Victor Caddy of Wynne-Jones, a member of the MARQUES Designs Team, reports on a workshop held during the 31st Annual Conference in Prague last week:

This was a joint workshop between the MARQUES Designs and Unfair Competition Teams.

First up was Robert Mirko Stutz (Beutler Künzi Stutz) of the Designs Team who asked the question “is it art or is it design?” and considered a number of possible boundaries between the two, including functionality, context of presentation (art gallery or department store), message (what message is the work or author seeking to convey?), and significance or validity (how was the work materialised?). Bas concluded that it was difficult to distinguish between designs and trade marks that are protected by copyright and ones that are not, and noted, with approval, the French principle that every work protected as a registered design is also protected by copyright.

Attendees were then invited to split into groups to consider three case studies, which collectively covered the commercial use of artwork (a poster for a restaurant), iconic furniture designs (an Eames chair) and lookalike products (biscuits). In the ensuing group discussion, although various rights were considered potentially relevant in each case, it became apparent that the existence (or absence) or design protection was an important issue.

Till Lampel (Harmsen Utescher) of the Unfair Competition Team then developed the discussion further with a presentation about lookalikes in Germany and Europe, which he defined as intentional imitations of well known products, taking the most attractive and distinctive feature, but without slavish copying or imitation, and distinguishing lookalikes from me-too products (which imitate a product, but not the get up) and counterfeits (which are total copies designed to cause complete deception). In the case of lookalikes, Till argued that trade mark protection of brand names is seldom of help to the owners of the well known product being imitated, who usually fall back on unfair competition law, and he suggested that the protection could be strengthened by protecting get up as 2D and/or 3D trade marks, and by design rights, combined with evidence of strong market position. This led naturally into a presentation by Sebastian Fischoeder (Bird & Bird LLP) of the Designs Team on enforcement.

Finally, there was a presentation by Grégoire Bisson, the Director of the Hague Registry, Brands and Designs Sector at WIPO on the do’s and don’ts of filing under the Hague Agreement. To be successful, Grégoire argued that it is necessary to understand that, whereas offices such as the EUIPO do not examine design applications, some offices do, most notably those in USA, Japan and South Korea, and that this can lead to objections on issues such as insufficient disclosure and unclear definition. Many such objections are curable, but cause delay and expense.

Grégoire examined a number of advisable actions when filing under the Hague System aimed at ensuring the smooth progress of applications. These included using legends (although not strictly necessary, it is safer to do so than not), using descriptions to perfect disclosures, to explain and justify absent views (eg “back view is omitted because it is identical to front view”), and to explain views showing different orientations of moving parts. He made the point that mixed representation styles (eg line drawings and photos) should be avoided (but can be used for different designs within the same application).

In the US, it is important to be consistent with a claim to avoid unity objections.  For Japan and South Korea, he explained that product indications are required, which need to be specific, that logos are not registrable as designs, and that care should be taken with related designs not to destroy novelty, so a principal design should be identified, and, as there is no grace period, care should be taken not to file too early. He made the point that a Hague filing can be a first filing (it is possible to designate your home jurisdiction), thereby avoiding issues with claiming priority (priority documents have to be filed through the national office in Japan, which is an added expense).

Thanks to Victor for providing this report.