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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

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

Hague System: Amendments to Common Regulations

Robert Stutz, Co-Chair of the MARQUES Designs Team, explains the significance of amendments to Rule 3 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement, which come into force on 1 January 2019

The Hague System is an important tool to protect designs on an international scale and MARQUES continues to raise knowledge and use of that system through a series of workshops in collaboration with WIPO.

MARQUES is always represented at the Working Group Meetings of the Legal Development of the Hague System in Geneva and thus is in the frontline regarding all substantial changes made to this System.

Amendments to Rule 3

The Assembly of the Hague Union adopted amendments to Rule 3 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement at its 38th session, which recently took place in Geneva. With these amendments, together with the increase geographical scope the appeal of The Hague System continues to increase for practitioners and rights holders alike.

In essence, the Assembly of the Hague Union relaxed the requirement to submit a power of attorney at the time of filing of an international design application. As it currently stands, “the appointment of a representative may be made in the international application, provided that the application is signed by the applicant”.

If the application is not signed by the applicant, however, the International Bureau requires a separate power of attorney signed by the applicant. This requirement has proven to be challenging for all parties involved, since strict deadlines have often to be met in order to safeguard the applicant’s rights and interests.

Therefore, as of 1 January 2019, the appointment of a representative in the international application no longer requires the signature of the applicant. The International Bureau will consider that that person has been authorized to file the application and to be recorded as the representative for subsequent procedures and the resulting international registration.

The appointment of a representative not initially indicated as such in the international application at the time of filing, however, will continue to require a power of attorney signed by the applicant.

The International Bureau will apply the changes to all international applications that have a filing date on or after 1 January 2019.

For further information please consult Information Notice No. 12/2018 relating to Amendments to the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement.

Robert Stutz is a lawyer with Beutler Künzi Stutz AG and Co-Chair of the MARQUES Designs Team

This article is included in the December 2018 issue of HouseMARQUES, the monthly MARQUES newsletter. Read the issue in full here.

Posted by: Blog Administrator @ 14.29
Tags: Hague System, Amendments, Designs Team ,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA866

Resources on new Hague e-filing interface

WIPO released an improved e-filing interface for international applications on 20 November 2018.

The new interface makes it easier to file applications, communicate with the International Bureau and manage portfolios online. There is also a new and easier payment portal.

WIPO has made available the following resources for Hague System users:

Information Notice No. 13/2018



Posted by: Blog Administrator @ 17.05
Tags: Hague, WIPO, e-filing,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA865

1.24 million design applications filed in 2017

An estimated 945,100 industrial design applications containing 1.24 million designs were filed worldwide in 2017, according to WIPO’s annual World Intellectual Property Indicators (WIPI) report.

The report, published on 3 December, reveals that the office of China received applications containing 628,658 designs in 2017, corresponding to 50.6% of the world total.

It was followed by the EUIPO (111,021), the KIPO (67,357), Turkey (46,875) and the U.S. (45,881). Among the top 20 offices, the fastest growth in design counts occurred in the U.K. (+92.1%), Spain (+23.5%) and Switzerland (+17.9%).

WIPO stated:

Offices located in Asia accounted for more than two-thirds (67.9%) of all designs in applications filed worldwide in 2017, followed by Europe (24.4%), North America (4.2%), Africa (1.5%), Latin America and the Caribbean (1.2%), and Oceania (0.7%).

Designs related to furnishings accounted for 10% of global filing activity[2] , followed by those related to clothing (8.5%) and to packages and containers (7.2%).

The total number of industrial design registrations in force worldwide grew by 5% to reach 3.75 million. Around 1.46 million (38.9% of world total) were in force in China, followed by the Republic of Korea (339,350), the U.S. (321,314), Japan (254,060) and the EUIPO (210,605).

The WIPI report also includes data on patents, trade marks, geographical indications and plant varieties. Read more on WIPO’s website here.

Posted by: Blog Administrator @ 09.05
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA863

Last chance to register for WIPO Hague seminar on 7 December

6pm on Friday 30 November is the deadline to register for the Hague System Seminar "Going Global; New E-Filing Interface with Improved Look and Feel". The seminar takes place at WIPO on 7 December.

WIPO says the Seminar will introduce significant changes to e-filing:

With the expansion of the Hague System continuing, a new interface for E-Filing has been developed to better meet the needs of the system’s growing number of users throughout the world.  New features include a modern design, simpler application screens and processes, and new payment methods. The seminar will provide an in-depth, hands-on look at how you can create an application, communicate with the Hague Registry, upload documents, and contact customer service, all online from your computer, tablet, or smartphone. To take full advantage of the Seminar, remember to take your electronic device with you!

An overview of recent developments in the Hague System will also be presented and a frequent user of the Hague System will provide practical experience from the point of view of an SME. You will have the opportunity to interact with Hague Registry experts and the invited speaker, as well as to seek advice, share opinions, experiences and ideas.

The Seminar will be in English. The sessions will be led by various WIPO experts, with the participation of one IP practitioner.

The Seminar is aimed at all design practitioners and costs Sfr300. Find out more and register your place here.

Posted by: Blog Administrator @ 09.09
Tags: WIPO, Hague System, Geneva,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA862

Hague System webinar: last chance to register

Class 99 readers may be interested in WIPO's webinar on the Hague System E-Filing Interface, which  takes place from 10:00 to 10:30 CET on Monday 19 November.

Today is your last chance to register for free here. WIPO says:

Register now for a free, interactive Webinar that will provide you with an in-depth look at the all new Hague System E-Filing interface. The Webinar will cover new features, as well as give practical guidance on completing, sending, and managing your application online.

Designed with both new and experienced Hague System users in mind, this Webinar will be presented live (in English), allowing you to directly interact with presenters.  Registered participants will also receive presentation materials and video recordings following the Webinar.





Posted by: Blog Administrator @ 20.04
Tags: Hague System, WIPO,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA861

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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