Montenegro joins DesignView

617476676

EUIPO reports about the accession of Montenegro to the global design database DesignVew. In that way, the participating Offices become 65. In the meantime, the database gives access to more than 13 million designs around the world.

More information here.

Advertisements

Brief IP news

briefs_1131. DesignEuropa Awards 2018 – apply or nominate by May 15. For more information here.

2. The Protection of Fashion Shows in Italy: An Uncharted Stage. For more information here.

3. All rights reserved – advantages of copyright registration. For more information here.

Source: Intellectual Property Center at the UNWE. More information can be found here

 

Designs, novelty and a General Court decision

The General Court of the EU ruled in Case T‑651/16, Crocs, Inc. v EUIPO, Gifi Diffusion. This case concerns a registered EU design 257001-0001 by Western Brands LLC on 22.11.2004 with claimed priority based on a US design registered on 28.05.2004.

M674DBIVNK56FON27UQIXB6ZFFGRIEV4SQCXHPUEOTXADS6656Y3PQ6DJKNSK2LSU6XUFW2HQ75UE

This EU design after that was transferred to Crocs. In 2013, the French-based company Gifi Diffusion filed an application for a declaration of invalidity of the design based on a lack of novelty.

As it is known, one EU design can receive protection only in the case that it is novel and has individual character.

EUIPO took a decision for invalidation of the design, which decision was confirmed by the General Court.

The reason for this was that information for the design was available in 2003 through the Corcs’ website, it was displayed on an exhibition in Florida and was available for sale.

Corcs argued that such information wasn’t accessible in EU at that time, but the Court dismissed it because there was no evidence that the Corcs’website wasn’t accessible in EU.

This case is indicative of the need for a good intellectual property planning. In the case of industrial designs and inventions, this is crucial because if these IP assets are not new, for example, they cannot be protected. Due to this, all information regarding them has to be managed very carefully in order to fulfill the respective legal requirements.

The United Kingdom joins the Hague Agreement

city-3221906_960_720

WIPO reports about the accession of the UK to the Hague Agreement for international registration of industrial designs. In this way, the member states of the Agreement become 54, which will enter into force for the UK on 13.06.2018.

More information here.

European design, technical function and a EU Court decision

flag-1198978_960_720The European Court ruled a highly anticipated decision regarding Case C‑395/16 DOCERAM GmbH v CeramTec GmbH. The case concerns the following:

DOCERAM is a company manufacturing technical ceramic components. In particular, it supplies weld centring pins to customers in the automotive, textile machinery and machinery industries. It is the proprietor of a number of registered Community designs which protect centring pins for welding in three different geometrical shapes, each of which is produced in six different types.

CeramTec also manufactures and sells centring pins in the same variants as those protected by the designs of which DOCERAM is the proprietor.

Relying on an infringement of its Community designs, DOCERAM brought an action against CeramTec before the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany), seeking an order for CeramTec to discontinue the infringement of its intellectual property rights. The latter brought a counterclaim for a declaration of invalidity of the contested designs, maintaining that the features of appearance of the products in question were dictated solely by their technical function.

The Landgericht Düsseldorf (Regional Court, Düsseldorf) dismissed the action brought by DOCERAM and declared the designs at issue to be invalid on the ground that they were excluded from the protection afforded by Article 8(1) of Regulation No 6/2002.

DOCERAM appealed against that judgment to the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany). In particular, that court observes, first, that the designs at issue are new and have an individual character and, second, alternative designs of the centring pins concerned exist which are not protected by the Community law on designs. Therefore, that court considers that for the purposes of the application of the exclusion laid down in Article 8(1) of Regulation No 6/2002, it is necessary to establish whether the existence of those alternative designs leads to the conclusion that the features of appearance of those products are not covered by Article 8(1) of Regulation No 6/2002, or whether it is also necessary to ascertain whether the technical function was the only factor which dictated those features.

That court points out that there are differing approaches in the case-law and in legal literature on that question. One approach is that the sole criterion for the application of Article 8(1) of Regulation No 6/2002 is the existence of alternative designs which fulfil the same technical function, which demonstrates that the design at issue is not dictated solely by reason of its technical function within the meaning of that provision. The opposing view is that that provision is applicable where the various features of appearance of the product are dictated solely by the need to achieve a technical solution and that the aesthetic considerations are entirely irrelevant. In that case there is no creative effort worthy of protection as a design.

In those circumstances, the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  Are the features of appearance of a product solely dictated by its technical function, within the meaning of Article 8(1) of [Regulation No 6/2002] which excludes protection, also if the design effect is of no significance for the product design, but the (technical) functionality is the sole factor that dictates the design?

(2)  If the Court answers Question 1 in the affirmative:

From which point of view is it to be assessed whether the individual features of appearance of a product have been chosen solely on the basis of considerations of functionality? Is an “objective observer” required and, if so, how is such an observer to be defined?’

The Court decision:

1.      Article 8(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs must be interpreted as meaning that in order to determine whether the features of appearance of a product are exclusively dictated by its technical function, it must be established that the technical function is the only factor which determined those features, the existence of alternative designs not being decisive in that regard.

2.      Article 8(1) of Regulation No 6/2002 must be interpreted as meaning that, in order to determine whether the relevant features of appearance of a product are solely dictated by its technical function, within the meaning of that provision, the national court must take account of all the objective circumstances relevant to each individual case. In that regard, there is no need to base those findings on the perception of an ‘objective observer’.

How to register European designs?

flag-2608475_960_720

EUIPO reminds, in its last edition of Alicante news, about some important requirements for registration of EU industrial designs, non-compliance with which can lead to a detrimental effect on the design applications. They are:

1.  Representation of the design – every design has to be represented in a way that it can be perceived correctly by the Office and third parties. The representation of the views must consist of a graphic or photographic reproduction, for one and the same design, and on a neutral background and in good quality. When the representation requires including external elements visible in the views but not intended to be protected, the representation should contain a clear graphical disclaimer. The design should be represented by at least one view and the maximum number of protected views is 7 per design. Additionally 3 unprotected and not published views may be submitted.

2. Product indication of the design – the Classes of products for which the design will be registered have to be identified correctly and precisely. Applicants can use DesignClass in that regard, which can help a lot.

3. Priority & missing documents – all documents for claiming priority over a design application have to be submitted on time to the Office. Other than that, the applicant can lose its priority date. The application must concern the same design to confer to the proprietor the right to claim for priority. When filing a Community design application, the owner can request its publication to be delayed for a period of up to 30 months. The design can, therefore, be kept confidential until the applicant is ready to disclose it. The request for deferment must be made on the initial application form; later requests (even on the same date) will not be accepted.

Source: Alicante news.