Late-filed evidence: sofa, so good ...

The December 2009 issue of OHIM's Alicante News carries a little feature entitled "New evidence in design invalidity proceedings". It reads as follows:

"In a recent decision [15 June 2009 -- more than half a year ago, which is a long time ago in trade mark law but pretty recent if measured in Design Years] concerning a declaration of invalidity of the registered Community design (RCD) No. 456140-0001 the Third Board of Appeal gave a detailed explanation of how to deal with evidence which was not introduced in the first stage of the invalidity proceedings before the Invalidity Division but came up later in the appeal.

The case involved a dispute between two manufacturers of furniture about the novelty of a sofa design called “Eva” allegedly launched on the market before the date of filing of the contested RCD. In this case, the Board of Appeal decided that while it was not obliged to consider evidence submitted late, it could do so if reasonable notice had been given to the parties involved and if, on the face of it, the evidence was likely to be relevant to the outcome of the invalidity case. Since the decision is in Danish, the relevant paragraphs 25 through 30 are cited literally in the following:

25 During the invalidity proceedings and within the set time-limit the appellant argued that the contested RCD lacked novelty and individual character and that it should be refused under Article 25(1)(b) CDR. During the appeal proceedings, i.e. together with the statement of grounds, the appellant submitted some new evidence in support of its previous assertion that an identical design has been made available to the public prior to the date of filing of the RCD and/or that the overall impression that the contested design produces on the informed user does not differ from the overall impression produced on such a user by a prior design which has been made available to the public.

26 In accordance with Article 63(2) CDR the Office may disregard facts or evidence which are not submitted in due time by the parties concerned. However, the Office is not prohibited from taking into account facts and evidence which are submitted or produced late.

27 The Board considers that, in the case at hand, the further evidence is admissible for the following reasons. Firstly, the new evidence was regularly notified to the respondent. The respondent did not, at least explicitly, dispute the possibility to file further evidence. On the contrary, it agreed to the suspension of the proceedings so that the further evidence could be submitted [This suggests that best practice is to make sure a respondent gets to hear of the out-of-time evidence as early as possible; if it doesn't have time to dispute the admissibility of the further evidence, you can't argue that it has been implicitly or explicitly accepted].

28 Secondly, there is no time limit for bringing an invalidity action before the Office and therefore taking into account facts and evidence submitted late by the appellant, could contribute to ensuring that a RCD whose use could later successfully be challenged by means of further invalidity proceedings does not stay on the register [True, but unlikely to appeal to a typical SME which may be reluctant to go through the whole thing again].

29 The Board also finds it appropriate to admit at this stage the new evidence since it is supplementing evidence to the evidence already provided by the appellant during the invalidity proceedings especially concerning the sofa model ‘Eva', and seems, prima facie, to support the appellants previous assertion that an identical design has been made available to the public prior to the date of filing of the RCD and/or that the overall impression that the contested design produces on the informed user does not differ from the overall impression produced on such a user by a prior design which has been made available to the public. This evidence might prove the appellant's assertion and it is, on the face of it, likely to be relevant to the outcome of the invalidity case it has filed. The Board stresses that a prima facie relevance of the evidence does not imply that it is conclusive to the outcome of the present case [Well, that's a relief!].

30 With a view to the above, the Board deems it appropriate to admit the additional evidence filed with the statement of the grounds of the appeal, by exercising its discretionary power, under Article 63(2) CDR".

The decision in question is R 1713/2007-3.

Design protection as an incentive? Not to be taken lightly

An unusual initiative from the ever-innovative ACID caught my eye today. According to that organisation's press release,

"ACID (Anti Copying in Design) leads the way with the announcement of a National 2010 campaign to introduce intellectual property ... as another tier onto the criteria for judging design awards in the UK. First to take up the mantle is ACID trade association partner, The Lighting Association’s UK Student Lighting Design Awards 2010. The objective is to ensure that all entrants identify the IP they created, demonstrate what they have put in place to protect their IP and have an IP strategy and communications policy in place. An ACID representative will be appointed to the judging panel to assess the level of awareness. Awards organisers who include this ACID IP tier in their judging criteria will be able to display the ACID IP Accredited Awards logo on their website and marketing material. ...

ACID has carried out 1,000s of one-to-one IP Health Checks at their IP Clinics for over ten years at exhibitions; it makes sense to broaden this out to a National campaign to raise awareness about the importance of IP as a valuable asset through a National awards campaign. Through ACID Accredited Awards schemes, this may encourage more universities to include an IP module as part of the curriculum for courses representing the creative industries. The UKIPO have expanded ACID’s initiative positively with the launch of their own online IP health check, making IP awareness available to many more of the UK’s micro and SMEs.

Many award winners are unaware that in a recent Judgment [Procter & Gamble v Reckitt Benckiser 2007: noted here; full text here], Lord [Justice] Jacob created a welcome precedent for designers, particularly those who have protected their design via a registered Community design. It allows those designers who have won accolades, such as awards, to use this as evidence of commercial success, showing that their design is novel (and enforceable). Previously such evidence would have been largely ignored by the Court in deciding novelty, much to the understandable annoyance of the designer".

The idea of drawing design protection into the awards criteria is commendable: not only does it enhance the awareness of design protection on the part of contestants themselves, but it puts the relevant market sector on notice of the facts that (i) a particular design is protected and (ii) the protection is backed by a legal strategy. However, the evidential value of an award should not be overestimated. All that Jacob LJ said in Procter & Gamble v Reckitt Benckiser was this:

"7. ... Of more relevance (though even this is secondary) is the fact that the P&G design (in the form of its physical embodiment) received some independent accolade. The Judge records this at:

[10] The Febreze product was well-received within the packaging community. At the end of 2004 it won the New Jersey Packaging Executives Package of the Year Award. In 2005 it won the Ameristar Award within the category of household products. The citation for the latter award said:

"Febreze Air Effects is packaged in a uniquely shaped aerosol can that breaks category norms, stands out on the shelf, is easy to use and delivers a superb scent experience for consumers. Febreze redefines the difference a great product and a unique package can make in a customized container and actuator".

Having assessed this evidence, he found that the award-winning design was not infringed because it would produce a different overall effect on the informed consumer to what the trial judge felt was a poor imitation of that design. I suspect that the claimants in this litigation would rather not have won the design award if their failure to do so enabled them to succeed in the infringement proceedings.