An interesting OHIM invalidation case is reported in the latest Alicante News. The contested RCD was in colour. A cited RCD (monochrome but otherwise identical) was filed later but claimed an earlier priority - from a colour Chinese application.
On priority, OHIM found that the cite validly claimed priority since all elements were present within the priority document. On conflict with the cite, they found that the monochrome cite covered all colours. Thus, the RCD infringed the cite, and was invalid. They compare the case with their earlier decision (also reported in Alicante News) finding a colour design lacked priority from a monochrome priority application.
These decisions set up a complex legal pattern, given that (a) some countries don't allow colour any part in design registrations, and (b) some don't issue colour copies of priority documents. Nonetheless, if OHIM's analysis is correct (and I am not wholly convinced) then there are clear benefits to filing in monochrome except where the colour really does make a significant difference to the design.
Wednesday, May 27, 2009
Tuesday, May 26, 2009
UK Designs - Priority Practice Change
The UK IPO announced at the most recent RPWG meeting that it is considering changing its practice to permit filing a declaration that the design is identical to a claimed priority filing, so as to avoid the need to file a certified priority document. Sounds sensible enough, but are substantive and procedural differences worldwide so great that a similar form would have a dissimilar effect and vice versa? And is it right that third parties should be unable to look at the priority document?
Comments welcomed, either here or to me.
Comments welcomed, either here or to me.
Sunday, May 17, 2009
IP Blogger in libel battle
We see Shireen Smith's blog is under siege, and add our moral support to that of the IPKat and Class 46. Good luck, Shireen. IP Confidential has some interesting background and commentary.
Friday, May 15, 2009
EU Design Consultation
OHIM's website brings news of a new EU consultation on design. Based on the Commision Working Document "Design as a driver of user-centred innovation", the consultation is open until 26 June.
Here's the opening of the Executive Summary of the Working Document:
The Commission Staff Working Document on ‘Design as a driver of user-centred innovation’ analyses the contribution of design to innovation and competitiveness. The results are compelling: companies that invest in design tend to be more innovative, more profitable and grow faster than those who do not. At a macro-economic level, there is a strong positive correlation between the use of design and national competitiveness.
Although often associated with aesthetics and the ‘looks’ of products only, the application of design is in reality much broader. User needs, aspirations and abilities are the starting point and focus of design activities. With a potential to integrate for example environmental, safety and accessibility considerations — in addition to economic — into products, services and systems, design is an area which deserves public attention.
According to the Commission, the Working Document "provides an analysis of the rationale for making design an integral part of European innovation policy." The aim of the consultation "is to find out whether more should be done at EU level in the area of design and if so, what." My answer is that more funding and training ought to be put into anti-piracy measures to stem the tide of ripoffs.
Here's the opening of the Executive Summary of the Working Document:
The Commission Staff Working Document on ‘Design as a driver of user-centred innovation’ analyses the contribution of design to innovation and competitiveness. The results are compelling: companies that invest in design tend to be more innovative, more profitable and grow faster than those who do not. At a macro-economic level, there is a strong positive correlation between the use of design and national competitiveness.
Although often associated with aesthetics and the ‘looks’ of products only, the application of design is in reality much broader. User needs, aspirations and abilities are the starting point and focus of design activities. With a potential to integrate for example environmental, safety and accessibility considerations — in addition to economic — into products, services and systems, design is an area which deserves public attention.
According to the Commission, the Working Document "provides an analysis of the rationale for making design an integral part of European innovation policy." The aim of the consultation "is to find out whether more should be done at EU level in the area of design and if so, what." My answer is that more funding and training ought to be put into anti-piracy measures to stem the tide of ripoffs.
Tuesday, May 12, 2009
What is the test for the infringement of US design patents?
The Patently-O blog has reported a Federal Circuit decision relating to their own 'ordinary observer' test for infringement. It appears not to have helped clarify the test, so as usual more decisions will be needed until we know what they intend the test to be.
Monday, May 11, 2009
Car Wars
We have been debating designs in the automotive sector in Europe for decades - but it has all been about spare parts. Car companies haven't been ripping each other off, and spares makers haven't been putting the parts together to make the whole. Well, welcome to the 21st century - the game has changed, and its name is now China. There's even a ripoff Rolls out there.
Most recently comes the Beijing decision on the Neoplan Bus GmbH (a MAN subsidiary) v. Zhongwei Bus & Coach Group, its subsidiary Zonda Industrial Group and its sales agent Beijing Zhongtong Xinhua Vehicle Sales Co. Their A9 bus is a dead ringer for Neoplan's, but at a third of the price. Good news - they won.
Zonda's website contains a sturdy rebuttal describing their ludicrous (and ultimately unsuccessful) counterclaim that the Germans were the ones ripping them off. Here's how they put it, in terms that every pirate wishes were true (it often is in China, it seems):
"In fact, this kind of lawsuit is not uncommon in the automobile industry. Toyota once filed a lawsuit against Geely, a Chinese car maker, for allegation of intellectual property right violation, but it is often the defendant sides win such lawsuits because there is no commonly accepted way in judging whether an automobile model has copied another or not."
Alas for them, producing a dead copy of a market leading design does tend to be an accepted way of spotting a knockoff. So does repeated and systematic copying. So they lost - or at least, they lost that round (they claim to be appealing).
Back to designs. Honda brought the first big Chinese test case back in 1997 against Shanghai Feiling Motorcycle Co. and Zhejiang Huari Co; their “mini-scooter” design was held invalid along the way but by 2004 their appeal had finally been upheld, at third instance. My recollection is that they lost in the end, but perhaps that is just natural pessimism; does anyone out there recall the outcome?
Their WAVE motorbike was also copied and Chinese exports went all over Asia. They had varied success in killing off the infringers. They took a beating in China when, in 2003, they sued Shuanghuan for infringement of the design of their CR-V SUV. Also in 2003, General Motors sued Qirui (same company as"Chery"? and perhaps "Geely" or "Jili"?) for infringement of their Daiwoo Matiz car compact design. That one apparently settled, reputedly on bad terms for GM.
Flushed with success, Shuanghuan pirated BMW's X5 SUV. Apparently fearing the same outcome as GM, according to MIP, the Bavarians let the infringements run in China but went for Shuanghuan in September 2007 on their home turf in Frankfurt, and got an interim injunction preventing them from launching at the Frankfurt auto show. At the same show, DaimlerChrysler kept Shuanghuan's Noble (a clone of the amazing Smart microcar) out of the show.
The latest is between the same opponents, but in Turin, triggered by the Bologna Auto Show. According to Trevizan & Cuonzo (look under Legal Update), DaimlerChrysler sued over two infringing models using both International Design registrations and a CTM shape mark, and posted one success and one failure on the design, but both infringed the trade mark.
With the world's oldest civilization, biggest population, best engineers and lowest prices already in their favour, isn't it time to ask why so much of China's automotive industry (remember, we haven't even looked at the spare parts and tyre ripoffs) is dedicating itself to such blatant piracy? It's not as if China is short of the brains to design their own cars, so why don't these companies do so? And, more worryingly, why they should think such obvious cut-price copies are going to be accepted meekly in the EU? Europe's auto industries may be looking pretty sick, but are they really giving off such signs of weakness that launching copies at major trade shows is an option?
We could urgently do with some strong, positive messages from the European courts that innovation and good design will be protected, and that obvious and blatant copying helps nobody. The confusion test isn't enough; even if the public intellectually know they're getting a cheap fake not the real thing, the subtle message is that the fakes are "as good as" the real thing. Don't believe me? Well, according to the according to the German importer, the litigation "elevates our products to the same level as BMW and Smart." Really? I think not. But in the long run, unless the EU takes IP enforcement seriously, the triumph of piracy may well bring the death of quality in the automotive sector.
Most recently comes the Beijing decision on the Neoplan Bus GmbH (a MAN subsidiary) v. Zhongwei Bus & Coach Group, its subsidiary Zonda Industrial Group and its sales agent Beijing Zhongtong Xinhua Vehicle Sales Co. Their A9 bus is a dead ringer for Neoplan's, but at a third of the price. Good news - they won.
Zonda's website contains a sturdy rebuttal describing their ludicrous (and ultimately unsuccessful) counterclaim that the Germans were the ones ripping them off. Here's how they put it, in terms that every pirate wishes were true (it often is in China, it seems):
"In fact, this kind of lawsuit is not uncommon in the automobile industry. Toyota once filed a lawsuit against Geely, a Chinese car maker, for allegation of intellectual property right violation, but it is often the defendant sides win such lawsuits because there is no commonly accepted way in judging whether an automobile model has copied another or not."
Alas for them, producing a dead copy of a market leading design does tend to be an accepted way of spotting a knockoff. So does repeated and systematic copying. So they lost - or at least, they lost that round (they claim to be appealing).
- http://www.chinadaily.com.cn/bizchina/2009-01/22/content_7419231.htm
- http://english.ipr.gov.cn/ipr/en/info/Article.jsp?a_no=270390&col_no=126&dir=200903
- http://www.sipo.gov.cn/sipo_English/news/internationalip/200904/t20090417_454486.html
Back to designs. Honda brought the first big Chinese test case back in 1997 against Shanghai Feiling Motorcycle Co. and Zhejiang Huari Co; their “mini-scooter” design was held invalid along the way but by 2004 their appeal had finally been upheld, at third instance. My recollection is that they lost in the end, but perhaps that is just natural pessimism; does anyone out there recall the outcome?
Their WAVE motorbike was also copied and Chinese exports went all over Asia. They had varied success in killing off the infringers. They took a beating in China when, in 2003, they sued Shuanghuan for infringement of the design of their CR-V SUV. Also in 2003, General Motors sued Qirui (same company as"Chery"? and perhaps "Geely" or "Jili"?) for infringement of their Daiwoo Matiz car compact design. That one apparently settled, reputedly on bad terms for GM.
Flushed with success, Shuanghuan pirated BMW's X5 SUV. Apparently fearing the same outcome as GM, according to MIP, the Bavarians let the infringements run in China but went for Shuanghuan in September 2007 on their home turf in Frankfurt, and got an interim injunction preventing them from launching at the Frankfurt auto show. At the same show, DaimlerChrysler kept Shuanghuan's Noble (a clone of the amazing Smart microcar) out of the show.
The latest is between the same opponents, but in Turin, triggered by the Bologna Auto Show. According to Trevizan & Cuonzo (look under Legal Update), DaimlerChrysler sued over two infringing models using both International Design registrations and a CTM shape mark, and posted one success and one failure on the design, but both infringed the trade mark.
With the world's oldest civilization, biggest population, best engineers and lowest prices already in their favour, isn't it time to ask why so much of China's automotive industry (remember, we haven't even looked at the spare parts and tyre ripoffs) is dedicating itself to such blatant piracy? It's not as if China is short of the brains to design their own cars, so why don't these companies do so? And, more worryingly, why they should think such obvious cut-price copies are going to be accepted meekly in the EU? Europe's auto industries may be looking pretty sick, but are they really giving off such signs of weakness that launching copies at major trade shows is an option?
We could urgently do with some strong, positive messages from the European courts that innovation and good design will be protected, and that obvious and blatant copying helps nobody. The confusion test isn't enough; even if the public intellectually know they're getting a cheap fake not the real thing, the subtle message is that the fakes are "as good as" the real thing. Don't believe me? Well, according to the according to the German importer, the litigation "elevates our products to the same level as BMW and Smart." Really? I think not. But in the long run, unless the EU takes IP enforcement seriously, the triumph of piracy may well bring the death of quality in the automotive sector.
Friday, May 8, 2009
Design Searching - Beyond The Product?
According to an article in Alicante News a new design classification intended to assist searching is under development. It would be based on "visual search features ... regardless of the purpose of the object that they represent" - something I have long argued to be essential in Europe where protection and prior art is similarly divorced from product.
Here are the three key features:
Here are the three key features:
- Parts of designs which contribute significantly to the appearance of the product and as such may be considered the relevant state of the art should be classified. For example – a picture of a car applied on a bottle. Both should be classified – bottle and car.
- Where the application is for part of a design (possibly with the remainder represented using broken lines or indicated by some other means such as highlighting or text) both the whole article and the part should be classified. This would enable a system to search for designs or visual feature elements across all classes.
- A text search should also be possible, i.e. full text search in claims, word disclaimers as well as words incorporated in a design.
The Pilot Group included delegates from Canada, Czech Republic, United Kingdom, Russia, Benelux Organization for Intellectual Property, and OHIM. It would be good to see Japan and China involved, in view of the number of designs they generate. There were some user organisations there too, but, given the emphasis on defining the system for users, I am surprised that the NGOs were primarily trade mark organisations, and that the professional searchers' bodies, PIUG and PATMG, weren't there, nor any patent group. Since the only aim of classification in Europe these days is searching, what on earth is the logic in leaving them out? I sometimes get the impression that the powers that be in the EU see designs as a kind of petty trade mark (or perhaps it is allergic to anything involving the word "patent") and when it comes to consultation, the attitude seems to be - "round up the usual suspects." If the Group is serious about making a system for users, erhaps the next sessions will be a bit more inclusive, and better trailed in advance.
Wednesday, May 6, 2009
Improved OHIM e-Filing
OHIM's new RCD e-filing system is live, replacing the old one. I've just trialled it. There are a couple of major improvements:
- The data is apparently uploaded directly into the mighty OHIM computer system - there isn't a little man or woman re-keying it anymore;
- You get a proper filing receipt right away, looking like the snail mail version;
- You can review a pdf looking vaguely like the paper application form.
Friday, May 1, 2009
Progress towards design harmonisation?
WIPO's SCT (Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications) has turned it's attention in the last few meetings to looking at design law. It carried out a survey of its members on a huge range of issues (see the questionnaires Part I and Part II), and the Secretariat has produced a commentary on the responses (here) and a useful summary of the results (here). As the summary says this is not meant to be a definitive statement of law and practice.
The documents are provided in English, French and Spanish.
The next meeting of the SCT is in June and from the recently released agenda there is going to be a discussion on "Possible Areas of Convergence in Industrial Design Law and Practice". Given time and political will, this may lead to a DLT, to match the existing PLT and TLT.
Watch this space ....
The documents are provided in English, French and Spanish.
The next meeting of the SCT is in June and from the recently released agenda there is going to be a discussion on "Possible Areas of Convergence in Industrial Design Law and Practice". Given time and political will, this may lead to a DLT, to match the existing PLT and TLT.
Watch this space ....
Changes to the Hague Agreement
Here's a link to WIPO Information Notice No. 18/2008 on some amendments to the Hague International Design system. It does two things: one is to give a fee discount to the worthy poor in LDCs even when they apply through intergovernmental organisations (ARIPO would qualify I guess).
The second is to establish a system for centrally recording the successful entry into the "national phase" or "regional phase", by an Office that examines international applications for this and that. OHIM does so, at least notionally, but according to an article in Alicante News, "In the first nine months of its operation WIPO published 378 IRDs ... OHIM did not find a ground for refusal in any of the published IRDs and hence statements of acceptance were communicated to WIPO for all of them." The mysterious "statements of acceptance" OHIM have been sending will now be made public by WIPO, so you can check that an international design did become valid in the EU and anywhere else that adopts the same practice. WIPO is the only place you'll find this information, as OHIM decided not to record any information itself about international designs covering Europe (unlike its trade mark practice).
The second is to establish a system for centrally recording the successful entry into the "national phase" or "regional phase", by an Office that examines international applications for this and that. OHIM does so, at least notionally, but according to an article in Alicante News, "In the first nine months of its operation WIPO published 378 IRDs ... OHIM did not find a ground for refusal in any of the published IRDs and hence statements of acceptance were communicated to WIPO for all of them." The mysterious "statements of acceptance" OHIM have been sending will now be made public by WIPO, so you can check that an international design did become valid in the EU and anywhere else that adopts the same practice. WIPO is the only place you'll find this information, as OHIM decided not to record any information itself about international designs covering Europe (unlike its trade mark practice).
Choice of Court Agreements
My last post heralded the arrival of "Brussels II". Another of the things it seems aimed at is "ensuring the sound application of contractual agreements as to which courts will deal with the case in the Union". Seems likely that this will implement the Hague Convention of 30 June 2005 on Choice of Court Agreements, which the EU signed up to recently - the US has also signed, but neither has ratified yet. The subject-matter is self-explanatory, and as in the Brussels Convention itself there is a carve-out in Art 2.2 so that it doesn't bite on registered IP rights in the following terms:
n) the validity of intellectual property rights other than copyright and related rights;
o) infringement of intellectual property rights other than copyright and related rights, except where infringement proceedings are brought for breach of a contract between the parties relating to such rights, or could have been brought for breach of that contract;
It does bite on copyright. How about "related rights"? I'd have thought that UK Unregistered Design Right might be covered - it's as close a relative to copyright as you can get - and how about Unregistered Community Design rights? Will Community Designs make it to the good ol' Eastern District of Texas one of these days?
n) the validity of intellectual property rights other than copyright and related rights;
o) infringement of intellectual property rights other than copyright and related rights, except where infringement proceedings are brought for breach of a contract between the parties relating to such rights, or could have been brought for breach of that contract;
It does bite on copyright. How about "related rights"? I'd have thought that UK Unregistered Design Right might be covered - it's as close a relative to copyright as you can get - and how about Unregistered Community Design rights? Will Community Designs make it to the good ol' Eastern District of Texas one of these days?
Brussels Regulation
The Brussels Regulation Regulation 44/2001 is full of great stuff for IP litigators - that forum shopping stuff that forces all the best law firms to have an office in The Hague. However, there are ominous signs that it is going to be hacked about a bit - see this Commission Press Release. Is "Brussels II" on the way? Why else would the Press Release call the one we've got "Brussels I"? One of the things they're addressing is "certain imperfections in the application of certain rules of the Regulation, such as avoiding parallel proceedings in different Member States ...", so forum shopping is definitely on the menu. Consultation will end on 30th June, with a view to legislating by the end of the year - watch this space.
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