Wednesday, July 29, 2009
Case Law Book Update
Henning Hartwig of Bardehle, Pagenberg, one of our Class 99 team, has brought out the third annual volume of his invaluable design case law collection Design Protection in Europe (aka Designschutz in Europa). Thus one includes the UK Procter & Gamble and Green Lane cases, and a host of German-language judgments, OHIM invalidation decisions and other material, relating not just to design cases but also to trade marks, copyright and unfair competition. If you deal in product shapes, it is well worth a place on your bookshelf - an excellent and eclectic collection of decisions with commentaries by Henning, Alex von Muhlendahl and other worthies in the field.
ECJ's FEIA decision on commissioned designs
The ECJ has decided the FEIA case C-32/08, and remarkably quickly by their own lights. The case concerned ownership of commissioned designs.
The designs in question (of cuckoo clocks) were part of a project started by FEIA (Fundación Española para la Innovación de la Artesanía, or Spanish Foundation for the Innovation of Craftsmanship) and organised by AC&G SA, who then made an oral contract with Cul de Sac Espacio Creativo SL, the employers of the designs in question. FEIA claimed ownership in the Spanish courts. Spanish law, like that of the UK, vests rights in the commissioner rather than the designer. They won at first instance but on appeal the Court referred the issue to the ECJ.
We reported the AG's Opinion here, back in April. As usual, the Court agrees with the broad thrust of the Opinion.
The headline issue couldn't be clearer:
"the arguments of the FEIA and the United Kingdom Government that the terms ‘employer’ and ‘employee’, in particular, in Article 14(3) must be interpreted broadly in order to apply also to commissioned designs, must be rejected."
These are questions of Community, not national, law:
"Thus, it follows from the need for uniform application of Community law and from the principle of equality that the terms of a provision of Community law which makes no express reference to the law of the Member States for the purpose of determining its meaning and scope must normally be given an autonomous and uniform interpretation throughout the Community, having regard to the context of the provision and the objective pursued by the legislation in question (see, inter alia, Case 327/82 Ekro [1984] ECR 107, paragraph 11; Case C‑287/98 Linster [2000] ECR I-6917, paragraph 43; and Case C‑316/05 Nokia [2006] ECR I-12083, paragraph 21). That is the case for the terms ‘designer’ and ‘successor in title’ in Article 14 of the regulation."
In paras 79 to 82 they deal with the effects of assignments:
"79 It follows from the above that the possibility of assigning by way of contract the right to the Community design from the designer to his successor in title within the meaning of Article 14(1) of the regulation is consistent with both the wording of that article and the aims of the regulation.
80 It is, however, for the national court to ascertain the contents of such a contract and in that regard to determine whether the right to the unregistered Community design has in fact been transferred from the designer to his successor in title.
81 The above considerations clearly do not preclude the national court, in the context of that assessment, from applying the law on contracts in order to determine who owns the right to the unregistered Community design, in accordance with Article 14(1) of the regulation.
82 In the light of all the above considerations, in circumstances such as those of the main proceedings, the answer to part (a) of the third question is that Article 14(1) of the regulation must be interpreted as meaning that the right to the Community design vests in the designer, unless it has been assigned by way of contract to his successor in title."
All clear enough. It does highlight the need to ensure that outsourced designs are clearly covered by contract - the default rule of UK or Spanish law should not be relied on for Community rights.
The designs in question (of cuckoo clocks) were part of a project started by FEIA (Fundación Española para la Innovación de la Artesanía, or Spanish Foundation for the Innovation of Craftsmanship) and organised by AC&G SA, who then made an oral contract with Cul de Sac Espacio Creativo SL, the employers of the designs in question. FEIA claimed ownership in the Spanish courts. Spanish law, like that of the UK, vests rights in the commissioner rather than the designer. They won at first instance but on appeal the Court referred the issue to the ECJ.
We reported the AG's Opinion here, back in April. As usual, the Court agrees with the broad thrust of the Opinion.
The headline issue couldn't be clearer:
"the arguments of the FEIA and the United Kingdom Government that the terms ‘employer’ and ‘employee’, in particular, in Article 14(3) must be interpreted broadly in order to apply also to commissioned designs, must be rejected."
These are questions of Community, not national, law:
"Thus, it follows from the need for uniform application of Community law and from the principle of equality that the terms of a provision of Community law which makes no express reference to the law of the Member States for the purpose of determining its meaning and scope must normally be given an autonomous and uniform interpretation throughout the Community, having regard to the context of the provision and the objective pursued by the legislation in question (see, inter alia, Case 327/82 Ekro [1984] ECR 107, paragraph 11; Case C‑287/98 Linster [2000] ECR I-6917, paragraph 43; and Case C‑316/05 Nokia [2006] ECR I-12083, paragraph 21). That is the case for the terms ‘designer’ and ‘successor in title’ in Article 14 of the regulation."
In paras 79 to 82 they deal with the effects of assignments:
"79 It follows from the above that the possibility of assigning by way of contract the right to the Community design from the designer to his successor in title within the meaning of Article 14(1) of the regulation is consistent with both the wording of that article and the aims of the regulation.
80 It is, however, for the national court to ascertain the contents of such a contract and in that regard to determine whether the right to the unregistered Community design has in fact been transferred from the designer to his successor in title.
81 The above considerations clearly do not preclude the national court, in the context of that assessment, from applying the law on contracts in order to determine who owns the right to the unregistered Community design, in accordance with Article 14(1) of the regulation.
82 In the light of all the above considerations, in circumstances such as those of the main proceedings, the answer to part (a) of the third question is that Article 14(1) of the regulation must be interpreted as meaning that the right to the Community design vests in the designer, unless it has been assigned by way of contract to his successor in title."
All clear enough. It does highlight the need to ensure that outsourced designs are clearly covered by contract - the default rule of UK or Spanish law should not be relied on for Community rights.
Tuesday, July 28, 2009
OHIM accept credit card payments for renewals
OHIM published a notice today explaining how you can pay CTM and RCD renewal fees by credit card.
New UK design practice note on priority
The UK IPO has today posted a new practice notice, Designs Practice Notice DPN 1/09, on a simplified priority claim procedure. Here are CIPA's Designs and Copyright Committee comments on a draft version, by way of background.
Essentially, where you're just filing the identical design in the UK, you can so declare on a special form and thus avoid the need to file a certified copy. Interesting issues arise in relation to the difference (if there is one) between identical representations and an identical design, which the IPO discuss in their DPN. There may also be unresolved questions about the effect of other elements of a design application, such as the identified goods/title.
By way of background, courtesy of the IPO, of UK designs filed in Q1 2009, only 4.1% had convention claims (of these 40% were filed by unrepresented applicants and 60% through agents) as opposed to more than 50% before the introduction of the Community design system. Thus, though a welcome simplification, this measure is unlikely to have major impact on most design system users.
Essentially, where you're just filing the identical design in the UK, you can so declare on a special form and thus avoid the need to file a certified copy. Interesting issues arise in relation to the difference (if there is one) between identical representations and an identical design, which the IPO discuss in their DPN. There may also be unresolved questions about the effect of other elements of a design application, such as the identified goods/title.
By way of background, courtesy of the IPO, of UK designs filed in Q1 2009, only 4.1% had convention claims (of these 40% were filed by unrepresented applicants and 60% through agents) as opposed to more than 50% before the introduction of the Community design system. Thus, though a welcome simplification, this measure is unlikely to have major impact on most design system users.
No. 10 Petitions
Dids McDonald, of Anti Copying In Design (ACID), has started two online petitions. The first encourages the government to criminalise design right infringement, and the second to introduce higher damages. I have signed the second without a moment's hesitation.
The first raises a really important issue. The threat of criminal sanctions certainly works much better than civil penalties, so I can see the attraction.
However, personally, I have always strongly opposed them, not because I am pro-infringer but because criminalising is usually disproportionate to an economic misdeed, and can therefore create martyrs, who have a tendency to turn into folk heroes - like the Pirate Party. The challenge these days is to persuade the public that it is IP creators and those who risk their money to back them, who are the good guys, and it is hard to cast heavy-handed enforcers in that heroic mold.
The first raises a really important issue. The threat of criminal sanctions certainly works much better than civil penalties, so I can see the attraction.
However, personally, I have always strongly opposed them, not because I am pro-infringer but because criminalising is usually disproportionate to an economic misdeed, and can therefore create martyrs, who have a tendency to turn into folk heroes - like the Pirate Party. The challenge these days is to persuade the public that it is IP creators and those who risk their money to back them, who are the good guys, and it is hard to cast heavy-handed enforcers in that heroic mold.
Sunday, July 19, 2009
Working Groups cease work
After many years, the Registry Practice Working Group (RPWG), which had inherited the mantle of the Designs Practice Working Group (DWPG), has now been dissolved. This wasn't at the users' request - these were, in my personal experience, very useful groups.
It was announced at the last (in both senses) meeting of RPWG in June. "Higher level" issues will now be discussed in a new forum called the Trade Marks and Designs Policy Forum. This will deal with policy (as the name implies) and also "significant legal and practice changes". However, "minor issues relating to registry operations and practice will be dealt with elsewhere" - apparently in an online forum.
What is one to make of this? UK trade mark and, particularly, design filings are much more by unrepresented applicants - domestic SMEs and individuals - than in the past, as large companies and foreign applicants have used the European or International routes. I suppose, therefore, that there is perceived to be rather less need to meet representatives. On the other hand, there is no one else to represent the unrepresented.
Perhaps the Registry has merely tired of discussing "minor", or what I'd call bread-and-butter, issues in person. I am generally a fan of electronic forum use. They enable wider consultations. However, I don't think they substitute for human contact. The RPWG and DPWG meetings were a two way street, and what we will miss is not what the Registry gets from us - we can say anything we need electronically - but the chance to recieve information and, more importantly, the feeling that we have been heard, and perhaps understood. I may have got this all wrong, but this move is close enough in time to the IPO's "IP Complaints" fiasco for it to feel like the Registry is trying to disengage from the professions - and if that is right, I suspect that, in the long term, both sides (and therefore, in the long run, applicants and the public) will lose out.
It was announced at the last (in both senses) meeting of RPWG in June. "Higher level" issues will now be discussed in a new forum called the Trade Marks and Designs Policy Forum. This will deal with policy (as the name implies) and also "significant legal and practice changes". However, "minor issues relating to registry operations and practice will be dealt with elsewhere" - apparently in an online forum.
What is one to make of this? UK trade mark and, particularly, design filings are much more by unrepresented applicants - domestic SMEs and individuals - than in the past, as large companies and foreign applicants have used the European or International routes. I suppose, therefore, that there is perceived to be rather less need to meet representatives. On the other hand, there is no one else to represent the unrepresented.
Perhaps the Registry has merely tired of discussing "minor", or what I'd call bread-and-butter, issues in person. I am generally a fan of electronic forum use. They enable wider consultations. However, I don't think they substitute for human contact. The RPWG and DPWG meetings were a two way street, and what we will miss is not what the Registry gets from us - we can say anything we need electronically - but the chance to recieve information and, more importantly, the feeling that we have been heard, and perhaps understood. I may have got this all wrong, but this move is close enough in time to the IPO's "IP Complaints" fiasco for it to feel like the Registry is trying to disengage from the professions - and if that is right, I suspect that, in the long term, both sides (and therefore, in the long run, applicants and the public) will lose out.
Tuesday, July 14, 2009
New ECJ reference on design copyright
The UK IPO mentions a new reference to the ECJ, link here. Polish readers may prefer this link. The case relates to Articles 17 and 19 of the Design Directive 98/71; the former enshrines the principle of "cumulation" of copyright and design protection, and the latter is the implementation provision.
In implementing Art 17 without explicit transitional provisions, Italy did away with the principle of separability, and reintroduced copyright protection. Some Italian cases have precluded copyright protection for pre-existing works, whereas others have held copyright to exist in even those pre-existing works which have been around for many years.
This reference will, hopefully, enable the ECJ to sort out the Italian dilemma at their usual stately speed. It is, however, pretty outrageous to legislate with such flimsy transitional provisions, and the EU knows full well it is not meant to do this; Art 20 of the Interinstitutional Agreement of 22 December 1998 on common guidelines for the quality of drafting of Community legislation states that "Provisions laying down ... transitional provisions (in particular those relating to the effects of the act on existing situations) ... shall be drawn up in precise terms."
Parliament, the Commission and the Council all signed up to that, so when were they thinking of applying it?
In implementing Art 17 without explicit transitional provisions, Italy did away with the principle of separability, and reintroduced copyright protection. Some Italian cases have precluded copyright protection for pre-existing works, whereas others have held copyright to exist in even those pre-existing works which have been around for many years.
This reference will, hopefully, enable the ECJ to sort out the Italian dilemma at their usual stately speed. It is, however, pretty outrageous to legislate with such flimsy transitional provisions, and the EU knows full well it is not meant to do this; Art 20 of the Interinstitutional Agreement of 22 December 1998 on common guidelines for the quality of drafting of Community legislation states that "Provisions laying down ... transitional provisions (in particular those relating to the effects of the act on existing situations) ... shall be drawn up in precise terms."
Parliament, the Commission and the Council all signed up to that, so when were they thinking of applying it?
Monday, July 13, 2009
Korean design law changes
The Korean design system has been revised, supposedly in the light of the credit crunch (though we fear that the design system alone cannot drive the world back into growth). Changes include
- Request for re-examination, as a cheaper alternative to filing an appeal, in the face of rejection;
- Cheaper late payment fines on renewals.
These appear to have kicked in on 1st July 2009, according to Nayoung Kim of Kim & Chang writing in the International Law Office Intellectual Property newsletter.
Oh, and any Patent Office staff who spill the beans can be sent to chokey for up to 5 years. If you are both curious as to the Korean jail experience and deeply unshockable, here's a link to a Midnight Express-style memoir of same - otherwise, not recommended reading. At that level of deterrence, your design filing is probably safe in their hands.
Friday, July 3, 2009
Design Book free online
I have made my 2001 book The Design Directive available free online on the R G C Jenkins & Co website. It was published by CIPA and sold well but is now out of print. Later, though with substantial revision, it formed the basis of the first part of my subsequent book "Community Design Law: Principles & Practice".
The online edition contains a few minor corrections, and the draft article numbers of the Community Design Regulation are replaced by the final numbers, but is otherwise as published in the 2001 publication, of which the review in Copyright World said "... user friendly... this book will undoubtedly be useful to practitioners of intellectual property law, as it highlights some of the more important issues arising out of the Directive." It was early on the scene, UK influenced, and perhaps occasionally opinionated, but it appears to have stood the test of time, and should still be of assistance to those interested in EU and UK design law.
The online edition contains a few minor corrections, and the draft article numbers of the Community Design Regulation are replaced by the final numbers, but is otherwise as published in the 2001 publication, of which the review in Copyright World said "... user friendly... this book will undoubtedly be useful to practitioners of intellectual property law, as it highlights some of the more important issues arising out of the Directive." It was early on the scene, UK influenced, and perhaps occasionally opinionated, but it appears to have stood the test of time, and should still be of assistance to those interested in EU and UK design law.
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