Caravan cover - no cover-up

We are pleased to report what may be the first judgment of Richard Meade QC sitting as a Deputy Patents County Court judge, in Pro-Tec Covers v Specialised Covers [2011] EWPCC 23.  Quite a long decision, but it seems that the parties put a lot into the case, which ran for three days.
The case concerned covers for the front of caravans, and involved an ex-employee, some keen caravanners and a certain amount of bad blood.  The major problem faced by the claimant was that, although they had shown access and similarity, that is nowadays not enough to get you to proof of copying because in a functional design, similarities can arise out of necessity as well as out of copying.  In this case, according to Mr Meade, "the allegation is of a concerted campaign of copying by at least four people, followed by a concerted campaign of lying about it and covering it up. I would only accept such an allegation if there were compelling evidence in favour of it."  And, in his view, there was not. 
As a practical matter, it is hard to know how one would ever be able to pin down a really unscrupulous copyist under these circumstances, for as he says, "If it were true that the Defendants and Mr Lord made a conscious plan to copy which they followed through and then concealed then one would not expect any evidence of actual access to survive."  If access and similarity are insufficient, and the defendant has covered his design trail, what is left to the plaintiff?
The case resurrects an interesting debate on the scope of the UK Unregistered Design Right "must fit" exclusion (CDPA s. 213(3)(b)(i)), which might also be applicable to the corresponding provisions of the EU Community Design Regulation and the Registered Designs Act.  Put simply, the question is: if all the component parts of a complex product are excluded from protection as being "must fit", can the whole nonetheless be protectable?  The Court held not in Baby Dan v. Brevi [1999] FSR 377.  However, as Mr Meade notes, "Baby Dan has received some adverse comment in the textbooks (e.g. Laddie, Prescott and Vitoria, 4th Ed. paragraph 45.35), and has been suggested to be inconsistent with Electronic Techniques (Anglia) Limited v. Critchley [1997] FSR 401."  The question was left undecided in Ultraframe v. Eurocell [2005] RPC 36, [2005] EWCA (Civ) 761 and, having not heard full argument on it, Mr Meade left it undecided also. 
But is it really still an undecided point?  It appears to have been dealt with, as clearly and succinctly as one would expect, by Sir Robin Jacob LJ in Dyson v Qualtex  [2006] EWCA Civ 166 at paras 20-21:
"Before going to the detailed points, it makes sense to consider Mr Carr's opening, general point – one by way of reductio ad absurdum. He submitted that if Mr Arnold were right about his construction of "must-match" it would be open to a third party to produce all the parts which go to make up the external appearance of the machine. And if he were right on his construction of "must-fit" the same would apply to all the working parts. So, if Mr Arnold were right, people would simply be able to copy the whole machine itself. That is absurd and cannot be so.  I do not think this general argument assists. One answer (there are others) is because a separate UDR will subsist in that aspect consisting of the appearance of the whole article, it does not matter if none subsists in the individual parts. That UDR is not a feature of shape which is dependent on the appearance of anything."
That must surely be right in logic.  Each part may dictate features of another, but the whole is not dictated by the parts.  But does that defeat the object of the provisions, or are they aimed only at the parts per se?
Finally, an interesting point on cross-examination: to what extent can you surprise a witness with cross-examination documents in the UK?  The element of surprise has largely been removed from UK patent litigation.  However, in an unregistered design case, it is not uncommon (at least at the beginning of the case) for defendants to be economical with the actualité, and if it is the claimant's case that they are lying, then they may need to be able to trip up a lying witness with no notice in advance, as was reluctantly but perhaps tacitly accepted by the judge in this case:

"Perhaps this will refresh your memory! James Thurber, 1935

"It would perhaps have been fairer and more efficient to provide the materials in the cross-examination bundle to Mr Proctor in advance in the way now common in patent actions, but I think the degree of surprise was modest and Mr Proctor did not appear thrown by it."

Dyson v Vax - Court of Appeal clarifies

We covered the first instance judgment in Dyson v Vax here.  The appeal judgment has just issued (Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206 (27 October 2011)), and we are pleased to see that Sir Robin Jacob has been able to spare a little more time for guidance on designs. 
On the main issue, the Court of Appeal found that Arnold J had been entitled to reach the conclusion that there was no infringement - he had made no error of principle.  His rather controversial findings on functionality (following the OHIM Lindner Chaff cutters decision R 690/2007-3 discussed here) form no part of the appeal judgment, since his first instance decision does not rest on them - he found the Dyson design non-functional even on his test.
The points we found of interest were, firstly, a retraction of Sir Robin's (obiter) remarks on Recital 13 of the Design Directive 98/71 in Procter & Gamble v Recikitt Benckiser.  The difference in wording he had analysed appears to have been sloppy drafting (according to Alex von Mühlendahl in Design Protection in Europe, 3^rd Edn. (2009 at pp.232-3).
Secondly, another review of the position on expert evidence.  Anyone running a design case should read this carefully.  According to Sir Robin, "It is highly desirable in a registered (or indeed unregistered) design action that, if permission to give expert evidence is to be given at all, the precise ambit of that evidence should be defined. This was the procedure adopted in the present case by order of Arnold J who heard the Case Management Conference. The expert should be told what question or questions he is addressing and confine himself to these. The same is often true in other cases: left to their own devices experts all too often address questions of their own choosing."
Jackson LJ (who should know, if anyone does) added that "It is anticipated that next year CPR Part 35 will be amended in a number of respects. One amendment will require a party, on a permission application for expert evidence, to specify the issues which the expert will address. Another amendment will encourage, but not compel, any court giving permission for expert evidence to specify the issues which the experts should address. Courts already have the power to limit and focus expert evidence. If they do so more often (which I hope will be the effect of the forthcoming rule amendments) substantial costs will be saved."
Finally, a minor point on how to treat colour representations of a design: "Although these are in colour it is common ground that the colour (of both the registration and the alleged infringement) should be ignored for the purposes of considering the scope of registration. This is because the statement of novelty says: "The features of the design for which novelty is claimed reside in the shape and configuration applied to the article as shown in the representations." In order to obviate any risk that colour might enter into the comparison, the physical articles we compared were spray painted grey all over (including those parts visible through the clear dust collecting bins)."

Design and IPR - What are your views?

The following is a plea from Dids Macdonald (ACID) for a more realistic approach to design protection in the United Kingdom, where anyone who reads judicial decisions in cases involving the UK registered design right must wonder how far removed so many of the issues before the court seem to be from the daily activities of designers and copyists:

"In view of the current UK Intellectual Property Office (IPO) “Calls for Evidence” and prior to a possible full consultation on designs recommended by Ian Hargreaves and now part of Government's 10 IP recommendations, some IP stakeholders and designers have discussed the idea that simplification of what is to many a complex set of design rights is desirable. 

Protection for designers could be made more simple with the abolition of UK unregistered design rights so long as they could rely on copyright protection instead. 

This would achieve many objectives, not least parity of rights between unregistered design right and copyright. After all, what is the difference in creative input between an iconic furniture designer and an artist or songwriter and yet in the UK, without registrations, the former relies on ten (realistically five!) years of unregistered protection in the UK and three in Europe -- whereas an artist/songwriter benefits for the life of the author plus 70? 

It is also very difficult for some small organisations like ACID to provide evidence-based information about Court cases when very few design cases ever reach a final Court hearing, the majority of them being settled at various stages.

How many letters before action or cease-and-desist letters have YOU sent out in the past past years?”

Dids explains: while ACID has used all its extensive connections in the design community to work in collaboration and assist the UK IPO to reach a broad base of the design community to complete its questionnaire, we can’t help feeling that the basis of this research is inconsistent with designers’ needs for clear policy.

The Minister has asked for research on the connection between registered design rights and innovation. The majority of designers in the UK and, indeed globally, rely on unregistered and informal rights. Having said that many designers rely on all the formal rights registered trade marks, copyright and to a much lesser extent patents, why then single out design right in the context of innovation through design?

Innovation "speedy"

 Innovation happens at an amazingly speedy pace and happens regardless of IP. The language and dialogue should be about innovation, business and commercialisation through the creativity which translates design into tradable IP. That needs the support of a user friendly IP framework when designers (the majority of them small businesses) are copied, and the majority of which is blatant. Damages to dissuade the consistent protagonists, many of them in our own back yard. Effective training of IP intermediaries who can help small businesses creates a proactive IP strategy as part of their marketing and communications plan. These three steps alone would encourage growth and make jobs more secure.

It is amazingly frustrating to see research after research prior to a needless consultation when all the figures thus far produced are in the public domain, some of the statistics on which initial research has been produced are both inaccurate and anecdotal and the basic premise for this self-serving research is, quite frankly, way out of kilter with the requirements of small business entrepreneurs in design.

Polls


In the side bar to the right of this weblog you will also find two polls in which you can offer your considered opinion as to the utility of the UK registered design right in a jurisdiction which already offers unregistered design rights at UK and EU level, the Community design right and, at an underlying level, regular copyright.  The first poll gives you a chance to say what you feel about the Registered Designs Act 1949, which provides the legislative basis for UK registered design right. The second poll gives you a chance to reflect on what you might like to see in place of that Act, if UK registered designs were scrapped.

Do let us know what you think!

Why pay for it when you can get it free?

One man's prudent financial management
is another's lack of a spirit of generosity ...

"Rolling Stone: Obama Hits Up Designers to Work for Free -- On Jobs Poster" is the striking headline of this article by Ken Wheaton on the Ad Age Blog, kindly drawn to my attention by Creative Barcode's ever-attentive Maxine Horn. The essence of this piece is that Rolling Stone, the now veteran title which supplied both good taste and attitude to a generation of college students in the 1960s and 1970s, has criticised the Obama for America movement for turning to unpaid crowd-sourcing for a jobs poster. The original piece states, in relevant part:

"The Obama campaign has more than $60 million cash on hand. In an economy this bad, you'd think a presidential campaign that flush would be happy to pay good money for a talented designer to create a campaign poster. But the folks at Obama campaign have taken a page from the Arianna Huffington book of economic exploitation and called on "artists across the country" to create a poster ... for free. 

And here's a bit that might strike a sour note with many ad-agency folks out there: Even if you don't win the contest, Obama for America, according to the fine print, owns your intellectual property".

Wheaton concludes with the observation that

"members of the design and ad community did a great deal of free work for Obama in 2008. But at the time, [Obama] was selling hope and change to people eager to buy. With too much of that change going in the wrong direction, this time they're eager to get paid--especially if the campaign in question is sitting on a war chest that makes it "the 1%" of the political field."

Prudent IP managers are probably nodding their heads in approval at the notion of Obama for America controlling the IP rights of losing designers as well as winning ones, to avoid any of the hassles and embarrassments of allegations by losers at a later stage that any part of their designs have been appropriated in whole or part for campaign purposes -- but wouldn't a short-term exclusive licence to use for the purposes of the campaign be just as efficacious, and create a good deal more goodwill? And wouldn't some sort of prize or compensation send out a positive message concerning the value placed by the Obama administration on the creative industries?

But the last word goes to Maxine:

"The same happens in the UK where public sector in particular often insists not only in speculative creative work to be submitted in tenders but also that IP rights are assigned to the commissioning government agency as a condition of tendering, irrespective of whether the contract is awarded or not. This is largely a stipulation only applied to the design, advertising and architecture sectors

How can we have an IPO office which spends millions of tax-payers' money on encouraging SMEs  to protect and exploit their IP and for which it gains revenue -- if other government department take IP off of the same SME sector through its unfair procurement policies?

And likewise how can the government stand on platforms and take PR plaudits for crowing about the value and growth of the creative industries when they themselves are stifling growth and potentially damaging the same sector through unfair procurement policies?

It’s surely got to change!".

Postcard from Munich: ACID on SME and micro business design policy

ACID has been making its mark on WIPO, it seems.  According to a media release from Anti Copying in Design,

Following an invitation from the World Intellectual Property Office (WIPO) at a two-day World SME and IP Forum, Dids Macdonald CEO of ACID took the opportunity to raise awareness of the extensive use of unregistered and informal IP rights by the creative industries in the UK. 

The Forum was organised by the European Patent Office (EPO), sponsored by WIPO and held in Munich last week. Statistics from around Europe reinforced the fact that the UK is not alone in the distinct lack of formal IP registrations to support their business models. 

Representatives from many National IP Offices and other relevant institutions in the Organisation for Economic Cooperation and Development (OECD) shared their experiences of work being undertaken to help raise awareness about the significance of IP training, particularly for those involved in training the intermediaries who interface with SMEs in business mentoring. “Train the IP Trainers effectively” was one of the key messages being discussed by delegates. The EPO IP4inno [which you can check out here] is an excellent website offering training modules for those involved in IP mentoring. ip4inno is a project funded by the European Commission as part of the Sixth Framework Programme for Research and Technological Development. Its main aim is to help small and medium-sized enterprises (SMEs) enhance their understanding and use of intellectual property rights with a view to promoting innovation and competitiveness in line with the European Commission's Lisbon goals. 

Dids Macdonald talked about ACID’s experiences, emphasising the importance of providing one to one IP clinics on a wide variety of intellectual property based subjects. Access to expert help at the end of a telephone and a proactive approach to the communication of an IP strategy, both internally and externally through the supply chain, is paramount for SMEs [Here again funding, training, monitoring and risk management of one-to-one expert advice are all issues. Some can be addressed by collaboration between small design businesses; others not].

Speaking at the event, Dids said, “The UK comprises of many micro and small businesses and designers account for approximately 232,000 of these. However, the majority of them have less than 4 employees and for most it is impossible to take legal action against infringement [The need to distinguish between 'big' SMEs and micro businesses -- in which design seems to be disproportionately represented -- may be important here. Businesses with 4 employees or fewer generally also lack the facility to absorb and update complex legal advice, let alone the ability to make informed strategic design-right based business decisions or fund litigation]. As such, many small firms are isolated and IP law can seem very complex, so it is important to move towards uncomplicated user friendly access to practical IP help and information. Future IP policy must reflect support for commercial growth in business and economic terms and get away from “IP Rights” dialogue. ..."

News from Poland

The Supreme Administrative Court (SAC) in one of its most recent decisions (September 7, 2011, case reference number II GSK 838/10) took the view that the provisions concerning industrial designs refers to the user of the design, and not its distributor or seller. Moreover the SAC noted that due to obvious reasons, the goods, as the matter of principle, are visible in the stage of distribution, but this stage is not significant for the evaluation of fulfilling all of the criteria required from the industrial designs by the product, where its visibility has a chief meaning. The SAC acknowledged that the stage of using the design by the final user is the most decisive. At the same time, in the light of the provision of Article 102 paragraph 1 of the Act of Industrial Property Rights Law, the industrial design must meet the visibility criterion at the
stage of its use by the final user.

The above thesis may not be particularly exploratory for the readers. However, in the context of former judical decisions of the SAC, it may turn out quite significant. Before, the SAC has presented a standpoint acknowledging that the characteristic attributes of the industrial design shall be visible in the moment of purchasing the goods (ice creams) and an estimation of the newness and individual character should be made at that moment.

Let’s hope that at least in that range the standpoint of the SAC will become stable.

As to the case alone, it was related to the cancellation of the industrial design of the insulation board, whose figure I present below.

Well, it’s difficult to consider it as hyper distinctive, nevertheless, it has been cancelled exactly due to the lack of its visibility.

Pogs - the last word

Hot off the press is the long-awaited ECJ judgment in Case C-281/10 PepsiCo v Grupo Promer Mon Graphic  (earlier stages of which were discussed by Class 99 here, here and here).

Since this is their first pronouncement on matters of substantive design law it is perhaps a relief that the ECJ has followed the lower instances all the way down the line - there are no surprises, good or bad. 

Highlights:

1. The informed user lies between the average consumer of trade mark matters and a sectoral or technical expert - "Thus, the concept of the informed user may be understood as referring, not to a user of average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question." (paras 53-54). 
2. Thus "without being a designer or a technical expert, the user knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them." (para 59).
3. Taking into account "imperfect recollection" is not wrong in law (para 55).
4. Use of samples is allowed (paras 73-74) as "the comparison of the actual goods was used only for illustrative purposes in order to confirm the conclusions already drawn" - in line with UK case law.

UK IPO - Hargreaves consultation - report of event

Those who couldn't make it along to the UK IPO's event "Understanding the Use and Impact of Design Rights on the Design Sector" hosted by the Designs Council on 21 September 2011 can either listen to the presentations or download Word-format transcripts from this webpage.  The event was a presentation of the economic research conducted for the IPO by the researchers in response to the Hargreaves Report, moderated by an expert panel and followed by a lively discussion.  The research itself is published here.  Interesting stuff.

More from Poland - Not such a clean business?

Another case comment from Krystian Maciaszek, this one exclusive to Class 99 although I'm sorry to say it has sat in my in-tray for a little while.  I quote:

The Court for the Community Trademarks and Community Designs in Warsaw in the judgement of July 30, 2010 (signature file: XXII GWwp 8/10) decided on lack of infringement of the right to the registration of the community trademark. The case referred to the infringement of the community industrial design of the self-serviced car wash RCD 000417852–0001.

The defendant offers self-serviced car washes, see left (the photo is taken from the internet website of the defendant, from the description of the judgement it appears that it was this construction).

1) In the light of the above case, the court stated that „the car wash of the defendant and the design of the plaintiff are similar in this that they are based on the construction of a shed. This element is however not new or individual in its character, therefore it will not be taken into consideration by an informed user.” In my opinion, one can agree with such a standpoint. It corresponds with a German theory of a basic form ("grund form"), especially clearly seen in this case. 

Consequently, the Court acknowledged that „the designs should be compared by including new traits and not known and generally accessible. The elements of folklore or style created historically for example, do not belong to the content of the law. The right to the registration does not include these attributes which are of public property, but only new, important traits of the design. Such existence of the same general impression does not always decides about the imitation; it is often an unavoidable consequence of the situation, where the appearance of the object is inspired by traditions or highly defined by its use function.”
I do not have major comments to the first part of the argument of the court, but its statement that “existence of the same general impression does not always decides about the imitation” may seem to be too far going. It seems that the court said too much, since the occurrence of the same general impression exerted on an informed user is a prerequisite of infringing the right to the design registration – and the arguments of different courts often begin their own life independently of its context and such categorical statement could easily be used against the substance of the norm. It would be more appropriate to refer for example to a similarity and concurrent elements belonging to public sphere. It should also be reserved that indeed the protection deriving from the registration does not include the elements of the design belonging to the public sphere, however it does not exclude granting of the protection for a design that constitutes their combination fulfilling the prerequisites of the protection.

2) The court had also stated that the „informed user is such who is more perspicacious and has a better than the usual one, knowledge of the object. It is not an artist himself or usual consumer or an expert in a specified area but a person who lies in between them. Specified qualifications are required from aware user, therefore it cannot be the consumer, but a person that uses the object and exerts it as an expert. Not necessarily does it have to be an end user.”

By the title of the commentary to the above argumentation of the court, I would like to note that it is difficult for me to avoid an impression that the court got into some contradiction, separating an expert of the patent law from the informed user – something that is right – and stating next that the informed user uses the object as an expert. If an aware user has its separate status, then it cannot be stated that he uses (exerts) the object as an expert, then his attention and knowledge, which should be taken into account would be higher than it should be.

3) Recently, the participation of the experts in the evidence proceedings in the cases of infringing the industrial designs has been widely discussed at the forum of the European representatives of the industrial design law practice. Therefore, the standpoint of the court should be noted, according to which “the evaluation of the similarity (existence or lack of different general impression) made in the matter of infringement of the community design has a normative character, similar as in the cases of infringement of community trademarks. The court includes evidence material offered by the parties of the proceedings. The opinion of the expert who is not an aware user but an expert cannot in any case decide about adjustment of the dispute. The expert can however assist with help to the court, indicating to the similarities and differences occurring in the design and contrasted product, explaining what is the range of the creative freedom when working on a defined kind of designs, as long as it is disputable between the parties. The opinion is not therefore a necessary or exclusive evidence, deciding in the matter of infringement”. On the ground of the Polish jurisdiction, it is insomuch beneficial standpoint that completely contrary has been presented in the earlier jurisdiction of the Supreme Court (a judgement of October 23, 2007, IICSK 302/07). As it can be seen, the matter is rather problematic, all the more, important meaning for the result of the case cannot be refused.

Apart from my comments related to the judgement, I would like to refer to the way of the application of the subject community industrial design. In my opinion, we are in fact dealing with two designs, the first one presented on the color photo and the second one presented on the schematic drawings. The differences between them exceed the level of insignificant dissimilarities. I am curious about the opinions of the readers in this respect.

So, dear readers, what do you think?

What's the point of designs - point of sale or point of use?

According to the excellent case comment by Krystian Maciaszek, ("Poland: Are the Designs Within an Ice-Cream to be Registered as an Industrial Design?" Maciaszek, Krystian, European Intellectual Property Review (2010), volume 32 , issue 12 , p. 656-659, Table of Contents and abstract here, complete text available PPV on Westlaw), the Polish Supreme Court have revisited a sticky problem familiar to US and UK practitioners: what to do about a design which is only visible part of the time? The case, Przedsiebiorstwo Produkcji Lodow "Koral" JK General Partnership v Patent Office (unrep. March 20, 2007), concerned the internal layers of ice cream, which were in contrasting colours that only became visible when the ice cream was being eaten. I don't have a picture of the ice cream, alas.

That makes it sound very much like the chocolate egg considered by the UK Registered Designs Appeal Tribunal in Ferrero's Design Application [1978] RPC 473 on appeal from a similar rejection.
The UK Tribunal noted that it had long been the practice to allow registration for designs of internal features. An example was that of a jack-in-the-box - the toy is normally concealed inside a very boring cubic box which would lack novelty.
The particular problem seen in Ferrero's case was that the exterior of the egg was conventional and the new part of the design (the contrasting interior colours) could only be seen after its destruction by breaking the article to which it was applied open to eat it. This seems also to have been the issue taken by the Polish Office. However, the UK Tribunal found no difficulty in allowing the design, on the basis that the internal features formed one of the attractions of buying the egg (presumably, for repeat customers).
The Ferrero decision led to the allowance in K K Suwa Suwosha's Design Application [1982] RPC 166 of a digital watch with hard-wired icons that were not visible until the watch was powered up and, ultimately, to the practice on icons set out in the Apple case [2002] FSR 38.
The current EU law (unlike the older UK law) specifies a test person in the ambiguous shape of the "informed user". One might well therefore suppose that use, rather than sale, is the point at which a design is to be judged.  As against this, it is normally the sale by the infringer which constitutes the damage to the proprietor, so the point of sale might be relevant - indeed, unauthorised sale is a statutory infringing "use" of the design, so the "user" at this point might be said to be the buyer rather than the end user.
By way of contrast, a US case going to the reverse point was In Re Webb, 916 F 2d 1553, 1557; 16 USPQ2d 1433, 1435 (Fed Cir 1990).

In Webb, a hip implant was refused as being (obviously) not visible in use, but it was visible at point of sale. The Court allowed the design, holding that it is not excluded if it "is a 'matter of concern' because of the nature of its visibility at some point between its manufacture or assembly and its ultimate use." That seems to avoid the problem admirably.
Having been brought up on these UK decisions, I would be interested to know whether the Polish court have a better reason for refusing under the same circumstances - or is this just symptomatic of a lack of love for IP, ice cream, or both? does anyone know the answer?  What do other readers think?

MAQS and Quacks! Discuss CJEU ruling on Ugly Duckling rights

Who is the 'informed user' of the ugly
duckling right in European IP law?

"First RCD Decision from CJEU" -- looks like a bit of an acronymfest, but readers of this blog will know what is meant.  This is the title of a seminar which offers a summary and a discussion of the forthcoming ruling of the Court of Justice of the European Union in Case C-281/10 PepsiCo v Grupo Promer Mon Graphic (the 'pog' case, earlier stages of which were discussed by Class 99 here, here and here).

The event takes place on 27 October 2011 in the lovely city of Copenhagen, Denmark under the auspices of MARQUES, which says:

What: MARQUES is pleased to present a "first impressions" summary and discussion of PepsiCo v Grupo Promer Mon Graphic, the much awaited first substantive decision of the Court of Justice of the European Union concerning a Registered Community Design (RCD) which is due to be handed down on 20 October 2011. This promises to shed some light on several aspects of design protection, including "the informed user", "the assessment of overall impression" and the "degree of freedom of the designer". 

Who: David Stone, partner of Simmons and Simmons and Chair of the MARQUES Designs Team [and Class 99], will summarize the decision, followed by a panel discussion of RCD users and designers (panel to be announced). 

Where: MAQS Law Firm Copenhagen, Pilestraede 58 (just 15 minutes from the Copenhagen Airport) 

When: 27 October 2011 from 16:00-18:30, followed by standing networking buffet. 

Why: For a long time, design rights have been the ugly duckling of the IP world. Recently, the "tablet wars" in Europe have shown just how powerful RCDs can be - particularly with respect to pan-EU injunctions. And the fact that design rights can also cover logos and stylised words means that understanding these rights is now essential for IP practitioners.

How much: FREE 

RSVP: To register email your name and organisation to academy@dk.maqs.com

Inherency – a reduction of protection for IVARS?

Clearly the right decision – but correctly based?  Or have we developed a new doctrine - that a picture discloses more than it shows?

The General Court last week rejected an appeal (Case T-246/10, Industrias Francisco Ivars v OHIM - Motive intervening (Reducers)) concerning a speed reducing gearbox for a motor.   The judgment is in French, so we bring you edited highlights (with thanks to Katie Cameron for help understanding it all).

Motors tend to run fast but weak, so speed reducing gearboxes (here called reducers) are commonly coupled on.  Sometimes they are sold together with the motor, sometimes separately.  The design in this case (shown below), RCD 000625702-0001, was of a separate gearbox with a mounting flange (for accepting an axle) attached to it.  

It bore more than a passing resemblance to a prior design, RCD 000073952-0001, to the extent that the proprietor of the prior design promptly brought an invalidation action at OHIM, within six months of grant.

 

Comparing the two, the major difference is obviously the presence of the flange in the design in suit, and the corresponding invisibility of the few features hidden by it.  It seems to have been common ground that a flange would have been present in normal use of the prior art, and that the flange of the design in suit was of a pretty commonplace appearance.

The Invalidation Division held (Decision ICD 000003960, 23/07/08) that this addition conferred novelty and individual character.  They were reversed on appeal (R 1337/2008-3, 16/03/2010), the Board holding that the later design “inevitably produces the same overall impression as the prior design on the informed user because it reproduces all the characteristic features of the prior design and does not do anything else than adding another element which is part of the normal use for this type of products.” Although both OHIM decisions were in Spanish, there was an English summary in Alicante News.

One can see that the Board achieved a satisfactory outcome, but it is rather hard to see the basis by which they did so – how can gearbox+flange=gearbox? Had it been shown that (as is likely) the flange was hidden in normal use of the product, the outcome would have been justified by CDR Art 4(2), but this does not seem to have been proven – and perhaps the proprietor of the earlier design was hesitant to invoke a ground that would result in his earlier RCD being itself invalid on the same basis.

At first blush, then the OHIM decision appears to mosaic together two disclosures (the prior design and a notional flange) for an individual character attack – something which OHIM and the national courts have hitherto been against.  But perhaps there is more to it than that.  Although they rejected on lack of individual character rather than lack of novelty, it may be that the Board’s decision was essentially one of “inherent disclosure”, a patent law concept described in, for example, the EPO Guidelines for Examination at C-IV, 9.2.   

That approach is based on the suggestion that a given disclosure teaches more to the skilled reader than is expressly mentioned; for example, mention of a bicycle implies the presence of two wheels.  In this case, the informed user, seeing the motor with a port for coupling the flange, would (in his mind's eye) also see the flange as part of the prior design.  But given the evidence that the notionally-present prior art flange might have been of several different designs, perhaps it is legitimate to create a doctrine of inherent lack of individual character where the imagined prior art flange was similar yet different to that shown in the design. 

The appeal to the General Court did not address this interesting issue, because, said the Court, the appellant had accepted OHIM’s position in that regard.  Instead, the appellant pointed out that some of the cooling fins or ribs on the design in suit ran lengthways, whereas those in the citation ran transversely.  This can be discerned, if you look carefully, but it is hardly a stand-out feature.  However, the appellants had an answer to that - one which has often featured in design case law of the past.  The question, when examining a design like this one where there is limited design freedom, some parts are “must-fit” and hence unprotectable on that basis, and perhaps one or two are even “dictated” by “technical function”, is – should all these be filtered out first, leaving just the residue as the “design”? 

That was somewhat the approach taken in the UK case Sommer Allibert  v Flair Plastics, [1987] RPC 599 (CA)): “All these constraints are dictated solely by the function of rendering possible stacking by this particular method.  All of them render it inevitable that armchairs which are designed to perform these functions must possess many common features, whether or not they also possess many dissimilar features; and all must be disregarded for present purposes.  …It is with regard to the back and arms that the designer of this type of stacking armchair has most freedom.”  Likewise in the US, in Richardson v Stanley Works, 597 F 3d 1288, 1294 (Fed Cir 2010), the non-functional aspects were filtered out.

In this case, therefore, the appellant sought to filter out all features except the longitudinal cooling fins, as being constrained in design, or perhaps even dictated by function.  The General Court, however, held that the Board had been entitled to take the whole shape of the gearbox into account.  They therefore upheld the invalidation decision.  (As to the functionality or otherwise of cooling fins, see PB Cow & Co v Cannon Rubber Manufacturers (No.1) [1959] RPC 947 (CA)).

The case therefore seems to have failed on the evidence – neither party was willing, it seems, to run the high risk strategy of filing evidence detailing which common aspects of the designs were functional, “must-fit”, or otherwise constrained, leaving the Court free to uphold the OHIM decision below.  In a less functional case involving such similarity, however, the prior rights holder might have been better asserting misuse of copyright as the basis of the claim.

Interestingly, the Japanese Court considered gear motors in Sayama Seimitsu Kogyo v. Nihon Servo (Tokyo High Court, 3rd Civil Division, Case No 2003 Heisei 15 (ne) 1119, 3 June 2003, design no JP 798521, reported in Jenkins Design Features 2003 and discussed in Hara Kenzo's newsletter):– there, an infringer added a motor to the registration of a gearbox and sold the combination. The Court held that since the key features of the design were invisible in use (as concealed by the motor) there was no infringement.   

Both cases highlight, perhaps, the desirability of protecting not only a part, but also the combination in which it will appear in normal sale or use, for best protection.

Aesthetic Functionality in the EU? Second time unlikely for B&O

Under reference T-508/08, the EU General Court has issued its first substantive decision (first I'm aware of, anyway) on Europe's "aesthetic functionality" exclusion of shape marks, under CTMR Art 7(1)(e)(iii) (equivalent to TM Directive Art 3(1)(e)(iii)) which excludes registration of marks of "the shape which gives substantial value to the goods".

It is doubtful whether anyone has a clear idea of the limits of this exclusion, or its controversial US case-law prototype.  On the one hand, any shape mark adds value - if it didn't, who would bother spending the money to register it?  On the other, some consider that only high art is excluded.  In the muddled middle, many hope that it has a narrow scope.  Those hopes may just have been dashed.

The subject was the BEOLAB 8000, a "design classic" loudspeaker by Scandinavian high-concept audio company Bang & Olufsen.  It had been registered as a design in Denmark in 1991 (and no doubt elsewhere - see for example GB design 2021348 and US Design Patent D344950).  The CTM application was filed in 2003, refused by OHIM at two levels as being non-distinctive, then appealed to the General Court which reversed OHIM in judgment T-460/05.  They held that the shape "creates a striking design which is remembered easily" and could therefore not be rejected as being devoid of distinctive, character - which was widely seen as a victory for B&O.

Not so.  The case was reconsidered by OHIM's First Board of Appeal and refused again, in decision R 497/2005-1 - this time, on the basis of CTMR Art 7(3)(e)(iii) - hence the second appeal to the General Court.  The design was, if anything, too distinctive for its own good.  The Board held that "In principle, the same sign may be protected under trade mark law and design law, copyright law, patent law, title law etc., each depending on its individual conditions (cf. ... Case R 856/2004-G... Lego brick, at paragraph 39). Nevertheless, such kind of multiple protection is not without limits following Article 7(1)(e) CTMR.  … The trade mark applied for was protected as a design at least at the Danish Patent and Trade Mark Office ..."

The GC upheld OHIM second time around. They relied on the Opinion of A-G Ruiz-Jarabo Colomer in the Philips case for the proposition that "the immediate purpose in barring registration of ... shapes which give substantial value to the goods is to prevent the exclusive and permanent right which a trade mark confers from serving to extend the life of other rights which the legislature has sought to make subject to ‘limited periods’."  If this is correct, it would seem to simply exclude trade mark protection for any registered design after its expiry - a sweeping result.

Is there any way round this?  Would it be better not to register designs at all if you want shape mark protection in the end?  That might not do it - after all, many designs are protected automatically by a three year unregistered Community design, which is difficult to avoid, not to mention copyright.  And in any event, it would be an illogical result if an unregistered design got better protection than a registered one.

In the event, the GC's decision did not turn on design registrations but on the fact that advertising material showed the shape to be a major selling point.  That approach seems to leave few shape marks open to registration - in their first assault on this shape mark OHIM struck it down as too commonplace to be distinctive and in their second they used the fact that it was not commonplace to strike it down as adding value.

Some urgent clarification of the overlap between European designs and trade marks seems desirable, if we are to find any middle way between Scylla and Charybdis.

IPI design seminar 13th October

The venerable Intellectual Property Institute, in rejuvenated form, is holding a seminar on 13th Oct, featuring Mr Justice Arnold of the Patents Court and Martin Howe QC the longstanding editor of Russell-Clarke (and Howe) on Designs.  Excellent value at £20 including drinks.

To register, contact  admin@intellectualpropertyinstitute.org

Details below:

Design Reform - A Consideration of Design Law in the UK and the IPO Call for Evidence
13 October 2011
6-7.30pm (registration at 5.30pm)
Followed by a drinks reception
The Intellectual Property Institute
67-69 Lincoln’s Inn Fields
London WC2A 3JB

Speakers
The Hon Mr Justice Arnold
Martin Howe (QC)
David Musker (Partner, Jenkins)
Chair: Prof Johanna Gibson (Director, IPI)

Andale OHIM!

Is this the world's fastest registration system? According to OHIM's President Campinos, "More than two-thirds of RCDs are now registered within [two working days] and 90% of all design applications within within seven working days." 
In our experience, those running slower are those
(a) filed on paper, and/or
(b) claiming priority, and/or
(c) not classified, and of course
(d) badly prepared.

Component designs - the General Court rule on the informed user of a motor

The EU General Court (formerly Court of First Instance) handed down judgments last month on two design invalidation actions brought by Honda against Kwang Yang Motor Co of Taiwan, concerning internal combustion engines for small consumer goods such as lawnmowers or other tools. 
At first instance (Decisions ICD 000000990 of 17 Aug 2006 and ICD 000001006 of 30 Aug 2006), OHIM rejected the applications to invalidate, holding that because these were technical goods, there was limited design freedom and hence the designs were different enough from the prior art to avoid invalidity.
On appeal (Honda v Kwang Yang, R 1380/2006-3, [2008] E.C.D.R. 5; also R 1337/2006-3), as in several other cases, the Board took a more expansive view of the scope of the designs.  Whilst it was true that these were technical goods, evidence of other products on the market showed that there was nonetheless wide freedom as to how to position and shape the components of the engine.  They therefore found the designs invalid.
Finally, some years on, the General Court issued substantially identical decisions T 10/08 and T 11/08.  As in most previous design appeals, the GC upheld OHIM's line, finding that the Board of Appeal had been correct in law as to the tests applied.
Perhaps the only finding of substantive interest to me in the case was in relation to the identity of the informed user.  These engines were not themselves end-products which a normal consumer would buy.  The usual purchaser, as pointed out by the proprietor, was the maker of lawnmowers or other end-products, not the user of those products.  The proprietor's motivation was to point out that such a manufacturer might well have quite a lot of technical knowledge of the engine, and be responsive to small differences.
On the other hand, where a product is a component part included in a larger product (as was the case here), according to CDR Art 4, only those parts which are visible in "normal use" by the "end user" are to be judged for novelty and individual character.  It might therefore make sense for the "informed user" who judges the question of individual character also to be the "end user", and that is what the Board of Appeal held.  A person who buys a lawnmower and mows lawns may well know (and care) much less about those parts of the engine he can see whilst so doing.  The General Court upheld the decision of the Board on this point.
Thus, technical components of products are to be judged through the spectacles of the end user of the overall product, not the trade buyer of the component.
It remains to be seen whether the same is true of, say, oil or other containers (see for example R 1516/2007-3) where there is a trade buyer and an end user, but the container is not a "component part" so CDR Art 4 has no impact.

New guidelines ... and the return of an old guide

A newsflash from ACID (Anti Copying in Design), "IP New Guidelines Launched to Avoid Workplace Infringement", welcomes the latest British government initiative with their announcement to raise business awareness to avoid falling foul of current IP laws. According to the newsflash,

"There are now clear guidelines to provide companies with up to date employee information to ensure that they are not breaking the law. ... 

To avoid criminal offences (and potential fines of up to £50,000 and/or a possible prison sentence) taking place in the workplace employers should take a simple IP Health Check. If the answer is "NO" to the questions below, immediate, free and simple guidance is available on the IPO website

• Do your employees know that they cannot sell copies of protected works? 

• Company IT equipment and servers - Are your staff aware that it should not be used to produce infringing content? 

• Are employees aware that they should not use the company equipment to sell infringing products to colleagues? 

• Do you have a company policy for staff on IPR infringement, procurement?

Dids Macdonald, ACID's CEO said, "Taking time to look at these guidelines will help businesses protect themselves from legal challenge and, I hope, raise awareness about corporate responsibility and respect for IP. This comes as a very welcome addition to ACID's Guidelines for Design Buyers which was launched several years ago to help design buyers through what they could and should be doing to protect themselves and their staff from infringing the rights of design originators."

DACS (the Design and Artists Copyright Society) has appointed Mark Stephens CBE as the new Chair of its Board of Directors. According to the DACS media release, Mark joins them at a crucial juncture, when debate is raging as how designers and artists can make a living in these troubled economic times. A senior partner in Finers Stephens Innocent, Mark was instrumental in the establishment of DACS in 1984. He replaces Andrew Potter, who steps down in December 2011 after six years in post.

Fast Forward -- but how can we tell?

Although it does not specifically target the design community, this media release from the UK's Department for Business, Innovation and Skills clearly has designs in mind. It announces the Fast Forward Competition, which encourages Higher Education Institutions and Public Sector Research Establishments to work together with businesses and local communities to share research, innovation and intellectual property. As the media release explains:

"The aim is to invest in research and knowledge transfer projects that have the potential to create new companies or services which benefit both the UK economy and society. A total prize fund of £760,000 has been allocated. Applicants can bid for funding ranging from £10,000 to £100,000 for proposals that will improve the way in which their intellectual property and knowledge exchange is managed ...".

So how does this concern designs? The media release continues:

“... One of the previous winners, The University of Nottingham, is working with the Design Council to develop a national programme helping universities use design to commercialise technology and other intellectual property. They jointly won the top Fast Forward grant of £100,000. Dr George Rice, Manager of the University’s Technology Demonstrator said: 

"Sharing what we continue to discover about the use of design in technology transfer will benefit commercialisation of high quality research outputs not only at universities like Nottingham, but also other universities and colleges throughout the UK. A continually refreshed cohort of design-savvy technology transfer practitioners might then begin to uncover new and exciting opportunities that they had not previously considered." 

The London College of Fashion also benefited from the competition and were awarded £80,000. The fashion industry is essential to the UK economy, generating £6.6 billion of GVA to the UK in 2009/10. Their ‘Protecting the Fashion Economy’ project will help to build a knowledge bank and tools for students to ensure that their IP is protected and prevent any potential economic loses. Wendy Malem, Dean of Enterprise and International Development at the college said:

“The IPO award has enabled the London College of Fashion to undertake action research to uncover improvements and recommendations that will benefit the fashion economy, enhance student entrepreneurial skills and further develop the interface between the college and industry."

The closing date for competition proposals to be received is 30 December 2011 and the details can be found on the Fast Forward web page here.

This blogger is intrigued at the statement above that "a continually refreshed cohort of design-savvy technology transfer practitioners might then begin to uncover new and exciting opportunities that they had not previously considered". He's not sure that he's ever even met a design-savvy technology transfer practitioner, and outside of the occasional Licensing Executives Society meeting he hasn't come across that many serious technology transfer practitioners even of the non-design-savvy kind. He would love to know how the winning entries described above are actually evaluated and how their impact is measured. Can anyone advise him?