Who said there was no such thing as a free lunch? WIPO backs Hague Workshop

This blogger has just been perusing an advertisement, below, for a forthcoming workshop on the international registration of designs which takes place in the very near future, on 12 December in -- where else? --The Hague itself, the lovely city which gave its name to the Hague System for the International Registration of Industrial Designs (here). WIPO is offering a "free walking lunch". Not having heard this term before, I did some research on it. You can find some guidance here, here and here.  Walking lunches are said to ward off deep-vein thrombosis (DVT) -- but I rather assumed that they might induce indigestion ...

WORKSHOP ECTA – BMM – WIPO – BOIP
INTERNATIONAL REGISTRATION OF DESIGNS
The Hague, 12 December 2011

After successful events in London in February, Rome in March, Paris in July and Hamburg in September 2011, ECTA is pleased to invite you to attend a further workshop on international registrations of designs in order to promote the Hague System and to evidence its great advantages. This workshop, held in collaboration with our Sister Association BMM, WIPO and BOIP, will take place in The Hague on 12 December 2011. The language of the event will be English. WIPO are kindly offering a free walking lunch prior to the event.

See detailed Programme and Registration form.

Location:
BOIP
Bordewijklaan 15
NL-2591 XR Den Haag
The Netherlands

Priority and partial designs in China

One of the joys of design practice is that everywhere is different.  And one of the joys of Chinese practice is that, as in the old days in the UK, you cannot get protection for the design of just a part of a product, in isolation.  We are, as always, grateful to Linda Liu Group in China for permission to reproduce the following article from their recent Newsletter 51.

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How to file a Subsequent Design Application in China When the First Foreign Application is for Partial Design


--Wang Xue

Unlike the situation in Japan, the U.S. and Europe, partial design is not protected in China. Both the applicant and the patent attorney are most concerned about or confused with the question of how to file a subsequent design application in China to enjoy priority and obtain a scope of protection as large as possible when the first foreign application is for partial design. This article makes a brief analysis and explanation over this issue, and I welcome your precious comments.

How to modify the drawings or photographs of the partial design in the first foreign application so that they can be used in a subsequent design application in China to enjoy priority and obtain an expected, reasonable scope of protection? In fact, the focus of this question is the determination of the same subject matter for designs. The SIPO’s Guidelines for Patent Examination prescribes the determination of the same subject matter for designs as below:

“The determination of the same subject matter for designs shall be based on the design application subsequently filed in China and the content indicated in the first foreign design application. Designs of the same subject matter shall meet both of the following two conditions:


(1) both of the designs are for the same product; and


(2) the claimed design in the subsequent application in China is clearly shown in the first foreign application.


When the drawings or photographs of the claimed design in the subsequent application in China are not completely consistent with those of the first foreign application, or the subsequent application in China contains a brief explanation while the first foreign application does not have the related brief explanation, but based on the application documents of the two, the claimed design in the subsequent application in China has been clearly shown in the first foreign application, it may be determined that the claimed design in the subsequent application in China has the same subject matter as that of the design in the first foreign application, and thus may enjoy the priority of the latter.”

The following are two examples.

Case 1

As shown in Fig. 1, the first foreign application claims partial design for a handle, wherein the dotted lines show a cabinet. When filing a subsequent design application in China claiming the priority of the first foreign application, the applicant may change the dotted lines into solid lines to file a design application for a cabinet. Alternatively, the applicant can delete the cabinet and only retain the handle to file a design application for a handle. Since both the two modified designs are clearly shown in the first foreign application, they can enjoy the priority of the first foreign application. Compared with the design application for a cabinet by changing the dotted lines into solid lines, the design application for a handle by deleting the dotted lines can obtain a larger scope of protection.

Fig. 1

Case 2

As shown in Fig. 2, the subsequent application in China deleted the two round holes indicated by dotted lines as well as the border lines between the dotted-line portion and the solid-line portion from the first foreign application, and changed all the remaining dotted lines into solid lines.

Fig. 2

Currently, the examiners for preliminary examination also allow the modifications as shown in Fig. 2. With regard to such modifications, the examiners for preliminary examination normally acknowledge that the shape of the modified design in the subsequent application has been shown in the design of the first foreign application and that the subsequent application can enjoy the priority of the first foreign application. Further, if the views submitted upon filing of the subsequent application are the same as those of the first foreign application, the applicant may also make the modifications as shown in Fig. 2 in subsequent procedures, and such modifications will not be considered as going beyond the scope of the original application. However, at present, there is no such case happening in the invalidation procedure.

As shown above, when filing a subsequent design application in China claiming the priority of the first foreign application for partial design, the applicant can make the following changes—changing all the dotted lines into solid lines to file a design application for the entire product; or deleting all the dotted lines if the solid-line portion also qualifies as a product for filing a design application; or modifying the dotted-line portion in a limited manner. If the modified designs meet the unity requirement, the applicant may also incorporate two or more designs in the same application. This is especially beneficial for the applicant who files a subsequent design application in China claiming the priority of the first foreign application for partial design.

The above is my view about how to file a subsequent design application in China claiming the priority of the first foreign application for partial design. I hope that this article is helpful for you and we can have further discussions about this issue in the future.

Keep taking the tablets? Yes .. and no

"Euro-injunction mechanism in Community designs: Samsung Galaxy Tab European ban partially lifted", by Séverine Mas, is the title of a Current Intelligence case note which will be published in the print version of the Journal of Intellectual Property Law & Practice in due course. This note discusses Apple Inc. v Samsung Electronics GmbH and Samsung Electronics Co. Ltd, a decision of the Düsseldorf Landgericht of 9 September 2011. According to the abstract,

"The 14th Civil Division of the Düsseldorf Tribunal of first instance confirmed an interim decision preventing the German firm Samsung Electronics GmbH from selling the Samsung Galaxy Tab 10.1 in the whole of the European Union, on account of a potential infringement of a Community design registered by Apple. The ban was, however, restricted to the German territory for sales by Samsung Electronics Co. Ltd, based in South Korea".

David Musker has already posted a note on this dispute on Class 99 here.  You can now read Séverine's analysis in full on the jiplp weblog here.

"Exclusive right" does not cover the right to infringe till one's own design is invalidated, advises AG

Earlier this year, Class 99 mentioned a reference from the Alicante Commercial Court to the Court of Justice for a preliminary ruling on a point of registered Community design infringement in Case C‑488/10 Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamientos SL. This morning the Advocate General's Opinion was published in a selection of EU official languages, but not English.

The reference turns upon Article 19(1) of Regulation 6/2002, which states:

Rights conferred by the Community design 

1. A registered Community design shall confer on its holder the exclusive right to use it and to
prevent any third party not having his consent from using it. The aforementioned use shall cover,
in particular, the making, offering, putting on the market, importing, exporting or using of a
product in which the design is incorporated or to which it is applied, or stocking such a product
for those purposes.

The referring court asked:

"1. In proceedings for infringement of the exclusive right conferred by a registered Community design, does the right to prevent the use thereof by third parties provided for in Article 19(1) of Council Regulation ...6/2002 ... extend to any third party who uses another design that does not produce on informed users a different overall impression or, on the contrary, is a third party who uses a subsequent Community design registered in his name excluded until such time as that design is declared invalid?

2. Is the answer to the first question unconnected with the intention of the third party or does it depend on his conduct, a decisive point being whether the third party applied for and registered the later Community design after receiving an extra-judicial demand from the proprietor of the earlier Community design calling on him to cease marketing the product on the ground that it infringes rights deriving from that earlier design?"

So does a later registered owner of a Community design, by virtue of his exclusive right to use it under Article 19(1), have an enforceable entitlement to carry on using it even in the face of infringement proceedings brought the the holder of an earlier right which does not produce on informed users a different overall impression?  According to Google Translate, the Advocate General thought not:

"The right to prohibit the use by others of a registered design by virtue of Article 19(1) ... can also be invoked against a third party who uses his own registered design later. It is not necessary for that purpose to first obtain a declaration of nullity of that design.  

In this context, both for the third party that the registration of the design of the latter has taken place or not in response to a notice, by which he was asked to stop marketing of its product, are irrelevant".

If the court agrees with the Advocate General's Opinion -- which happens in around 80% of references for preliminary rulings -- this will be good news for plaintiffs in Community design infringement proceedings since they won't need to knock out the defendant's later registration before bringing an infringement suit.

Functional designs - the Invalidity Division draw the line, but will it hold?

Alicante News carries an English-language report of decision ICD 8225 (in German), in which OHIM's Invalidity Division re-drew the line on functional designs.  The decision concerned RCD 001213904-0001, registered for “pallets” as shown on the left. 
The Alicante News summary indicates that the Division have re-cast the question as one of design freedom.  In my view, that is the correct approach.  It is consistent with the previous "multiplicity of forms" test (adopted in the opinion of Advocate General Ruiz-Jarabo in Philips v Remington (Case C-299/99) and followed in UK cases such as Landor & Hawa v Azure) as where a product can only be made in one shape, clearly no design freedom can exist, but seems likely to enable a more flexible approach which may deal with some of the criticisms of the multiplicity of forms" test without opening the door to the kind of subjective aesthetic judgement which can so easily result in refusal of protection to deserving and novel designs.  Can any German-speaking readers comment further on the decision?