New Zealand's Designs Amendment Regs now promulgated

Further to our earlier post, "New Zealand, new zeal from Ministry in seeking feedback" (here), we have received some further information from Mike Hawkins (Baldwins) which readers should note. He informs us as follows:

The Designs Amendment Regulations 2011 have in fact been promulgated . In their final form the most important changes can be summarised as follows: 

(i) an abandoned design application or lapsed design registration may now be restorable provided that applications for restoration are made within 3 months of abandonment or within 12 months of lapsing respectively. Any 3rd party opposition to such restoration is required within 2 months of the application being advertised in the Official Journal; 

(ii) a 3rd party which made use of the design while the application was abandoned or the registration was lapsed , or made definite steps to do so,has continuing ( but no more extensive) rights to use the design post-restoration .Those ongoing rights, unfortunately in my view ,are more extensive in respect of 3-D design registrations than the same 3rd party will have in respect of any related copyright works, such as drawings or prototypes ,under the Copyright Act 1994, where the right to use the copyright works is extinguished on restoration of the registration. This means that the 3rd party may be protected under the Designs Act for continuing use of of a restored design but not under the Copyright Act; 

(iii) an applicant may now request that issuance of the Certificate of Registration is delayed by up to 15 months from the application date; 

(iv) the Commissioner of Designs is now empowered to publish the basic details of pending design applications , including their date, number and those details appearing on the application form; 

(v) electronic communication between the applicant and the Commissioner of Designs is now permitted."

Punitive damages: you can't have them because you've already got them ...perhaps

Punitive damages: worth their
weight in gold to designers?

Readers may recall last year's initiative by Dids Macdonald of ACID (Anti Copying In Design) to petition the UK government to provide for stiffer damages awards as a deterrent against design infringements. The text of the petition ran thus:

"We the undersigned petition the Prime Minister to Make changes to the copyright and unregistered design right infringement damages regime to create greater deterrent against IP theft.".

The government has now published its response.

"The previous administration consulted on the issue of intellectual property and decided it was opposed in principle to any extension of the availability of exemplary damages in civil proceedings beyond the limited instances in which they are currently available under the common law.

It remains the view of this Government that it would not be appropriate to extend the availability of exemplary damages in statute whether in relation to intellectual property infringements or in relation to any other situation.

This is because the central purpose of a civil law award of damages is to compensate the claimant for the damage, loss or injury he or she has suffered as a result of another’s acts or omissions, and to put the claimant in the same position as he or she would have been but for the injury, loss or damage, so far as this is possible and not to punish the defendant. The function of exemplary damages is more appropriate to the criminal law, and their availability in civil proceedings blurs the distinctions between the civil and criminal law. The broader availability of exemplary damages could also fuel damages inflation and encourage the compensation culture.

In addition, we believe that the current system of damages offers effective, proportionate and dissuasive civil remedies, as required by EU Directive 2004/48/EC on the enforcement of intellectual property rights, which has been implemented by the Intellectual Property (Enforcement etc) Regulations 2006. Under the terms of the Directive, damages for IP infringement extend to a range of different forms of redress, including damages for the negative economic consequences (including lost profits) suffered by the claimant, together with elements other than economic factors. In addition, the Copyright, Design and Patents Act 1988 allows an award of “additional damages” which the courts have interpreted as extending to aggravated damages to reflect injury to feelings and restitutionary damages to strip away gains arising from the infringement".

This blogger looks forward to seeing evidence that the courts in the UK are awarding damages on a more imaginative and flexible basis than 'compensation-only', so that we can clearly see what is meant by "damages for the negative economic consequences (including lost profits) suffered by the claimant, together with elements other than economic factors". This may take a couple of provocative references to the Court of Justice of the European Union for preliminary rulings.

Harvesting designs

This month's Alicante News reports a decision of the Invalidity Division relating to a combined harvester (shown left). The registration (1603382-0001) was declared invalid (ICD 7081) because "every essential feature of the design has been chosen with a view to achieving the best possible technical performance. Those features were therefore solely dictated by the product's technical function (Article 8(1) CDR)".

This decision follows a trend at OHIM on this point - the Board of Appeal this time last year issued a lengthy decision (R211/2008-3) discussing this point, and the purpose of the provision. For those fans of old-old UK design law, this discussion includes mention of Amp v Utilux.

In this author's view this is a worrying direction for OHIM to take - how can advisors consider what was in the mind of the designer? what are the essential features of the design? are these all chosen for technical performance?

New Zealand, new zeal from Ministry in seeking feedback

Next Tuesday, 19 April, is a big day for designs in New Zealand -- it's the day the country's Designs Amendment Act 2010 comes into force (as noted this time last year by the ever-observant Class 99 team). What's it all about? In brief:

* Responses are invited.  The Ministry for Economic Development has to draft new regulations to go along with the new Act. Accordingly it is asking for comments on its proposals. 

* Restoration of lapsed registrations.  Applications for restoration must show that the lapse was unintentional. The commissioner may extend the (proposed six-month) period within which restoration may be sought, so long as the applicant demonstrates that he has applied for it without undue delay -- and pays an extra fee.  

* Protection of third parties. It is proposed that innocent third parties using a design after registration has lapsed will be able to carry on doing so even after registration is restored, as in Australia and the UK, but with the difference that the third party would not be entitled to increase its manufacturing output post-restoration. 

* Postponing registration. It is intended to run a formal system for postponing registration of a design after filing of an application, so the applicant can keep the content of his application confidential so that competitors won't know what he's up to. 

Source: "Draft amendments to designs regime" by Michael Brown (A. J. Park), International Law Office, 11 April 2011 (which has more detail, particularly concerning postponement).

Baena case: gnomic utterance awaited

On the right, a Community trade mark; on the left,
an apparently valid later registered Community design

"Take that expression off your face - if you want to keep your design" wrote Class 99 team captain David Musker (here), when relating the lamentable tale of the General Court's ruling in Case T-513/09 José Manuel Baena Grupo, S.A. v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and Herbert Neuman and Andoni Galdeano del Sel. David wrote then:

"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?".

Since most dear readers did not take the trouble to think or -- if they did -- they didn't take the trouble to tell Class 99, the unsuccessful party has had to take the step of appealing to the Court of Justice of the European Union, whose gnomic utterance we eagerly await.

********************************************************************

Stop press: I've just noticed that there are two separate appeals in this case. In Case C-101/11 P the appellants are Herbert Neuman and Andoni Galdeano del Sel while in Case C-102/11 P the appellant is OHIM itself.

More justice, more speed, if you're small and Australian

A recent IP news bulletin from Australian law firm Allens Arthur Robinson discusses the genesis and current content of the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 -- which even has something to say about designs. According to AAR,

"The Bill provides that the Federal Magistrates Court will have jurisdiction to deal with matters under the DA [that's the Designs Act 2003 (Cth)]. This proposed amendment implements the Advisory Council on Intellectual Property (ACIP) recommendation to provide parties greater access to justice. The EM [Explanatory Memorandum] indicates that small business may benefit from being able to prosecute their designs matters in a speedy, cost-effective and less formal tribunal".

Where in the world?

Today is Design Day in the United States. The USPTO websitr carries this feature on "Design Day 2011: The World of Designs - Design Practice and the International Marketplace", a one-day conference which is open to all and for which there is no fee.

Class 99 mournfully notes the uses of the words "World" and "International" as apparent synonyms for "American".  There are no non-American speakers listed; nor are there any truly international topics on the programme. The closest the programme gets is "The Role of the Office of Policy and External Affairs in International Industrial Design Management and Hague Legislative Update".

This member of the Class 99 team looks forward to comparing notes with US colleagues on some of the problems they share in their respective jurisdictions, and to discussing all those fun topics like fashion protection -- is Europe over-protecting or the US under-protecting -- for example. Meanwhile, can we reclaim the original meaning of the word "international"?

P&G top the Hague applicants' list for 2010

P&G: good design can turn
ordinary household items into
objects of desire

Only a little while after posting positive news about the surge of international trade mark applications under the Madrid System, WIPO is trumpeting a similar surge in international design registrations too. According to this morning's media release,

"International design activity saw strong growth in 2010 with WIPO receiving 2,382 applications under the 57-member Hague Agreement Concerning the International Registration of Industrial Designs, or a 32.6% increase over the previous year. The number of registered designs that were filed by applicants from the following countries increased significantly in 2010 compared to 2009: Germany (+31%), Switzerland (+42%), Turkey (+108%), Austria (+48%), Spain (541%), and Luxembourg (+271%). Similarly, international design registrations grew by 31.8% with a total 2,216 registrations in 2010".

Who were the biggest users of the system last year? Procter & Gamble (USA) with 127 design applications. Other big filers were Koninklijke Philips Electronics N.V. (The Netherlands), Vestel Beyaz Esya (Turkey), Volkswagen Aktiengesellschaft (Germany), Gillette Company (USA), Daimler AG (Germany), Pi-Design AG (Switzerland), Swatch AG (Switzerland), Braun GmbH (Germany) and Société des Produits Nestlé (Switzerland).

There's plenty more data for stats freaks here.

Bulgaria moves towards EU norms

A new system for registration of designs in Bulgaria, based on the Community design system, came into force on 12 February 2011. Where registration of a design is sought, it will be checked out for verification that it satisfies the formal requirements for registration and meets the criteria laid down in Articles 3 and 11(2)(1) of the Law, i.e. that the design in question is a "design" under the law and that it is not contrary to public order or morality. 


If the design application meets the above conditions, the Bulgarian Patent Office will issue a decision on registration and the design will be publish in the Official Gazette. 


The Patent Office will no longer examine the presence of earlier designs or other intellectual property rights. However, anyone who considers that the registered design affects his earlier rights can initiate proceedings for invalidation of the later-registered design. 

Source: Ventsi Stoilov (Sofia, Bulgaria, Intellectual Property Planet) 

OHIM expert to help Kosovo

"OHIM to assist on design guidelines in Kosovo" is the hot news from sunny Alicante, seat of the Office for Harmonisation in the Internal Market.  According to Europe's favourite IP office,

"An OHIM expert will be helping the Kosovo IP Office to draft new guidelines for the examination and registration of industrial designs. [Great -- but do we get a say in which OHIM expert gets sent there?]

The assistance, during March and April this year, forms part of an EU-funded project managed by the European Patent Office and follows a similar collaboration with the Turkish Patent Institute".

For the record, the Kosovo IP Office was established in 2007 and since then has received over 20,000 applications for trade marks, patents and industrial designs.

Useful source for WIPO design news

If you are a paying subscriber of the Geneva-based Intellectual Property Watch service, you will know that it published a feature on Wednesday entitled WIPO Discusses Industrial Design Treaty, Trademark Protection On Internet", by Catherine Saez. Non-subscribers (of whom I sadly am one) can access this article but can't get beyond the first paragraph which reads

"World Intellectual Property Organization members congregated this week to advance work on a potential treaty on industrial designs, and to look into trademark protection against infringement on the internet, including through social media. But they ended early after nominal progress in these promising new areas for the United Nations agency".

Registration details are here. Subscription details -- which take a little working out -- are here.

As of two minutes prior to the date and time of posting of this item, no other news services appears to have picked up anything this story.