Two IP workshops

Workshops have changed a little over the years ...

Here's a brief reminder that two half-day workshops are coming up in London on 11 July, both organised by LexisNexis.  Since one is in the morning and the other in the afternoon, you can attend them both if you choose. Each workshop comes with a substantial discount for readers of this weblog.  They are as follows:

• 11 July 2012: Half day workshop, "Design Rights", hosted in Central London by LexisNexis Conferences and Training. Further particulars of the programme and registration details are available here. To qualify for a 10% registration discount fee as a blog reader, quote code L11290/IPKAT.
  
• 11 July 2012: Half day workshop, "IP and the Creative Industries", hosted in Central London by LexisNexis Conferences and Training. Further particulars of the programme and registration details are available here. To qualify for a 10% registration discount fee as a blog reader, quote code L11290/IPKAT.

UK proposals "miss the point", says ACID

A couple of weeks ago, this blog reported on the proposals for reform of the UK law which limits copyright protection in respect of artistic works that are manufactured industrially. Now the initial excitement has faded away a bit, as people look beyond the headlines and wonder what it actually means for designers. In this context the Class 99 weblog has received the following statement from ACID CEO Dids Macdonald, ACID’s CEO:

Missing the point!

Are the recent changes to UK copyright law really such good news?

The Government's surprise proposal to abolish Section 52 of the Copyright, Designs and Patents Act 1988 ("CDPA") within the Enterprise and Regulatory Reform Bill 2012 has been widely trumpeted as a major breakthrough for designers. Nick Kounoupias of DMH Stallard and ACID’s Chief Legal Counsel said, “I wish it were so but sadly this looks to us as an opportunity missed and not the major reform we had hoped for”.

Nick further explains, “Section 52 provides that where artistic copyright subsists in a three dimensional design that has been created using "an industrial process", then it will only be protected for a period of 25 years rather than the full life plus 70 years of protection that other forms of copyright works get. Abolishing this peculiar form of discrimination and bringing parity with other copyright works is therefore of course to be welcomed.

However the proportion of three dimensional designs that in fact are protected by artistic copyright is very small indeed. Since 1 July 1989 all three dimensional designs that are not capable of being registered as designs or which do not qualify for copyright protection under the very restrictive terms in the CDPA are protected as unregistered designs in accordance with Section 213 of the CDPA and have a 15 year term of protection. The only designs that can be protected by copyright are a sculpture (Section 4(1)(a) of the CDPA or a work of artistic craftsmanship (Section 4(1)(c) of the CDPA). A sculpture is deemed to include a cast or model made for purposes of sculpture but a work of artistic craftsmanship is not defined in the CDPA. Whilst its meaning has evolved through case law it is clear that the Courts will only deem a design to be a work of artistic craftsmanship in very exceptional cases. After all Parliament's clear intention in 1988 was to relegate all designs to a non-copyright status and therefore obtain a relatively low period of protection.

So the chances of finding any design that will actually benefit from the abolition of Section 52 on the basis that it is a design protected by artistic copyright law is fairly slim and of course that's precisely why Government has done this! It looks good to the outside world but makes very little difference in practice. It should be said that the main motive for this change appears to have been to bring the UK into line with the rest of the EU in affording life plus seventy years protection to designs protected by artistic copyright. Perhaps someone who does benefit was threatening to take the UK to the European Court of Justice. As a design led nation (ranked 4th in the world) we were one of the last three countries to do this (UK, Estonia and Romania)”.

Dids Macdonald, ACID’s CEO said, “There is much that Government should be doing to bring parity between design laws and copyright laws. For example making an unjustified threat that someone has copied your design could lead to legal action being taken against you (Section 253 of the CDPA) but there is no unjustified threat provision in copyright law. Stealing someone's copyright can be a criminal offence. Stealing someone's design is not. This is bizarre. It's a criminal offence to copy someone's design drawing but not to copy the design itself! This is where Government should be legislating and not making changes which will look good but will hardly improve the lot of the average designer".

The observation that " it is clear that the Courts will only deem a design to be a work of artistic craftsmanship in very exceptional cases" can be verified by taking a look at the House of Lords ruling in George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd [1976] AC 64 and the cases in which its result -- it can scarcely be said to have a coherent ratio decidendi since all five judges formulated different tests of whether a work was of artistic craftsmanship -- was subsequently applied

Manual revision should come in handy ...

Note for poor spellers:
OHIM's Manual comes from Alicante,
 but Manuel comes from Barcelona ...

"Manual Revision in RCD Invalidity Proceedings" is the title of the design article in OHIM's latest Alicante News. It runs like this:

"As part of the Office’s ongoing commitment to ensuring the best possible quality in the services provided to its users, a revision of the manual relating to invalidity proceedings of registered Community designs (‘RCD’) has been carried out. The purpose of this revision is to make available to RCD applicants and legal practitioners a first point of reference which reflects the practice of the Office [This is welcome: it's a cross between helpful guidance and invaluable demystification -- but it is only a reflection of OHIM practice and is not a binding document]. The revision focused on both procedural and substantive issues with the aim of aligning, where possible, the RCD invalidity proceedings with the CTM cancellation practice [Procedural issues, involving evidence, deadlines, extensions etc, are easier to align as between RCDs and CTMs since they raise the same concerns in much the same manner, while substantive issues are harder to align since the objectives of RCD and CTM registration, invalidity etc are so very different]. The case-law of the Boards of Appeal and of the Luxembourg courts has also been integrated into the manual in order to foster coherence and predictability with respect to RCD invalidity decisions [Bearing in mind that there's a vast quantity of CTM Luxembourg case law and relatively little for RCDs, one assumes that the gravitational pull of the larger body].

The main innovations can be summarised as follows.

The manual emphasises that the application for a declaration of invalidity of a RCD shall contain a clear and precise statement of the grounds relied on by the invalidity applicant. New grounds subsequently put forward before the Invalidity Division will be automatically declared inadmissible [In a perfect world this would never cause any problems, but it is not unheard of for an invalidity applicant to maintain that his grounds, though not explicitly stated, are clearly and precisely to be implied from what he has stated].

In compliance with the Judgment of 12 May 2010, Case T-148/08, Beifa Group Co. Ltd / OHIM, (Instrument for writing), ECR II-1681 [noted by Class 99 here], where the invalidity applicant claims that the RCD shall be declared invalid on the basis of a conflict with an earlier trade mark within the meaning of Article 25 (1) (e) CDR, the RCD holder is entitled to request proof of use of the earlier trade mark in his/her first observations in reply to the application. In this respect the same rules as those applying to CTM opposition proceedings will apply [This blogger understood Beifa to require that the use of the earlier trade mark be its use as a design, not as a trade mark. Is this correct? If so, the nature of proof of use of the same earlier mark may be different in RCD invalidity proceedings to trade mark opposition or invalidity proceedings].

Regarding substantive issues, the manual mirrors the position adopted by the Boards of Appeal with respect to the interpretation of the notion of functionality, within the context of Article 8 (1) CDR. The approach adopted is one which does not look at alternative shapes, but rather considers only the design at issue. Article 8 (1) CDR does not require that a given feature is the only means by which the product’s technical function can be achieved, but rather requires an evaluation of whether the technical function in question was the only relevant factor in the selection of that given feature (the key word in Article 8 (1) CDR being ‘solely’). The fact that a particular feature of a product’s appearance is denied protection by Article 8 (1) CDR does not mean that the whole design must be declared invalid, pursuant to Article 25 (1) (b) CDR. The design as a whole will be invalid only if all the essential features of the appearance of the product in question were solely dictated by its technical function. [A cynic might say that this formulation is sufficiently flexible to prevent the majority of outcomes being confidently predicted ahead of a ruling] 

Finally, it is recalled that when examining an application for a RCD, the Office does not verify whether the application concerns the ‘same design or utility model’ whose priority is claimed. However, the examination of a priority claim will be carried out by the Office if the invalidity applicant challenges the validity of this priority claim, or if the holder challenges the effects of the disclosure of a design for purposes of Articles 5, 6 and 7 CDR, where the disclosure occurred within the priority period.

In such a case, the Office will examine whether the priority claim is valid. A priority claim relating to the ‘same design or utility model’ requires identity with the corresponding RCD without addition or suppression of features".

It might be ignorance, poor eyesight or a case of overdoing it at the computer, but this blogger had rather expected to find a hyperlink from this news item on the Manual to the text of the Manual itself. Now here's a challenge for readers: what is the smallest number of click-throughs that will take the reader from this page of Alicante News to the relevant page of the Manual?