Flat-screen design infringement fails -- not with a Bang but a whimper

From Marlou L.J. van de Braak (Hoyng Monegier, Amsterdam) comes news that her firm's clients (Loewe Opta Nederland BV and two German sister companies) prevailed in proceedings brought by Bang & Olufsen in the Netherlands over Loewe's shortly-to-be-introduced Reference ID flat screen TV. B&O claimed that Loewe infringed their European registered design rights and copyright in the design of the BeoVision10 television, seeking a European cross-border injunction.

Says Marlou:

The President of the District Court of The Hague was of the opinion that he had cross-border jurisdiction to examine not only the claims lodged against the Dutch Loewe entity but also the claims lodged against the German Loewe entities. He subsequently rejected the claim that Loewe's Reference ID television infringed B&O's design. B&O's argument that its registered design constituted a design registration consisting of multiple designs and that, accordingly, only the picture of the front view of the television could be taken into account, was rejected.

According to the judge, the design right relates to a single design; the various pictures merely show the design from different angles and all pictures thus have to be taken into account. The judge was of the opinion that the design invoked did not have a very strong unique character and thus did not have a broad scope of protection. He agreed with Loewe that certain features of the design were already known from the prior art, in part even in combination. The unique character of the design was found to primarily manifest itself in a feature (a passe partout accentuated by a protruding speaker front) which was in fact lacking in the Reference ID.

B&O's copyright claims were also rejected since B&O had not proved that it was the copyright owner under Danish law.

Thanks so much, Marlou, for letting us have not only a copy of the original decision but a crisp, fresh English translation too! English translation here Original judgment

Utopia in court as judge preserves status quo

Utopia Tableware Ltd v BBP Marketing Ltd & Another is an extempore decision of Judge Birss QC, sitting in the Patents County Court, on 21 January 2013. No judgment text is available -- but a short note helpfully appears on the Lawtel subscription-only website.

In short, Utopia, which made and sold Aspen beer glasses (illustrated on the right) for which it held registered and unregistered design rights, sought an interim injunction pursuant to its claim for infringement of design right against BBP. As can be seen, Aspen glasses are relatively tall, waisted glasses. BBP began to sell a range of polycarbonate reusable glasses in their Aspire range, which were also tall and waisted.

After Utopia was granted injunctive relief, the company sought to continue the injunction until the matter was determined. In support of its case, Utopia argued that

• the design of its glasses was not commonplace, even though beer glasses of similar design were on the market, in particular Peroni glasses, and also those of Amstel, Cobra and Carlsberg; 
• it would suffer unquantifiable loss if there were no injunction, since it would lose exclusivity over the shape of the glass, lose its reputation as a supplier of unique glasses, sustain an unquantifiable loss of trade stemming from customers purchasing other products and suffer loss because competitors would be encouraged to produce similar glasses;
• the balance of convenience lay with protecting the status quo.

Judge Birss QC found for Utopia.  In his view, there was a properly arguable case of infringement of a design right which was not commonplace -- even though BBP's Aspire glasses bore an overall similarity to the Peroni glasses. It was certainly the case that Utopia would suffer unquantifiable harm if there were no injunction and the balance of convenience favoured the preservation of the status quo since BBP's Aspire product had not yet been launched properly and it wouldn't suffer too much if injunctive relief were granted.

On the basis of the Lawtel note, this doesn't seem to be an Earth-shattering ruling.

New integrated design search tool - "Designview"

OHIM have added a new free design search, called "Designview", to their website.  Click here to get to it. 
It has apparently been live since November 2012 (but who knew?) and it covers the following design offices, though with differing amounts of information:

• Austria (OPA)
• Bulgaria (BPO)
• Benelux (BOIP)
• Croatia (DZIV)
• Cyprus (MCIT)
• Czech Republic (IPOCZ)
• Germany (DPMA)
• Denmark (DKPTO)
• Estonia (EPA)
• Spain (OEPM)
• Finland (PRH)
• France (INPI)
• United Kingdom (UKIPO)
• Greece (OBI)
• Hungary (HIPO)
• Ireland (IEIPO)
• Italy (UIBM)
• Lithuania (VPB)
• Latvia (LRPV)
• Malta (IPRDMT)
• Poland (PPO)
• Portugal (INPIPT)
• Romania (OSIM)
• Sweden (PRV)
• Slovakia (SKIPO)
• Slovenia (SIPO)
• OHIM (OHIM)
• WIPO (WIPO)

 This sounds wonderful.  But with searches, you need to know the limitations as well as the features, so what we really need are some users to test drive it and give us feedback.

Tablet War: not all over by Xmas ...

Apparently, Apple and Samsung are still skirmishing ... thanks to IPKat's Stefano Barazza for a detailed writeup of the latest Dutch decision on Apple's tablet design 000181607-0001 dated 16 January 2013, concerning the treatment elsewhere of a national court decision on the merits - quite an important procedural point.  Apple lost, by the way.
It doesn't seem to contain much design law as such, but as my Dutch isn't up to more than beer and chips with mayonnaise, we'd welcome analysis or comments from anyone who can read it.

Locarno arrives in Israel

Thanks to Sa'ar Alon, head of the designs department at Reinhold Cohn & Partners, for news that Israel has adopted the Locarno International Classification system (more or less).  Here is a link to their newsletter article.  He says also that the Israeli Minister of Justice recently published a bill for a new design law intended to replace the old Design Ordinance (which dates back to 1926 and is probably a relic of the old UK law) - we will keep you posted when we learn more.

Are you confused and from the US? If so, read on...

Here's a great chance for US IP buffs in particular to get a little bit more familiar with the curious regime that have grown to know, to love and to call EU design law.  Together with the American Bar Association and the Center for Professional Development, MARQUES is sponsoring a live 90-minute webinar on Thursday 7 February which is specifically aimed at the US.  The cast includes Class 99 blog team member David Stone.

You can get further details here.

Dyson a fan of Korean Unfair Competition law

UK designer James Dyson expresses disappointment at the cost and lack of success in preventing Chinese copying of his bladeless fan.
We are therefore grateful to Kim and Chang (via the excellent Lexology newsletter) for reporting Dyson’s apparent victory for in Korea, where they obtained an interlocutory injunction under their patent and also under Korean unfair competition law. Some background from Lee International about the early stages of the case is here.
The patent was KR101038000, equivalent to EP2342466, but that’s another story - we are more interested here in the unfair competition aspect.
It appears that the relevant statute is the Korean Unfair Competition Prevention and Trade Secret Protection Act (Act No. 911 of December 30, 1961 as last amended by Act No. 9537 of March 25, 2009, "UCPA"), according to which one of the acts defined under Art 2(1) as unfair competition is:

(ix) an act of transferring, assigning, exhibiting, importing or exporting goods whose shape (referred to as the form, image, color, gloss or any combination of these, including the shape of any test product or product introduction) has been copied from the goods produced by another person. However, this provision does not apply to either of the following acts :

(a) an act of transferring, assigning, exhibiting, importing or exporting goods whose shape has been copied from other goods more than three years after the date on which the shape of the other goods was completed, such as when the prototype was produced;

(b) an act of transferring, assigning, exhibiting, importing or exporting goods whose shape has been copied from other goods that are identical to the goods ordinarily produced by another person (or from other goods whose function or utility is identical or similar to the goods ordinarily produced by another person);

More or less the same protection exists in Japan under Art 2(1)(iii) of the Unfair Competition Prevention and Trade Secret Protection Act (Act No. 911 of December 30, 1961 as last amended by Act No. 9537 of March 25, 2009), except that the three year term limitation under Art 19(1)(v)(a) runs from disclosure in Japan, whereas the Court in the Dyson case found that the term limit in Korea runs from the first disclosure anywhere in the world.

This is obviously reminiscent of the EU’s Unregistered Community Design system – with the crucial difference that so far as I can see, Korea and Japan do not exclude protection for designs first disclosed outside their own territories, as many think the EU right does. What, then, would have happened in this case if the geography were reversed, and a Korean company sought to enforce rights in the EU?

• The equivalent European patent is not yet off the starting blocks. The UK priority patent application is granted, but as the UK courts do not give interlocutory relief under patents that would not have achieved the desired result.
• Unregistered Community Design protection would be refused in many EU jurisdictions as the design was first disclosed outside the EU.
• Copyright and national unfair competition rules are unharmonised and vary wildly across the EU (neither would assist in the UK, nor would UK Unregistered Design Right be available for a Korean company).

Design registration therefore remains the best deterrent against copying for non-EU companies.

"Cumulation" of copyright and designs in Spain

The Spanish Supreme Court appears to have tackled the thorny question of the interpretation of the "cumulation" requirements of EU Design Directive 98/71 and Community Design Regulation 6/2002, which has been on European minds since the CJEU Flos decision (Case C‑168/09 Flos SpA v Semeraro Casa e Famiglia SpA). 
Industrias de Iluminacion Roura v CM Salvi, Decision STS 6196/2012 of 27 September 2012, concerned copyright and breach of contract in the designs of Roura's YSP lamp posts, depicted.  The decorative base of these minimalist posts is registered in 2002 as Spanish national design I0154097. 
The above link will take you to the Spanish-language decision, and I hope some enthusiastic reader will tell us what it means, as it is too long for Google Translate.  However, in the meantime, thanks to David Pellisé, of Pellisé Abogados, who has produced an English-language summary in AIPPI's excellent newsletter, here.  According to David, the Court held that to benefit from copyright protection, you must meet all the design protection requirements and in addition, have “additional creativity” or “some degree of artistic distinctiveness”. 
By way of background, we note that Roura also attacked Salvi's RCD in a recent OHIM invalidation action here.

Croatia joins Community design regime on 1 July

According to Communication 4/12 from the Office for Harmonisation in the Internal Market (OHIM), the accession of Croatia to the European Union will make its mark on both the registered Community designs and Community trade mark regimes. Croatia becomes a fully-fledged member of the European Union on 1 July 2013. From that very date, all Community designs and trade marks that are on the register will automatically extend to Croatia.

UK design law reform: what you think ...

This blogger has just received the following email from the UK Intellectual Property Office's Designs Review Team:

Today the Government published a summary of responses received during its Consultation on the Reform of the UK Designs Legal Framework. The summary can be found at http://www.ipo.gov.uk/types/hargreaves/hargreaves-designs.htm.

This document is a summary of what respondents to the consultation have said on each of the proposals. It is a purely factual document and does not include any announcements or policy decisions.

Submitted responses, some of which have been redacted to remove personal data, have also been published.

The link above is to the IPO's Hargreaves Implementation: Designs page -- but if you've been there and done that, you can cut to the chase and read the new summary at http://www.ipo.gov.uk/response-2012-designs-summary.pdf.

The summary is some 32 sides long, but take a look before you print it out: four pages are either blank or will waste your colour cartridge for no good reason and there's loads of white space in a document which, it might be felt, could have been shorter.  Annex A (the list of respondents) reads like this:

Alliance For Intellectual Property
Anti Copying In Design
Black + Blum
British Brands Group
British Furniture Confederation
Burgon & Ball
Chartered Institute of Patent Attorneys
City of London Law Society
Clark, Simon
Colman+Smart
Creative Barcode
Creative Designer, a response from
Design Council
Devon County Council Trading Standards Service
Devonshire Pine Ltd
Dickson Poon School of Law
Dyson Ltd
European Communities Trade Mark Association
Federation of Intellectual Property Attorneys
French Solutions Ltd
Gallafents LLP
Harker, Angela
Institute of Trade Mark Attorneys
Intellectual Property Bar Association
Intellectual Property Lawyers’ Association
IP Federation
Jan Constantine Ltd
Kitchin LJ, Floyd J, Arnold J and HHJ Birss QC
Licensing Executives Society
Lucasfilm Ltd
MARQUES
Ministry of Defence
Morgan Contract Furniture Ltd
Motion Picture Association
Mucci, Peter
North East Trading Standards Association
Society of Chief Officers of Trading Standards in Scotland
Unilever N.V. and Unilever Plc

Respondents' suggestions are made at paras 137 to 139. Enjoy!

My Home is My Castle

Some months ago, there were reports that a Chinese construction company “pirated” what appears to be a unique original work of architecture, designed by Iraqi-British star-architect Zaha Hadid. Latest news (here and here) tell us that the accused “Meiquan 22nd Century” (to be built in Chongqing, China) will be probably completed even prior to the original “Wangjing SOHO” (in Beijing, China).

While copyright law should provide a powerful response to this intra-China IP stalking (according to the reports above “Wangjing SOHO and Chongqing Meiquan have entered judicial proceedings”), registered design rights also appear to be interesting provided that the overall impression of the earlier building has been caught in some helpful representations (either digital images or, even better, line drawings). Instructive guidance, from a European perspective, was provided by OHIM’s Invalidity Division in AUDI AG v Röder Zelt- und Veranstaltungsservice GmbH to be found here, where the Office considered a later registered Community design covering “tents” to be new and to have individual character over a prior design of a building (in that case, due to existing differences, the Office denied copyright infringement, i.e., “use of the work”). It will be interesting to see how the “Wangjing SOHO” case will make its way from the news through the court houses …

Original "Wangjing SOHO" 

Reported copy "Meiquan 22nd Century"



ACID website: a spot of enllightenment?

If you are in the habit of checking out the website of ACID (Anti Copying in Design) from time to time, you may not be aware that the organisation is phasing out its site at www.acid.eu.com -- this blogger, a long-time admirer of ACID's effort and ingenuity on behalf of its long-suffering members, followed a link to the following message:

ACID News Home Page

THIS WEBSITE IS BEING PHASED OUT – VISITWWW.ACID.UK.COM

The main change at www.acid.uk.com would appear to be the screen is a good deal easier to read since the text is now black on white rather than reversed out.  Phew!

Alicante Special Modules coming up

The 3rd Community Design Special Module will be held at the Office for Harmonisation in the Internal Market, Alicante, from 18 to 20 February. This event is organised by the University of Alicante's Magister Lucentinus programme. Full details of this event, which stars Class 99 founder David Musker, can be found here.

The Community Design Special Module follows immediately on the heels of the 11th Community Trade Mark Special Module, which will be held in the same place from 11 to 15 February. Details can be found here.