THURSDAY, 17 MAY 2018
BREXIT - draft chip law change

The UK Government maintains a page with information on BREXIT legislation here

On the relatively short list of example drafts amending legislation is an intellectual property example, in the form of the draft Design Right (Semiconductor Topographies) (Amendment) (EU Exit) Regulations 2018.  A link to the draft is here, and the explanatory memorandum is here.  This is a form of design protection for semiconductor chips, and it illustrates the complexity of the legislative task facing the UK.  The current law is effectively provided by secondary legislation The Design Right (Semiconductor Topographies) Regulations 1989, which amend Part III of The Copyright Designs and Patents Act 1988 to deal with semiconductor chip designs.   

The current Regulations are made under the European Communities Act, to implement Directive 87/54/EEC, but as the UK and the EU are both bound by other international commitments (specifically Section 6 of TRIPS and the Washington Treaty (aka the Treaty on Intellectual Property in respect of Integrated Circuits or IPIC), so BREXIT makes no difference to the substantive law the UK must provide - it just makes a lot of work for the Parliamentary and departmental draftsmen.

We take some comfort at least from the fact that the UK IPO is in the vanguard in preparing draft legislation.  Even so, it will clearly take some time to get the whole lot written and through Parliament.

Posted by: David Musker @ 16.10
Tags: Brexit, semiconductor topographies,
Link: https://www.marques.org/class99?XID=BHA847

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TUESDAY, 15 MAY 2018
London Design Round Table - June 8

A don't-miss event for all Class 99 readers - UNION's forthcoming London design meeting has a stellar cast including:

  • Douglas Campbell QC [Deputy High Court Judge, GB]
  • Dr. iur. Jan Tolkmitt [Presiding Judge, Hamburg District Court, DE]
  • Prof. David Musker [Queen Mary University of London, GB]
  • Prof. Estelle Derclaye [University of Nottingham, BE]
  • Dr. iur. Torsten Dilly [Senior Legal Counsel, BMW, DE]
  • Brigitte Grab [Senior Legal Manager, Global IP Services, Procter & Gamble, DE]
  • Dr. iur. Henning Hartwig [Partner, Bardehle Pagenberg, DE]
  • Sara Ashby [Partner, Wiggin, GB]
  • Jean-­Jacques Canonici [IP counsel, Gevers, BE]
  • Giorgio Checcacci [Partner, Porta, Checcacci & Associati, IT]
  • Thomas P. Canty [Founding member Frankfurt office, Leydig, Voit & Mayer, US]
  • Charles L Mauro [Mauro Usability Science & UX Optimization, US]
  • Véronique Pede [Partner, Cape IP Law, BE]

and a UKIPO speaker [TBC].  Topics include:

  • Prior art in Design Law - validity and infringement proceedings
  • Strategies in case of multi­state - design litigation in the EU
  • From the EU to the US - strategies when first filing a European design
  • Brexit and designs - impact and preparation in view of March 2019

The full flyer is here, and registration (via Eventbrite) is here.  We hope to see you on the 8th!

 

 

Posted by: David Musker @ 19.49
Tags: UNION, London, meeting,
Link: https://www.marques.org/class99?XID=BHA846

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TUESDAY, 15 MAY 2018
Diary dates for design devotees

Design practitioners might be interested in the following events being hosted by MARQUES over the next few months:

  • Meet the Judges – Belgrade, Serbia, Thursday 31 May 2018: the first MARQUES Judges Meeting in Serbia will feature sessions looking at different aspects of trade mark law and practice, followed by a roundtable discussion. Speakers include judges, professors and members of the IP Office. Find out more and register here.
  • Mastering The Hague Agreement – London, UK, Monday 18 June 2018: the latest instalment of the series of events on The Hague Agreement, in cooperation with WIPO, will take place just days after the UK joins the Hague System. A must-attend event for UK design practitioners! The full programme, timings and registration details are here.
  • MARQUES 32nd Annual Conference – Paris, France, Tuesday 18 to Friday 21 September. This year’s Conference theme is “Branding Style” and there will be sessions on topics including “Mark your design” and “Design your mark” and “Challenges to fashion, luxury and other seasonal industries” as well as updates on EU case law, Brexit and much more. Full details of the programme, social activities and workshops are available on the Annual Conference website.

Also note that EUIPO is hosting a webinar today (15 May) at 11.30am on RCD filing and correct use of disclaimers. This will be presented in English by Kaspars Pubulis of the EUIPO Operations Department. Find out more and sign up here.

Posted by: Blog Administrator @ 08.09
Tags: Hague Agreement, Annual Conference, EUIPO,
Link: https://www.marques.org/class99?XID=BHA845

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FRIDAY, 4 MAY 2018
Iran ratifies Locarno Agreement

WIPO has published the following notification on its website:

Locarno Agreement Establishing an International Classification for Industrial Designs

Ratification by the Islamic Republic of Iran

The Director General of the World Intellectual Property Organization (WIPO) presents his compliments to the Minister for Foreign Affairs and has the honor to notify the deposit by the Government of the Islamic Republic of Iran, on April 12, 2018, of its instrument of ratification of the Locarno Agreement Establishing an International Classification for Industrial Designs, signed at Locarno on October 8, 1968, as amended on September 28, 1979.

The said Agreement will enter into force, with respect to the Islamic Republic of Iran, on July 12, 2018.

The country is the 55th contracting party to the Locarno Agreement, and the first to join since 2014.

Posted by: Blog Administrator @ 08.38
Tags: Locarno Agreement, Iran, WIPO,
Link: https://www.marques.org/class99?XID=BHA844

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WEDNESDAY, 25 APRIL 2018
JIPLP Special Issue on Designs

Just a brief mention that Vol 13 Issue 4 of JIPLP, the Journal of Intellectual Property Law & Practice, is a special issue entirely devoted to designs, which contains the papers from the recent conference on design law reform in Singapore. 

And, most importantly, access is free until May 18th.

A link to the edition is here.  Happy reading,

Posted by: David Musker @ 17.38
Tags: journal, jiplp, jiplap, singapore,
Link: https://www.marques.org/class99?XID=BHA843

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FRIDAY, 20 APRIL 2018
Facelift doesn't necessarily create individual character

We like to refresh things. Designers and producers like to refresh classic products hoping to receive "new old"�designs, although it doesn't mean that such facelift helps in crossing the red line between creating on an informed user an impression of a different individual character of a product and lack of such impression. This problem is particularly vital in automotive industry.

The examples of these difficulties in finding said border line might be noticed in Board of Appeal Decisions issued not long ago in cases described below.

The decision of January 11, 2018 (case number R1203/2016-3, Kraftfahrzeuge) concerned invalidation of CRD Nr. 762851-0001 (1-2) presented below. Several earlier versions of VW Cady (3, 4) were presented by the party aiming to invalidate this CRD, whereas the newest version was reported as contested design.

� 1.� 2.

� 3.4.

The Board of Appeal didn't agree with the Invalidity Division and found that the differences between the designs are sufficient to create a different overall impression. The reasoning was based on the statement that The informed user knows that car models which have been successful on the market are modernized over the years both technically and aesthetically. Despite the coincidence in the overall shape of the car, the differences in the design of the rear lid, the radiator grill, the position and shape of the head lights as well as the difference in the overall proportions will not go unnoticed.�The characteristic of relevant sector is that that designs for car models are necessarily adapted to new aesthetical developments.

In further decision of January 19, 2018 (Case number R1496/2015-3, Ciclomotori) Board of Appeal found CRD No 1 783 655-0002 (5, 6) as producing different overall impression on informed user than earlier designs (7, 8). This is because The scooter according to the contested RCD is characterized by essentially straight lines and angles whereas the earlier design is essentially dominated by curvaceous lines.

5. 6.

� 7.8.

In the next two decisions of�January 19, 2018 the Board was analyzing Porsche car designs (case number R0945/2016-3, Kraftfahrzeuge; R0941/2016-3 Personenkraftwagen, both appealed to General Court), and found contested designs 001230593-0001 (9) 000198387-0001 (11) as deprived of individual character due to publication of earlier designs (respectively 10, 12).

9.10.

11. 12.

The Board's reasoning referred to informed user who knows that designs for car models are necessarily adapted to new aesthetical developments�"Nevertheless, it does not follow that any minor alteration of the design will have a relevant impact on the overall impression. While there are some differences between the designs, the overall impression remains the same, taking into account that most of these differences concern features such as the head lights, the mirrors and the bumper which also serve a technical function".

When trying to sum up the above, the conclusion that prevails is that the "self-saturation"�of design market is dangerous for owners of classic and popular designs. From perspective of design proprietors, their long lasting success may lead to loss of possibility to protect new versions of old designs through their registration. It seems that new versions of designs where main body differs at least slightly from previous version shall be on the safe side, whereas modifications limited only to changes of small elements will not be found as sufficient.

Posted by: Krystian Maciaszek @ 21.43
Tags: facelift, individual character ,
Link: https://www.marques.org/class99?XID=BHA842

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MONDAY, 16 APRIL 2018
Finnish Market Court judgment in Volkswagen AG v Vannetukku.fi Oy

We are pleased to share this guest blog post on a recent decision in Finland concerning wheel rims, written by Suvi Haavisto:

 

Background

The Market Court of Finland (MAO) handed down its judgment on 9 March 2018 regarding design infringement of wheel rims in Volkswagen AG v Vannetukku.fi Oy (MAO:141/18).

The German automotive manufacturing company Volkswagen AG (Volkswagen or VW) had filed a design infringement claim with the Market Court against a Finnish tyre and wheel rim seller vannetukku.fi Oy (Vannetukku). The case concerned the illustrated wheel rims.

VW's design number WO DM/079 881-1  "Fit for VW Reperbahn" wheel rim

Volkswagen claimed that Vannetukku had infringed VW's international design registration number WO DM/079 881-1 designated in the European Union by, inter alia, importing, offering for sale and selling the wheel rim – for which Vannetukku used the title "Fit for VW Reperbahn".

VW claimed that the Market Court must confirm the infringement and prohibit Vannetukku from proceeding with the infringement. In addition, VW claimed reasonable compensation of €800 for the use of the design and compensation of €4,200 for the damage caused by the infringement, and legal fees of €60,613.09 (expenses of €2,283.09 and attorney's fees of €58,330). In the beginning, the claims were much higher: €20,000 for reasonable compensation and €100,000 for damage compensation, but VW reduced the amounts during the trial.

Vannetukku did not deny the design infringement but claimed that the infringement was not negligent. Vannetukku had ceased the sales of the subject wheel rims and destroyed its remaining stock after becoming aware of VW's claim. In addition, registered Community Design number 002649970-0025 owned by Vannetukku's group company Paalupaikka Oy had been surrendered voluntarily. Vannetukku claimed it had not been aware of VW's prior registration.

Vannetukku had imported 16 pieces of the "Fit for VW Reperbahn" wheel rim: two of them were destroyed in testing, four were test-purchased by VW and eight were sold to Norway. The remaining two pieces were destroyed. According to Vannetukku, the calculatory margin for one wheel rim would be at the most €50, and therefore, Vannetukku admitted €800 for reasonable compensation for the use of the design. However, Vannetukku claimed that the damage claim should be rejected and that there is no need for confirming the infringement or injunction as the use had already been ceased.

Judgment

The Market Court acknowledged the main rule is that in a case of design infringement, the defendant must be prohibited from proceeding with the infringing acts, unless there are special reasons for not doing so. The Market Court pointed out that it had set a preliminary injunction on 15 June 2016 for Vannetukku not to continue the use, sales and marketing etc of the "Fit for VW Reperbahn" wheel rim under penalty of a fine of €50,000. The preliminary injunction had obviously been effective so that the infringement had not continued. The Market Court considered that there was no special reason not to order the injunction in the main hearing.

Compensation for damage requires that the infringement is negligent or intentional. Taking into account that the wheel rims were identical and Vannetukku had marketed them as being suitable for VW's vehicles, the Market Court considered that the infringement had been at the very least negligent. The Market Court noted that VW carries the burden of proof for damage. The Market Court considered that Vannetukku's sales did not directly mean that the sales of VW would have been decreased. Also, regarding the claimed harm for reputation and loss of goodwill, the Market Court considered that there has not been any evidence that Vannetukku's rims would have been poor quality. The fact that two rims had been destroyed in testing does not as such mean that the rims would have been poor quality. Thus, actual damages had not been proved.

According to the Finnish Code of Judicial Procedure, the party who loses the case is liable for all reasonable legal costs incurred by the necessary measures of the opposing party, unless otherwise provided by law. If several claims have been made in the same case and some of them are decided in favour of one party and some in favour of the other party, the parties are liable for their own legal costs, unless there is a special reason for rendering a party liable, in part, for the legal costs of the opposing party. As VW's other claims except for compensation on damages were accepted, the Market Court considered that Vannetukku is liable for VW's legal costs and the amount of €45,000 for attorney's fees was considered reasonable in this case.

Conclusion

The Market Court confirmed that Vannetukku had infringed VW's design and ordered Vannetukku not to continue the infringement. The Market Court obliged Vannetukku to pay Volkswagen reasonable compensation of €800 for the use of the design as well as legal fees of €47,283.09, consisting of expenses of €2,283.09 and reasonable attorney fees of €45,000. The claim for compensation for damage caused by the infringement was dismissed.

Please note that this judgment is not yet final – the date for requesting permission to appeal and preparing the appeal expires on 8 May 2018.

By Suvi Haavisto of Roschier in Helsinki, a MARQUES member

Posted by: Blog Administrator @ 16.54
Tags: Volkswagen, Market Court, MAO 141/18, Vannetukku.fi,
Link: https://www.marques.org/class99?XID=BHA840

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