It doesn't pay to toy around with Autec

This month's Alicante News features the OHIM Invalidity Division's German-only decision ICD 7100 in which toy-manufacturer Autec-- whose European litigation in Case C-48/05 Adam Opel v Autec won toymakers the right to reproduce logos on their scale models of real cars -- has scuppered Volkswagen's registered Community design in the new, revised version of the much-loved Beetle.


It wasn't the original Beetle that caused the problem.  Like Mickey Mouse, the Beetle has had a few facelifts in its long life and the first version is quite different from the later ones.  It was the two designs represented below that sunk VW.  New, smart Beetle concepts from the 1990s, they formed a body of prior art against which the originality of the challenged design was measured.

   

That was Community design RCD 111596-0001, which VW registered in 2003. It possessed the following side view:

The OHIM Invalidity Division had no trouble deciding that the later-registered design lacked individual character under Article 6 of the Community Design Regulation and declared the registration invalid.  

Given the deep purses and deep commitment shown by the automotive industry when contesting every type of registered intellectual property right in pretty well every jurisdiction, one wonders whether an appeal might be on its way ...

Treaty time again, and now it's Finland's turn

Don't you just love the formalities of diplomatic life in our cosy little world of intellectual property law? I have just received The Hague Notification No. 106, entitled "Hague Agreement Concerning the International Registration of Industrial Designs: Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs".  The good tidings are that the Republic of Finland deposited, on 1 February, its instrument of accession to The Hague's Geneva Act which kicks in for Finland on May Day (1 May 2011).

Annual spend of £1 million keeps copyists at bay

Superdry Lumberjack

In "SuperGroup fights nearly 100 legal actions to protect brand" the Telegraph reports on the litigation strategy of the owners of the SUPERDRY brand to maintain the integrity of their brands and designs.  Design right litigation is, it seems, at the core of their strategy:

The company, which owns the Superdry brand, has nearly 100 legal actions under way alleging copyright or design rights infringements. It received a judgment in the High Court on Friday in respect of its Superdry Lumberjack range of hooded shirts, which retail at £54.99. The Cheltenham-based company took action against Rhodi, a Preston, Lancashire-based fashion group that makes the VOI range of jeans and other clothing. 

Simon Bennett, partner at solicitors Fox Williams, who acted for SuperGroup, said the VOI shirts at the centre of the case had retailed for £22. He said SuperGroup complained on the basis that VOI's shirts breached Superdry's design rights. Proceedings were begun in the High Court and a judgment against Rhodi was obtained after the group did not file a defence. Rhodi was ordered to pay SuperGroup £45,000, to cease and desist from selling the shirts in question and to surrender stock subject to the order. ...

VOI's shirt

Supergroup spends £1m a year on lawyers' fees tackling the counterfeiters, trying to stop copycat brands such as Superfly or Silverdry popping up. 

VOI, founded in 1988, opened its first stand-alone store in Preston last year after claiming successful sales of its clothing in stores including Bank, Scotts and footasylum.. Rhodi could not be reached for comment. 

Since SuperGroup's shares listed in London in March 2010 at 500p, they have increased by more than 200pc, closing at £15.57 on Friday. The company is now worth about £1.2bn. ..."

Against the value of the company, an annual spend of £1 million may not sound large -- but the lawyers' fees are only part of the cost. The demands on the company's time and the emotional resources of its staff should not be overlooked.

Re-register those Serbian designs -- in Montenegro

Class 99 has learned that, on 22 December 2010, the Montenegrin Parliament adopted a new Law on the Protection of Industrial Design, which came into force on 8 January 2011. The law prescribes re-registration of designs registered with the Serbian Intellectual Property Office (IPO) before 28 May 2008 -- the opening date of the Montenegrin IPO. The final deadline to request re-registration is 8 January 2012.

This rule does NOT apply to design rights owners who have already filed requests for design renewal, recordal of changes or the Certificate of Registration with the Montenegro IPO.

The designs must be renewed every five years, with a maximum of 25 years of protection. In accordance with the old law, the renewal fees are, after the first five years of protection, paid annually. The new law also provides the possibility to appeal decisions of the Montenegrin IPO before the competent [in one sense of the word, for sure; let's hope it's in two!] ministry. Cancellation of a registered design must be sought before the competent court, in contrast with proceedings before the IPO as prescribed by the previous law.

Source: PETOŠEVIĆ