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CLASS 99


The blog for design law, in Europe and worldwide. This weblog is written by a team of design experts and fans. To contribute, or join us, or for any other reason, email class99@marques.org.

Who we all are...
Blog Administrator
David Musker
Henning Hartwig
Hidde Koenraad
Krystian Maciaszek
Peter Gustav Olson
THURSDAY, 30 MAY 2019
Just one week until Mastering the Hague Agreement in Milan

The next MARQUES Mastering the Hague Agreement event takes place next Thursday, 6 June in Milan, and there are still some places available!

If you are considering registering, you might like to know that MARQUES has obtained accreditation for the seminar from the Italian Ordine dei Consulenti in Proprietà Industriale. This means that participants who attend and sign the register at the beginning and end of the event will obtain two professional credit points.

The half-day seminar starts at 15:30 and is the latest in a series of MARQUES events providing tips on the functioning of the Hague System and how to use it in practice. Registration costs €75. More information is available on our earlier Class 99 post and on the registration page on the MARQUES website.

Posted by: Blog Administrator @ 07.28
Tags: Hague Agreement, WIPO, Gregoire Bisson,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA873

FRIDAY, 10 MAY 2019
Master the Hague Agreement in Milan

The next edition of the popular MARQUES event on the Hague Agreement, organised in association with WIPO, will take place in Milan on 6 June.

The half-day seminar will provide tips on the functioning of the Hague System and how to use it in practice. There will be a particular focus on the different substantive requirements in examining jurisdictions, with advice for European users on navigating new Hague members, such as Japan, the Republic of Korea and the United States.

The Milan event is being hosted by Bugnion S p A and Studio Torta S p A and will be hosted at Bugnion’s office at Viale Lancetti, 17. The programme will be in English and Italian.

Registration will start at 15.30 and there will be two substantial presentations by Gregoire Bisson (Director, The Hague Registry, Brands and Designs Sector, WIPO) and Ing. Fabio D’Angelo (Patent and Design Consultant, Studio Torta).

The seminar costs €75. To find out more:

See the overview

Read the programme

Register online

For information on previous editions of Mastering the Hague Agreement, see the Class 99 blog posts on the events in Munich, London, Copenhagen and Paris.

Posted by: Blog Administrator @ 10.32
Tags: Hague Agreement, WIPO, Gregoire Bisson, Milan,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA872

THURSDAY, 11 APRIL 2019
Further (and FINAL) extension of EU designs consultation

The European Commission has extended the deadline for the consultation on the evaluation of EU legislation on design protection until 30 April 2019 (midnight Brussels time). 

MARQUES understands that the deadline will not be extended beyond this date, so anyone interested in submitting comments should do so this month. 

MARQUES encourages members interested in design law to consider making a submission.

For more information, see the following pages:

Consultation (European Commission)

Interview with Designs Team members

More details about the evaluation (Class 99)

 

Posted by: Blog Administrator @ 14.46
Tags: design consultation, European Commission,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA871

MONDAY, 1 APRIL 2019
Designs Team members on the EU designs consultation

Class 99 presents an interview with Sebastian Fischoeder of Bird & Bird LLP, Co-Chair of the MARQUES Designs Team, and Hanna Karin Held, thyssenkrupp Intellectual Property GmbH, a member of the Team, about the public consultation on the evaluation of EU legislation on design protection, which runs until 15 April 2019.

 

Why is this consultation happening now?

Sebastian: After the EU Design Directive and the EU Design Regulation entered into force in 2001/2002 and after having reviewed and amended the EU trade mark regime, the EU Commission started a review of the EU design law regime.

The Commission has commissioned an economic review and a legal review of the design system in the EU, which were published in 2015 and 2016. There is now a public consultation which has been extended to 15 April this year.

What are the main issues people should be aware of?

Hanna: There are three main objectives that we at MARQUES have highlighted: (1) it is important to have a clarification of the law and correction of misunderstandings in the case law; (2) it’s important to have some harmonisation and simplification of rules; and (3) there are political issues such as spare parts and 3D printing, which people will have different views on.

Sebastian: As to spare parts: It’s important to emphasise that the political issue of spare parts should not obstruct the design review. If this issue cannot be agreed, it should be postponed to future legislation, rather than holding up the other important issues we’ve raised.

In terms of harmonisation and simplification, one important thing is to get rid of the same-class requirement in multiple applications by amending the Regulation and the Directive. Another is to get rid of the RCD restriction on seven pictures for a design application: abolishing such formal requirements would make international filings easier. Also, such requirements are an obstacle to aligning international standards.

Hanna: This is an important point. We are now constrained to just seven views in the EU. At my company, we sometimes file in 20 countries at the same time, including the EU, for one product. In the EU we can only have seven views whereas in countries such as Japan we sometimes need to file more.

Applicants should be able to use the same set of pictures around the globe, and this is something MARQUES is pursuing at WIPO and other forums too.

Sebastian: Other issues related to harmonisation include the deferment regime, which we would like to see mandatory and aligned at the member state level. We would also like to see it mandatory that there is no ex ante examination of the validity of designs in EU member states.

Hanna: One thing that is basic but important is terminology: we already talk about “EU designs” informally and it would help understanding, particularly for small companies, if RCDs are also officially called EU designs (similar to EU trade marks).

What are the issues arising from case law?

Sebastian: This is quite a broad category of issues arising from the legal review of the design protection system. That recommended introducing a general visibility requirement and we are strongly against that, and believe that the case law needs to be corrected. There is and should be only a visibility requirement for component parts in complex products. Introducing a general visibility requirement would create protection hurdles, contrary to applicants’ interests.

We also don’t want design protection extended to non-visible features, such as tactile aspects of a product. And we would like a much narrower and clearer definition of technically dictated design features which are excluded from protection. The notion of technicality has been interpreted far too broadly, and does not distinguish between mere functionality and technicality.

We would like stricter rules on prior disclosure: too-remote disclosures should not be considered as novelty-destroying. Finally, we would like a clarification that GUI appearances are not excluded by the computer programs exclusions. In some jurisdictions, protection of GUIs is not possible and we would like to see a clear signal on this from the EU.

Hanna: The GUI issue is one of the most important issues for many companies. Design is no longer just about a product; it can be virtual applications. There is a lot of investment in GUIs to distinguish applications so it is important to be able to protect the get-up and the visual look. There is no harmonisation on a global level, and as a first step it is important to know that GUIs can be protected independently of the product.

What about fees?

Sebastian: Designs are fairly inexpensive and are good value for money compared to other IP rights. There are two minor issues with fees. First, costs per design can get very cheap when you have a lot of applications in a multiple application. We think a bulk rebate is fair as it reflects the administrative burden. Second, renewal fees increase significantly with each renewal term. We don’t understand why that is – it seems illogical that they increase.

MARQUES understands that it can be burdensome for small Member States to maintain a design registration infrastructure so prices at EUIPO can’t be too low or national systems could collapse. We need to maintain the freedom of choice for applicants between national and EU systems.

What has MARQUES done so far?

Sebastian: After the legal review was published in 2016, its conclusions sparked some discussion on whether and where, and to what extent, changes in the law are necessary. MARQUES came up with a comprehensive position paper and we also published a joint paper with ECTA and INTA. Both are available on the MARQUES Position Papers page.

The MARQUES position was based on feedback from rights holders and, in particular, corporate Team members. Interestingly, the feedback was not just focussed on changing the existing law, but also identified the need to clarify the existing law in order to preserve an overall well-functioning system.

Should companies also consider responding to the consultation?

Hanna: I would definitely recommend they do. There are several parts in the consultation and there is room to reply just to those questions that are most basic and to the general questions for everyone. You can skip the questions that are specific to legal advisers if you want.

Who can respond to the questionnaire?

Sebastian: Anyone can, and we encourage anyone who has an interest in design law, whether professional or academic, to do so.

Hanna: This is also a good opportunity to raise the awareness of designs in general in companies and firms. Design protection is often under-estimated by both companies and lawyers. It’s cheap, quick and efficient so can be very useful against counterfeits.

Find out more about the public consultation, and follow a link to the questionnaire, on the European Commission website here.

Posted by: Blog Administrator @ 15.35
Tags: design consultation, European Commission,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA870

THURSDAY, 21 MARCH 2019
Consultation on EU design legislation extended

The stakeholder consultation on the evaluation of EU legislation on design protection has been extended until 15 April. 

MARQUES encourages all members, in particular corporate members, to submit comments if they have not already done so. 

You can read more about the consultation in this Class 99 blog post from last month.

MARQUES members can also read the MARQUES position paper on this topic, and the joint paper published with ECTA and INTA, on the Designs Team page.

Look out for an interview with members of the Designs Team about the reform, which will be published on Class 99 soon.

Posted by: Blog Administrator @ 13.52
Tags: design consultation, European Commission,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA869

SUNDAY, 24 FEBRUARY 2019
Australia’s designs repair defence under the spotlight

Tyrone Berger reports on the judgment in GM Global Technology Operations LLC v SSS Auto Parts Pty Ltd [2019] FCA 97, Federal Court of Australia, 11 February 2019

Australia’s Federal Court has ruled that spare parts can be acquired for both repair and enhancement, and the repair defence should be available in such cases. This is the first judgement examining the repair defence in the Designs Act 2003 (Cth).

Car owners purchase cheaper Holden cars and upgrade them with parts designed for more expensive models, such as the Holden Special Vehicle (HSV). GM Global Technology became aware in 2013 that the defendant SSS Auto Parts was importing replica parts for HSVs and commenced proceedings alleging that the parts infringed its designs registered under the Designs Act 2003 (Cth).

In response, SSS Auto Parts sought to rely on the repair defence in Section 72. When a defendant raises the repair defence under Section 72, the onus is on the registered owner to prove that the alleged infringer “knew or ought reasonably to have known” that use of the impugned parts was not for the purpose of repair.

SSS Auto Parts claims that the use of each of the impugned parts is for the purpose of repair so as to restore its overall appearance of the product in accordance with Section 72(1)(c). In evidence was the defendant’s claim that its business model was always to supply spare parts for repairs. The company relied on the implementation of ‘repair only policies’ and an executed sales directive.

Burley J stated that “it is difficult to imagine a more explicit indication of the purpose”. His Honour held that GM Global Technology had not discharged its burden of establishing that the importing, keeping for sale or offering for sale of replica parts was not for the repair purpose.

This case proves the difficulties for registered owners to establish that a relevant party knew or ought reasonably to have known that use of the impugned part was not for the repair purpose.

Tyrone Berger is a PhD candidate, Faculty of Law, Monash University, Melbourne

Posted by: Blog Administrator @ 17.30
Tags: repair, Designs Act 2003, Holden,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA868

MONDAY, 11 FEBRUARY 2019
Consultation on EU design legislation

The latest issue of EUIPO’s Alicante News newsletter includes information on the public consultation on the evaluation of EU legislation on design protection.

The stakeholder consultation has been launched by the European Commission. Alicante News states:

The feedback gathered will support the evaluation of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (‘Design Directive’) and of Council Regulation (EC) No 6/2002 of 12 December 2001 on the Community designs (‘Community Design Regulation’) with a view to establishing the degree to which that legislation works as intended and can still be considered fit for purpose.

The consultation builds on and follows previous research, analysis and targeted surveys conducted as part of two studies, one carried out in 2015 and the other carried out in 2016, on the economic and legal review of the design protection systems in the EU, at national and at Union level.

The consultation activities will help the European Commission to draw conclusions on the need for improvement, modernisation and further harmonisation of the current legal acts. The results of the consultation may feed into an impact assessment study for a possible legislative review of the existing legislation

The consultation can be accessed here.

More details about the consultation from the MARQUES Designs Team will be posted on the Class 99 blog soon.

The January issue of Alicante News also includes:

  • Statistical highlights from December 2018
  • Updates on the EUIPN, including new members of TMview and DesignView
  • Case law from the CJEU, General Court and Boards of Appeal
  • Information on the IP Mediation Conference being held on 30 and 31 May
Posted by: Blog Administrator @ 09.38
Tags: Alicante News, Design Directive, European Commission, EUIPO,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA867

MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


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