements for protection laid down in copyright law - fell to be regarded as having entered into the public domain before the date on which the statutory provisions introducing copyright protection for designs into the domestic legal order entered into force and where a third party - without authorisation from the holder of the copyright on such designs - has already produced and marketed products based on such designs in that State, where protection is precluded for a substantial period (a period of 10 years)?

We wait with excitement.  Meanwhile, if you want to read the Advocate General's Opinion, it's available in every single official language of the European Union, including Maltese -- but with the exception of English. It is sincerely hoped that Thursday's judgment is not treated in similar fashion.

Class 99 explanation of the background and the Advocate General's ruling here
Teach yourself Maltese here

WIPO's Christmas message: "E-file your granular design renewals here"

During the recent and festive period, fading from our memories if not from our waistlines, our friends at the World Intellectual Property Organization (WIPO) put out the catchily-named Information Notice No. 13/2010.  This missive, believed to be a sequel to Information Notice No. 9, reads as follows:

Hague Agreement Concerning the International Registration of Industrial Designs 

LAUNCHING OF THE INTERNATIONAL DESIGNS RENEWAL INTERFACE (“E-RENEWAL”) 

1. As of December 23, 2010, an electronic interface for the online renewal of international registrations, hereinafter referred to as “e-renewal” will be available on the Hague system website at the following address: https://webaccess.wipo.int/erenewal_dm/.  The  introduction of the e-renewal interface presents users with the ability to specify the scope of renewal of their international registrations in a more granular manner [oh dear, I don't know what this means: is it AdminSpeak? I always thought 'granular' meant "composed of or bearing granules or grains", but I don't see what that's got to do with e-filing. I tried putting grain into my disk-drive, but the computer couldn't read it and now the mouse wants to eat it] than which may be requested via the paper renewal form (DM/4). 

2. The Hague system for the international registration of industrial designs allows, in addition
to a total renewal, for the possibility of partial renewal, that is, a renewal in respect of only some of the designs and/or some of the designated Contracting Parties contained in the international registration. The e-renewal interface allows users to specify different sets of Contracting Parties for which different sets of industrial designs are to be renewed.  The e-renewal interface also takes into account the history of the international registration to be renewed so as to calculate the fees accordingly and allows users view the reproductions of the industrial designs contained in the registration. 

3. The e-renewal interface allows the payment of the renewal fee either through a current
account opened with the International Bureau or by credit card. 

4. It will remain possible to request the renewal of an international registration in writing,
using the DM/4 form (available at the following address:
http://www.wipo.int/hague/en/forms) or simply through the payment of the renewal fees.
However, users are strongly encouraged to use e-renewal instead.

Will Brazilians shave back automaker IP rights?

The longrunning war between automakers and independent spare parts suppliers has spilt over into Brazil - and with such a major carmaking sector, the surprise is only that it took so long to do so.
We are grateful to Greg Aharonian's incendiary but addictive PATNEWS for a link to the December 2010 Business Week article reporting the investigation by the Brazilian antitrust agency, CADE (the Conselho Administrativo de Defesa Econômica), into Ford, Fiat and Volkswagen.
FICPI's 2008 Report on the protection of spare parts (ExCo Florence, Italy, EXCO/IT08/CET/1202, Sep 2008) indicates that a competition agency called SDE issued a pro-automaker decision on March 3, 2008. Labrunie & Columbo comment on that decision towards the end of a thoughtful article here. Is the CADE case an appeal from the SDE decision? Can a reader enlighten us?
In the meantime, anyone with a long memory might recall that the UK Monopolies & Mergers Commission (now the Competition Commission) reported on Ford, finding their conduct in not licensing their spare part IPR to be anticompetitive, as Monopolies and Mergers Commission Report on the Policy and Practice of the Ford Motor Company Limited of not granting licences to manufacture or sell in the UK certain replacement body parts for Ford vehicles, February 1985, Cmnd. 9437. The Competition Commission have published it on their website, should any browsing Brazilian regulators wish to check it out.