Design blog blogs about designs on blogs

'Alicante' clock with water
feature, here

A feature in the current issue of the Office for Harmonisation in the Internal Market (OHIM) Alicante NEWS is entitled "Prior designs on blogs". It states (with some omissions, including some citations) as follows:

"Many applications for a declaration of invalidity of a registered Community design (RCD) include evidence for prior designs in form of printouts from the Internet. This evidence is often rejected by the Invalidity Division ...on the ground that it does not prove the date of disclosure of the prior design ...

One way of adding credibility to evidence from the internet is the use of the Wayback Machine (http://www.archive.org/) giving access to an Archive of web pages referring to the dates when the pages were published on the Internet .... Another way is to print the contents of the web pages with an indication of the date of the printing ....

However, the Archive is far from being complete and the printout may be too late, ... after the date of filing of the RCD. The problem is known not only to OHIM but also to other IP Offices, in particular the European Patent Office (EPO). In its Guidelines for Examination the EPO dedicates an entire Section to “Internet Disclosures” and the issue of establishing dates.

OHIM recently received an invalidity application where the novelty of RCD 1667049-0003 ... was contested on the basis of evidence for a prior design (photo below, right) posted on a web blog. Inspired by the Guidelines of the EPO [and how many people can write "Inspired by the Guidelines of the EPO" with a straight face?], the Invalidity Division ...reasoned in its decision (ICD 7178) that

“as a matter of principle, disclosures on the Internet form part of the prior art. Information disclosed on the Internet or in online databases is considered to be publicly available as of the date the information was publicly posted. Internet websites often contain highly relevant information. Certain information may even be available only on the Internet from such websites. This includes, for example, online publications of design registrations by IP Offices.

The nature of the Internet can make it difficult to establish the actual date on which information was made available to the public: for instance, not all web pages mention when they were published. Also, websites are easily updated, yet most do not provide any archive of previously displayed material, nor do they display records which enable members of the public - including examiners - to establish precisely what was published and when.

It is theoretically possible to manipulate the date and content of an Internet disclosure (as it is with traditional documents). However, in view of the sheer size and redundancy of the content available on the Internet, it is considered very unlikely that an Internet disclosure has been manipulated. Consequently, unless there are specific indications to the contrary, the date can be accepted as being correct [This would appear therefore to be a rebuttable evidential presumption].

In the present case of ICD 7178, the publication appeared on a blog with an exact indication of the date, even the time when it was put on the blog. It lies in the nature of a blog that it is addressed to the public and that the contributions published on a blog are dated exactly [these dates can be adjusted after the event, or indeed before it -- and a blogpost commenced and posted on one date but then recalled, edited and reposted on a later date will bear only the earlier date if Google's deafult settings are used on Blogger.  But where the blog is available to readers via an email circular, the time and date of dispatch of the email circular can corroborate a contemporaneous blog post]. Consequently, there is no doubt that the prior designs shown were made available to the public prior at the date indicated in the blog which is a date more than 12 months prior to the date of filing of the RCD.”

At the end, the Invalidity Division decided to declare the RCD invalid in view of the evidence derived from the Internet".

There is a further point to bear in mind. Blog settings include a time-zone option, which sets the blog's "clock" for all posting purposes and which is not sensitive to the location of a blogger.  I set my blogs to Greenwich Mean Time.  However, if I'm posting in Hong Kong or California my blog posts can easily be accorded calendar dates earlier or later than that of actual posting.

Korean designs add depth, animation on the way

IP Frontline's IPMT News magazine reports that KIPO, the Korean Patent Office, is now accepting CAD filings, so that users can upload a true 3D representation of a design. Apparently there has been a good takeup - 1.4% overall were filed this way, with the civil construction industry being big users. It will be possible to file movie animations using Initial Graphics Exchange Specification (IGES) from April.

World IP Day - Designing the Future

This year's WIPO World IP Day, 26 April 2011, is design-themed. If you are aware of any tie-in events, please keep us posted. And, of course, WIPO too.

Here's the keynote message from WIPO Director General Francis Gurry:

Design touches every aspect of human creativity. It shapes the things we appreciate from traditional crafts to consumer electronics; from buildings and bicycles to fashion and furniture. Design has been called “intelligence made visible”.
Design is where form meets function. It determines the look and feel of the products we use each day – from everyday household items to the latest tablet computers. Design marries the practical with the pleasing. It brings style to innovation.
This year’s World Intellectual Property Day celebrates the role of design in the market-place, in society and in shaping the innovations of the future.
Originally referred to as “art in industry”, industrial design provides the means to differentiate between mass-produced objects, drawing us to one product rather than another, making one brand more successful than another. Behind every new design is a desire to break new ground, to improve and to enhance consumer experience. Good design makes products easier, more comfortable and safer to use.
With today’s increasing emphasis on ecologically sound living, “designing out waste” is now an aspiration shared by many creators. Sustainable design processes can help lower production costs and reduce environmental impact. The designs of the future will necessarily be green, and the intellectual property system will encourage designers to produce them, by helping to protect original designs against unauthorized copying and imitation.
In international markets, companies need to be able to protect their designs quickly and cost-effectively in several countries. WIPO’s Hague System for the International Registration of Industrial Designs - which simplifies that process - saw a 30 percent increase in international applications last year.
On World Intellectual Property Day 2011 WIPO joins governments, organizations, schools and enterprises around the world in celebrating the designers today, who are designing the future.

Monaco ratifies Geneva

Monaco: plenty of cars, but not many
places to drive ...

Readers with good memories, and those who are particularly interested in the goings-on in Mediterranean monarchies, will remember that Class 99 reported back in December 2009 on the denunciation by the Principality of Monaco of the London Act and the Additional Act of Monaco of the Hague Agreement (here).  Well, Monaco is taking a fresh foray into the world of international design registration, according to The Hague Notification No. 107 (here), which trumpets the news that Monaco has now deposited its instrument of ratification of the Geneva Act of the Hague Agreement, which comes into force for the Principality on 9 June 2011.  Oh, and by The Hague Notification No. 108 (here), headed "Acceptance of termination by the Principality of Monaco",

"The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify that the Government of the Principality of Monaco deposited, on March 9, 2011, an instrument of acceptance of the termination of the London Act of the Hague Agreement Concerning the International Deposit of Industrial Designs of November 6, 1925, as revised at London on June 2, 1934, and of the Additional Act of Monaco of November 18, 1961, to the said Agreement. 

A separate notification will be made on the coming into effect of the termination when the required number of acceptances is reached".

Design infringement in the UK: official guidance

UK internet users who key in the search terms 'design' and 'infringement' into their browsers may find that the first website they encounter, other than those of law firms, is that of the UK government's Business Link.  The page reproduced below and accessible here is one of a series of pages that provide advice and some further links on a selection of design-related issues.

Design right and registration

Defend your design against infringement

Your designs are likely to be an important part of your business' success. You'll probably want to take action against anyone who makes, offers, puts on the market, imports or exports the design, or stocks the product without your permission.

If your design is registered

If you think your design is being infringed, send a carefully worded warning letter to the potential offender. They may be genuinely unaware of the infringement or they might stop when they know they've been found out.

If this doesn't work, you're entitled to sue anyone who infringes your design for damages whether the infringement is intentional or not.

If you suspect infringement and you're only at the stage of applying for design registration, you should contact the Intellectual Property Office Central Enquiry Unit on Tel 08459 500 505 and ask for urgent examination and registration of your design.

If your design isn't registered

Again, it's worth sending a carefully worded warning letter to the person or business you suspect of copying your design.

If this doesn't work, you can still take court action. However, to succeed you will have to prove that you hold design right and that the alleged infringers have actually copied your design - as opposed to having merely produced an article that looks the same as your work. This can prove difficult and expensive.

Seek advice

Design law is a complicated area and it's advisable to seek help from a legal expert if you think someone is infringing your design. Trade mark attorneys and patent attorneys specialise in this area. Find a patent attorney on the Chartered Institute of Patent Attorneys (CIPA) website- Opens in a new window. You can also search for a trade mark attorney on the Institute of Trade Mark Attorneys (ITMA) website- Opens in a new window.

There are alternatives to legal proceedings. It may be possible to avoid a court hearing by entering negotiations with the infringer or using an alternative method of dispute resolution such as mediation. You may even come to an arrangement to license the infringer to use your design, in return for payment of a fee.

The Intellectual Property Office mediation service specifically mediates between businesses and individuals involved in intellectual property disputes. Find out about the mediation service on the Intellectual Property Office website- Opens in a new window.

It will probably please patent and trade mark attorneys greatly that they are mentioned, while the words 'solicitor' and 'lawyer' are not.  But that's not a problem unless you are a solicitor, or unless you aren't a solicitor and assume that they can't help you (which, in the case of non-IP specialists, is generally true).

A bigger problem is that which relates to the carefully worded warning letter: the advice here doesn't make it clear what the sender of the letter has to be careful about.  A designer who thinks his rights are being infringed might reasonably assume that he has to be careful to make his warning as specific as possible as to what he'll do if the alleged infringement doesn't stop there and then -- but the real danger is that of making groundless threats to bring infringement proceedings in respect of UK registered and unregistered designs (Registered Designs Act 1949, s.26; Copyright, Designs and Patents Act 1988, s. 253).

The Intellectual Property Office's advice under 'design' and 'infringement' comes out here,

Design infringement

By registering a design the proprietor obtains the exclusive right for 25 years (provided renewal fees are paid every 5 years) to make, offer, put on the market, import or export the design, or stock the product for the above purposes.

These rights are infringed by a third party who does any of the above with the design, for commercial gain.

How to avoid infringing

Design applicants have to provide a copy of their design. You can ask us to check if your design would infringe an existing design. If it would infringe, you may be able to agree terms with the owner, or even buy the design from them. If you find you are infringing get professional advice quickly from a patent attorney, trade mark agent or a solicitor, because the owner can sue you.

What if someone sues you for infringing?

There are two basic types of defence if someone claims you are infringing their design:

• You are not infringing - what you are doing does not infringe their design, or
• The design is invalid - you can take legal action to challenge the validity of the design. If you win, their design may be cancelled (revoked). The loser usually has to pay the legal costs of both sides, so think hard before starting legal action.

If someone intends to sue you for infringement, you can try to reach agreement with them on using their design.

I think someone else maybe infringing, what should I do?

Get professional advice. You may be able to get a court order to force the infringer to cease trading. You should then consider whether to negotiate or to take legal action for compensation. However, infringement actions must be taken to the High Court, we do not handle such actions.

This page at least has the virtue of mentioning solicitors, though it somewhat dismissively describes trade mark attorneys as 'trade mark agents. It doesn't mention threats though.

Business Wales's design infringement page (here) mentions solicitors, but says nothing about letters or the dangers of making unwarranted threats.  The Scots don't seem to have any official government advice, while that for Northern Ireland (here) looks quite like the Welsh, but is developed in conjunction with the IPO.

Does anyone think it might be a good idea to have a British public sector IP co-ordinator, so that a higher level of more useful and helpful advice can be provided which, since design law is the same throughout the UK, is at least consistent?

Montenegro designs law: a little novelty

Earlier this year, Class 99 posted a short news item from Petosevic on Montenegro's new Law on the Protection of Industrial Designs. Since then, the Montenegrin Intellectual Property Office (IPO) has provided further particulars. In particular,

* The industrial design registration procedure has been simplified to achieve compliance with the relevant EU regulations. Only the formal requirements will be examined; novelty and individual character are no longer examined. The previous practice of substantive examination has been abolished, which simplifies the procedure of recognition and registration of a design. 

* The law now enables the applicant or a third party who fails to perform a required action within the prescribed timeframe to apply for the continuation of the proceedings and thereby remove all legal consequences of a missed action during the proceedings. 

* International registration is done in accordance with the Hague Agreement. The novelty is that the application for an international registration of a design is filed directly before the World Intellectual Property Organization (WIPO). The fees for international registration of design are also paid directly to WIPO.

Thanks, Petosevic, for keeping us informed.

UK government review of IP gets ACID response from design community

ACID -- Anti Copying in Design -- was swift to issue a media release following the close of the period for the submission of evidence to the Hargreaves Review of Intellectual Property and Growth. The release runs as follows:

ACID RESPONDS TO GOVERNMENT’S REVIEW OF UK INTELLECTUAL PROPERTY (IP)

Anti Copying in Design’s recent IP poll indicates that 89.7% of designers believe IP infringement to be deliberate and blatant.

Supporting ACID’s submission to the IP Review, ACID Ambassador Sebastian Conran said, “Design is an unsung hero in the UK economy. Original design leverages value, but this takes investment and it needs to be protected”. An independent review into intellectual property (IP) and growth commissioned by the Prime Minister issued a call for evidence in October 2010 on how the IP system can best support growth. Professor Ian Hargreaves, leading the review, said, “We must ensure the UK has an IP system that drives innovation and growth. This review will identify the barriers to growth and, where they exist, work out how to remove them. The review will set out short-term improvements that could be made as well as a long-term vision for the IP system”.

ACID has welcomed the opportunity to respond to the UK Review into Intellectual Property and Growth to raise awareness about, in particular, the difficulties which affect the UK’s designers in accessing hands-on, practical, sector-led IP advice and information to help them maximise, protect and commercialise their IP. There is also the serious issue of the uncertainty experienced by micro firms and SMEs in effectively enforcing IP infringement.

In its comprehensive submission, ACID has used 8 case studies (out of 450+) to highlight the various IP issues affecting micro firms and SMEs within the creative industries [nb Hargreaves called for evidence-based submissions: case studies have the virtue of being evidence]. Another area on which ACID has concentrated is the disparity for IP rights owners. Unlike copyright infringement, if a design is stolen no criminal offence has been committed; the designer’s only recourse is under civil action. This gives rise to anomalies and inequality of treatment which are very damaging to hundreds of small businesses and designers across the UK.

Dids Macdonald, ACID’s CEO said, “I believe if design infringement becomes a criminal offence it may change and influence current board strategy in some major high street retailers to think again about condoning product piracy and using the veil of “inspiration” of the innovative products of others to create their own versions for tomorrow’s retail shelves”.

The Intellectual Property Review will report back to the Prime Minister in April 2011.

I might be wrong, but I have a hunch that the report will not have a great deal to say about design rights, registered or unregistered, national or Community, or criminally or civilly infringed.  The Review is looking at the UK's IP infrastructure, and there is little indication that the government has ever regarded design rights as an infrastructure issue.  Rather, they seem to be shunted off into a corner with other little, marginal rights such as plant varieties rights and geographical indications -- all very good, but hardly likely to be the framework on which economic recovery is based.  There's a sort of vicious circle effect at work here: for as long as designs are inadequately protected, they won't be able to demonstrate their power in supporting growth and innovation -- but it's only by demonstrating their fundamental importance that they can claim entitlement to adequate protection.

Registered Community Designs: latest MARQUES review of invalidity decisions

The Fourth Edition of the MARQUES Review of Invalidity Decisions involving Registered Community Designs (RCDs) was launched by David Stone (Chair, MARQUES Designs Team) last week.

First published in January 2007, this popular and increasingly useful piece of research has gone from strength to strength. Since the Third Edition, the Invalidity Division of the Office for Harmonization in the Internal Market has issued a further 149 decisions on the invalidity of RCDs, bringing the total number of decisions as at 1 January 2011 to 549. OHIM has also now published 152 decisions of the Third Board of Appeal on RCD-related issues including appeals from invalidity decisions.

There's more to come: the General Court has handed down four decisions on Council Regulation 6/2002. These assist greatly in the interpretation of the Regulation, particularly as they are binding on OHIM and EU Member States. Alas, substantive interpretation of the Regulation by the Court of Justice of the European Union is still awaited.  Meanwhile, decisions of national courts (including sitting as Community Design Courts) continue to show a wide degree of inconsistency.

This review is currently available to MARQUES members only.  Anyone wishing to know more about it, and about the activities of the MARQUES Design Team, should contact David Stone here.

CEGASA: the mystery is explained

Katarzyna Gibas (Salvador Ferrandis & Asociados, Madrid) has kindly contacted Class 99 with some further information about Case C-488/10 Celaya Emparanza y Galdos Internacional S.A. v Proyectos Integrales de Balizamientos S.L. which was mentioned on Class 99 on 30 December last.  Katarzyna's firm acts for the plaintiff in the design infringement litigation which has been referred for a preliminary ruling to the Court of Justice. Says Katarzyna:

Our client – CEGASA is the owner of a Community Design no. 000421649-0001, registered in 2005, for road signs. In 2007 Cegasa discovered that PROIN had started commercializing road signs that, in CEGASA´s opinion, did not produce a different overall impression with respect to CEGASA´s road signs. A cease&desist letter was sent, but no initial settlement was forthcoming and eventually PROIN registered its own road sign as a design at OHIM.

In the light of the above, and with the aim to stop the commercializaing the infringing product as soon as possible, our client brought an infringement action before the Community Design Court in Alicante. The other party´s defence was based on the lack of CEGASA´s legal standing to bring an infringement action. It argued that its design was protected by registration for as long as it is not first declared invalid by the OHIM, and that such registration gives it  a right to use its design, according to Art. 19.1 of the Community Design Regulation. It also brought a counter-claim asking for our client's design to be declared invalid.

In essence, we believe that the PROIN design is a defensive design which has been registered to impede the infringement action and to take advantage of the time needed for the declaration of invalidity in order to make a profit from it. Moreover, our opinion is that, since there is the infringement of a prior right, it is irrelevant that the infringer has a registered design if it was registered later than our client´s right. This case also shows that one can make an abusive use of the design registration system where there is no substantial examination whatsoever.

The exclusive right of the rightholder conferred on him by virtue of Art. 19.1 of the Regulation has  both positive and negative aspect (ius prohibendi). Therefore the righholder has the right to prevent any third party not having his consent from using it, regardless of whether that subsequent design is registered.  This disposition does not distinguish between whether it is a third party with or without a registered design. Further, Art. 10 determines expressly that the scope of protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression. Again, no distinction is made between a registered and non-registered design.

To sum up, the resolution of the preliminary ruling will permit the Community Court to decide whether CEGASA can bring an infringement action against PROIN without having to request the declaration of invalidity earlier".

Class 99 thanks Katarzyna for her useful information. We all look forward to the ruling.