Tunisia: out of London, but where to go next?

Class 99 learns from Hague Notification No. 110 that the Government of the Republic of Tunisia deposited, on 10 June 2011, an instrument of acceptance of the termination of the effectively extinct London Act of the Hague Agreement Concerning the International Deposit of Industrial Designs.  According to WIPO, a separate notification will be made on the coming into effect of the termination when the required number of acceptances is reached.

Tunisia has been party to the London Act since 1942 but has not yet signed up to the Geneva Act, which has been in force since December 2003.

Anticounterfeiting viral guerrillas: this could be for you

In October 2009 Class 99 first spotted OHIM's Hands Off My Design site. Now, via a Tweet from this blogger's friend, the admirable Frédéric Glaize, comes news of the Hands Off My Design competition, with prizes of 8,000, 2,500 and 1,500 euro respectively. According to the competition rules,

"The http://www.handsoffmydesign.com/ design competition invites submissions of posters and videos (that can be used as guerrilla/viral marketing tools) aimed at illustrating the dangers and negative effects of counterfeits and illegal copies.

The entries should consist of two items: one video and one poster. The poster should relate to the key message of the video submitted and should also include a clear link to http://www.handsoffmydesign.com/

Any text or audio in the video and the poster should be in English [presumably this is the international language of IP crime ...].

The works will be evaluated on how well they fit the purpose of being used as a guerrilla/viral
marketing tool and their effectiveness in showing the dangers and negative effects of counterfeits and illegal copies".

What about the IP, I hear you ask. Well:

"14. The intellectual property within the entries shall remain vested in their authors; the winners shall grant an unrestricted licence to OHIM and the European Observatory on Counterfeiting and Piracy (by signing the separate due authorisation for this purpose, which should be sent in together with the registration form), so that the material can be used and applied in such media as OHIM and the Observatory decide appropriate and relevant".

There we are! We knew that the Observatory would have some useful function ...

The closing date for submissions is 15 October 2011.  good luck!

UK government admits to including design in its plans for innovation and growth

Designed for growth --
but is UK innovation policy
designed for protection?

At the Design for Growth Summit held last week at the Design Council, UK Government Universities and Science Minister David Willetts spoke alongside Jonathan Ive and other design luminaries and said the following words:

“Design forms an integral part of the Government’s plans for innovation and growth [Does anyone know what this "integral part" is? The recent Hargreaves Review said at p.66 that, in plain English, (i) we don't understand design, (ii) we can see that it's woefully under-protected and (iii) let's have another review, to see what if any is the relationship between design and innovation, with a view to establishing policy .... zzzzzzzzz] and it will be a prominent feature in our upcoming Research and Innovation strategy. ....”

For ACID, Dids Macdonald noted that this was the first time she had heard design and intellectual property mentioned by a Government Minister as a significant objective within the design sector, adding that consideration should be given to ascertaining whether there is support for the creation of a UK Intellectual Property Tsar to match a similar initiative in the USA. Anyone who attended the talk given by the US "Tsar", Victoria Espinel, at the Fordham University International IP Conference at the end of April (noted here) would need no further persuasion.

Change of products in design specs: OHIM proclaims!

No, it's not what you might think it is,
it's part of a pacifier

OHIM's Alicante News is always a good source of useful snippets of news concerning designs in the European Union, and the latest issue is no exception.  Here, in "Changes of products in design applications", OHIM offers good news for anyone suffering from a slip of the pen or a serious attack of product-blindness:

"It is established practice at OHIM that an examiner may change the indication of products in an application for a registered Community design (RCD) without consulting the applicant beforehand. This practice is laid down in the Design Examination Guidelines where it reads in chapter 6.1:

“The examiner will in straightforward cases substitute ex officio the wording used by the applicant in order to indicate a product with an equivalent term belonging to the Locarno Classification. Straightforward examples are synonyms American/English such as jewelry – jewellery, trunk – boot, sidewalk - pavement, nightshifts – nightshirts, garbage – rubbish etc. However, the examiner will [or jolly well should] refrain from replacing the applicant’s wording with a more specific term.”

The power to change the indication of products after the date of filing of the RCD rests solely with OHIM’s examiners. Applicants are not allowed to make those changes after submission of their applications without an invitation from an examiner.

However, in a recent decision OHIM accepted such a change by an applicant despite the fact that the examiner did not find any deficiency and hence registered the RCD as originally filed.

The application concerned RCD 1612722 registered and published for the products “teats for feeding bottles” [Or possibly for feeding people or animals?] as indicated in the application.

Just days after registration the applicant requested a replacement of the products by the term “pacifiers for babies (part of-)” [for the sake of clarity, Class 99 explains that this means 'part of the pacifier', not 'part of the baby'] arguing that the wrong products had been indicated originally due to an obvious mistake. The applicant; explained that according to the reproduction of the design in the RCD the product was obviously not a teat for a feeding bottle but a pacifier since it could not be fixed to a bottle and it did not have a slit for drinking.

OHIM’s Register Service rejected the request and the applicant appealed. The appeal did not proceed to judgment but was dealt with by interlocutory revision and the appeal fee was refunded because the Designs Service found that the original indication of products was an obvious mistake and hence a correction should have been allowed".

Rwanda opts for Hague

Making up for lost time after its years of tragedy, the small but ambitious East African state of Rwanda is to join Hague.  By Hague Notification No. 109 WIPO informs Class 99 that the Government of the Republic of Rwanda deposited, on May 31, 2011, of its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.  The Geneva Act will enter into force, in respect of the Republic of Rwanda, on August 31, 2011.

Punch lands home on watch designs

In T-68/10 Sphere Time v OHMI - Punch (Watch attached to a lanyard), the European General Court has rejected Sphere Time's appeal against the invalidation action of its design RCD 325949-0002 by Punch SAS. The design was of a watch on a lanyard, and it was held invalid at all three instances (the first instance decision is here, and the Appeal Board decision is here).
The first issue dealt with by the Court was the burden of proof where the one year grace period might apply. According to the Court (para 26), in the context of invalidity proceedings, the owner of the design that is the subject of the application for invalidity must establish that it is either the creator of the design upon which that application is based or the successor in title to that creator." That is, reassuringly, in line with OHIM, German and UK case law to date.
The second was  an evidence point: the prior art relied upon included invoices and a statement from a Chinese competitor, who was therefore said to have an interest in invalidating the design. The Court held (paras 34-40) that "While that fact may cast a doubt on the credibility of the statement of the manager of Great Sun Technology, also provided to OHIM, the same conclusion cannot be applicable to the shipping invoice." The latter was produced contemporaneously, not for the case, and addressed to a third party.  Its probative value was therefore unaffected. Neither was the fact that it was a copy relevant here.
The third issue was one of some practical importance.  The design included dotted line portions. The Board relied on the OHIM practice of using these to represent parts of a product which do not form part of the protected design, although, curiously, it said the practice was "not referred to in the Examination Guidelines". The Court noted that it is indeed referred to in the Examination Guidelines at para 11.4, and gave its sanction to the practice, ignoring the dotted line parts.  This helpfully clarifies the representation and status of "partial designs".  The dotted lines were not really visible in the small pictures shown online and in the Certificate of Registration, but the large views held in OHIM's database and accessible there (link above) show them clearly.

Finally, the Court dealt with the fact that the picture relied on as prior art (shown left) did not include the whole loop of the lanyard.  The Court held that its presence could be inferred from the use of the product, and the fact that the accompanying documents referred to a watch with lanyard.  That is an interesting approach to disclosure, building on the Court's earlier decision in Case T 153/08 Shenzhen Taiden v OHIM – Bosch Security Systems (Communications equipment) [2010] ECR II-0000 paragraph 66 - it is the disclosure of the earlier design that is relevant, not merely the picture of that design.
All in all, the Court seems to have had little difficulty in reaching the correct legal conclusions on the fairly straightforward facts of this case.

Ocular Sciences: a new aspect

Ocular Sciences Ltd and others v Aspect Vision Care Ltd and others, a 1996 decision of the late Mr Justice Laddie in the Patents Court, England and Wales, is one of the classics of British IP jurisprudence, being an action in which the plaintiffs alleged breach of confidence, procuring a breach of confidence, breach of contract, breach of fiduciary duty, infringement of copyright, infringement of design right and conspiracy.

A bit like Tolstoy's War and Peace, this decision was known by many but read by few. This was for two reasons. First, it was (and still is -- like War and Peace) of inordinate length. Secondly, it was not easily and conveniently accessible on the internet via BAILII.

Alas, this mammoth ruling remains as long as it was before -- but the second issue has at last been resolved. Some 15 years after it was decided, this decision is among a batch of rulings which were belatedly uploaded on to BAILII last Friday. You can access it as [1996] EWHC Patents 1.

Access plus inspiration need not mean copying

"It's a Wrap! Albert Packaging v Nampak [2011] EWPCC 15" is the title of Matt Fisher's excellent note on the case of that name, in which Judge Colin Birss QC of the Patents County Court, England and Wales, needed a two-day trial and 110 paragraphs of judgment to get to the result -- a ruling that the defendant's sandwich carton did not infringe UK unregistered design right in the claimant's sandwich cartons, despite their substantial similarity.

Why the great length? This was largely the fault of the evidence, which required careful attention: the defendant had access to the allegedly infringed design and was clearly influenced by it.  However, the ingredients of close similarity, access and influence do not of themselves equate to a finding of infringement -- as was the case here where the provenance of the defendant's design can be sufficiently demonstrated. In such a case there is not infringement under the Copyright, Designs and Patents Act 1988, s.226, which requires "copying the design so as to produce articles exactly or substantially to that design".

Tread warily - don't trip on timing traps

We are as always grateful to Rob Katz for notice of his helpful article "Timing Traps in European Design Laws", which points out the dangers of missing the various EU grace and priority periods - well worth a read. 
On the subject of traps, in the interests of transatlantic balance we ought to point out an almost unknown, but quite dangerous, pitfall for those who miss out on the six month priority term.
You may have it in your head that the US has a twelve month grace period.  And so it does, in effect, for prior publications.  For utility patents (or, as we call them in Europe, patents), the same twelve month term applies both to the grace periods under 35 USC 102 (b) and (d) and the priority term - nice and simple.  But for design patents, a period of six months is substituted for the priority term by 35 USC 172.  You knew that, of course.  What is often missed is that 35 USC 172 also substitutes the six month term into 35 USC 102 (d). 
An example will illustrate the effect of that.  You file a Community Design (with no priority claim) on 1st January.  OHIM, as is their wont, register and publish it within a couple of days, say on 10th January.  You miss the six month priority term to file foreign applications, which expires on 1st July.  However, on 5th July, you recall that the US has a grace period.  You are inside a year from publication - indeed, you are within six months - so you think you are safe, and you file in the US on 5th July. 
But you were too late.   35 USC 102 (d) bites because "the invention was first patented..., by the applicant ... in a foreign country prior to the date of the application for patent in this country on an application ... filed more than [twelve] six months before the filing of the application in the United States".  And in this context, "patented" includes being registered as a design: MPEP 1504.02. 
Moral: Designs are nowadays registered so quickly that if you are first-filing outside the US, NEVER miss out on the six month grace period, or you may lose the US.

The Brand and Design Battleground

Anything to do with brands
is a battle these days ...

"The Brand and Design Battleground: Securing and Protecting Rights in Trade Marks and Designs" is the title of a forthcoming conference, to be held in Central London on 4 July 2011. Class 99 team members are in evidence: Jeremy Phillips is in the chair and David Stone is speaking on the topic "Selecting the Right Strategy for Brand and Design Protection: A Commercial Overview".

You can check out the full programme here.