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.

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.

China joins the Hague System for international registration of industrial designs

WIPO reports about the accession of China to the Hague System for the International Registration of Industrial Designs.

As it is well known, Hague System allows up to 100 designs to be included in one application and after that registered in 90 Member states. This saves a lot of time and money for the applicants.

The Agreement will come into force for China on 05.05.2022, after this date the country can be designated in applications for industrial designs.

Malaysia joins DesignView

The Intellectual Property Corporation of Malaysia (MyIPO) has added its national designs to the global database for industrial designs DesignView.

In that way, new 39 000 designs will be available through DesignView which gives access to more than 18 million designs.

All of this means that IP practitioners and business owners now will be able to search for registered designs in Malaysia easily saving time and money while building appropriate design strategies for this country.

Despite the pandemic intellectual property is on the rise for 2020

WIPO has published its annual World Intellectual Property Indicators Report for 2020.

Despite the pandemic and all accompanying economic problems, the data clearly shows that the interest in intellectual property rights is rising on a global basis.

According to the report, there is a 13,7% increase in trademark applications for 2020, a 1,6% increase in patents applications, 2% for designs, and 5,1% for plant varieties.

A number of patent applications:

Trademark applications trend 2006 – 2020:

Design application trend 2006 – 2020:

Design applications by country:

Source: WIPO.

Ferrari FXX K design elements and a European Court decision

The European Court has ruled in case C‑123/20 Ferrari SpA v Mansory Design & Holding GmbH and WH. 

This dispute focuses our attention on the limited edition Ferrari car model FXX K that is similar to another model 488 GTB. There is a visual difference between both models in some design elements.

The German company Mansory Design & Holding GmbH,WH starts to produce and offer those design elements as tuning parts which can be used by owners of 488 GTB to make their cars look like FXX K.

Ferrari initiated a lawsuit in Germany for infringement of unregistered Community design but lost it. The decision was appealed and the German Supreme Court asked the European Court to clarify whether the making available to the public of images of a product, such as the publication of photographs of a car, could lead to the making available to the public of a design on a part or a component part of that product and, if so, to what extent the appearance of that part or component part must be independent of the product as a whole in order for it to be possible to examine whether that appearance has individual character.

The EU Court has ruled, inter alia, that EU law must be interpreted as meaning that the making available to the public of images of a product, such as the publication of photographs of a car, results in the making available to the public of a design on a part of that product or on a component part of that product, as a complex product, provided that the appearance of that part or component part is clearly identifiable at the time that design is made available.

In the first place, the Court noted that the material conditions required for the protection of a Community design to arise, whether registered or not, namely novelty and individual character, are the same for both products and parts of a product. Provided that those material conditions are satisfied, the formal condition for giving rise to an unregistered Community design is that of making available to the public within the meaning of Article 11(2) of Regulation No 6/2002. 

In order for the making available to the public of the design of a product taken as a whole to entail the making available of the design of a part of that product, it is essential that the appearance of that part is clearly identifiable when the design is made available. However, that does not imply an obligation for designers to make available separately each of the parts of their products in respect of which they seek to benefit from unregistered Community design protection.

In the second place, the Court pointed out that the concept of ‘individual character’, within the meaning of Article 6 of Regulation No 6/2002, governs not the relationship between the design of a product and the designs of its component parts, but rather the relationship between those designs and other earlier designs.

In order for it to be possible to examine whether the appearance of a part of a product or a component part of a complex product satisfies the condition of individual character, it is necessary for that part or component part to constitute a visible section of the product or complex product, clearly defined by particular lines, contours, colours, shapes or texture. That presupposes that the appearance of that part or component part is capable, in itself, of producing an overall impression and cannot be completely lost in the product as a whole.

One key thing in order graphic designers to be more successful

Graphic design has become a trendy area for professional development nowadays.

With the advent of the so-called gig economy, being a graphic designer can be a real advantage. On one hand, this job offers you the chance to work remotely which is another trend especially in the light of the Covid pandemic.

On the other hand, graphic design works are in demand in particular in their digital form because all businesses are online now and they need more and more good representation in an attempt to attract consumer’s attention.

So all of this is good but to be successful in a very competitive environment graphic designers should know how to protect their valuable works and how to do business with them.

One key moment in that regard is at least a basic knowledge about copyright law. 

Why?

Because copyright law provides you with all rights to control how one graphic design is used, by whom, where, and whether you receive remuneration for such use. 

Probably you think that copyright law is far too complex. Yes, it is to some extent but nevertheless, there are some basics things that if one designer knows in advance he or she will be in a better position to benefit from the created graphic designs. 

In an attempt to help, I’ve built a new Skillshare class where you can learn all copyright basics related to graphic designs in a friendly way with examples.

If you are interested, here you can find a referral link, it gives you access to the course and 1-month free access to all Skillshare classes if you sign up.