Getting the hang of it, Ukraine style

Last month, Class 99 reported on the protection of a clothes hanger design -- quite a sophisticated one -- in the UK in Mainetti v Hangerlogic. This time it's the turn of the "other" UK -- UK-raine -- so show what it can do. Our information comes from the most recent Petosevic newsletter in the form of a brief note, "Clothes Hangers Protected Under Design Patent In Ukraine", by Maya Kryvoshei. Writes Maya:

"Companies wishing to import clothes hangers into Ukraine will not be able to do so without royalty payments, because clothes hangers have recently become protected in Ukraine by a design patent.

Information about the design patent “Clothes hanger” No. 22682 has recently been recorded in the customs register. According to the Ukrainian patent database, the protection was granted on January 25, 2012 to Golyev Vitaliy Yuriyovych, a Ukranian citizen.

Moscow’s business daily Kommersant reports that earlier this month the rights owner’s representatives sent a letter to the well-known Danish retail chain JYSK representatives offering the company to sign a contract under which it would be allowed to import the hangers into Ukraine provided it pays royalty, the amount of which would depend on the quantity of imported goods. JYSK will not accept the terms of the contract and is planning to take the matter to the court.

Such cases are not rare in Ukraine. There is no substantive examination of design patent applications. The PTO grants design patents if the application meets the formal requirements".

Eye and mouth – A conflict between shape and words

This is a Christmas gift to the IP community consisting of design fans and connoisseurs. A trademark case that has some relation to design law: Can a word mark be infringed by a three-dimensional configuration which some may describe or call by using a word which is the same as the word mark?

To bear or not to bear?

The Cologne District Court, in a decision of 18 December 2012 widely reported in the German press (full text in German to be found here), held that a chocolate bear wrapped in a golden foil, made by Chocoladefabriken Lindt & Sprüngli (not to be confused with the LINDT Easter bunny previously the subject of many decisions, inter alia the following one by the ECJ), constituted an infringement of the German word mark No 974380 “Goldbären” (= “golden bears”) registered for HARIBO, a well-known Bonn-based producer of jelly candies (but not of chocolates).  The Court found the accused golden-bear-like shape (actually more like a teddy bear than a regular bear) to be the “visual representation” of the word “Goldbären”.  Here is the summary provided by the Court’s press release (in German).

Actually, there is no precedent that we are aware of covering this particular conflict. The parties, well aware of that and even ahead of any appeal decision, agreed to pursue their case up to the German Supreme Court, where it is unlikely to arrive before some time in 2013 or 2014, from where it may well end up before the European Court of Justice.

Interestingly, the Cologne District Court confirmed conceptual identity of signs but neither applied nor even discussed the ECJ's “Thomson Life” test (i.e., any independent distinctive role of the earlier mark within the accused shape) nor any potential neutralization of that conceptual identity due to oral and/or visual dissimilarities, which would have appeared to be necessary in view of the well-known character of the LINDT word and logo.  Therefore, we consider it to be more likely than not that the decision will not withstand the scrutiny of the Cologne Appeal Court.

US Design Patent D243,592

Gautzsch Großhandel 2

There is a detailed Dutch language summary of the case here.  It appears to concern garden pavilions or gazebos.  The upper image is apparently the asserted design.  The alleged infringer imported the infringement from China, where it had allegedly been prior disclosed in the form below left.  That left open (a) the likelihood that the Chinese design wasn't copied, and (b) the possibility that the Chinese design invalidated the unregistered Community Design, if it would have come to the attention of the sectors concerned.  As the three year term had expired, there were also issues of whether the injunction could now be granted.  More information gratefully recieved!

Gautzsch Großhandel reference for CJEU

Do you have a gautzsch großhandel? It sounds sort of uncomfortable, but Gautzsch Großhandel is actually the name of a significant European design reference to the Court of Justice of the European Union (CJEU) of some questions for a preliminary ruling. The case itself, Case C-479/12 Gautzsch Großhandel, is a reference made by the German Bundesgerichtshof on 25 October.

"1. Is Article 11(2) of Regulation (EC) No 6/2002 to be interpreted as meaning that, in the normal course of business, a design could reasonably have become known to the circles specialised in the sector concerned, operating within the European Union, in the case where images of the design were distributed to traders?

2. Is the first sentence of Article 7(1) of Regulation (EC) No 6/2002 to be interpreted as meaning that a design could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union, even though it was disclosed to third parties without any explicit or implicit conditions of confidentiality, in the case where

(a) it is made available to only one undertaking in the specialised circles, or

(b) it is exhibited in a showroom of an undertaking in China which lies outside the scope of normal market analysis?

3. (a) Is Article 19(2) of Regulation (EC) No 6/2002 to be interpreted as meaning that the holder of an unregistered Community design bears the burden of proving that the contested use results from copying the protected design? 

(b) If Question 3(a) is answered in the affirmative: Is the burden of proof reversed or is the burden of proof incumbent on the holder of the unregistered Community design eased if there are material similarities between the design and the contested use? 

4. (a) Is the right to obtain an injunction prohibiting further infringement of an unregistered Community design, provided for in Article 19(2) and Article 89(1)(a) of Regulation (EC) No 6/2002, subject to limitation in time? 

(b) If Question 4(a) is answered in the affirmative: Is the limitation in time governed by European Union law and, if so, by which provision? 

5. (a) Is the right to obtain an injunction prohibiting further infringement of an unregistered Community design, provided for in Article 19(2) and Article 89(1)(a) of Regulation (EC) No 6/2002, subject to forfeiture? 

(b) If Question 5(a) is answered in the affirmative: Is the forfeiture governed by European Union law and, if so, by which provision? 

6. Is Article 89(1)(d) of Regulation (EC) No 6/2002 to be interpreted as meaning that claims for destruction, disclosure of information and damages by reason of infringement of an unregistered Community design which are pursued in relation to the entirety of the European Union are subject to the law of the Member States in which the acts of infringement were committed?"

Can any kind reader supply some background?

If you would like to comment on this case to the UK Intellectual Property Office, please email policy@ipo.gsi.gov.uk by 14 December 2012. Yes, that's Friday -- an absurdly short deadline.  The IPKat has ranted about this on enough occasions, but no-one seems to care.

Industrial Design on the Spot

"Industrial Design on the Spot in WIPO Committee This Week" is the latest piece by Intellectual Property Watch's Catherine Saez to touch on the World Intellectual Property Office's efforts to make progress towards a new treaty on the protection of industrial designs. This article is sparked off by the gathering in Geneva this week of a whole herd of delegates -- officially the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications --  for a focused session on the subject.

As Catherine explains, the intended treaty is meant to simplify and reduce administrative procedures for applicants, whether they are residents or non-residents, by providing harmonised rules. In this blogger's opinion, the rules in place in some countries for deciding what can be protected and what has been infringed are more complex and arbitrary than any quantity of bureaucratic red tape -- but Geneva this week is neither the time nor the place to resolve those issues.

Do take the time to read Catherine's piece (which is bound to be followed up by further posts, if there's anything worth reporting) if you want to get the flavour of the 28th session of the Standing Committee, and/or if you are really excited by the truly unromantic bits of design law.

Analysis of the Neuman gnomes

We briefly posted a note on the recent CJEU decision in Joined Cases C 101/11 P and C 102/11 P – Neuman, Galdeano del Sel and OHIM v Baena Grupo – Neuman.  You can find a much better analysis on the decision, and its significance in design/trade mark conflicts, by Class 99 stalwart Henning Hartwig on Bardehle's website here - highly recommended. 
Our item on the General Court decision (the subject of the appeal), with some background, is here.

Design image preparation

Readers who file design applications may find much of value in this MSc dissertation by Irmak Yalçıner, of Yalciner Consulting, accurately though not snappily entitled Visual Representation in Industrial Design Registration: A Proposed Guideline for Turkey Based on Legal Texts and Guidelines from Eight Different Jurisdictions, and Interviews with Turkish Patent Examiners, and in excellent English.  The eight concerned include the US, Canada, OHIM, WIPO, Korea and the UK.  Let's hope that the Turkish Patent Institute picks up her suggestions.

Here are some of the references she lists:

1. Canadian Industrial Design Office Practices (Annex B has helpful example drawings).
2. Australian Designs Application Process (this Guide is perhaps more useful)
3. Old UK IPO example drawings, and more recent ones (of which I am proud to say that two of the three were filed by Jenkins), and Guide
4. KIPO overview of the Korean Design System, and Application Procedure page
5. Turkish Industrial Design Guide
6. US PTO Design Patent Application Guide (very useful)
7. WIPO's Hague Agreement Guide

I would add to these a link to OHIM's new Manual on design examination practice, a "live" document which is much more detailed than the Guidelines, and contains many example pictures.  Finally, the JPO, bless them, has a set of subtitled videos on design protection here - worth watching with your design law buddies over pizza and beer.

Damages for IP infringement: 70 % of infringer’s profits not too much

Besides the decor, these glasses were bought
because you can drink out of them, the Court said...

On October 12, 2012, the Munich District Court found, in case of an imitation of a glass protected by German copyright law, that the claimant is allowed to claim recovery of the defendant’s profits while the defendant is not allowed to deduct more than 30 % from the profits made; the claimant is reported to have recovered some EUR 400,000.00.

Starting with the general rule that infringer’s profits can only be demanded to the extent to which they are obtained as a result of the infringement, the Court argued that this is not a rule of strict causality but rather amounts to an evaluation of the different motives for buying the imitation.  In the case at hand the defendant had challenged the claimant’s argument that the decor of the infringing glasses was the only buying motif.  However, the Court considered the decor of the original to be dominating, with the shape of the glasses and “their character as being made manually and not manufactured by a machine” also being a cause of the purchase decision.  In assessing these facts the Court found a share of 70 % of the purchase decision to be triggered by the decor of the infringing device.

Interestingly, the defendant argued that the claimed and granted profits were up to 20 times higher than the claimant would have received by way of contractual royalties.  However, the Munich Court found that the infringer’s profits are not limited by the amount of a fictive license and may exceed the latter since the “surrender of the infringer’s profits precisely aims to skim off the advantage obtained by the infringer due to the infringing acts”.  Likewise, the Court rejected the defendant’s further argument that the profits made must be reduced “due to an allegedly slight negligence” when committing the infringement.

The decision is of significance because there are voices claiming that recovery of damages under the various approaches – proprietor’s lost profits, infringer’s profits, reasonable royalty – should lead to comparable results.


Thanks to Adrian Kleinheyer (PhD candidate) for spotting this judgment. 

Catheter removal pack not protected as UK unregistered design

On Wednesday, in CliniSupplies Ltd v Park and others [2012] EWHC 3453 (Ch), Mr Justice Arnold (Chancery Division, England and Wales), struck out Clinisupplies' claim for infringement of a UK unregistered design right in a catheter removal pack, on the basis that the features which were listed in the particulars of claim disclosed no grounds upon which design right could be asserted.  The claim, as amended, read:

"CliniSupplies is the owner of the following unregistered design rights in the shape and configuration of the Vesica product and/or its design, pursuant to section 213 of the Copyright, Design and Patents Act 1988 …. In particular, the Claimant will rely upon the following features and each of them, and any combination thereof, of the design, namely:

(1) The overall external profile of the Vesica product, comprising two separate layers with each layer separated from the other by a sterile wrapping.

(2) The overall product comprising a catheter removal pack containing various components sited upon and within a larger catheter insertion pack with each pack wrapped in a sterile field made of polyethylene tissue.

(3) The larger catheter insertion pack wrapped in a sterile field made of polyethylene tissue which visibly contains a receiver and/or receptacle, which holds the additional components in this pack.

(4) The catheter removal pack wrapped in a sterile field made of polyethylene tissue which visibly contains various components.

(5) The overall product packaged in clear plastic packaging so that the overall product is visible.

(6) A small pouch (25ml) of saline solution attached to the underside of the clear plastic packaging.

(7) The catheter removal pack and the configuration of its components. In particular, the latter in the following order: a white plastic apron, clinical disposable bag, gloves, syringe, and three 4-ply non-woven swabs.

(8) The catheter insertion pack and the configuration of its components. In particular, the latter in the following order: a receiver, a white plastic apron, clinical disposable bag, gloves, two procedural drapes, second set of gloves, five cotton balls in a gallipot, a catheter fixation strap, five 4-ply non-woven swabs, a urine drainage leg bag and bag straps.

(9) The configuration of the component parts of the Vesica product and in particular their positioning relative to one another; this configuration was designed by reference to aseptic non-touch techniques, such techniques not previously being used in any urology product. These aseptic non-touch techniques were developed by clinicians in conjunction with the Claimant and were not publicly available until the Claimant launched the Vesica product in May 2011."

 Arnold J observed that this list of features read more like claims to a series of concepts, such as one might find in a patent application, than like the description of a design. Having examined each of the nine claimed features in turn, the learned judge concluded that six of them were excluded from design right because they were a method or principle of construction, while the remaining three were mere concepts.

So why did CliniSupplies do this? Arnold J supplied the motive: the company had pitched its claim at this conceptual level precisely because the degree of similarity between CliniSupplies' and Park's products was minimal.

Community designs: happy birthday next April

OHIM proudly announces a very special event, as you can see from that organisation's website:

10 Years of the Community Design

The year 2013 marks an important milestone in the history of the Office for Harmonization in the Internal Market, as we celebrate the filing of the very first registered Community design on 01/04/2003. 

Since that day, there have followed more than 460 000 registrations, with an increase of around 75 000 each year.

To mark this special anniversary with as many professionals and experts from the design community as possible, OHIM is hosting a two-day, non-profit conference in Alicante on 8 and 9 April 2013.

This high-profile event will take place in the municipal ADDA auditorium and will boast an impressive list of keynote speakers from the worlds of industry and design – as well as in-house IP experts from OHIM.

Internationally renowned designer Javier Mariscal and world famous chef Quique Dacosta will be just two of the top-level innovators and creative artists addressing the attendees.

From the IP world and industry we will have with us top names such as Gerhard R. Bauer, 2011 President of the International Trademark Association (INTA) and Chief Trademark Counsel of Daimler AG or Jean-Jacques Canonici Procter & Gamble, Director & Patent Manager, Innovation, EMEA, to mention just a few.

There will be plenary sessions on legal issues like design case-law, filing practice and enforcement as well as organised breakout sessions on everything from gastronomic to urban design.

The design case-law of the Court of Justice and the enforcement of Community designs will also be discussed by the legal experts present, with judges reflecting on ten years of the Regulation.

Artists, designers, businessmen and top IP professionals from around the globe will come together for this unique event.

The Class 99 team proudly announces that it will be well represented on this exciting and historical programme -- but you'll have to wait till OHIM publishes the full programme before you discover which of us will be on it!

Design protection in Ireland: tell us more!

Often referred to as the Emerald Isle,
Ireland is actually made up of four
colours, as the picture above proves ...

Class 99 doesn't get too much news and information about design protection in Ireland. That's why we are pleased to tell you that there's a snippet of available Ireland-specific information for you. It's "Intellectual Property Protection for Designers", which you can read here on the Arthur Cox website (Arthur Cox sounds like a sole practitioner, but is actually a large law firm with an all-Ireland practice. Herbert Smith used to have the same problems with his name till he changed it to Herbert Smith Freehills).

The similarity of Irish law to that of the UK law, based partly on close commercial and legal links and partly on the fact that each jurisdiction has had to implement the same package of European design rights, might lead one to guess that this account is just a description of UK law with the 'UK' crossed out and 'Ireland' inserted.  But there's more to it than that. As the Arthur Cox article, penned by the excellent and venerable Robert Clark, concludes:

"These comments on Irish Law are generally accurate of UK law also although UK Law has a separate 15 year unregistered design right. Generally speaking, the complaint should be made in the country where infringement occurs".

This in turn suggests that there should be a follow-up on what it's like to pursue a design infringement claim through the Irish courts. Is the length of time taken in litigating IP matters a tiresome myth or a painful reality? How IP-savvy are the Republic's judiciary at trial and appellate level? What's Ireland like for interim and final relief?  And how much can contested design infringement be expected to cost?  Given the ever-improving opportunities for forum shopping, it would be great to know.

Hague clears hurdles in US

Our thanks to US design and copyright practitioner Garfield Goodrum for this hot-off-the-press update:
" ... the U.S. House this morning passed Hague in the form of S. 3486, the Patent Law Treaties Implementation Act of 2012, passed the House by voice vote under suspension of the rules.  It now goes to the White House for signature, and then the US PTO will work on rule-making and actual implementation."
Sounds close to implementation.  We will keep you posted.

OHIM amends amendment guidelines

OHIM's Alicante News brings word of forthcoming changes to the Examination Manual.  That of most interest is probably the practice on pictures which are considered objectionable.  It had been the case that these could be deleted or substituted.  The new practice will apparently remove the possibility of deletion as this would change the identity of the design.
It appears to us that this is not always the case.  For example, a design consisting of the usual six orthogonal views (front, back, top, bottom, left, right) is usually fully represented without the addition of an isometric view (although that addition is usually desirable for those who don't dream in 3D), so the removal of a formally defective isometric view ought not to change the design.  Likewise, an isometric view may remove the need for one of the orthogonal views if one side is fully seen in perspective.
It is also unclear whether the same logic would apply to priority claims.  OHIM only allows 7 views but it is not uncommon for a priority application elsewhere to include a larger number.  If Community Design X represented in 6 views has a different identity to Community Design X represented in 7 views for amendment purposes, can Community Design X in 7 views claim priority from foreign Design Y represented in 9 views?  And what of novelty - does adding or removing a view automatically create a novel design?  I therefore think the answer has to be - it depends on what the views show, and not just on their number.  Let's see whether the Guidelines say the same.

Summary of radiator case

Our thanks to OHIM for their lengthy and helpful English language summary of the joined General Court radiator cases (T 83/11 and T 84/11) which we mentioned some weeks back.  As the judgment itself is still unavailable in English, this is the best available so far.
The summary deals with the "crowded field" or "prior art density" test we mentioned in our posting, indicating (correctly, in my view) that it is a different test to the statutory "design freedom" subtests for individual character and infringement, but one with a similar effect.
Also dealt with are the effect of dashed lines, size, trends and the informed user.  We continue to look forward to the official English translation.