MONDAY, 11 FEBRUARY 2019
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:
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SATURDAY, 22 DECEMBER 2018
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.
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MONDAY, 10 DECEMBER 2018
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:
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FRIDAY, 7 DECEMBER 2018
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%).
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 , 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.
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THURSDAY, 29 NOVEMBER 2018
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.
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SUNDAY, 18 NOVEMBER 2018
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.
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TUESDAY, 6 NOVEMBER 2018
Technical function exclusion – more analysis of DOCERAM v CeramTec
Regular readers will recall that Class 99 blogger David Musker posted about the DOCERAM v CeramTec decision (Case C-395/16) earlier this year. Today we have a guest post with some further comments on the case from Dutch practitioner and MARQUES member Charles Gielen:
The DOCERAM/CeramTec case is the first case dealing with the meaning of the “technical function” exclusion in relation to Community designs. The CJEU’s judgment provides an interpretation of Article 8(1) of Council Regulation (EC) No. 6/2002 on Community designs (the “Regulation”) – and hence, indirectly, also of Article 7(1) of Directive 98/71/EC on the legal protection of designs – which provides that “a design right shall not subsist in features of appearance of a product which are solely dictated by its technical function”. Such features are excluded from the scope of protection of a design and, pursuant to Article 25(1)(b) of the Regulation, a design consisting solely of such features can be declared invalid.
An important judgment
This important judgment answers the following questions: in assessing whether features of a product’s appearance are dictated solely by the product’s technical function, is the existence of alternative designs with the same technical function decisive? And in making such an assessment, should the finding be based on the perception of an objective observer, or on that of someone else or on some other criterion?
The issue is a tricky one because design rights very often involve objects whose technical/functional characteristics are, at least in part, dictated by the use for which the relevant object is intended. A shaver, for example, must fulfil certain functions and the same applies in the case of a lawnmower. The new visual appearance of such an object can be protected by design rights, but this must not result in a monopoly of technical solutions.
This is the background to the “technical function” exclusion, which in this case was applied by the Landgericht Düsseldorf (Düsseldorf Regional Court). The Landgericht decided that the Community designs registered by DOCERAM for weld centring pins were invalid. On appeal, the Oberlandesgericht Düsseldorf (Düsseldorf Higher Regional Court) referred the above two questions to the CJEU for a preliminary ruling.
The CJEU’s decision on the first of the questions set out in 1 above pertains to an issue that is also a well-known subject of controversy in legal literature and case law. For example in The Netherlands, there are two opposing doctrines which, following the nomenclature used by A. Quaedvlieg in his dissertation on the relation between copyright and technology Auteursrecht op Techniek (Nijmegen, 1987), are referred to as the result-oriented doctrine (resultaatgerichte leer), also known as multiplicity-of-forms theory, and the device-oriented doctrine (apparaatgerichte leer), which is also known as the causality theory.
Under the result-oriented doctrine, the “technical function” exclusion does not apply if the same result can also be obtained using another configuration. Under the device-oriented doctrine, the exclusion immediately applies if the product is determined solely by its technical function, irrespective of the possible existence of design alternatives.
In this case the CJEU, like the Advocate-General Saugmandsgaard Øe, has clearly opted for the device-oriented doctrine. It was with much anticipation that the CJEU’s decision on whether it would follow this route was awaited. Although it is true that the CJEU had chosen to apply the device-oriented doctrine in interpreting the “technical function” exclusion (which, incidentally, is formulated differently) in relation to trade marks – see in particular the Philips/Remington judgment (C-299/99), Advocate-General Ruiz-Jarabo Colomer had stated obiter dictum in his opinion in that case (paragraphs 36-38) that there should be a less severe criterion in the case of designs. In the case at hand, however, the CJEU has concluded that from the wording, context and aim of the provision, it follows that the existence of alternative designs does not preclude the application of the exclusion.
The CJEU is clearly of the opinion that the Regulation’s wording does not indicate that the existence of alternative designs is the only factor. As regards the context, the CJEU points out that a design pertains to the appearance of a product; the product’s appearance is the decisive element of a design and it is not necessary for it to have an aesthetic aspect. According to the CJEU, this confirms that protection is excluded if “the need to fulfil a technical function of the product concerned” is the sole factor based on which the designer chose a particular feature of appearance and if “considerations of another nature, in particular those related to its visual aspect” have not played a role in that choice.
There is something worth pointing out here, namely that, because of the use of the words “in particular”, a role can apparently also be played by considerations other than those relating to the visual aspect. What could the CJEU be referring to here? It is possible that what is meant are designs in which it is not the visual aspect that is important but for example the product’s texture, which, as can be seen from Article 3 of the Regulation, is included in the definition of “design”. In any case, as long as it is clear that not solely the technical necessity of a design (or one of its features) was the decisive factor in choosing the appearance of it, the “technical function” exclusion does not apply and the design is protected.
Having addressed the wording and the context, the CJEU lastly turns to the aims of the Regulation to justify its conclusion that in assessing whether external features of a product’s appearance are dictated solely by the product’s technical function, it should be examined whether the technical function is the sole factor which determined those features and that the existence of alternative designs is not decisive in that regard.
The aim of Article 8(1), according to the CJEU, follows from recital 10 of the Regulation, which states that technological innovation should not be hampered. If the “technical function” exclusion were to be rendered inapplicable solely by the existence of alternative designs fulfilling the same function, an economic operator could claim all these different designs, which would seriously hamper technological innovation as competitors would be unable to offer a product with certain functional features and there would be fewer possible technical solutions available.
In fact, in the case at hand, the design right proprietor had registered 17 variants of a weld centring pin as Community designs. As we are about to see, the existence of alternative designs is not without any relevance because the CJEU ruled that it can be one of the factors taken into account in assessing whether external features of a product’s appearance are dictated solely by the product’s technical function.
Thus far, I agree with the CJEU’s decision. There can be no design protection when the product’s external features have been chosen solely by their technical function: the features must have been chosen also on the basis of non-technical considerations, without an aesthetic quality being required.
The second question the CJEU had to answer is whether the basis for assessing whether features of appearance are dictated exclusively by the product’s technical function should be the perception of an “objective observer”. This hypothetical person has been used as the point of reference in decisions by EUIPO on applications for the invalidation of Community designs. As the Advocate-General correctly observed, if the Regulation’s authors had wanted to adopt an “objective observer” as the criterion they would have expressly said so, as they did regarding the determination of the overall impression produced by a design compared to earlier designs, where the criterion “informed user” is expressly mentioned (Articles 6 and 10 of the Regulation).
The CJEU has followed the Advocate-General on this point and decided that the perception of an objective observer is not the appropriate basis for assessment, but that all the objective circumstances relevant to the specific case at hand must be taken into account. However, the only reason given for this is the Regulation’s objective of creating a Community design directly applicable and protected in all the EU member states. Although I can certainly agree with the choice of the “all relevant objective circumstances” test, I do not find the justification very convincing.
Circumstances to take into account
So what kind of circumstances should be taken into account? The CJEU mentions – non-exhaustively and largely following the Advocate-General: first of all, the design in question (which is pretty obvious, I would say) and, secondly, the objective circumstances that indicate why the relevant product’s features of appearance were chosen. With regard to the latter the CJEU does not use the same wording as the Advocate-General, who refers to the designer’s subjective intention. It seems that the CJEU wanted to avoid any form of subjectivity by referring to objective circumstances showing the background of the features chosen. Hence, a statement by the designer about his/her intentions will generally carry little weight.
In addition, the CJEU mentions information on the use of the product or the existence of alternative designs which fulfil the same technical function. It seems logical that the use of the product should play a role; after all, this gives a good idea of the product’s functionality and can help in answering the question as to whether there are any technically determined properties. Take, for example, the round shallow dimples in a golf ball: their shape and distribution influence the ball’s aerodynamic drag. In the case of a lighter shaped like a golf ball, however, this technical aspect is completely irrelevant.
With regard to the second type of information, this I find to be a somewhat thornier issue. Although the existence of alternatives (see above under the discussion of the first question referred to the CJEU) can never be the sole factor for determining whether a feature is dictated solely by the product’s technical function, it can apparently be one of the factors in that determination. But the question is: how? Precisely because the CJEU places such strong emphasis on the Regulation’s aim of avoiding a monopoly of technical solutions, I would think that it is necessary to be cautious about nevertheless factoring in the existence of alternative designs when assessing whether a product’s features are dictated solely by its technical function.
All in all I consider the judgment in DOCERAM/Ceramtec to be correct, albeit subject to the questions I raised above, which will undoubtedly give rise to yet more new judgments.
This post is a translation of an article recently published in the Dutch Law Reports and has been kindly provided to Class 99 by Charles Gielen
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