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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.

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MONDAY, 19 FEBRUARY 2024
Examination of novelty of designs in Türkiye

A decision of 29 March 2023 of the General Assembly of the Turkish Court of Cassation has clarified whether the examination of lawfulness of the Turkish Patent and Trademark Office’s decision on absolute novelty of a design is limited to the evidence submitted in the opposition process or whether ex officio examination can be conducted at any phase.

Güldeniz Doğan Alkan and Hatice İnci Turan report for Class 99.

The facts of the case

The design subject to the opposition
The design that was the basis of the opposition

After the publication of the design application (pictured top), a company opposed this application by claiming that it lacked novelty. It based its opposition on its own design (pictured below).

Based on the evidence submitted by the opponent, the Office refused the application due to lack of novelty. Thereupon, the applicant requested the cancellation of this decision.

The decision of the IP court

The IP court cancelled the decision and ruled that the application was new, as the expert report determined that it was new based (only) on the evidence submitted before the Office, even though it was not considered new based on ex officio research conducted by the experts.

The IP court overlooked the ex officio research of the experts and only considered the evaluation made by the Office based on the evidence submitted in the opposition process. It stated that the case was about determining whether the Office’s decision was lawful and correct at the date it was rendered.

Therefore, the court found that the novelty examination is limited to the documents provided before the Office. The Office is not entitled to request or examine further ex officio, as re-conducting the absolute novelty examination would be contrary to the assessment of the legality of the Office decision.

The decision of the Court of Cassation

Upon the appeal of the Office as defendant, the dispute was brought before the Court of Cassation, which reiterated that if a design has not been presented to the public anywhere in the world before the application or priority date, it shall be accepted as new.

Therefore, it ruled that the absolute novelty should be examined ex officio by the court by considering the evidence submitted by the parties and the expert examination. Therefore, it reversed the decision.

The decision of the IP Court

Upon the reversal, the IP Court persisted in its decision, stating that the opponent had the opportunity to put forward any evidence in the opposition process and the Office rendered its decision within the framework of this evidence.

It said that only this evidence should be considered; otherwise, it would be concluded that the Office would have made an unlawful decision based on evidence that was not brought before the Office, but which was reached by the experts on their own initiative.

After this decision, the Office appealed again and the dispute was brought before the General Assembly, this time to decide which of the decisions was correct.

The decision of the General Assembly

The General Assembly precisely and clearly ruled that the absolute novelty examination shall be made ex officio, independently from the evidence submitted in the opposition process and the court shall investigate whether the same design has been presented to the public anywhere in the world before the application or priority date.

Likewise, both in a cancellation action against the Office’s decision and in an invalidity action against a design registration, experts shall determine whether the design in question has met the absolute novelty requirement by conducting ex officio research.

Since the element of absolute novelty in patents, utility models and designs is related to public order, it is mandatory both for the Office and the courts to conduct absolute novelty examination ex officio. Therefore, the decision of the IP Court was annulled.

Comments

The decisions going back and forth between the courts contributed to the interpretation of the absolute novelty requirement of designs and its reflection into examination of the evidence both submitted in the opposition and ex officio gathered in court process.

Although the IP Court only considered the evidence submitted before the Office, the approach of the General Assembly complies with the principle of absolute novelty, which arises from public order.

Even if the Office’s decision was requested to be cancelled, the main purpose of the decision was to decide on the design’s absolute novelty and it shall be examined ex officio to meet the requirement of “absoluteness”.

Güldeniz Doğan Alkan and Hatice İnci Turan are members of Gün + Partners in Turkey and Güldeniz is a member of the MARQUES Designs Team

Posted by: Blog Administrator @ 11.39
Tags: novelty, Turkey, examination ,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA983

MONDAY, 15 JANUARY 2024
EUIPO launches new e-filing RCD form

The EUIPO introduced a new e-filing form for registered Community designs on 13 January, which will eventually replace the existing forms for filing applications.

The new form will coexist with the current forms for three months, until 13 April 2024. After that date, only two forms will be available: the RCD easy filing and the new RCD advanced form.

According to EUIPO, the benefits of the new form include:

  • Fresh and adaptive design
  • Enhanced accessibility
  • Guided filing process
  • Tailored configurations
  • Automatic saved drafts
  • New application programming interface

Find out more on this page on the EUIPO and by watching the webinar on the registration process. EUIPO also welcomes feedback on the new form.

Posted by: Blog Administrator @ 12.08
Tags: EUIPO, RCD,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA982

TUESDAY, 19 DECEMBER 2023
EU design reform deal

The EU Council and European Parliament reached a provisional agreement on the designs package on 5 December, paving the way for updates to the directive on the legal protection of designs and the regulation on Community designs.

The changes include the renaming of RCD to EUCD, changes to the definition of design, adjustments to the fees and the introduction of a registered design symbol. The revised directive will also include a new repair clause.

The repair clause excludes from design protection replacement parts for a complex product if they are used to restore its original appearance. It only applies for repair purposes and if the replacement part looks exactly like the original piece (such as a damaged door, or a broken light of a car that should be replaced to make the car look as it was). This clause aims to liberalise the spare parts market and ensure that more accessible spare parts for repair are available to consumers. It provides for an eight-year transition period.

The agreement now needs to be endorsed and formally adopted by the Council and Parliament.

MARQUES has worked alongside ECTA and INTA to provide substantial input during the discussions on the design reform, and the Designs Team held a workshop with speakers from EUIPO during the recent Annual Conference in Berlin.

More information about the reform package is available on the Designs Team page. The Team will provide further analysis once more details are available.

You can find out more in the meantime on the European Council website.

Posted by: Blog Administrator @ 09.06
Tags: design reform, EU, European Parliament,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA981

FRIDAY, 15 DECEMBER 2023
DesignEuropa Awards 2024

The application period for the DesignEuropa Awards opened this week and runs until 15 March 2024.

Nominations can be made in four categories:

  • The Industry Awards
  • The Entrepreneurs and Small Companies Awards
  • The Lifetime Achievement Award
  • The Next Generation Design Award (new, for designers up to 29 years old)

The application criteria are:

  • All designs submitted must be valid RCDs that are marketed and sold (in any country). (This does not apply to the Next Generation Design Award.)
  • All designs entered must be marketed by the owner of the RCD or a licensee.
  • Candidates may submit a maximum of five entries (one RCD per entry), provided that each RCD has been designed by a different designer.

The winners will be announced in a ceremony which will take place in Riga, Latvia.

The EUIPO website has more information, including the rules and a link to nominate.

Posted by: Blog Administrator @ 17.47
Tags: DesignEuropa, Riga, EUIPO,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA980

TUESDAY, 26 SEPTEMBER 2023
Dutch court rules on Rubik's Cube copyright case

Evert van Gelderen of the MARQUES Copyright Team reports on a recent copyright case in the Netherlands, which found that the design of the Rubik’s Cube is protected by copyright but there was no infringement by NexCube.

Rubik's Cube

Spin Master is the current copyright owner of the Rubik’s Cube. Goliath markets another cube-shaped game object under the name (MoYu) NexCube. Spin Master claimed that Goliath was thereby infringing its copyright and started proceedings in the Dutch courts.

According to Spin Master, three copyrights can be distinguished: (1) copyright on the three-dimensional shape of the Rubik’s Cube, (2) copyright on the game concept and (3) copyright on the design of the cube including its colours and grid. Spin Master argued that each of these copyrights was infringed.

In summary proceedings, the interim relief judge of the District Court of Gelderland dismissed Spin Master’s claims (ECLI:NL:RBGEL:2022:2942). On 12 September 2023, the Arnhem-Leeuwarden Court of Appeal also dismissed Spin Master’s claims in appeal (ECLI:NL:GHARL:2023:7632).

No copyright in 3D shape

According to the Court of Appeal, there is no copyright in the three-dimensional shape of the Rubik’s Cube.

In its judgment, the court refers to quotes from the book ‘Cubed’, which was written by the original designer of the Rubik’s Cube. The Court of Appeal attached more value to this book than to the content of a statement of the designer dated 23 May 2022 submitted in these proceedings.

NexCube

The court considered that the Rubik’s Cube is the expression of the idea of the ideal geometric figure according to the conviction of that designer and that the cube is thereby entirely, or at least predominantly, technically and functionally determined.

Moreover, at least that the idea of the Rubik’s Cube coincides with its expression. According to the Court of Appeal, this circumstance prevented the author from expressing his personality in the Rubik’s Cube through free and creative choices.

No copyright in game concept

The game concept also lacks copyright protection, according to the court. The game concept is expressed by the Rubik’s Cube with the six colours and completely coincides with it, so the game concept as such does not constitute a separate work eligible for protection.

Copyright in design

The width, colour and thickness of the grid and colours red, green, yellow, blue, white and orange of the Rubik’s Cube give it an original character, according to the Court of Appeal. To that extent, the cube is copyrighted.

This judgment is in line with an earlier judgment of the same Court of Appeal on 13 July in proceedings on the merits in appeal between Spin Master and Beckx c.s. (ECLI:NL:GHARL:2021:6712).

No copyright infringement

Finally, the Court of Appeal ruled that the overall impressions of the Rubik’s Cube on the one hand and the NexCube on the other hand are insufficiently similar, among other things because:

(a) the (black) grid on the NexCube is missing while, according to the Court of Appeal, the grid is a characteristic visual aspect of the Rubik's Cube,

(b) the colour tones of the NexCube are different, and

(c) the middle sub-cubes of the NexCube have a round finish on all sides instead of a square one.

For these reasons there was no copyright infringement.

Evert van Gelderen is a partner of Clairfort Attorneys, the Netherlands, and a member of the MARQUES Copyright Team. Please contact him directly for further information. The illustrations are taken from the judgment published by the Court of Appeal.

Posted by: Blog Administrator @ 13.16
Tags: Rubik's Cube, copyright, NexCube,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA979

MONDAY, 11 SEPTEMBER 2023
Austrian Supreme Court rules in copyright case

An interesting recent decision from the Supreme Court in Austria concerned illustrations that were amended to serve as animated mascots, but the redesign was never paid for. Christian Schumacher of the MARQUES Copyright Team reports for Class 99.

The story of the animated chocolate mascots

In 2016, the owner of a chocolate museum with an adjacent shop obtained the exclusive rights (including making of derivative works) from an illustration and animation studio to the pictured illustrations, which were intended to be used as mascots called Choco and Coco (see top picture).

Later on the director of the studio was asked to create a proposal for figures, which could be animated, which he delivered (see picture below).

As he did not hear anymore about this project and assumed it was not followed up, he waived the agreed fee. However, the proposal was used as a template for a 3D mascot used prominently for the chocolate museum, as template for plush figures sold there and on various chocolate products.

Derivative works?

The studio (which asserted the rights in the proposals of its director) sued for copyright infringement. The Austrian courts up to the Austrian Supreme Court had to decide whether the proposals qualified for copyright protection as derivative works.

The Austrian Supreme court affirmed, considering that in particular the redesign of the eyes, in connection with the other changes, made the figures appear more cheerful.

This amounted to creative design elements surpassing a mere mechanical simplification (and was not just used for animation purposes by the chocolate museum), which departed not insignificantly from the initial design and therefore met the threshold for copyright protection as a derivative work.

Christian Schumacher is a partner of Schönherr Attorneys at Law, Austria, and a member of the MARQUES Copyright Team. Please contact him directly for further information. The illustrations are taken from the judgment published by the Austrian Supreme Court.

Posted by: Blog Administrator @ 15.06
Tags: Supreme Court, copyright, derivative work,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA978

WEDNESDAY, 6 SEPTEMBER 2023
DesignEuropa Awards 2023 winners

The winners of the DesignEuropa Awards 2023 were announced at a ceremony at the AXICA convention centre in Berlin on 5 September.

The winner in the Small and Emerging Companies category was RemigoOne, an electric outboard motor for boats. It is made in Slovenia and the design is guided by innovation and sustainability principles.

In the Industry category, Italy’s Smeg won for its full automatic espresso coffee machine. The bean-to-cup coffee machine was designed by Vittorio Bertazzoni, Matteo Bazzicalupo and Raffaella Mangiarotti and allows the preparation of different coffee drinks in a simple and intuitive way.

As previously announced, the Lifetime Achievement Award was presented to Maria Benktzon of Sweden (pictured). She has pioneered inclusive design in everything from kitchenware to personal hygiene tools. She is also the first woman to receive the Lifetime Achievement Award.

The award winners were decided by a jury, which was led by French designer Isabelle Vérilhac.

More details about the winners, the finalists and the jury are available on the DesignEuropa page on EUIPO’s website here.

Posted by: Blog Administrator @ 10.10
Tags: DesignEuropa, EUIPO, Maria Benktzon, Smeg, RemigoOne,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA977

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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