The European Commission has approved new rules for industrial design protection in the EU

The European Commission has approved new rules for the protection of industrial designs in the EU. The proposal aims to:

• Simplify and streamline the procedure for the EU-wide registration of a design: By making it easier to present designs in an application for registration (for instance by submitting video files) or combine more than one design in one application, as well as by lowering the fees to be paid for the first ten years of protection, the new rules will make registered Community design protection more accessible, efficient and affordable in particular for individual designers and SMEs.
• Harmonise procedures and ensure complementarity with national design systems: The new framework aims to ensure greater complementarity among EU level and national design protection rules, for instance on requirements for registering designs or simplifying rules for invalidating registered designs. This will help to create a level playing field for businesses across Europe.
• Allow reproducing original designs for repair purposes of complex products: By introducing an EU-wide ‘repair clause’ into the Design Directive, the new rules will help to open up and increase competition in the spare parts market. This is particularly important in the car repair sector, where it should become legally possible in all EU countries to reproduce identical “must match” car body parts for repair to restore its original appearance. The proposed ‘repair clause’ should have instant legal effect only for future designs while designs already granted protection should remain covered during a transitional period of ten years. 

The next steps are for this proposal to be approved by the European Parliament and Counsel and after that the related Regulation and Directive to be adopted and come into force for all EU Member States.

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An Instagram post of Rihanna has caused trouble for Puma shoe design in the EU

The Board of Appeal of the EUIPO has ruled in one interesting case related to Community designs and why their protection should be considered in great detail.

The case concerns the RCD application filed in 2016 by PUMA for the following design of shoes:

Several years later, an invalidation proceeding was initiated against this design on the grounds of lack of novelty and individual character. For evidence, an Instagram post was submitted where the well-known signer Rihanna was pictured wearing quite similar shoes. The post was dated 2014.

According to the EU legislation, one design is protectable only if it is new and original. Novelty means that there has to be no public information for the design 12 months before the application is filed with the Patent Office.

In the case at hand, The Board found that Rihanna’s post on Instagram, having more than 300 000 likes and additional media coverage, was solid proof that the shoes design was public way before its application with the EUIPO.

Furthermore, the BoA points out that the designs under comparison create similar overall impressions
on account of the same shape and form of the shoe, consisting of an upper part with a number of lines
and holes placed and arranged the same way, as well as the same shape and form of the thick, vertically-striped sole. Thus, the contested design lacks individual character.

The case comes to show us how important is timing in the case of design protection. In such situations, there are two main options, the owner to file an application sooner or the marketing activities to be postponed.

Is the bicycle’s design saddle visible when used or not – a key question for design protection in the EU

The Advocate General of the European Court M. SZPUNAR has issued his opinion in the case C‑472/21 Monz Handelsgesellschaft International mbH & Co. KG срещу Büchel GmbH & Co. Fahrzeugtechnik KG.

This case focuses our attention on the question of to what extent a design incorporated into a complex product should be visible in order to be suitable for industrial design protection. The case has the following background:

Monz Handelsgesellschaft International mbH & Co. KG (‘Monz’) is the holder of design No 40 2011 004 383-0001, registered at the German Patent and Trade Mark Office, DPMA since 3 November 2011 for the products ‘saddles for bicycles or motorbikes’. The design is registered with the following single representation showing the underside of a saddle:

On 27 July 2016, Büchel GmbH & Co. Fahrzeugtechnik KG (‘Büchel’) lodged an application with the DPMA for a declaration of invalidity of the contested design, claiming that it did not meet the necessary conditions for protection as to novelty and individual character. It asserted that the design was excluded from protection under Paragraph 4 of the DesignG on the ground that, as a component part of a complex product such as a ‘bicycle’ or a ‘motorcycle’, it was not visible during normal use.

By decision of 10 August 2018, the DPMA rejected the application for a declaration of invalidity, holding that there were no grounds to exclude the contested design from protection under Paragraph 4 of the DesignG. In its view, although it was true that the design applied for in relation to ‘saddles for bicycles [or] motorbikes’ was a ‘component part of a complex product’, that component nevertheless remained visible during normal use of that complex product. The DPMA considered that normal use also covered ‘the disassembly and reassembly of the saddle for purposes other than maintenance, servicing or repair work’, especially since Paragraph 1(4) of the DesignG contains ‘an exhaustive list of non-normal uses for the purposes of Paragraph 4 of the DesignG, designed as an exception and, as such, to be interpreted strictly’. The DPMA held that it followed from that provision that ‘any use by the end user which is not maintenance, servicing or repair work … therefore constitutes normal use’.

Following an objection lodged by Büchel against that decision, the Federal Patent Court, Germany declared the contested design invalid, by decision of 27 February 2020, on the ground that it did not satisfy the requirements of novelty and individual character. According to the Bundespatentgericht, under Paragraph 4 of the DesignG, only components which remain ‘visible, as component parts of the complex product, after they have been mounted/incorporated in it’ are automatically eligible for design protection. Conversely, a perspective which arises only because or when the component part of a complex product is detached cannot establish visibility such as to preclude exclusion from protection under Paragraph 4 of the DesignG. The Bundespatentgericht considered only riding a bicycle and getting on and off a bicycle as normal use for the purposes of Paragraph 1(4) of the DesignG. In its view, during such uses, the underside of the saddle is not visible either to the end-user or to another person. Monz has brought an appeal against that decision before the referring court.

In those circumstances, the Federal Court of Justice, Germany decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘1. Is a component part incorporating a design a “visible” component within the meaning of Article 3(3) of [Directive 98/71] if it is objectively possible to recognize the design when the component is mounted, or should visibility be assessed under certain conditions of use or from a certain observer perspective?

2. If the answer to Question 1 is that visibility under certain conditions of use or from a certain observer perspective is the decisive factor:

(a) When assessing the “normal use” of a complex product by the end-user within the meaning of Article 3(3) and (4) of [Directive 98/71], is it the use intended by the manufacturer of the component part or complex product that is relevant, or the customary use of the complex product by the end user?

(b) What are the criteria for assessing whether the use of a complex product by the end user constitutes a “normal use” within the meaning of Article 3(3) and (4) of [Directive 98/71]?’

The Advocate General’s opinion:

1. Article 3(3) of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs must be interpreted as meaning that

• in order for a design applied to or incorporated in a product which constitutes a part of a complex product to enjoy protection under that directive, the component in question must be visible in the situation of normal use of that complex product.

2.  Article 3(4) of Directive 98/71 must be interpreted as meaning that

• the words ‘normal use’ refer to all situations which may reasonably arise during use of a complex product by the end user.

If this is confirmed by the Court it will mean that designs incorporated into complex products will have broader scope for interpretation of what exactly is a visible use.

New forms for filing European trademarks and designs

The EUIPO reports about the upcoming launch of a new form for filing European trademarks and designs that will be available on 01.08.2022. This new form is part of a smooth transition to the new website and User Area that will provide:

• customization options allowing you to tailor your filing experience;
• a new design with full guidance and contextual help;
• faster goods and services management;
• enhanced security.

An instructional video can be found here.

What should social media influencers know about intellectual property rights?

Nowadays one of the most popular ways to attract consumers’ attention in order to convince them to purchase your product or service is to use the so-called social media influencers.

The reason is that consumers pay less and less heed to the classic advertisement, finding it too boring or not trustworthy enough. After all, every ad tells you that the promoted subject matter is the best one.

On the other side, social media influencers in the first place are just normal people expressing their thoughts which in many cases attract like-minded people who start to follow and believe them with time.

Based on this a new marketing channel has emerged offering great potential for marketing and sales activities.

In most cases influence marketing starts without planning, the relevant influence suddenly discovers options for monetarization and if done properly it could be a successful business model.

However, every business needs to be well organized and manage its assets including the intangible ones such as all sorts of intellectual property rights.

Because I’m passionate about this I’ve created a new Skillshare class that will teach every new or established influencer how to deal with intellectual property rights, including copyrights, trademarks, designs, domain names, etc.

All of this is really important because if done right it can boost the influencer’s business while if done badly it can jeopardize it.

Just for example, if one influencer does not know how to secure copyrights over the materials used on his or her channel this can lead to legal conflicts with the copyright holders.

If a popular influencer missed the point to register a trademark, someone else can start using hir or her distinguishing name or sign for unfair competition, similar social media channels, etc.

Social media influencers generate value with their work, value that has to be managed properly in order to become a sustainable business model.

In this class you will learn:

• What types of social media influencers exist?
• Why do Influencers need to understand intellectual property?
• What intellectual property rights can belong to influencers?
• What copyrights belong to influencers and how can they be managed?
• What are the copyright rules of social media platforms for every uploaded content?
• What influencers can protect as trademarks?
• How can influencers protect internet domain names and what do they need to bear in mind?
• How design rights can be beneficial for influencers?
• What role do trade secrets play for influencers?
• How publicity rights can help influencers?

This class will give you the knowledge of how one social media influencer can organize and manage his or her intellectual property rights building a strong and sustainable business project.

In case you are interested, you can use this link to my Skillshare class: https://skl.sh/3FOUiuk 

Thanks for your interest!

Lego was accused of copyright infringement over a jacket design

As it is well-known copyright is one of the main intellectual property rights that every creator can rely on in order to benefit from his or her created works. The problem with copyright is that it can invoke really complex disputes out of nowhere.

One example of this possibility is a recent lawsuit against LEGO, a toymaker company whose practice is to use characters and stories from famous movies or series for kids constructors.

In the case at hand, the company uses a design of a jacket, known as the “Concannon Jacket”, worn by Antoni Porowski part of Netflix’s Queer Eye reality show.

James Concannon is the artist who created this design, giving Netflix permission to use it for the show.

According to him, however, LEGO has no authorization to use the jacket design for their toys “Queer Eye – The Fab 5 Loft”, which are based on the reality show’s characters.

LEGO dismissed this accusation claiming that they use legally the jacket at least because they had a license from Netflix which in turn had permission from the artist for the same jacket.

Obviously one of the center moments here is what was the scope of the initial license and whether it includes such merchandising use.

According to the US Copyright law, apparel is not copyrightable as a whole. Only separable creative elements of it can be protected.

So the issue here is to what extent the original jacket’s elements are subject to copyright protection alone and to what extent those used by LEGO are similar enough in order for infringement to be found.

Source: SS Rana & Co – Ananyaa Banerjee and Nitika Sinha for Lexology.

Infringement of BMW wheel rims Community design – a European Court decision

The European Court has ruled in case C‑421/20 Acacia Srl v Bayerische Motoren Werke AG, which targets the issue of Community design enforcement and the applicable national jurisdiction. The case has the following background:

Acacia is a company incorporated under Italian law which produces, in Italy, wheel rims for motor vehicles and distributes them in a number of Member States.

Taking the view that Acacia’s distribution of certain wheel rims in Germany constitutes an infringement of a registered Community design of which it is the holder, BMW brought an action for infringement before a Community design court designated by the Federal Republic of Germany. That court declared that it had jurisdiction pursuant to Article 82(5) of Regulation No 6/2002. Acacia, in its capacity as defendant, argued that the wheel rims at issue are covered by Article 110 of that regulation and that there is therefore no infringement.

That court held that Acacia had committed the acts of infringement alleged by BMW, ordered that the infringement be brought to an end and, referring to Article 8(2) of Regulation No 864/2007, applied German law to BMW’s ‘supplementary’ claims seeking damages, the provision of information, the provision of documents, the surrender of accounts and the handing over of infringing products with a view to their being destroyed. On the basis of the rules contained in that national law, those claims were, in essence, upheld.

Acacia brought an appeal before the referring court. It disputes the existence of an infringement and takes the view, furthermore, that the law applicable to BMW’s supplementary claims is Italian law.

The referring court states that the jurisdiction of the Community design courts designated by the Federal Republic of Germany arises, in the present case, from Article 82(5) of Regulation No 6/2002 and that Acacia has committed the acts of infringement alleged by BMW.

However, it has doubts as to which national law applies to BMW’s supplementary claims. The referring court observes that the outcome of the dispute will, to some extent, depend on that question, since the rules of German law on the provision of documents and the surrender of accounts differ from those of Italian law.

That court considers that it could follow from Article 8(2) of Regulation No 864/2007, as interpreted by the Court in the judgment of 27 September 2017, Nintendo (C‑24/16 and C‑25/16, EU:C:2017:724), that Italian law applies in the present case. The referring court finds, in that regard, that the event giving rise to the damage is located in Italy, since the products at issue were delivered to Germany from that other Member State.

Nevertheless, the infringing products at issue in the main proceedings were sold in Germany and, to that end, were advertised online to consumers located in the territory of that Member State.

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

‘1. In proceedings for an infringement of Community designs, can the national court dealing with the infringement proceedings having international jurisdiction pursuant to Article 82(5) of [Regulation No 6/2002] apply the national law of the Member State in which the court dealing with the infringement proceedings is situated (lex fori) to [supplementary] claims in relation to the territory of its Member State?

2. If Question 1 is answered in the negative: Can the “initial place of infringement” for the purposes of the [Court in judgment of [27 September 2017, Nintendo (C‑24/16 and C‑25/16, EU:C:2017:724)] regarding the determination of the law applicable to [supplementary] claims under Article 8(2) of [Regulation No 864/2007] also lie in the Member State where the consumers to whom internet advertising is addressed are located and where goods infringing designs are put on the market within the meaning of Article 19 of [Regulation No 6/2002], in so far as only the offering and the putting on the market in that Member State are challenged, even if the internet offers on which the offering and the putting on the market are based were launched in another Member State?’

The Court’s decision:

Article 88(2) and Article 89(1)(d) of Council Regulation (EC) No 6/2002 of 12 December 2001 of Community designs, and Article 8(2) of Regulation (EC) No 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations (Rome II) must be interpreted as meaning that the Community design courts before which an action for infringement pursuant to Article 82(5) of Regulation No 6/2002 is brought concerning acts of infringement committed or threatened within a single Member State must examine the claims supplementary to that action, seeking the award of damages, the submission of information, documents and accounts and the handing over of the infringing products with a view to their being destroyed, on the basis of the law of the Member State in which the acts allegedly infringing the Community design relied upon are committed or are threatened, which is the same, in the circumstances of an action brought pursuant to that Article 82(5), as the law of the Member State in which those courts are situated.