Following our post earlier today on Sebastian Fischoeder's ID5 presentation, it seems a good idea to remind readers that the problems facing design registration applicants are not something that has only just come to the attention of MARQUES.  The organization's Designs Team has long been active in seeking to clarify, address and ameliorate the range of difficulties facing businesses and individuals who face so many obstacles in seeking a desirable and necessary level of protection for their intellectual creations.  

Bearing this in mind, Class 99 is posting today a note penned by Alessandra Romeo (MARQUES External Relations Officer) back in July 2014. Alessandra writes as follows:

As a general point, MARQUES supports ease of registration of designs. With design registration, even more so than trade marks, if a design application is rejected on a technicality,

because of priority issues, validity may be compromised forever, because the design has previously been disclosed. Unlike a trade mark, it is not possible to file a valid design in the EU more than 12 months after disclosure to the public. Therefore, for users of the system, getting a filing date is very important. It is therefore important for design applications to be accepted as readily as possible.

MARQUES does not advocate either a strict or flexible approach. Rather, we consider that offices should be flexible in what they allow to be registered (i.e., flexible), but strict in their understanding and communication as to what certain things mean. We consider users of the system benefit both at registration and enforcement if, for example, dotted lines are made available across the system, but are strictly interpreted to mean “features not claimed”.

In considering harmonisation of representations used in design filings, MARQUES has been guided by the Sieckmann criteria applied by the Court of Justice to graphical representations in trade mark cases – they must be clear, precise, self-contained, easily accessible, intelligible, durable, and objective.

It also need hardly be repeated that MARQUES supports harmonisation – but of course, harmonisation that promotes overall the interests of users of the system – not simply the ease of one or more offices, or the ease of registrants. Registrants are also users of the system in other ways – they seek to licence and enforce design registrations, and may have design  registrations enforced against them. They are therefore additionally interested in search-ability of registered designs, and enforceability. Put simply, there is no point harmonising at a point that the designs registered cannot be enforced.

MARQUES also notes that design applications within the European Union are often based on filings from outside the European Union – whether Paris Convention priority is claimed or not. Therefore, MARQUES supports international harmonisation on these issues. MARQUES emphasises that too many, rigid and detailed requirements for design filings are an obstacle to international harmonisation. Until international harmonisation is achieved to a much greater extent than currently, design applicants filing on an international scale need flexibility in order to meet the great variety of different (and sometimes even contradicting) requirements.