UK design filings: time for action?

An exhausted postman, trekking
through the snow on the way to
the IPO' in Newport, prepares to
lighten his load by jettisoning
some heavy design applications ...

A reader, writing to another weblog with which this author is associated, asks:

"I was wondering ... why we can't file an application to register a design online with the UK Intellectual Property Office (IPO)? It seems strange, particularly since it has provided a service to file trade marks online. I understand that the IPO has separate departments, and there may perhaps be issues with uploading large files to its website. However, recently a posted application was lost in the mail, which was of particular concern because the applicant requested deferred publication. When we realised what happened, we were able to file a copy of the application by forwarding a PDF of it via email. But why couldn't we just file the application online, or simply file the application via email in the first place? It seems very old-fashioned that we have to apply to register a design via post, particularly one where there is no difficulty representing the design on paper".

This has prompted me to organise a little opinion poll among readers of Class 99 to discover whether they too have strong feelings about this subject.  You can find this poll at the top of the side bar at the right of the Class 99 home page. Do let us know what you think!

No design right infringement by Samsung in The Netherlands

In the interim relief proceedings initiated by Apple against Samsung in the Netherlands, the President of the District Court in The Hague needed 65 pages to rule that Samsung did not (for the time being) infringe the Community design rights and copyrights of Apple with the introduction of its new tablet, and certain Galaxy smart phones.

Apple pleaded that Samsung would infringe various of its IP rights for its iPhone and iPad, including several European patents, Community designs and copyrights. Although the design right and copyright claims were rejected, the President found that the Samsung smart phones Galaxy S, SII and Ace infringe upon Apple’s EP 2.059.868 patent and ordered a European-wide injunction against Samsung, effective as from 7 weeks following service of the judgment.

Contrary to Apple’s argumentation, the President holds that only the appearance of the features of a design as included in the registration may be taken into account when assessing an infringement. Apple referred to par. 83 of the opinion of AG Mengozzi in the Pepsico Pogs case, were he stated that ‘it is entirely proper […] to take account of the actual goods characterised by a specific design.’ The President ruled that this approach is in conflict with the registration system and the principle of protection of legal interests of third parties.

Furthermore, according to the President it would raise important ‘legal uncertainty creating’ questions which are not apparent from Regulation 6/2002. Examples of such questions are: What criterion must be applied to assess whether or not a design is embodied in a product available on the market? And at what moment? How would you deal with this if there were various comparable (but relatively different) products on the market? And so on.

According to the President of the Distict Court it is not without reason that Article 19(1) of Regulation 6/2002 gives the holder of the registered design an exclusive right for a period longer than three years. The concrete embodiment of the design however does of course play a role with regard to unregistered designs (but this was not part of the discussions).

A clear case of coffeeright infringement?

Bodum have succeeded in enforcing their trade dress rights in their classic Chambord cafetiere on appeal in Australia (Bodum v DKSH Australia Pty Limited [2011] FCAFC 98).
This marks the high point in what has been, to date, a chequered path. "French press" type coffee makers date back at least to 1928 (see GB 308993 for example), but in recent decades, Bodum and associated companies Pi-Design and Etabs Martin SA have led the field, in constant competition with competitors such as Household Articles (familiar to UK readers as a result of Bodum's unsuccessful attack on their UK design in Bodum (UK) Limited v. Household Articles Limited [1998] EWHC Patents 344).
The Chambord was protected by designs - US Design patent D386,040, GB 2010926 and AU 123181 for example - filed in the mid-1990s (though not, perhaps, that dissimilar to their own earlier designs such as US D342,414 and GB 2053735. As an aside, the Australian registration was as a 'set', with matching mug, the validity of which was approved in a parallel New Zealand case, Pi-Designs  AG v The Commissioner of Designs [1997] NZIPODES 2).
However, all good things come to an end, and the designs have in some countries reached the ends of their natural lives (a little earlier than usual in the US, where a terminal disclaimer existed). Bodum attempted to enforce their Australian design against Houseware International (Bodum v Housewares International Limited [2007] FCA 44), but climbed down and surrendered the design when its validity was challenged on the basis of prior use.
Pi-Design attempted to register the design as a Community Trade Mark but were refused in Appeal Decision R 452/2001-2 (they seem also to have appealed on to the CFI but dropped that before trial). OHIM conceded that their evidence established distinctiveness in Denmark, their home territory, but were unimpressed by the UK evidence, and nothing else was tendered. The shape marks are registered marks in France (like anything else, of course), but were refused in several other territories including, funnily enough, Denmark. Hence, you may think, all the trade dress action.
Bodum started a bunch of trade dress cases in 2007 in Illinois, of which the Starbucks action (settled in January 2008) got the highest profile.
Their unsuccessful action against La Cafetiere (a company related to Household) was reported as Bodum USA, Inc. v. La Cafetière, Inc 621 F.3d 624 (2010), but although it contains plenty of interesting background, it appears to have been primarily a contract issue.
That takes us to the recent Australian cases claiming passing off and breach of ss 52 and 53 of the Trade Practices Act 1974. There, Bodum were refused at first instance (Playcorp Group of Companies Pty Ltd v Peter Bodum A/S [2010] FCA 23) for reasons fairly clearly set out at para 82:
"I should state from the outset that while I am of the view that the Bodum brand itself has a significant reputation in the homewares/ housewares market, I do not consider that Bodum has the secondary meaning or reputation in the Bodum Chambord Coffee Plunger or in the Bodum Assam Teapot features it identifies. I consider that Bodum’s reputation is distinctly tied to its products being properly labelled and sold in conjunction with reinforcing packaging and, significantly, by reference to the Bodum name. Bodum’s reputation does not exist in the naked Coffee Plunger features or in the naked Teapot features (without its logo in place) alone. If I am wrong about this, and if Bodum does have a secondary reputation in the features alone, then I am not satisfied that the accused products in any of the proceedings in the way they are packaged or exposed to potential customers in Australia are sufficiently similar to give rise to the misrepresentation alleged by Bodum. In the case of the Venice Coffee Plunger I do not even consider the product alone (even if not associated with its packaging) is sufficiently similar to give rise to the misrepresentation alleged by Bodum."

What changed on appeal? Whereas the first instance judgment focussed on the presence of Bodum's own mark, the majority on appeal focussed on 'the absence of something about the rival product (having regard to the relevant differentiation factors) which tells them that – “You are not looking at a Bodum Chambord Coffee Plunger here”.'. Thus, 'The real question to be determined in the proceeding is whether DKSH has done enough having regard to all the relevant differentiation factors to distinguish its rival product from the Bodum product.' It had not, in the view of the majority. They also found some evidence that Bodum's product had acquired a secondary meaning, from articles in journals and elsewhere.
This is clearly a case close to the line - essentially a design classic, for which the design system is the natural habitat. Have Bodum now obtained a perpetual monopoly in the shape - or only imposed a duty on competitors to adopt their own branding? Should it be relevant that the product was under design protection in the recent past, or is it reasonable to move seamlessly from design protection to passing off protection provided there is sufficient reputation? If the shape can be protected by passing off, can it now be registered as a trade mark? And will the same results obtain beyond the IP-friendly shores of Australia?

Kosovo - new design law

We reported last year on the new Kosovan design law and, some time back, on the presence of OHIM staff to help with new Guidelines.  We thank Petosevic for pointing out that it was approved by the Kosovo Parliament on July 29, 2011 as Law No. 04/L-028 and promulgated by the President's Decree DL-013-2011 on August 9, 2011. They estimate that it will come into effect in early September 2011.

Apple's design filing bears fruit

Thanks to Class 99 member Jean-Jacques Canonici for news of Apple's pre-emptive strike against Samsung's Galaxy tablet in Germany, just a week after its launch.  This blog posting by Florian Mueller (famous, or infamous, as the man who sunk the EU's software patent Directive and fell out not only with the IP community but also with his former Free Software buddies) appears to show that Community Design RCD 181607-0001 has been asserted and an ex-parte preliminary injunction granted.  More information is here indicating that Samsung had filed a protective writ but to no avail, and that an inter-partes hearing will follow in Dusseldorf on 25th August. 
The Guardian newspaper in the UK suggests that the design was registered with the Customs for pan-EU customs enforcement (which would not require any finding by the court, preliminary or otherwise).
It also appears that Apple obtained a preliminary injunction under parallel designs in Australia, though Samsung say they will release a different product there (hmmm........).
A powerful first strike by Apple, who have been prolific design filers for the iPhone and the iPad.  However, in the long term, will there be validity issues in enforcing a design to a chamfered rectangle?  Enough money is at stake that surrender by either side seems unlikely - hopefully, we can expect some answers from the European Community Design Courts over the next year or so.

After Hargreaves: UK government proposes, ACID responds

It was predictable that one of the first comments on the UK government's proposals for intellectual property reform in light of the Hargreaves Review would come from the energetic, frenetic folk at Anti Copying in Design (ACID):

"Are designers supported? Not if it means UK unregistered design rights protection is reduced from 10 to 3 years!

... Accepting the recommendations made in the independent Hargreaves Review which estimate a potential benefit to the UK economy of up to £7.9 billion, Chancellor George Osborne said, "Our future depends on exploiting knowledge and ideas to their full potential and the Government is committed to build upon this country's great strength in intellectual property, ultimately, success will come down to the creativity of UK people and innovation by businesses, not Government action". This is true. Anti Copying in Design (ACID) welcomes the Government's commitment, "To try to create the best conditions to encourage innovation and growth".

However, according to ACID's CEO Dids Macdonald, "On the one hand Government is saying how important design is to the UK economy (£23 billion invested in 2009) and on the other hand design support could be diluted. I am extremely concerned that the Government wants further research on whether to eliminate national unregistered design rights and bring UK unregistered rights in line with EU. This would mean for 99% of the UK's 232,000 designers who do not register their rights (only 2,111 designs were registered last year), they would have their protection cut from 10 to 3 years. This doesn't seem to make fair sense when comparisons are made with a songwriter or artist who will get copyright protection for their lifetime plus 70 years after their death [Worse still, songwriters and artists are living longer, which extends the duration of their copyright protection. Fixed-term design protection doesn't have this convenient effect]. European designers also benefit from unfair competition law which kicks in and runs alongside the rights so once the 3 year period is over, there is still something that can be done [This point is so important that it should be developed across the board, since it covers trade dress and other materials that may fall between design law, trade mark registration, passing off and copyright]. In the UK designers can only rely on passing off which is difficult to pursue and costly, particularly for small businesses.

ACID is encouraged to hear that a fast track IP small claims Court may become a reality, subject to impact assessment, and will seek every opportunity to engage with the UKIPO and Ministers to ensure that this happens. This will go a long way in providing easier access for small IP claims and we hope this will provide a much needed deterrent to those who prey on small businesses. Key to its success would be the right IP training for District Judges [Chicken-and-egg? No training till there's a critical volume of cases involving designs, but no more than a miserable trickle of design cases till owners of design rights have some confidence that litigating will be at least a half-way positive experience?]

ACID also welcomes the publication of an updated IP Crime Strategy and hopes that the promised action plan to deal with the increased threat from IP crime online will become a reality. This will enable the UK to robustly and proactively protect its IP interests internationally. Micro firms and SMEs need and should demand a sound IP framework where infringement can be satisfactorily and effectively enforced. Confidence will be lost if the constant threat of infringement means that IP creators cannot be sure of ROI. If innovators are disincentivised this will result in less consumer choice, fewer jobs, and less economic opportunity in the future.

ACID actively supports any moves to improve and enable licensing opportunities, which could be facilitated by the creation of a Digital Copyright Exchange. Before this happens, however, we believe that there is a necessity to clarify competition issues - with full industry consultation - before a framework for discussions is set in place. Adequate security standards must also be put in place to ensure accuracy, so that a DCE would not become a vehicle for misuse by those who may be able to register the rights of others. ACID will be pleased to support the IPO in developing these plans and the viability of designs inclusion in a DCE.

Despite the fact that Government has finally recognized design's importance to the UK economy, ACID is disappointed to note that there is still no recommendation to have parity of IP rights. ACID has presented an arguable case to bring unregistered design right in line with copyright. Current UKIPO policy is that most design infringement may be inadvertent but, to date, have provided little or no evidence to support this view [There seems to be an imbalance here. Proposals to change the law must be 'evidence-based', but there is no requirement of evidence that the legal status quo is justifiable ...]. ACID's own research indicates the opposite: 89.7% of companies believe design infringement is blatant and deliberate. ...".