One of the highlights of this year's MARQUES Conference was the workshop by Class 99 contributor David Stone, "Design: pick up where trade marks leave off". The format of the workshop was simple but effective. First David took the workshop participants through the main features of registered Community design (RCD) law regarding registration and scope of protection. Next, dividing the room into in-house legal teams, he gave each an item and asked the team to come up with two Community trade marks and six RCDs to protect it. Then he gave each team the lookalike product against which their theoretically protected product had been matched in recent litigation and asked them to confess as to whether their advice on registration had beenadequate to protect their product against the lookalike.Right: Pimm's v Pitchers revisited
Although some of the products involved were alcoholic beverages the exercise was a sobering one. For one thing, you soon get the idea as to which players do the work in their offices and which do the social networking. More to the point, the exercise demonstrated how much the protection conferred by the RCD can be likened to a sort of
lottery, since so much is dependent on guesswork. The manufacturer of the original product doesn't know which features of his product a me-too maker will borrow, and the lookalike producer doesn't always know which features of his target have been protected, since publication of the RCD may have been deferred.
Although some of the products involved were alcoholic beverages the exercise was a sobering one. For one thing, you soon get the idea as to which players do the work in their offices and which do the social networking. More to the point, the exercise demonstrated how much the protection conferred by the RCD can be likened to a sort of
lottery, since so much is dependent on guesswork. The manufacturer of the original product doesn't know which features of his product a me-too maker will borrow, and the lookalike producer doesn't always know which features of his target have been protected, since publication of the RCD may have been deferred.Left: WIPO design chief Gregoire Besson watches the workshop with detached amusement
My feeling is that the "what shall we protect?" exercise is done best where the in-house team starts off by pretending it's on the other side and asking how close it can get to the original product without risk of legal action, then work backwards towards a design and trade mark registration policy. But that's another matter ...
My feeling is that the "what shall we protect?" exercise is done best where the in-house team starts off by pretending it's on the other side and asking how close it can get to the original product without risk of legal action, then work backwards towards a design and trade mark registration policy. But that's another matter ...
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