Linked by Thom Holwerda on Thu 11th Aug 2011 09:22 UTC
Legal Earlier 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.
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Comments from an IP professional
by IPprofessional on Sat 13th Aug 2011 01:31 UTC
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Firstly congratulations on a well researched article. Most the comment on RCDs over the last few days has been far less informed.

It might have been helpful to consult an expert (and I don’t necessarily mean a lawyer but perhaps a Patent Office/OHIM official, academic or even a designer who uses the system) but its refreshing to read an article written entirely from a layman’s point of you.

There are some parts I probably agree with:

Firstly having an IP right that is an exclusive/”monopoly” right but is granted without examination has a bad feel about it for many of the reasons you state and more. On the upside it does mean less lawyer involvement is needed so individuals can get something useful out of it without too much cost. Previous design registration system have tried to examine but to no great effect. To be effective Design Registries would need to be good at searching. Whereas most inventions eventually find there way into patent applications most designs are never filed so the existing registrations aren’t that useful, most databases are indexed by words not pictures and even with Google goggles etc the only way to really search the internet is with words not images. Accordingly even if there was searching, invalidity of granted designs would still be common place (much more so than for patents). Still being able to get a registration for a knowingly invalid design and being able to threaten people who didn’t know it existed does seem odd even if wont be enforced.

Secondly I question OHIM’s desire in regard to both trade marks and designs to cut administrative costs in order to reduce fees to be as low as possible. If the fees are too low the system might get too cluttered. Your view is of course that is too cluttered. It may though be that this fear is unwarranted- I have yet to find a field in which it has become a problem- and the “design freedom” aspect of the regulation may help. Features in which there is little design freedom, and in which applicants might attempt to register most possible designs, have little protection whilst if there is a lot of design freedom it is likely impossible for any applicants to file enough applications to block off most options. Copying old designs that are public domains is of course always permissible. Further case law currently interprets designs pretty narrowly

Where I think that you may have slightly the wrong impression or I simply disagree with your conclusions are on the following two points:

a. Preliminary injunctions. I’m not sure that the lack of examination creates a great problem with these.

I don’t know much about German case law on preliminary injunctions so I will sick to England and Wales.

IP preliminary injunctions (PIs) are not generally decided on the merits of the case ie. who is likely to win provided that the claimant has at least a possibility of winning. The full hearing on a permanent injunction is decided on the merits and there is no point deciding the same thing twice. They are given (or not) based on a balance of harm. If the PI is not given and the defendant is latter found to infringe, the defendant will have to be damages for each sale made (or any claimant sales lost) between PI application and final verdict. If the PI is given and the defendant is later found not to infringe or the IP right is invalid then the claimant must pay the defendant for every sale that was lost because of the IP. Therefore the winning side gets their money whatever. The PI is therefore primary determined on which side is more likely to suffer irreparable harm that can not easily be compensated by damages if the PI decision is wrong. Its often decided to maintain the status quo until the final hearing- e.g if the product is selling at full capacity allow it to continue, if it has yet to launch stop the launch.

There is also a case law which says that if defendant should have seen the litigation coming and is relying on the IP right being invalid (as opposed to them not infringing it even if it is valid) then they should have “cleared the way” by revoking the right before launch. This is the case for generic companies who take some years to produce a copy of a blockbuster drug with a famous patent. It could though apply to designs in the name of a the market leader if there is some gap between the market leader establishing their strong sales and the defendants launch.

Secondly designs are really nothing like trademarks. If anything they are halfway between copyright and patents.

Trade marks help prevent consumer confusion, aid them to get the “same again”/give them a weak guarantee and help companies protect their goodwill/reputation. Provided they continue to be used and renewed they can be in force forever and certain marks like the Bass red triangle are very old indeed.

Copyright protects the creations of artists and authors and patent protect the work of inventors. They are both time limited and are not concerned with helping consumer in any direct short term way.

Designs are also time limited. They are intended to protect the creations of industrial designer and not to prevent consumer confusion. You can file shape works as trade marks if you want that (hard work actually- Tobelerone has a TM for their shape but many others have failed).

Copyright protects against copying of any important part of an artistic work (even if very short) and not just the work as a whole. A rap song that sounds nothing like classical music will still infringe i ti samples a catchy short hook from a recent classical piece. Similarly design law (which goes back to at least 1840 and is mandated by the Paris Convention and TRIPS) has always been intended to protect aspects and parts of a designers work not just complete products. A new product that looks radically different from an existing one may still be held to infringe if it incoprated an important or striking part of the design of the existing product.

With unregistered design rights (which the UK has had for some time and require proof of copying) this is achieved by the claimant stating which parts of a design have been copied. This may relate to aspects- e.g. the distinctive shape has been copied even though the decoration and colours haven’t. With previous versions of UK registered design law it was achieved by requiring the applicant to state whether the design filing was in relation to shape/configuration or ornamentation and to point out the parts of the design which were believed to have novelty.

With the RCD system they have taken a simple approach and said that rather than have accompanying words you simply put what you want o protect in the drawings. If you put in the product as a whole including photos then that is all that is protected- you probably cant argue that one part infringes if another part is so different to the equivalent in the RCD that the product as whole creates a different overall impression. If you wish to protect compnonets or aspects of the design then you only put those in. If you don’t consider the colour important you don’t file in colour.

I believe iterative filing is entirely in line with the intentions of the system because:

a. You are meant be able to protect different parts/aspects of a product.

b. An industrial designer whether freelance or at company is meant to be able to protect his portfolio regardless of whether any company or his employers are yet convinced to commit to manufacturing them all.

Edited 2011-08-13 01:32 UTC

Reply Score: 2

AdamW Member since:

"I don’t know much about German case law on preliminary injunctions so I will sick to England and Wales. "

That's sort of the problem. You want to stick to England and Wales because that's what you know about; fine. But Apple didn't have to. The RCD system is EU-wide, which allowed Apple to go jurisdiction shopping and find the country with the preliminary injunction system most suited to their purposes - just as U.S. patent aggressors tend to go to East Texas. You may well be entirely correct about English preliminary injunctions, but so what? The case wasn't filed in England.

Reply Parent Score: 2

IPprofessional Member since:

I think you missed my point, possibly I communicated it badly in a long post written late at night.

I was not saying that its hard to get prelim injunctions in England so don't worry, I was saying that since English prelim injunctions don't normally depend much on the merits of the case the lack of evaluation of validity before a PI is given is not the departure from normal justice that it first seems.

Reply Parent Score: 1

kristoph Member since:

IP preliminary injunctions (PIs) are not generally decided on the merits of the case

Do you know this is different in the German system or are you just mindlessly raging?

Reply Parent Score: 2

kristoph Member since:

Awesome! You should perhaps write an entire article on this for OSNews!

Reply Parent Score: 2