posted by Thom Holwerda on Thu 11th Aug 2011 09:22 UTC
IconEarlier this week, we were introduced to a new concept in intellectual property law: the European 'Community Design'. The Community Design is a sort of trademark on design, and sits halfway between a trademark and a patent. I decided to investigate what, exactly, the laws and regulations around Community Designs are, and what I found was shocking. Think the USPTO is bad? Wait until you learn about the Community Design.


Each of the photos in this article corresponds to an individual, granted Community Design. The Community Design ID numbers can be found in the image names, and looked up here.

Earlier this week, we learned that Apple managed to get a preliminary injunction against Samsung's Galaxy Tab 10.1, barring it from being sold in the entire European Union - except for The Netherlands. The legal construct on which this injunction hinges was not a patent or trademark - it was something else entirely. It's called a Community Design, was instated in 2002 and 2003, and, as I have learned, is far, far worse than anything the United States Patent and Trademark Office has ever come up with.

The Community Design was instated as part of Council Regulation No 6/2002. A Community Design is basically a trademark on the design of a product, whether it be software, hardware, or packaging. It is filed at the Office for Harmonization in the Internal Market (OHIM), and once granted, is valid in the entire European Union. Initially it is valid for a period of five years, but it can be extended five times to reach a total of 25 years. Every member state has several Community Design courts, which are regular courts allowed to take on matters relating Community Designs. So far, nothing special.

However, there are several reasons why the Community Design - as it stands today - is basically a tool which companies can use to receive free preliminary injunctions. The way that the Community Design is set up favours large companies heavily, allowing them to use it as a club to ban each other's products from entering the European Union.


Registration

First, a filing does not contain any description. Only a general product category, and that's it. No description of what certain parts are for, no explanations of what buttons do, no nothing; just a few small, low-resolution photos (if you're lucky) or a few general lines (most cases).

Second, the registration process. The key problem here is that the drawings and/or photos in a Community Design are not actually reviewed. While a patent at the USPTO receives a review to check for obviousness and prior art, no such review process has been put in place for the Community Design. The only thing the governing body of the Community Design, the OHIM, checks for is that the paperwork is in order, and that the names on the filing are correct. If those two conditions are met, the Community Design is granted, no questions asked. This lack of a review process is established in EC 06/2002 (Title V, Articles 45 and 47), and clearly mentioned on the OHIM website.

This is problematic because of Section 2, Article 85 of EC 06/2002. Article 85 states that a Community Design is always, by definition, valid. This explains why the German court in Düsseldorf granted the injunction. He did not grant it because he made an informed decision based on the contents of the Community Design; he granted it because he has no choice but to accept the Community Design as valid. So when Apple showed him all the necessary documentation and paperwork was in order, and that the Galaxy Tab 10.1 has roughly the same shape as Community Design 003781832 (which was filed in 2004, and as such, doesn't even cover the iPad to begin with, but we'll get to that later), the injunction was granted automatically.

Apple chose Düsseldorf specifically because of how injunctions work in Germany. You do not have to notify the defendant, and there's no need for a hearing. By law, the court has to assume the Community Design - which has not received any prior art or obviousness test of any kind - is valid, and since the Galaxy Tab is roughly of the same shape as Apple's Community Design, the judge grants the injunction.

Because of how these Community Design courts are set up, the ruling by the German court now automatically applies to the entire EU. So what is going on here is that companies can simply select the most favourable court system - the German one, in this case - file their injunction request there, and no matter how obvious their Community Design is, no matter how much prior art there is, the court has to accept it as valid, and rule with this presumed validity in mind.

Samsung now has the opportunity to contest this injunction, and the burden of proof lies entirely on Samsung's shoulders. They can try and prove that the Community Design is invalid because of, say, prior art; or they can argue that the Galaxy Tab doesn't look like the Community Design at all (my guess is they're going to try and do both). If Samsung manages to get the injunction lifted, Apple has to pay damages.

And so, a design that has never been reviewed by anyone turns into a weapon which can deal serious damage to a company. Samsung's Galaxy Tab 10.1 has been delayed at least by a few weeks, but that isn't all. This ruling also causes serious damage to Samsung's image, as people without any knowledge of how this Community Design thing works are now assuming that a court has ruled that Samsung is copying Apple's designs - even though no such ruling has taken place. I doubt this reputation damage can be expressed in a monetary value.

So, the filing process is broken, the court procedure is broken - and that isn't even all. The lack of proper review procedures leads to unbridled filing and wildgrowth of Community Designs. What you are about to see will make you laugh and cry at the same time.

Table of contents
  1. The registration process
  2. Iteration, variation, prior art, & obviousness
  3. Not all bad & conclusion
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