Hungary fee changes for Hague filings, renewals

From PETOSEVIC comes this news of some fee changes for anyone designating Hungary in an international application or renewal under the Hague Agreement. They come into effect this Sunday, 1 January, so don't day you haven't been warned ...

Blooming heck - who can shed light on this slightly potty decision?

Many thanks to several readers for directing our attention to an anomaly in a decision by the otherwise normally sensible Hague Court of Appeal.
The issue concerned arose in Case 200.060.916/01 Slewe Beheer & Bloom Holland v The Groove Garden, judgment of 13 December 2011, concerning illuminated flower pots (yes, really - they take their flowers pretty seriously in the Netherlands).
If your Dutch is good, there is commentary here and here.  I believe (but check with the Dutch sources if you are interested) that the outcome was good for the plaintiff in that copyright infringement was found.  This comment just concerns the Registered Community Design.
The plaintiff's pot, known as the BLOOM, is, it would appear, not dissimilar to the defendant's.

A straightforward design infringement, as with the copyright?  Apparently not. 
The RCD, number 000122189-0001(reproduced below), "merely discloses a pot made of transparent material containing one or two sources of light. There is no evidence to suggest that the illumination is integrated and closed in between a double bottom."  These features were present in the Bloom product, and indeed may have been invented by the plaintiff, but since they were not explicitly visible they were not taken into account in assessing the design. 
Apparently, the Court would have been satisfied with some verbal description of these features, for they commented that "Pursuant to Article 36(2) of the Regulation, the application shall contain an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied. Although paragraph 3 allows the option for the application to contain a description explaining the representation, Slewe restricted itself to the following "Indication of the product": "Pots (household), Pails, Plant pots, Flower boxes (outdoor), Lamps, Cribs for animal fodder". A description as a explaining the representation is absent, and the indication of the product is inaccurate or incomplete in that it fails to state that the product is a plant pot which can simultaneously act as a lamp. As a consequence, the Court of Appeal finds that it is to be assumed that the design merely discloses a pot made of a transparent material and containing one or more light sources, which is what the informed user must base his comparison of this pot and the VAS-ONE and the GG pot on (not a pot with integrated illumination contained in a double bottom)."

Then comes the unkind part: since the infringement, which they had found to be copied from the plaintiff, did "feature an integrated closed white bottom containing integrated illumination, with the light source itself not being immediately visible (only its light shining through the double bottom) in (the visible inside of) that pot. In that pot, there is a white, closed, smooth (double) bottom. This entails that the design rights have not been infringed"

None of that is the contentious point, however.  That arises from a matter seemingly not in issue: the relevant date for assessing prior art, discussed in para 26 of the decision: "Pursuant to Article 7(2)(b) of the Regulation, the relevant date for assessing the novelty and individual character is the date 12 months before the date of filing of the application ...".  They repeated the erroneous date at para 36.

Article 7(2)(b) CDR is, of course, the grace period provision.  As (*ahem*) I noted back in 2002 at para 1-065 of my book, "The grace period exempts disclosures from invalidating; it does not use them to establish a starting date for protection (a priority date or a date of conception)."  It appears that the Court have fallen into the error I warned against there.  Or have I missed something?

Montenegro accedes to Hague

Black mountain --
but not Montenegro

Earlier this year the Class 99 weblog reported here on some modifications to Montenegro's design protection regime. Now there's even more good news from the tiny state which translates into English as 'Black Mountain' and into German as 'Schwarzberg':  by The Hague Notification No. 111, the World Intellectual Property Organization announces that Montenegro has deposited its instrument of accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, which will enter into force there on 5 March 2012.

UK "intends to publish consultation on how to go forward"

Going forward: often
easier to say than to do

The UK government's Designs Review Team emailed this Class 99 Team member today with the following news:

"You may be aware that the Government's response to the Hargreaves review required us to publish our assessment of the case for simplification of the design right system, and in particular whether there is a need for a UK unregistered right alongside the EU right, by the end of 2011. The information submitted through our recent 'call for evidence' and associated on-line survey has provided us with vital contribution which has enabled us to meet this commitment.

We have now compiled a position paper (http://www.ipo.gov.uk/types/hargreaves.htm) which, as you can see from the assessment, shows our intention to publish a formal consultation on how to move forward".

Also received today, and very much hot off the mark, is the following statement from Anti Copying in Design (ACID):

"Today Government is announcing its first assessment of the need for reform of the design intellectual property framework. In May 2011, in his report to the Prime Minister, Professor Hargreaves concluded that design had a “very important contribution to make to growth” to the tune of £33 billion to be precise (and still a growth area!) and yet he was critical of the policy makers whose role in supporting IP in this significant branch of the economy had been neglected. So, the good news for designers is there has been a flurry of activity and ACID welcomed the opportunity to paint the picture of SME reality by providing solid evidence from a diverse set of case studies. These highlighted the often grim problems that design-led companies face. This, we were told, has provided a valuable and credible foundation for future policy in this first IPO assessment. Government plans to publish a formal consultation on how to proceed in late spring 2012".

This is accompanied by a comment from ACID’s CEO Dids Macdonald:

"I welcome this assessment for design reform. However, it is important that any further research makes clear the relationship between (registered) design rights and innovation in the context of product design. The majority of the UK’s 232,000 designers (in 55 different design disciplines) rely on unregistered (copyright, design and trade marks) and informal rights. In this initial assessment, it is clear that UKIPO has listened and understands the problems facing many SME’s within design. Now the challenge will be to address them sensibly, practically and proactively with more action and less words”.

Class 99 will be following events carefully and hopes to report on developments as soon as they occur.

UK conference - Branding in a Modern Economy 2 - IPO design plans

Andy Layton speaking about design rights and registration

The UK IPO organised a second Branding in a Modern Economy conference - their page with a link to the Minister's keynote speech (which was actually pretty good, as these things go) is here. 
The contributions are not yet up, but I thought I'd summarise the design portions.  Tony Clayton's voice was suffering, so the economic research on designs was wittily and pithily summarised (no easy task) by Ben Mitra-Kahn.  There was then a panel discussion chaired by Phillip Johnson and involving ITMA President Maggie Ramage, ACID founder Dids Macdonald, and myself for CIPA.
Andy Layton, the Director of the Trade Marks and Design Registry at the IPO, then gave some thoughts about the way forward, and I have extracted these from the IPO's Twitter stream in case there are others like myself who aren't up to the mysteries of tweeting, as follows:

• Next Up: Andy Layton - Director Trade Marks & Designs (IPO) - 'Reform of Design IP Framework' presentation
• Today, going to talk about some of the probs with design IP system, that we have identified as result of research…
• 1st will talk about why we are going to such effort here. “Design” is wide concept incs broad spectrum of ind’s…
• In 2008, investment in design alone = 1.6% of GDP. Design investment in UK in 2008 = £33.5bn…
• Design empls lot of people in UK. Design Council surv = 230,000 designers in UK. Undervalues design activity in Britain…
• UK design registrations fell steeply after intro of EU Comm Design System in 2003, this was to be expected...
• Foreign co’s seeking protection in UK now said to be almost universally filing at OHIM rather than with us (IPO/UK)…
• 8k to 9k UK Design apps per yr, split appx 50/50 between IPO & OHIM, not consistent with vol of design activity in UK…
• For TMs, IPO seen consistent growth in the no. of UK TM filings despite advent of CTMs.
• Research suggests <1% of UK biz’s use registered designs currently...
• At the time Hargreaves did not think he had enough evidence to make a call on whether current design IP system works…
• Hargreaves said not knowing how design rights affect innov + not knowing how best to improve framework was unsatisfactory
• Research we mentioned earlier shows that for many biz’s, benefits of design protection are not clear…
• Over 59% of respondents to one researcher reported they have had their designs copied…
• Our research suggests many companies only get up to 4 yrs value from their designs…
• So what should we do to fix design IP system & what ideas emerging as result of our recently issued Call for Evidence?…

1. Needs to provide clear & simple choices how to safeguard value of design; harmonising UK design rights with OHIM…

2. Need to be relevant to current needs of biz & indiv; implications for how we struc serv we offer + speed we provide it

3. Need design IP framework to be known about – we need a good level of business awareness…

• We are compelled by EU directive to offer design reg serv, & to harmonize where poss with service being offered by OHIM…
• Many resp to Surv & Call for Evidence make clear that RCD offered by OHIM is attractive in scope of protection & cost…
• Andy closes presentation by stating big challenges to overcome, IPO working on them using evidence. He welcomes external input.
• Call for evidence next steps will be preliminary statement, will be out in due course. 
• Anyone wishing to contribute evidence/research etc to TM or DESIGNS teams at IPO, email: communications at http://IPO.gov.uk
• Andy Layton - Director Trade Marks & Designs (IPO) is bringing conference to close. Thanks all for attending and contributing.
•  Output of today will form conference report in the New Year. Some of today's content will be avail on IPO website soon

Apple fail to get US interim design injunction against Samsung

Our thanks to our sister blog Patlit for drawing our attention to the judgment in the first round of Apple/Samsung in Northern California.  Like the German and Netherlands cases we have reported so far, Apple have cited their iPad design US D504,889 (equivalent to RCD 181607-0001) and their iPhone designs US D618,677 and D593,087 (probably equivalent to RCDs 748280-0006 and 888920-0018).
Apple lost the preliminary injunction case largely on economic factors.  One of the points argued was whether erosion of the uniqueness of a design could cause irreparable harm sufficient to warrant a preliminary injunction - a fascinating argument which was seemingly not rejected out of hand, but found not persuasive. 
On the substance, the Court swiftly and crushingly rejected Samsung's claims that the designs were invalid as being functional merely because minimalistic - quite correctly, IMHO.  However, some aspects were functional and this limited the scope of the designs.
The iPhone designs were thought likely to be valid over Samsung's evidence, and also likely to be infringed.  The iPad design, however, was held likely to be invalid over a 1994 Fidler/Knight-Ridder tablet device, which had also featured in the Netherlands litigation.  Had it been valid, it too was also likely to be infringed.  There were some interesting comments on the case law post-Egyptian Goddess (see postings passim) including the "crowded field" effect in narrowing the scope of designs hemmed in by close prior art.
There was also an interesting side issue on the use of broken lines.  The '087 patent indicated that these were to disclaim part of the product, whereas the '677 made no such statement.  The Court followed authority to the effect that in the absence of a clear indication to the contrary, dashed line portions could be taken into account as part of the design, but held that in this case, it was likely that the '677 patent intended to use them as a disclaimer.
For readers who wish to know more, there is an excellent analysis of the case in "Apple v. Samsung: Intelligence on Apple’s U.S. Design Patent Offensive" C. V. Carani, BNA’s Patent, Trademark & Copyright Journal, 82 PTCJ 906, 10/28/2011.  A copy (seemingly non-licensed) is on Docstoc if your conscience and your legal code permit you to use it.