CP6 has concentrated on four areas: the use of visual disclaimers; types of view; neutral background; and the format of views. Harmonisation (and clarity) in these areas will be of great benefit to all users of the system, and hopefully the final document will be widely implemented.
Quagmire of case law
Visual disclaimers, such as dotted lines, boundaries, and blurring, have something of a quagmire of case law surrounding them across the member states. Some courts have adopted clear rules (features of a design in dotted lines are disclaimed), whilst others have taken on a more uncertain approach (dotted lines need to be interpreted in their context: they might indicate a disclaimed feature, but they might not).
It is for the distinct benefit of all users that CP6 has adopted the former approach. The courts which have thought it right to interpret dotted lines as anything but indicating a disclaimed feature have always introduced unnecessary complexity and uncertainty into the system. In this area of the law, simplicity and clarity are needed, as it serves to avoid unnecessary and uncertain litigation, and lets all users know where they stand.
The list of acceptable types of view is quite substantial, not only front, back, both sides, top, and bottom, but also aspect views, sectional views, partial and close-up views, exploded views, snapshots in time, and views in alternative positions. The examples given in CP6 of each of these views are instructive of the potential benefits of each of these views, as well as the pitfalls to avoid.
In the final draft, there still remains acquiescence on designs which have some of the views as line drawings, and others as photographs or CAD. It is hoped that this will be taken out of the end product of CP6: all the views of a valid design must relate to the same design, but a photograph of an umbrella and a drawing of an umbrella always disclose different features, and are thus related to different designs. We wait to see what the result will be.
What it means for a design to have a neutral background (and whether it is a requirement) has been the subject of a remarkable amount of disagreement across the different offices in the European Union. CP6 appears to have ended up in a relatively pragmatic middle ground. The design should be clearly identifiable and distinguishable from the background, but it is not a strict requirement that there be no shadows, or that the background be white, for example. This rule balances ease of registrability with ease of interpretation and is to be welcomed.
The problem of neutral backgrounds
One problem appears to remain in the current state of guidance on neutral backgrounds: what happens if the design application is for a picture of a car in a driveway with a house behind it? The Office might reject the application as an unacceptable (because of the non-neutral background) application for the car. How this design will still pass the neutral background scrutiny (as it must, since there is no reason why it is invalid if for use on a brochure, for example) remains to be seen.
The final section of CP6 comprises a very interesting table of comparisons between the offices, outlining the different requirements for formats for views. Not only will this be of use to those engaged in multiple national filings (as it shows how to avoid putting in an application which might be valid in one country, to another office where (because of specific requirements) it would be invalid), it should be of use going forward in the ongoing process of harmonisation.
CP6 is a document which MARQUES members should familiarise themselves with when the final version is published. Whatever aspect or stage of the design system being used, this advice will be relevant, and should serve to simplify matters substantially.
David Stone is Chair of the MARQUES Designs Team and a partner of Simmons & Simmons in London
Issue 056
Algeria’s accession brings the number of contracting parties to 95 and effectively means that from 31st October the Madrid Protocol alone will govern the international registration of trade marks.
