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?

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. 

Community Designs a good fit for G Star

Trade-mark-oriented readers may recall the ECJ G-Star decision concerning jeans (Benetton Group v G-Star International, ECJ case C-371/06, 20 September 2007) in which the shapes of stitching and other aspects that gave substantial value to the jeans were unregistrable as marks despite subsequently acquired reputation.
The Class 46 blog carries an Italian sequel. In January, in the absence of copyright or trade mark protection, the Milan Court allowed G-Star's unfair competition claim based on copying of their "Elwood" jeans.
It is pleasing to see that G-Star also successfully enforced the design of the "Limit Regular" jeans, registered as Community Designs at OHIM (where they have registered more than 100 RCDs).

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.

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.

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.