OHIM and EPO cooperation agreement

We are pleased to learn that the EPO and OHIM are to cooperate. The three identified areas are training and HR, IP awareness and IT systems. If anyone was at the May OHIM meeting where the MOU was concluded, please let us know what else was covered.

Copied design cancelled

Alicante News brings word of a rare success in cancelling a Community design (RCD 001595737-0001) on the basis of an earlier national European copyright. The reasons for the relative underuse of copyright as a ground of attack are probably threefold - firstly, copyright in designs is a matter of unharmonised national law which varies widely across Europe, secondly, OHIM (with its allergy to hearings and live witnesses) is ill suited as a forum for assessing copying and thirdly, where the copyright work is already published, it is available for a straightforward prior art-based attack.
But in this case, the designs (of textiles) are the kind of thing that is going to be protected by copyright in most places, and the opponent managed to file evidence of a chain of correspondence from the original Belgian designer of the copyright work to the RCD applicant. In any event, the designs do appear so close that the inference of copying is pretty well unavoidable.

Yourpage or Mine? OHIM improve RCD filings

According to a recent OHIM notice, as of December 8th 2010 you can now file RCD applications through MyPage, which ought to simplify things for regular users. We'd be interested in feedback - can anyone who tries it leave a comment here?

Print-your-own RCD Registration "Certificates"

A month or so back we reported here that OHIM were adding electronic Community Design registration certificates to their website. They will now stop sending out paper ones as of next Monday, according to this notice.

End of the road for Evets

Old musos will remember Danelectro's classic guitars - the mark has been in use for over 60 years now. But the ECJ (Decision C-479/09 P), supporting OHIM's hard-line policy on restitutio in integrum, has recently cancelled this old and valuable mark for failure to pay the renewal fee, on grounds that appear to put applicants in a very precarious position - on the basis of a legalistic interpretation approach that, we have argued in the past, is focussed on OHIM themselves and opposed to commercial reality and the needs of the marketplace.
In the Danelectro cases, the applicant adopted the practice (near-universal in large companies) of handling renewals through an agency. OHIM's correspondence, however, went to the appointed representative. The issue was, when was the "cause of non-compliance" removed? Was it when the representative heard from OHIM, or when the client (or the renewal agency) were told? The Court's mechanistic approach was simply to quote the rules which put the representative in the shoes of the client for OHIM's purposes. Thus, the relevant two-month time limit started to run when the representative got the letter from OHIM, even though the representative was completely out of the renewal loop and had no authority from the client to act on renewals. The same logic would apply even where, in reality, the representative had no further authority to act, if OHIM had not yet been notified of that fact.
When applying a highly penal provision, can it really be right to ignore the reality behind the rule, which is that, where it is the applicant who failed to comply with a deadline, the removal of non-compliance must also be referred to the applicant? Should a 60-year old mark be lost, in a first-to-file system, where the applicant is not at fault? The answer seems self-evident to us.
Our concern on Class 99 is that, since the Community Design provisions are identical to those for CTMs, and the reasoning of the Court is so mechanistic, they will apply the same approach to design renewals. The results would be disastrous. A trade mark can be re-filed, and unless someone else has acquired intervening rights, will be re-registered. But any design, by renewal time, will have been published by OHIM so that a re-filing would lack novelty and the design would be irrevocably lost.
Is it too much to hope that the Court might issue a divergent opinion for designs? Well, it remains at least a theoretical possibility. One of the suggestions raised by the appellant was that EPO case law under the identically-worded EPC provisions should be followed. OHIM and the Court, at all instances, refused to do so. One of the reasons given by the Court of First Instance (now the General Court), in their decision T 20/08, was that:
...even if Article 78 of Regulation No 40/94 was drafted on the basis of a patent law model, there is nothing to suggest that the respective provisions must be interpreted identically, since the interests at issue in the two areas may differ. The legal context of patent law is different, and the provisions governing patents seek to regulate procedures different from those applicable in the area of trade marks (Case T‑136/08 Aurelia Finance v OHIM (AURELIA) [2009] ECR II‑0000, paragraph 21)."
Well, following that reasoning, designs are different to trade marks - in fact, as to the novelty issue, they are much more like patents. So ... is anyone prepared to try to tell the Court to apply their own words to designs, and follow the EPO's more applicant-friendly approach where the consequences of failure are so much more penal than for trade marks?
In the meantime, what about resuming the filing of authorisations at OHIM - specifically limited to exclude renewal business? We might try that ourselves, if no one else can be found to do so.
Please do keep us informed of any restitutio cases in the pipeline, as we have had widespread expressions of concern from applicants since our last item on this topic.

Campinos speaks - his first words as Europe's design and trade mark chief

Our thanks to insiders at OHIM for the following hot-off-the-press news. The new President of OHIM, Antonio Campinos has made his first speech to industry since taking over as President. He spoke at Markenverband's annual forum in Munich. The speaking notes below are extracts from the main points in the speech - the full speech will be posted on the OHIM website shortly. Whilst much of it is trademark oriented, there are some general messages which may interest users of the design system in Europe - I found the competency question particularly interesting.
----------------------------------------
Markenverband
Munich 22 October 2010
The President of OHIM, António Campinos, has given his first speech since taking office on 1 October 2010. Mr Campinos told members of the distinguished German intellectual property organisation Markenverband, at the organisation’s annual forum in Munich on 22 October, that he intended to build upon the current strong foundations at OHIM, taking it forward as a high-quality, reactive, customer-centred organisation, capable of tackling the challenges thrown up by the 21st Century. In a broad-ranging speech he covered a number of points, illustrated in the extracts from his speech included in the speaking notes below.


Speaking Notes:
Key challenges for OHIM:

"The first challenge that OHIM faces is related to our central mission, which is to manage the Community trade mark and design Registration Systems. Here the fundamental goal must be to continue and accelerate our efforts to absorb our backlogs and prevent the creation of new ones. We must continue to reduce the time between the granting or refusal of a trade mark or design while the number of applications grow. Last but not least, we must take the quality of our services to a whole new level.

The second major challenge is related to the on-going study of the European Commission, which will next year put forward to the council legislative proposals that will have a profound impact for decades to come on the management of the Community trade mark and design systems. Within our own competencies, and in close cooperation with the Commission, we must seize this opportunity to modernize the management of these systems in terms of processes and governance. We must also take care to ensure that our registrations are not linked with national markets - for that would undermine the reality of a common market.

This second challenge is also linked, at least partly, to the results of the extraordinary Administrative Board meeting when the foundations were laid for the last CTM fee cut, and for a wider and most fruitful cooperation with the national IP offices in the EU.

We need to work harder at including all our stakeholders – member states, Commission and users. Improving our relationship will depend on our capacity to enhance and accelerate cooperation at an EU level. As already mentioned, out of the September 2008 meeting arose the fifty million euro OHIM Cooperation Fund, which is an unprecedented opportunity to modernise and bring closer together, in a single step, the European Union’s intellectual property offices…

… All this is good news, but of course cooperation is not an end in itself. Cooperation must ultimately benefit users: And as users have repeatedly said they wish us to concentrate on online individual and common searchable databases, on online filing, opposition, cancellation, and registration and payment systems and on interoperable user-friendly systems. We will do so, and in doing it we will strengthen the European systems of trade marks and designs and at the same time we will cement trust between us."

Regarding his previous role as Chairman of OHIM’s Administrative Board and the extraordinary board meeting in September 2008, which among other things laid the foundations for the CTM fee cut and at which the invitation of users to join the Board as observers was decided:

"As you know, the agreement which came out of the extraordinary meeting of the Administrative Board two years ago was a compromise, balancing the interests of all stakeholders including national offices and users. As well as cutting CTM fees and agreeing to review them again every two years, it was decided to share 50% of CTM renewal fees with national offices, and to set up the OHIM Cooperation Fund. We also agreed that an overall evaluation of the European trade mark system should be carried out. I am happy to have been able to help broker this agreement. Breaking the deadlock was very important for the future well-being of the Community trade mark and designs and we must continue to move forward in a spirit of cooperation."

Recent performance of the Office and his intention to drive for a significant increase in quality:

"While in recent years, the Office has been able to improve its performance considerably, as with any other success story, there is always room for further improvement and adjustments.

YES, we should be fast, YES we should be consistent and predictable in our decisions and YES we should provide value for money. YES we should do all these things together.

In doing so we will need to ask ourselves hard questions about whether further investment is needed to deliver a better service in ways that are meaningful to customers. We may think we are doing a good job, but there is a need for more objective, international standards and bench-marking. The challenge of quality emerges as a consequence of OHIM’s very nature, as a European public service. To transform OHIM into a true organisation of excellence, complying with modern and recognized standards and renowned as such, by its staff, by national offices, by international organisations and - most of all - by its users, should constitute our first priority.

Quite recently the Office achieved ISO 9001 certification for RCD processing. As part of this "quality first" policy we are now considering setting out the goal of getting ISO 9001 for the whole office."

Attitude towards possible new competencies for OHIM:

"The 2008 meeting also pointed the way towards new areas of competence, such as enforcement. You have heard what we are doing to help under the Cooperation Fund. I would ask you if you think we should do more.

What point is there having a reactive and efficient Community trade mark and design registration system, if at the enforcement stage, each country does its own thing? Community trade marks and designs are very successful, and we have built up a substantial surplus. We have an obligation, and potentially the resources, to do some things to make the whole system work better, and that’s what we will be looking into.

At the same time, we must also look closely at the added value that we can bring to initiatives such as the Commission’s Observatory on counterfeiting. Over the coming years we have to roll out an ambitious program of cooperation which should, among other things, include the fight against counterfeiting as recommended by the European Commission in the recent Communication on the enforcement of industrial property rights in the Internal Market.

The years ahead will almost certainly see us doing more for users, on a wider range of competencies. Put forward the suggestions: if they can add value for our users, we are ready to listen…"

OHIM’s commitment to consultation and transparency:

"Don’t worry, we won’t be making changes without consultation. We will be talking to all our stakeholders including the member states and the Commission. Above all, we will be talking to YOU the users."

New OHIM President

Thanks to our friends at OHIM for leaking us the forthcoming Press Release on their new President.  Is it just this author, or are heads of OHIM, like policemen, getting younger?

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PRESS RELEASE
New President for OHIM

António Serge De Pinho Campinos, 41 years old, of Portuguese nationality, takes over as the new President of the Office for Harmonisation in the Internal Market (OHIM) as from 1 October.

Mr Campinos graduated from the University of Montpellier with a Master's Degree in Public Law and a Post Graduation in Community Law, and started his career at the Court of First Instance of the European Communities, before moving on to roles in the banking sector and then the Public Administration in Portugal.

Mr Campinos, who has wide international experience in the field of intellectual property and is fluent in Portuguese, English, French and Spanish, became President of the Directive Council of the National Institute of Industrial Property in Portugal in 2005. He has been closely associated with OHIM for a number of years, serving first as head of the Portuguese Delegation in the office's Administrative Board and then as its Chairman, since 2008.

At OHIM, he took a leading role in a number of important issues, contributing for the reshaping of the institutional cooperation framework with the Office's stakeholders, the reduction of the Community trade marks fees for applicants and making the Administrative Board's work more efficient, effective and transparent, particularly through promoting and supporting the participation of users' organisations in the OHIM governing bodies.
-------------------------------------------------

We note from the Decision to appoint him that he was born in Poitiers, France as well as being French-educated, (don't they have data protection over there in Brussels?) so he ticks that box too.  We wish him all the very best, from Class 99.

Community Design Registration Certificates

OHIM have until now sent Community Design Registration Certificates by post.  However, they have recently started adding a link to the RCD-Online database to allow the certificates to be downloaded.  It is unclear how far back certificates are available - they aren't backloaded before 2010, it seems.  Here is a link to the OHIM note on the subject in the July Alicante News, where it is described as a future development although it had apparently already been operational in June. 
The OHIM website will now contain three versions of a design - that in the database, that in the Bulletin, and that in the certificate - which will not necessarily be in accordance with each other.  The Bulletin version will be exactly as-published, warts and all; the certificate (if corrected) should show the design as it should have been published, and the database should be updated to include any subsequent changes (e.g. assignments).
According to OHIM, "The new e-certificates have the same legal value ... as the existing paper certificates ...". It is far from clear what value that is, since anyone can download and print a copy, and edit it beforehand if so desired. As certificates go, this one is remarkably uncertified. 

Bloggers or Blaggers? Stalkers or Leakers? Have OHIM stolen Europe's Auto Secrets?

There is nothing the auto industry enjoys so much as the razzamatazz of a new car launch.  Yet as mass expulsions remind us of the spy era, there are rumours that OHIM has a mole, who leaks new car designs to auto bloggers.  "It's no great secret that the European Union's patent office has more leaks than a Soviet submarine" writes Noah Joseph of Autoblog, according to whom OHIM "has more leaks than a colendar".  Alex Ricciuti of  Worldcarfans  claims to be publishing pictures "... courtesy of a leak from the European Office for Harmonization of the Internal Market (OHIM), where trademark records are kept."
Rather than take these alarming claims at face value, in this blog-eat-blog world a few quick searches enable us to reveal the truth.
Take first Ricciuti's claim to have published leaked designs of the Opel Ampera.   His blog article is dated 18th February 2009.  However, the pictures he shows had already, quite properly, been published by OHIM several days earlier on 11th February as RCD 001086300-0001.
On to Autoblog (motto: "We Obsessively Cover the Car Industry").  On August 13th 2008, Noah Joseph claimed that the "EU Patent Office" had leaked the design of the restyled Mazda MX-5.  In fact, OHIM had published the design on 11th August as RCD 000977384-0001.  Autoblog revealed the design of the Suzuki Kizashi on 11th September 2008, acknowledging their source as OHIM's records, and not at that time claiming that there had been a leak.  OHIM had published the design in question the previous day, as RCD 000990122-0001.  On 18th January 2009, they broke news of the design of the Nissan 370Z Roadster, Joseph this time claiming that it was from an OHIM leak.  In fact, lower down the article they quote their source as The Motor Report blog, on which the relevant article (also of 18th January) cites OHIM but does not claim a leak.  And, indeed, OHIM had published the design as RCD 001030282-0002 on 14th January.
Joseph's "Soviet submarine" claim was made in the course of his disclosure of the design of the "stretch" Pullman Mercedes reported on 4th May 2009.  But, as you are by now no doubt expecting, OHIM had published the design as RCD 000999024 (several parts) on 30th April.
In the same article, Joseph referred back to the Nissan Roadster "leak", and one other, dated 11th August 2008, concerning the "facelifted" Mazda 3.  The Mazda 3 article quotes as its source an article on the Carspyshots blog.  OHIM appears to have published the design in question as RCD 000974795-0001 on 6th August. 
Putting these claims together, there is no evidence that anyone has published OHIM applications before OHIM itself has done so.  On the other hand, there is ample evidence that the blogs are closely monitoring publications in the car class (Locarno class 12.08) and publishing within a few days, or even hours. Foremost is Autoblog's  Alberto Ballestin, who has an OHIM watch page.   One could be forgiven for assuming that they were tipped off in advance, but the evidence does not require that assumption.  Unless Joseph or Ricciuti care to reveal their sources, it seems likely that they are simply passing off stalking as leaking.
To take one last example, on 13th July, the Carscoop blog published an article disclosing some Chevrolet designs.  OHIM had published these on 12th July, as RCD 001729088-0001 & 2.  The filing date was ... only five days earlier, on 7th July.  
The moral?  OHIM is now publishing e-filed applications in a matter of days.  Carmakers who want to keep their designs under wraps would do well to use OHIM's "deferred publication" system, to keep the publication date in their own hands.

Crocs - more from the Board of Appeal

The Crocs appeal is available in full here. The decision contains a number of other interesting points, not all of which were decided. Here are my selection.

1. On the nature of appeals. Revocation was sought at first instance on several grounds, but some were rejected. The proprietor appealed but the applicant for revocation who had succeeded in getting the design revoked on one ground, did not appeal the others. The proprietor claimed that it therefore did not need to comment except on the ground which formed the basis of the first instance decision. The Board however held that it had "to review the whole matter brought before the first instance (so-called devolution effect), not just the grounds of appeal", particularly since the applicant for revocation referred to all of them in his response to the appeal. That suggests that the structure and content of pleadings in design revocation appeals is somewhat important. The appellant/proprietor obviously needs to address the points in the decision of the first instance which are against him, but could apparently also address points decided in his favour, or not decided at all. If he does not, then the respondent/applicant to revoke may raise them anyway - and the proprietor should respond. But might the Board raise them of its own volition even if neither party does so?

2. On the assumed infringer's right to intervene. Partenaire Hospitalier International requested permission to be joined during the appeal as a party to the invalidity proceedings in accordance with Article 54 CDR, on the basis that Crocs had arranged for an administrative seizure of their shoes. The proprietor challenged this on the basis that customs measures did not constitute ‘Proceedings for infringement’. According to the Board, "Article 54 CDR merely mentions the notion of ‘Proceedings for infringement’ but does not require that they are judicial in nature. Therefore, customs seizures, which are administrative in nature, but are aimed at securing evidence of the alleged infringement – evidence that will be relied on in a subsequent court action – should be considered included in the notion. The Board considers that nothing is gained by interpreting ‘proceedings for infringement’ too narrowly, in view of the purpose of Article 54 CDR, which is to enable a party who is being accused of infringement to defend itself." Accordingly, they were admitted as a party.

3. On the handling of third party intervention. The third party made a fairly different case to the
respondent/applicant to revoke, based largely on the alleged functionality of the design. The Board however made no use of their submissions. "Since the purpose sought by the third party – i.e. a declaration that the Challenged Design is invalid – has already been achieved on the basis of the other application for a declaration of invalidity, the Board considers that obvious reasons of procedural efficiency make unnecessary to rule on the third party’s application." This appears to constitute the application, by analogy, of Art. 32 CDIR, although the Board do not refer to that Article. It may make sense within the context of the appeal. However, if the proprietor/appellant were to successfully appeal on up to the General Court, the result would presumably be that, if they win, the case would have to be remitted back to the Board of Appeal to decide on the intervenor's case. One wonders whether the Board could in turn remit it down to the first instance. Either way, there is only a procedural economy if the Board is extremely certain that it will not be overturned by the General Court - which is perhaps reasonable given their current low reversal rates for trade marks.

4. On priority and "first" applications. The US design patent application from which priority was claimed itself claimed priority from an earlier US utility patent application. That is not possible within the European system (though cross-claims between designs and utility models (with a six-month priority period) and utility models and patents (with a twelve-month priority period) are envisaged in the Paris Convention and expressly allowed in the CDR and the EPC respectively). Thus, no European design could have claimed the priority of the original US utility patent application. The question was thus whether or not the US utility patent application was a "first" application for CDR Art. 41(1). If so, then the priority claim from the US design patent application was invalid. Alas, "For reasons of procedural efficiency, the Board decides not to examine the validity of the priority claim because that would not change the outcome of the case..." So we shall have to wait until another day to know the answer to this interesting question.

5. On the effect of a parallel patent application. Crocs filed European Patent application EP1803364 claiming priority (via a tortuous route) from the same US utility patent application. According to the respondent/applicant for revocation, "All the individual elements of the design that the Holder claims as ornamental have previously been declared by the same Holder as functional in the various patent and design patent applications filed in the USA for the same design." This kind of argument has featured quite regularly in design cases over the years, and more recently also in trade mark cases (the Philips razor case and the Lego bricks case, to name but two). On the current UK view of functionality (Landor & Hawa International Ltd v Azure Designs Ltd [2006] EWCA Civ 1285 [2006] E.C.D.R. 31) it is not conclusive since there is no reason why a feature having a function could not be shaped in one particular way of many which also has an aesthetic effect. The position is less clear under the current Board of Appeal approach following the Chaff Cutters case. It played no real part in their reasoning in this decision. In fact, underneath the sweeping statement lies a narrow point: the point of novelty of the Crocs design (and the only feature contibuted by the sole named designer/inventor) was the heelstrap, which was for an essentially functional purpose of keeping the shoe on in the wet, and shows little styling beyond what is necessary for that; the method of making the shoe with heelstrap was the subject of the patent. This issue had played out in the parallel US proceedings, where the intervening Egyptian Goddess case led to a reversal of the first instance decision, but played little direct part in the Board's decision.

6. On parallel judgments. Each party cited a parallel judgment in its favour. The respondent/applicant for revocation showed that, in interlocutory proceedings, the Düsseldorf Community Design Court of First Instance found on 27 December 2007 that the Challenged Design lacked novelty, and the appellant/proprietor cited a CAFC ruling issued on 24 February 2010 holding that two US design patents on identical subject matter are valid. The proprietor attacked the Düsseldorf judgment as the court allegedly "did not conduct detailed examinations and did not have the technical evidence that has been submitted in these proceedings." As a practical matter, one cannot tell the effect of citing such judgments from a written decision - courts rarely explicitly rely on the opinions of other courts, and this applies doubly to European institutions which must always avoid the charge of national prejudice by following one court over another. Perhaps the Board took some unspoken comfort from the Düsseldorf judgment, since it came to the same conclusion. However, as to the US judgment, the Board held that it "may be taken into account but is manifestly irrelevant" to the extent that it did not even send it to the other parties for comment, as it would have needed to do had it taken it into account at all.

7. On optional features and overall impression. A point on the heel strap was that it could be rotated forwards out of use. This showed, according to the proprietor/appellant, that it was not functional. The Board, however, found exactly the reverse: "The fact that the strap has been designed so that it can be, at the wearer’s choice, put to use or not is evidence of its functional character." We are a bit doubtful about this reasoning. More significantly perhaps, the Board found that it was not important at all since in the forwards position it was almost invisible. It constituted an "accessory", which inherently made little impact on the overall impression. I have condensed the Board's remarks, omitting some of the functionality points - apologies if this distorts their logic at all.

"In the Board’s opinion, the presence/absence of the heel strap does not alter the overall impression made on the informed user – a reasonably informed buyer and wearer of leisure footwear such as clogs – by the two designs, which remains the same. ... The informed user will perceive the strap for what it clearly is: an accessory whose only ‘raison d’être’ is to keep the foot firmly inside the clog. This is an especially desirable feature when the clog is wet inside and can be slippery. The accessory character of the strap is well demonstrated by the fact that it is not a fixed element but one that can be, so to say, neutralised or deactivated by rolling it forward. The heel strap is, in fact, an optional accessory – i.e. something that anybody wearing the clog may decide to use or not – and may hardly be qualified as ‘a significant part of the design’ (so the contested decision). ... A corollary of the above is that the Holder’s claim that the strap is an important aesthetic feature is unfounded. If this was true, the strap would have been designed as a fixed element of the clog, so as to be permanently visible. ... In the Board’s opinion, since the two product designs only differ by an element that can be made to become redundant – thus proving its accessorial and functional nature – they produce on the informed user the same overall impression. The overall impression will be influenced by the rest of the parts of the clog, which are all fixed, and whose aspect is identical."

Sudden Death in Alicante

We note two recent OHIM design appeal decisions which demonstrate their remarkable, and regrettable, unsympathetic attitude towards design owners on renewal fee payments. 

In R 1011/2009-3 and R 1012/2009-3, the proprietor (an EU subsidiary of Korean company who have made substantial inward investments into Europe) had transferred representation for the designs concerned from one reputable firm of attorneys to another and, unfortunately, it seems that amongst other cases, in error the wrong file was sent over and the right file was not.  The recipients had the correct number of files and therefore didn't chase the missing one, or take over responsibility at OHIM, and the senders didn't resign responsibility at OHIM. 

Two years later, the renewal fee wasn't paid.  The Loss of Rights notice went on 17 November 2008 to the previous representatives, who forwarded it to the new representatives on 5th December.  That was the first point at which the "true" representatives became aware of the position, and therefore the very first point at which the applicant could have complied with the renewal payment.  The application for restitutio in integrum was filed two months later, on 4th February 2009, two months from the point at which the applicant was able to comply and therefore, from the point of view of the applicant, in time.

OHIM took a different view.  They held that since the change in representation had not been recorded, the date of sending to the old representative triggered the two month period, which therefore expired on 18 January.  The application for restitutio was therefore out of time.  The Appeal Board upheld the first instance.

We beg to differ.  It is not that OHIM's reasoning is illogical.  Mechanistically, one can follow their logic.  But these decisions, together with a host of others, fly in the face of reality and fairness to the proprietor.  The analysis is from OHIM's point of view, not that of the proprietor, and the proprietor here has done nothing wrong.  They registered their IP rights at OHIM.  They selected attorneys on OHIM's list, people who OHIM accepts as, and holds out to be, fit for purpose (and who are, to my direct knowledge, perfectly suitable).  They did not want their rights dropped, and they instructed their attorneys to renew them.  So why are they punished?

The underlying notion is that the acts of the agent are attributed to the principal, which is the whole basis of agency.  But:

1. It is stretching that notion to say that unintended, uninstructed, and unauthorised errors of the representative should be attributed to the principal. 
2. In this case, the errors in question were at least partly those of a person who, from the principal's point of view, was no longer their agent. 
3. As far as the principal knew, the previous agent should already have withdrawn in favour of the new one.

The statute is quite clear that it is the removal of the cause of non-compliance that is the issue.  That is a factual issue, and to give a deemed date (when the previous representative got the letter) rather than a real one (when the proprietor actually became aware of it) is to supply a fictional answer to a factual enquiry.

More generally, errors occasionally occur, even in the best-run machine.  If OHIM themselves never made an error, they might be in a moral position to impose extremely high standards on their users - but believe me, dear reader, they make plenty, and this case would certainly have been decided differently if the Board of Appeal applied OHIM's own error rates.

If intellectual property rights are, in general, a public good (and we have to start from that assumption, or else there is no logic in the existence of OHIM) then the underlying public policy should not be to try to kill them off on formalistic grounds.  Who benefits by this kind of logic-chopping?  Certainly not the applicant, who has done nothing wrong, and has in return lost their rights for ever.  Not, we presume, the public in general which benefits in general from the existence of creativity and its protection.  Not OHIM - they lose future fee income on this case.  Not the poor representatives, whose only sin was to make a slip.  Not the other clients of their insurers, who ultimately pay higher premiums, raising the cost of IP protection generally.  Perhaps one might assume that competitors benefit from the untimely death of a duly registered design - but in this case, they certainly have lost no legitimate expectation, since the application for restitutio was on file very shortly after two months from the lapse notice - long before anyone could have inspected the file and concluded that the rights were irretrievably lost.  And, of course, the statute itself would explicitly protect any such legitimate expectations.

These are, so far as anyone knows, valuable intellectual property rights.  The applicant has spent money at OHIM getting them registered.  It will often be possible to re-file a lost trade mark, but these designs can never be re-filed - they would lack novelty over their own publication by OHIM - and so they are lost for ever.   We strongly urge OHIM to drop the doublethink, to see matters from a real-world point of view, and to protect their users' investments in valuable IP rights from these arbitrary and disproportionate extinctions.

European Court of First Instance design appeals

There are now 125 design decisions of the OHIM Boards of Appeal reported on OHIM's website. An appeal lies to the General Court (as the Court of First Instance is now known after the Lisbon Treaty). Thus far, for designs, however, only 7 of 125 appear to have been appealed - a remarkably low figure (even allowing for some delay in listing appeals on the OHIM site). What is going on? Are parties happy that OHIM has got it right, is CFI procedure intimidating and expensive, or are designs simply not worth the money and the wait?

Here are the "magnificent seven" design appeals listed by OHIM so far:

Appeal Nº: R1323/2008-3 Date: 14/10/09
Application Nº: 4885
RCD: Ornamentation
Language: ES
CFI: T-0513/09

Appeal Nº: R1411/2007-3 Date: 07/07/08
Application Nº:
RCD: (flacons)
Language: FR
CFI: T-0450/08

Appeal Nº: R1437/2006-3 Date: 11/02/08
Application Nº:
RCD: communications equipment
Language: EN
CFI: T-0153/08

Appeal Nº: R1352/2006-3 Date: 31/01/08
Application Nº:
RCD: instruments for writing
Language: EN
CFI: T-0148/08

Appeal Nº: R1337/2006-3 Date: 08/10/07
Application Nº:
RCD: Internal-combustion engine
Language: EN
CFI: T-0010/08

Appeal Nº: R1380/2006-3 Date: 08/10/07
Application Nº:
RCD: Internal-combustion engine
Language: EN
CFI: T-0011/08

Appeal Nº: R1001/2005-3 Date: 27/10/06
Application Nº: 74463-0001
RCD: metal rappers
Language: EN
CFI: T-0009/07

What should we expect of these? CFI statistics show that IP cases (OHIM appeals) now make up a third of its workload. The Court has become pretty acclimatised to trade mark cases, and pursues a similar line to OHIM, so that the reversal rate is low - 12% in 2008. Perhaps low expectations are the real reason for the low design appeal rate.

Functional designs at OHIM again

Alicante News reports another OHIM Board of Appeal case R 1114/2007-3 on functional designs, following their earlier "Chaff cutters" decision in requiring the presence of some feature "chosen for the purpose of enhancing the product’s visual appearance" to avoid rejection as being dictated by technical function. We shall see whether the Court of First Instance follows the same line in the Chaff cutters appeal.

This case is a little unusual on the facts in that the design, RCD No. 273644-0001, is a single, sketchy, line drawing (apparently done freehand with a ruler) showing nothing much over the voluminous cited prior art - with such a minimal design, there was perhaps little prospect of validity, even though by citing so many close prior documents the opponent might otherwise have shot themselves in the foot by showing a "crowded field".

There was also an interesting finding on the "informed user". As the indication of product was directed to "packaging for foodstuffs", the Board found that the informed user was a trade user not an end-consumer:

"The informed user in this case is likely to be a production manager in a company that makes food products that are packaged in pouch-like containers, rather than an ordinary consumer who buys pre-packaged food products. The design represents ‘packaging for foodstuffs’, not finished products for sale to the end user."

Novelty v individual character – It’s the nose, stupid!

In one of the most recent decisions of OHIM’s Board of Appeal interested readers will find juicy comments on novelty and individual character. While, says the Board, Article 6 (individual character) refers to the notion of the “informed user” to be “identified on the basis of the class of products within which, according to the application for registration, the design itself is intended to be incorporated”, Article 5 (novelty) allegedly does not specify such a referenced person. OHIM, therefore, would be asked “to assess the differences on the basis of the overall appearance of the designs in question”. Furthermore, according to OHIM, the informed user is generally “not technically experienced or particularly interested in the technical design” of colanders (this is what the invalidated Community design was registered for). Hence, says OHIM, this user won’t pay attention to “every detail of the device. Instead, he will undertake an overall view including inter alia the attractiveness of the design and the practicability of the device.”

While this guidance on delimiting novelty and individual character is helpful per se, it appears questionable how to take it into account in daily business. If OHIM is right, the novelty test would have to be carried out by each individual judicial body (OHIM or a Community design court), whereas the individual character test would require to don the spectacles of an informed user – but isn’t it in the end still the nose of the judicial body on which the spectacles would be found?

OHIM e-filing update

We covered the improved RCD online filing system earlier this year. Since then, we learned at the last e-Business User Group meeting, OHIM have made some improvements, and more are on the way. Improvements which are already with us are:

• Removal of the maximum number of designs in an e-filed multiple application;
• Multiple image file upload - you can upload all the image files for one design in one hit now, rather than having to do so one at a time;
• "Image editing" - I don't know what this covers, can anyone enlighten us?

On the way is a "save draft" option, allowing you to save a design for a few days (at present you only have a couple of hours). That will allow approval by supervising attorneys or clients - very welcome.

OHIM Tweets

OHIM joined Twitter yesterday, and this Class 99-er became its 99th follower. Search for OHIM or OHIMTWEETS on Twitter to see a stream of more-or-less useful information. They are also on Youtube, according to their announcement yesterday.

Another brick in the wall?

Alicante News reports an invalidation case (ICD 5353 on the validity of RCD 150917-0004) which is interesting from two angles. Firstly, it considers whether a brick is a "component part" in the sense of the Regulation and concludes, quite rightly I think, that it is not because it cannot be assembled and disassembled - it is stuck in place by mortar. The consequence is that the design is not automatically invalid under CDR Article 4 because not visible in normal use.
That may come as a surprise to some, possibly including the French courts which have held the contrary in at least one case on building products, but is in accordance with the view that this is an anti-spare-parts provision rather than a principle of substantive design law.
Secondly, and more contentiously for me, it concludes that a disclosure by availability on the file of a German Utility Model is one which could "reasonably have become known in the normal course of business to the circles specialised in the sector concerned". I personally have no problem with the view that published patents and designs would come to the attention of the circles concerned - if they don't pay attention to IP, they certainly ought to so so. But I don't think it is normal commercial practice to watch the unpublished files of applications - I recall many years back that this is how Derwent got started, in the days when the Belgians used to lay patents open early, but there was a market for their product precisely because individual companies didn't do it themselves.

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.

Colour and priority

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.

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:

1. The data is apparently uploaded directly into the mighty OHIM computer system - there isn't a little man or woman re-keying it anymore;
2. You get a proper filing receipt right away, looking like the snail mail version;
3. You can review a pdf looking vaguely like the paper application form.

It's still annoying that there is no offline alternative to the web-based form, alas. It would also be nice to be able to save what you did for re-use - you can only buffer it for 2 hours for checking. However, it is a definite improvement.