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vendredi 13 février 2009

Jeu Concours

Cas pratique:

Une société allemande dépose un modèle en Allemagne.
Elle s’aperçoit qu’en France une société française commercialise un modèle identique.
Comment faire ?

Une tablette de chocolat au vainqueur… et une double tablette à celui qui répondra pour cette situation en 1995 et pour la même situation en 2006….
Solution pendant la semaine du 23

mercredi 7 janvier 2009

Unregistered Community Design

In its first decision ever on Community designs the German Supreme Court (“Bundesgerichtshof”) was concerned with the question whether an unregistered Community design (UCD) is created by using a design in trade in the territory of the European Community after it has been first disclosed in China (9 October 2008).

The plaintiff before the Court claimed a UCD on the ground that they created a new design for a biscuit press and sold it in the UK shortly after the design was registered and published by the Chinese Patent Office.

Article 11 of the Community Design Regulation (CDR) stipulates that a design which meets the requirements for protection (i.e. novelty and individual character) shall be protected by a UCD for a period of three years as from the date on which the design was first made available to the public within the Community. Article 110a CDR adds that a design which has not been made public within the territory of the Community shall not enjoy protection as a UCD. And Article 5 and 7 CDR rule that the requirements for protection are not met where an identical design has become known within the Community before said date of the UCD.

The Court found that by trading the biscuit press in the UK the plaintiff had made the design available to the public within the Community in the meaning of Article 11 and 110a CDR. However, protection of the design by a UCD must be denied, nevertheless, because the earlier disclosure of the design by the Chinese Patent Office destroyed the novelty of the design according to Article 5 and 7 CDR.

The decision of the German Supreme Court confirms that a design is barred for ever from protection by a UCD where it has been disclosed first outside the territory of the European Community.

mardi 29 juillet 2008

Panton chair... as a trademark?

In February of this year the Swiss Federal Administrative Court held, in Case B-6050/2007, that the shape of the Panton chair could be registered as a trade mark. The shape of the Panton chair, created by Danish designer Verner Panton in 1967, was the subject of a trade mark application in respect of goods in Class 20 (furniture etc).

The Federal Institute of Intellectual Property initially rejected the application, but the Swiss Federal Administrative Court reversed its decision. As to distinctiveness the court found that the chair's shape differed from customary or expected shapes and was thus distinctive. Also, while chairs are functional objects, the shape in question could not be said to be entirely derived from its function.

This decision is now under appeal to the Swiss Federal Court
Source: Peter Heinrich (Staiger Sch....

"A less successful experiment is preferable to a beautiful platitude." (Verner Panton)

With his visionary, colorful home furnishings, Panton sought ways to fashion a stylistically uniform, imaginative interior. He created his own unique design universe, where his uncompromising exploration of form, color and light resulted in a number of timeless products.

Panton was the first in the world to create a form-moulded chair in plastics without any joints. His plastic Panton chair, a one-piece cantilevered design made in candy-apple colors, has been in production continuously since 1967, and its sinuous shape became synonymous with 1960's pop culture. It is not only the most important and the most famous of Verner Panton's works, but without doubt one of the most significant chair designs of the 20th century.

jeudi 29 mai 2008

Decision of the Third Board of Appeal of 3 March 2008 in Case R 0211/2007-3


The contested design lacked individual character because it produced the same overall impression on the informed user as a Burberry handbag published in various Burberry catalogues and in a newspaper.


The publication of a CTM application for the Burberry check as a figurative trade mark had also destroyed the individual character of the contested design.

The two-dimensional nature of the trade mark did not mean that it produced a different overall impression from a three-dimensional object (such as a handbag) which incorporates the Burberry check.

mardi 27 mai 2008

Decision of the Third Board of Appeal of 10 March 2008 in Case R 0586/2007-3

The disclosure of the earlier design should be clear enough to enable an appropriate comparison with the challenged design.

If it is not, the application (or invalidity request) should be rejected as not well-founded.


In this case, the Board was not convinced that the picture – being the only pertinent piece of evidence of divulgation – permitted a reliable comparison with the contested design for the purpose of assessing the overall impression they produce on the informed user.

Barbecue 2

The Board indicated that it possibly agreed with the contested decision's finding that the legs of the two barbecues are different (in the contested design there are two wheels) but noted that this difference had little weight in the overall assessment.

The wheels are purely functional (they make it easier to transport the barbecue) and do not play a primary role in the visual impression that the entire barbecue produces on the viewer. It followed that this picture, which failed to adequately represent the earlier design, thereby rendering any comparison with the contested design impossible, did not amount to divulgation for the purpose of Article 7(1) CDR.

The Board therefore concluded that the application for a declaration of invalidity must be rejected as unfounded.

Decision of the Third Board of Appeal of 17 March 2008 in Case R 0592/2007-3

The purpose of Article 3 CDR is to explain what can be protected as a design, not to indicate how many designs can be included in an application.


The fact that a Community design application includes one or more designs therefore has nothing to do with the legal definition of designs contained in Article 3 CDR: if the design depicts the appearance of a product, it certainly falls within the definition contained in that provision, since it is irrelevant – to this end – whether the design (that is, the product into which it is incorporated) is adapted into more than one variant.

For this reason, the Invalidity Division incorrectly invalidated the Community design in this case.

Since in fact the design depicts the appearance of a radiator, it satisfies the requirements contained in Article 3 CDR and could not be invalidated. In the present case, the only irregularity committed by the holder consisted in having presented a single rather than a multiple application.

But this was certainly not an irregularity sanctionable by invalidity, either total or partial, because such an eventuality is not provided for under Article 25 CDR. The file was remitted to the Invalidity Division for examination of the grounds of invalidity contained in Article 25(1)(b) CDR, with particular reference to the alleged lack of individual character (Article 6 CDR).

jeudi 15 mai 2008

ZS01 Vs. ZS05... The concept of novelty

This further decision of the Third Board of Appeal, the only Board hearing Design cases, specifies the key requirements of “novelty”, “individual character” and “features solely dictated by its technical function” which, according to Articles 4, 5 , 6 and 8 CDR, every Community design must comply with to be held valid.


In this case the Board upheld the precedent decision of the Invalidity Division which declared the registered Community design (RCD) for an under-water-motive device invalid. In fact, the applicant challenged the RCD successfully by a former version of the current product the RCD should have protected.


The original product called “ZS01” had been made available to the public in 2002. The RCD was filed August 25, 2004 and corresponds to an updated version of the “ZS01” called “ZS05”. The updating concerned only the handle element.


The Invalidity Division considered this difference to be sufficient for “novelty” but not to produce a different overall impression. Therefore, the RCD lacked “individual character”. On appeal, the RCD owner argued that the difference in the handle (six different features were enumerated) is also sufficient to fulfill the requirement of “individual character”, because the handle merits greater attention being the area where the designer enjoys the greatest margin of freedom whereas the design of the other elements are dictated by their technical function.

On account of this, the Board found that “novelty” and “individual character” overlap to some extent, although they are presented as separate requirements in Articles 4 to 6 CDR.

If two designs are identical except in immaterial details, they will produce the same overall impression on the informed user, and vice versa, if two designs produce a different overall impression on the informed user, they cannot be identical. Nevertheless, there are certain differences between the two requirements.

The test for “novelty” is essentially of an objective nature, i.e. whether two designs are identical or not. The only area where difficulties of interpretation might arise is in relation to the term “immaterial details”.

The test for individual character is likely to give rise to slightly more subjective appraisals. The Board is required to take into account the overall impression on the informed user with regard to the degree of freedom of the designer in developing the design. This means that if the designer had relatively little freedom in developing the design, especially on account of technical constraints, even small differences in relation to earlier designs may be sufficient to endow the design with individual character.

Additionally, the Board assessed that the comparison must be made between the whole of the senior design and the whole of the RCD, because the RCD concerned the underwater motive device as a whole and not merely the handle). The argument of technical function of the other elements was refused by the Board since the shape of the body and the propeller shroud could differ significantly without compromising their technical function, e.g. a more elongated or bulbous body and a broader or narrower propeller shroud.

As a result, the Board found that the RCD lacked “individual character” and upheld the invalidation of the RCD. Interestingly, the Board – in answering the enumeration of different handle features – stated that the appellant could have sought design protection for the handle alone, since it is a component part of a complex product which remains visible in normal use according to Articles 3 (c) and 4 (2) (a) CDR.

The question of whether the handle in the earlier design and the redesigned handle produce the same overall impression on the informed user might have well received an affirmative answer according to the Board.

Although the outcome of these invalidity proceedings is generally no good news for long term product designs that are modified from time to time (because the precedent design enjoys no privilege in comparison to other prior art), this decision provides useful guidance for future applications with regard to the protection of designs when a product version is updated.

Clothing Counterfeiting

The European Union trade deficit for clothing in 2006 was a whopping €33.7 billion. From 1994 to 2006, the total production volume for clothing within the 27 countries which now make up the EU decreased by some five percent each year. Still, the EU counts some 1.5 million people working in this sector, generating a value added of €22 billion (about 1.2% of the total value added of EU-27’s industry). Over the coming years, European manufacturers will probably be forced to further downsize their production volume in favor of niche products with a high value added.

Some representatives of the European clothing industry are calling for a stronger worldwide intellectual property (IP) protection for fashion designs because they fear major losses from counterfeiting. Yet some modern economic theories consider competition to include a dynamic interaction between innovation and imitation: innovation generates superior products; imitation makes them available to a greater number of consumers, so a lively imitation process is crucial for dynamic competition. Is this reasonable?

To answer, we must look at the time taken by the imitator to catch up with the innovator. Does the innovator, after launching the innovation, have sufficient time to amortize development costs and generate profit? If the time is too short, then innovators may lose their motivation to generate further innovations, and prolongation through legal measures makes economic sense. However, the fashion industry is a particular case.

Many fashion aficionados cannot afford the original items created by Chanel, Dior, Versace, etc. Instead, they buy cheaper copies, fully aware that these are not originals. The sale of these counterfeit products cannot be equated to loss of sales of the originals as they primarily target consumer groups that are not in the market for the originals. Certainly, plagiarism can confuse consumers and, in case of inferior product quality, damage the designer’s good reputation. Nevertheless, it could be argued that counterfeit products bring fashion labels more publicity, stimulating nascent fashion trends and increasing demand for the originals. Gabrielle “Coco” Chanel was not alone in her assertion that imitation reflects the highest form of flattery. In this context, what is the relevance of design law to the European fashion industry?

Intellectual property rights for design

Design protection can only be sought when the intangible creative idea – e.g. a novel pattern - is embodied in physical form, such as in a specific fabric or item of clothing.

RCD 19054

A creative idea, for example for a certain flowered cloth pattern, is intangible and can be reproduced without any asset erosion. Therefore, exclusive rights to specific physical things, like the flowered cloth pattern, would not suffice to grant the design IP protection. The intellectual idea itself must be protected. This can only be achieved by prohibiting the imitation of the physical things through which we perceive the intellectual good. The ban of imitation for a certain time period enables people to reap where they have sown. Without that prospect the incentive to sow is diminished.

On the other hand, since we can only perceive intellectual goods if they are incorporated in physical things, non-materialized ideas cannot be protected. As a consequence, fashion styles like mini-skirts or jeans in general as much as manufacturing processes, such as innovative techniques to cut, sew or print clothing, which allow the manufacturing of a wide range of different physical results, cannot be protected as such under design law. Protection can only be sought as far as the idea is materialized in a specific physical thing.

From royal privileges to the Community design regulation

The development of European design law goes hand in hand with the history of the textile industry. In the 15th century, the French King granted exclusive rights, or privileges, for the fabrication of textiles. A government ordinance penalized the counterfeiting of weaving patterns for the first time in 1711 in Lyon. In England and Scotland, the first statute concerning the protection for designs was initiated by textile producers in 1787. In 1876, Germany issued a law concerning the copyright on patterns and models, again mainly as a consequence of requests of the textile industry. More recently, the drive to harmonize Europe’s design laws led to the European Regulation on Community designs, which came into force in 2002.5

The European Community Design Regulation protects only designs that are new and have individual character. The degree of visual difference from pre-known designs, resulting from one-to-one comparisons and examined from the perspective of an informed user, is the only decisive criterion as to whether or not a design can be protected. Differences between two designs which are of minor importance to a casual observer, such as the arrangement of buttons, the shape of a collar or the length of a skirt, may produce a different overall impression in the eye of an informed fashion user.6

To register or not to register

Few new designs on the market are truly exceptional in form.

Fashion designers are actually quite limited in their scope for creativity: clothing must fit the human body; and the general social need to conform to accepted dress codes tends to lead to uniformity. Thus few new designs on the market are truly exceptional in form. But since difference is assessed by one-to-one comparisons, a single distinguishing feature - such as an embroidered jeans pocket, an oversized zipper or a dominant print - may be enough to produce a unique overall impression and justify the protection either of the extraordinary feature or of the whole item.

In 2007, WIPO registered only 29 international designs (2.5% of total registrations) under class 2 of the Locarno Classification (clothing and haberdashery) through The Hague System, while the EU Office for Harmonisation in the Internal Market (OHIM) registered 7’421 (9% of total). Yet, most of the designs registered by fashion houses are not for clothing, but for accessories – watches, bags, sunglasses, etc., which fall under several different Locarno classes – an important source of income for fashion labels. The majority of fashion designers consider that, with fashion seasons lasting only a few months, the five-year minimum protection period offered by these registration systems is not appropriate for often ephemeral fashion designs, and that their time and money would therefore be better spent on creating new designs than on registration.

European designers do have an effective solution in the unregistered Community design. This is obtained without any formalities simply by making the design available to the public, and lasts for three years. Since most designers become concerned with protection only after becoming a victim of counterfeiting, the unregistered Community design provides a welcome alternative to registration.

Design vs trademark protection

In conclusion, design registration tends to be appropriate primarily for protecting exceptional designs or features, or those which might be expected to become long lasting icons. However, if a design is counterfeited, the endless numbers of designs on the market make it hard to detect violations. Instead of design protection, most fashion designers rely much more on their fashion labels, applied directly on their products and often protected under trademark law. Fashion labels make it easier for designers to detect imitations and help fashion users to identify preferred items. Fashion houses invest large amounts in advertisements to promote the attributes of their trademarks in order to attract fashion users. But it is no surprise that counterfeiters also try to free-ride on the sales-promotional effects of trademarks by copying both the designs and the corresponding labels. For this reason, major fashion designers incorporate special treated yarn or other security elements into their labels, so facilitating the distinction between originals and imitations.

lundi 28 avril 2008

Protecting, Acting...

GM won in 2006 an important verdict in a trademark case involving a toy Hummer. The jury awarded over a million and a half dollars for the infringement of GM’s trademark on the distinctive grille design of the Hummer.

What are the two questions?

One is whether toy manufacturers are infringing trademarks when they make toy models of trademark-protected vehicles (and presumably aircraft and the like). Now, most automobile designs are not necessarily trademarks — being product configurations, fundamentally — and probably none are registered. But the grille design evidently was ruled not to be functional but to be a trademark feature used as a source indicator for Hummers and which has secondary meaning.

And the second thing we learn?

Plaintiffs that are rich enough, protecting trademarks that are valuable enough, will proceed to trial and final judgment and will get awarded actual money damages in trademark cases.

The power of design for marketing success

"Marcel Breuer's Wassily Chair, which he designed in 1927"

It is not surprising that consumers attach particular importance to the visual appeal of shoes and clothes they buy, or the look and style of gadgets or cars. The appearance of an article certainly counts in making a first impression on a customer, and often plays a decisive role in the final decision to buy or not. Smart businesses take note of changing consumer tastes and choices in order to develop and deliver better products, both in functional and aesthetic terms. Design, therefore, makes a critical contribution to overall corporate business strategy and success.

"The Volkswagen Type 1, more commonly known as the Beetle or Bug, is an economy car produced by the German auto maker Volkswagen from 1938 until 2003."

Effective use of design adds value to a product by creating variety in a world of commodities. Attractive designs help in differentiating between competing products and also in customizing and segmenting the market for a particular product, ranging from ordinary items such as locks, cups and saucers to potentially expensive items such as watches, jewelry and cars.

"Hermes' Kelly bag (1950')."

Creating higher perceived value through aesthetically pleasing industrial designs helps build trust and lasting customer relationships which translate into higher market share, better prices and bigger profits.

Many companies have successfully redefined their brand image through strong focus on product design. Most senior managers recognize that design excellence brings stronger brand recognition and better profitability. Forward-looking businesses create and choose appropriate trade names and logos to protect their corporate identity, brand image and the resultant competitive advantage, and also devote attention, in equal measure, to the creation and management of distinctive designs as part of their corporate strategy for identity and brand management.

Design Management Basics

First and foremost, diligent design management requires cost-effective protection of valuable designs to prevent the look of the product from becoming a commodity and freely imitated in less expensive look-alike products. This entails timely registration of new, novel, or original designs at the national or regional design office.

The terms “design”, “industrial design” or “design patent”, when used in intellectual property law and practice, have a specific connotation. In most cases they refer to the visual appeal – that is, the features of shape, configuration, pattern or ornament, or any combination of these features – of a finished article made by hand, tool or machine, as opposed to functional features which may be protected by other types of intellectual property rights, such as patents, utility models or trade secrets. In many countries, the requirement of visual appeal of an article of manufacture or handicraft has been modified to that of perceptible features of appearance, and the rule of novelty has been replaced or supplemented by an individuality requirement.

Designs may be two or three-dimensional. Examples of two-dimensional designs are textile, wallpaper and carpet designs, and of three-dimensional ones are the shape of a toy, package, car, electrical appliance, mobile phone, piece of furniture or the shape and ornamentation of kitchenware. In certain circumstances, the features constituting a design may be the color, texture or material of an article. In some countries, computer icons have recently been protected as industrial designs.


Legal Options for Protection Good design strategy must compare the various alternatives for protecting industrial designs, as there are different legal ways to prevent unscrupulous competitors from unauthorized copying. Legal options may include one or more of the following: protection under industrial design law, copyright law, trademark law – as a two or three-dimensional mark – and under unfair competition law. In some countries, the protection of these different laws may be mutually exclusive, in others it is cumulative to varying degree. It is advisable to seek expert advice. Industrial design issues affect various types of business decision. For example, the type of protection and its cost or effectiveness may affect: - which details should be disclosed to the designer, especially when the designer is employed by a contractor;
- whether to undertake design development entirely in-house, to contract or commission an outside agency or to do it jointly;
- timing of the initial use of a new design in advertising, marketing or public display in an exhibition;
- if and when to seek or continue to maintain design registration;
- if and when to initiate action against unauthorized/infringing acts of competitors, counterfeiters or importers;
- if and when to license or partially assign a design; and
- if and when to register the design in other markets for export or for exploring the potential of entering into strategic business alliances, joint ventures, setting up wholly owned subsidiaries, etc.

"Boom Bag"

Nature of Design Right

Most countries require registration of an industrial design as a condition for protection. Registration gives an absolute right that excludes all others from using the design for making, importing for trade or business or selling any article in respect of which the design is registered, and to which the design or a design not differing substantially from it has been applied. This right is for a limited period of time and subject to renewal. The maximum term of protection is 10 to 25 years, depending on national legislation. In many countries, an industrial design cannot be registered as such if it has been used or published before applying for design registration.

Only the owner of a design, namely the creator/author (or depending on the legislation and the context, his employer) or his successor in title, may apply for and obtain registration for an industrial design. If a number of persons have worked together to create a design, then they must file for registration as joint owners – unless all of them are working under contract or on commission. While the application must be filed with the office competent for the country or region for which protection is sought, the Hague Agreement Concerning the International Deposit of Industrial Designs offers the possibility of obtaining protection for industrial designs in a number of countries through a single deposit made with WIPO.

Basic information for filing an industrial design application and the possibility, where available on request, of the deferred publication of a design, which may be critically important for marketing fashion articles such as textiles, clothing or jewelry, can be obtained from the respective national or regional office. Hiring the services of a qualified agent is advisable for fully unleashing the power of a design in marketing, sales and other business transactions, including its valuation as an intangible asset.


See here YSL' talent for cloth design

Industrial design or applied art?

Un classique. La chaise longue LC4 (Cassina I Maestri Collection) conçue par Le Corbusier, Pierre Jeanneret et Charlotte Perriand. Cassina détient aujourd’hui les droits de reproduction exclusifs. (Photo Cassina)

La conception de dessins et modèles industriels, qui marie les éléments fonctionnels et esthétiques d’un objet, englobe un grand nombre de disciplines.

Ainsi a pu-t-on lire que la conception de dessins et modèles est “le facteur essentiel de l’humanisation novatrice des techniques et le facteur essentiel des échanges culturels et économiques”.

Il s’agit d’un domaine complexe, offrant différentes options et différents régimes de protection des dessins et modèles, allant des législations sui generis relatives aux dessins et modèles, des dessins et modèles non enregistrés et des brevets de dessin ou modèle au droit d’auteur et aux marques.
De fait, il n’existe pratiquement aucun sujet relevant de la propriété intellectuelle qui soit plus difficile à classer que la conception de dessins et modèles industriels. Et ce fait a des répercussions importantes sur les moyens et les conditions de sa protection. Si le dessin ou modèle d’un objet quelconque peut être classé comme une œuvre d’art appliqué, par exemple, il peut bénéficier de la protection accordée en vertu de la loi sur le droit d’auteur, la durée de la protection étant alors très supérieure aux 10 ou 15 ans voire 25 ans accordés en vertu de la législation sur les droits et modèles enregistrés.

On a eu un exemple devenu classique de ce problème en 1929, lorsque l’architecte et concepteur suisse Charles Édouard Jeanneret, mieux connu sous le nom de Le Corbusier, a conçu une série de meubles dont chacun se ramenait à l’expression concrète de sa propre fonction. Les concepteurs de cette école privilégiaient le concept d’“utilisation” et les impératifs propres à ce concept. L’objet lui-même, dépourvu de tout ornement, tire sa beauté de sa nature même.

La production industrielle de ces objets n’est intervenue que plus de 30 ans plus tard et ce n’est que plus de 60 ans plus tard que s’est posée la question de savoir si ces chaises étaient des œuvres d’art appliqué. Cela a notamment débouché sur une affaire appelée à faire date et jugée conformément à la législation allemande sur le droit d’auteur(Décision I ZR 15/85 du 10 décembre 1986, publiée in GRUR 1987, page 903 ("Le Corbusier-Möbel")). Ce jugement a été important notamment en précisant que les critères permettant de juger si un objet donné pouvait être considéré comme une œuvre d’art appliqué aux fins de la protection du droit d’auteur ne devaient pas dépendre de la finalité de cet objet.

Aujourd’hui, la conception de dessins et modèles est un élément essentiel du succès de l’image de marque et contribue très largement à faire connaître le produit aux consommateurs. Le i-Pod d’Apple et les calandres d’automobiles, comme le Jeep® grille design emblématique de la marque DaimlerChrysler, ne sont que deux des nombreux exemples d’entreprises exploitant des modèles bien établis pour créer de nouveaux produits.

Toutefois, les dessins et modèles bien accueillis par le public attirent également les imitateurs. Un dessin ou modèle apprécié du public est copié dès qu’il fait son apparition sur le marché. Pourtant, beaucoup de concepteurs et de sociétés ne savent pas qu’ils doivent rechercher une protection active ou sont mal informés des différentes possibilités qui s’offrent à eux. Les législateurs s’emploient à régler ce problème. L’un des nouveaux moyens d’obtenir une protection rapide et rentable des dessins et modèles est le dispositif de protection des dessins ou modèles non enregistrés de l’Union européenne (UE). Avec les premières actions en atteinte aux droits intentées avec succès en vertu de la législation de l’UE sur les dessins et modèles non enregistrés, on a pu constater que les concepteurs et les entreprises se prévalent de plus en plus de ce droit relativement nouveau.

"Among the new ways of obtaining rapid and cost effective design protection is the un-registered design protection scheme of the European Union (EU). With the first successful infringement cases now being brought under EU unregistered design law, you should hear about the increasing use of this relatively new right by designers and businesses."

Charlotte Perriand, 1928

From royal privileges to the Community design regulation

The development of European design law goes hand in hand with the history of the textile industry. In the 15th century, the French King granted exclusive rights, or privileges, for the fabrication of textiles. A government ordinance penalized the counterfeiting of weaving patterns for the first time in 1711 in Lyon.

In England and Scotland, the first statute concerning the protection for designs was initiated by textile producers in 1787.

In 1876, Germany issued a law concerning the copyright on patterns and models, again mainly as a consequence of requests of the textile industry.

More recently, the drive to harmonize Europe’s design laws led to the European Regulation on Community designs, which came into force in 2002.

The European Community Design Regulation protects only designs that are new and have individual character. The degree of visual difference from pre-known designs, resulting from one-to-one comparisons and examined from the perspective of an informed user, is the only decisive criterion as to whether or not a design can be protected. Differences between two designs which are of minor importance to a casual observer, such as the arrangement of buttons, the shape of a collar or the length of a skirt, may produce a different overall impression in the eye of an informed fashion user.

vendredi 21 mars 2008

Ipod, mon bel Ipod

Le site rapporte l'affaire suivante.

Dans une décision du 10 janvier 2008, le tribunal de commerce de Paris a pris en compte la popularité et l’attractivité des iPods pour évaluer le montant des dommages et intérêts attribués à Apple, fabricant et titulaire des droits sur ces baladeurs numériques. Des contrefaçons de ces produits avaient été saisies par la douane française.

Celle-ci avait alors procédé à une enquête qui lui avait permis de constater que ces baladeurs étaient proposés à la vente sur un site internet. Apple a donc assigné la société exploitant ce site en contrefaçon. Il estimait son manque à gagner à 5 247 euros pour les 66 baladeurs saisis par la douane.
Après avoir mis en évidence le caractère contrefaisant des produits saisis et de ceux proposés sur le site en cause, les juges consulaires ont considéré que le nombre de produits contrefaisants vendus devait être conséquent « eu égard au nombre de transactions effectuées sur ce marché en particulier pour ce type de produits attractifs ».

Ils en ont déduit que le préjudice subi par Apple serait réparé par l’allocation de 80 000 euros de dommages et intérêts, somme supérieure au manque à gagner invoqué par Apple.


Cf. les seuls vrais sur:

Notons "que la société Apple a déposé les modèles du design de cet iPod le 19 décembre 2005 et verse aux débats copie des certificats d’enregistrement communautaires enregistrés sous les numéros 000450796-0002, 000450796-0003 et 000450796-0004".

mercredi 19 mars 2008

Fake Ferraris

It was the ultimate face-lift: a sporty red Ferrari F355 on the outside, a used Pontiac engine inside.

That was enough, apparently, to entice wannabe Ferrari owners to plunk down €20,000, or about $30,000, for the chance to own an approximation of the real thing.

A few days ago, Italian tax police, the Guardia di Finanza, busted up a ring of auto-body shops across the country that were trafficking in one of the most high-end and high-priced counterfeit cars of all time.

The ring operated in a dozen cities from near the Alps in the north to Sicily in the south. Tax police rounded up seven completed fake Ferraris, as well as another seven that were still being decked out. Some of the counterfeit cars had already been sold. They also seized numerous spare parts, some of which were genuine Ferrari.

Copying a Ferrari seems particularly brazen. The company makes about 6,000 cars a year, and waiting lists for new models can run years. Most cost more than $200,000, but prices can soar far beyond that depending on the level of customization. The company boasts that its engineering (much of which it also uses on its championship Formula One racing team) is second to none.

Last year, fake Ferraris were nabbed by the tax police in Sardinia and Rome. In 2006, the European Commissioner for Justice protested publicly that fake Ferraris were popping up in China.

In this respect, a few days ago, a fake Ferrari sports car made in Thailand has become the centre piece of an exhibition in Brussels warning against the dangers of pirated goods.

The Ferrari P4 - of which only three were made, in 1967 - was made in a back street factory in Thailand and is powered by a Subaru engine.

The latest figures from the World Customs Organization show that all types of counterfeits result in about $500 billion to $600 billion in lost sales annually, which is about 5% of global trade.

mardi 18 mars 2008

Undressing Trade Dress

IPKat - IP news and fun for everyone has just published a report (which is in line with my earlier post on tradedress protection in Europe), the main lines of which can be summarized as follows:

The fourth and final session of the first day of the INTA Advanced Symposium, "Undressing trade dress", sought to bring everyone up to speed on the law and business developments in US and EU trade dress law in the 15 years or so since the US Supreme Court decision in Two Pesos v Taco Cabana.

Moderator D. Peter Harvey (Harvey Siskind LLP, US) led speakers Curt Krechevsky (Cantor Colborn, US) and a late substitute for William D. Raman (Wong Cabello, US), who had been taken ill, Verena von Bomhard (Lovells, Spain) and Jaime Schwartz (YUM! Restaurants International) through a tour of the issues -- particularly the relation between 'traditional' trade mark law, unfair competition/passing off doctrine at state level and the trade dress provisions under s.43(a) of the Lanham Act.

Verena von Bomhard then explained that, in Europe, the term "trade dress" had no legal significance. EU protection is essentially registration-based and the EU IP professional would analyse that which it is sought to protect and then break it into its component parts - a sort of 'protection cascade' of registered trade mark and design rights, followed by unregistered rights. Three-dimensional marks have become increasingly difficult to register without additional distinctive subject matter.

Jaime Schwartz closed the session with a review of post-Two Pesos as it specifically affected the trade dress of store get-ups,restaurant uniforms and similar items. It is clear that any "generic look" remains unprotectable and that the courts are unwilling to draw a negative inference even from the fact that the alleged infringer can be shown to have committed an act of intentional copying.

mercredi 12 mars 2008

Unregistered Community Designs

Karen Millen Ltd. -v- Dunnes Stores & Anor.
21 December 2007

High Court of Ireland Decision

The designs at issue are the following ones:

The plaintiff (Karen Millen Ltd.which carries on the business of producing and selling women’s clothing) claims that it is the holder of an unregistered Community design for each of the designs referred to above and that the defendants (“Dunnes Stores” which has a retail business in women’s clothing) have infringed same in the production and sale of the items referred to above.

Ms Justice Finlay Geoghegan said: "The use made (by Dunnes of the items) is an infringement of the plaintiff's unregistered community design and it is entitled pursuant to Article 19 of the regulation to prevent the defendant making use thereof."

It is the first case of its kind to be heard in Ireland under an EU regulation protecting new and individual designs.

One of the key preliminary matters decided was that of the onus of proof.

"In summary the conclusions which I have reached on the burden of proof in an action for infringement of an unregistered Community design pursuant to the Regulation are:

(1) Where, the plaintiff claims infringement of an unregistered Community design, the legal onus of proof is on the plaintiff to establish a right to the unregistered Community design and its infringement.

(2) There will normally be two distinct aspects of the claim to the right: the claim that the design right vests in the plaintiff and the claim that the design is an unregistered Community design.

(3) The onus of proving that the design right vests in the plaintiff is, and remains, on the plaintiff until proved in accordance with the normal civil burden of the balance of probabilities. Article 14 of the Regulation is relevant to how that vesting may be proved.

(4) Article 85(2) of the Regulation specifies the evidential burden which must be discharged by such a plaintiff in order that the Court treat the design as a valid unregistered Community design. That evidential burden is:

(i) evidence that the design has been made available to the public within the Community within the meaning of article 11(2); and (ii) evidence that the first date upon which it was so made available is within three years of the date upon which the plaintiff claims the right to protection to subsist for the purposes of the alleged infringement; and (iii) identification of those elements of the design which the plaintiff contends means that the total design produces a different overall impression on an informed user.

(5) If the Court finds that the plaintiff has discharged the evidential burden referred to in para. (4) above, then the Court treats the design as a valid unregistered Community design subject to the defendant’s challenge(if any ) to its validity.

(6) Where such a challenge is made(either by plea of invalidity or counterclaim) the onus shifts to the defendant to establish on the normal civil balance of probabilities that one or more of the grounds for invalidity specified in article 25(1) is made out. Where, as on the facts of these proceedings, the defendant denies validity by reason of a failure of the designs to meet the requirements of article 6 for individual character, then the burden of establishing that the design does not meet the requirements of article 6 is on the defendant.

(7) If the defendant’s plea of invalidity succeeds the Court ceases to treat the design as a valid unregistered Community design and no issue of infringement arises. If the defendant’s challenge to validity fails, the Court continues to treat the design as a valid unregistered Community design and moves to consider infringement. The burden of proving the infringement is on the plaintiff."

We will revert to you with regard the test of the "impression on the informed user" but, meanwhile, you may have a look at our post on Proter & Gamble case.

vendredi 7 mars 2008

Case law (1)


In this case, the Board held that the appeal was unfounded because the contested design lacked individual character as it did not produce a different overall impression on the informed user from that produced by the earlier US design. This design was registered as a design patent under US law. The significance of Article 7 CDR is that publication, even outside the Community, has the consequence, as a general rule, that the design can be considered to have been divulged; however, that consequence does not arise where it is shown that it was not reasonable that specialised circles operating within the Community could have become aware of the publication.

In the present case, the Board held that it was reasonable to consider that specialised circles operating within the Community had become aware of the publication of the US design. The general impression was produced by the physical appearance of the product that the technical drawing is meant to represent, not the one produced by the drawing (informed users see products, not drawings). In the Board's view, the Community design produced the same overall impression on the informed user as the earlier US design. Both designs represented a container which is stood upside down – i.e. on the lid – and were produced in an almost identical manner. In respect of designer freedom, the Board considered that there is a certain degree of freedom even when designing containers of this type – i.e. bottles which stand upside down. The shape does not necessarily have to be conical or cylindrical, the rectangular section at the bottom of the container may have a different thickness, etc. The degree of freedom of the designer should be deemed to be limited by functional constraints, not by existing earlier rights. The appeal was dismissed.

Decision of the Third Board of Appeal of 9 November 2007 in Case R 103/2007-3

jeudi 7 février 2008

Is this a mark?

Registering 3D marks is still a problem before the OHIM.

Philip Morris Products filed the following CTM application:

The Examiner, the Board of Appeal and then the Court of First Instance have found the mark at issue as non distinctive since it was "too close from what consumers may expect to find as a cigarette box".

The main points of the decision (in French) are the followings ones (we will translate them later on):

"En l’espèce, bien que la forme de la marque demandée ne corresponde pas à celle de la forme standard des paquets de cigarettes, c’est-à-dire un parallélépipède rectangle, elle est néanmoins proche de cette dernière forme ainsi que de certaines des variations du paquet standard se trouvant habituellement dans le commerce. La seule différence entre la forme demandée et la forme standard réside dans la forme des deux faces latérales. S’agissant de la forme demandée, ces dernières sont entièrement courbées et, ainsi qu’il a été relevé au point 59 ci-dessus, il n’y a pas d’arêtes longitudinales entre ces deux faces courbées et les deux faces planes verticales. S’agissant de la forme standard, les deux faces latérales sont planes et parallèles. Il en résulte que la marque demandée ne diverge pas de manière significative de la norme ou des habitudes du secteur.

Partant, c’est à bon droit que la chambre de recours a considéré, aux points 17 à 19 de la décision attaquée, que la marque demandée ressemblait de manière trop évidente à la forme la plus courante de ce produit et que, prise dans son ensemble, la marque demandée ne réussissait pas à se différencier substantiellement des formes ordinaires des produits concernés.

Cette appréciation ne saurait être remise en cause par l’argument de la requérante concernant la perception tactile des paquets de cigarettes par le consommateur. Ainsi que l’OHMI l’a relevé lors de l’audience, il résulte des modalit és de vente des cigarettes au détail que, en pratique, le consommateur n’a pas la possibilit é de toucher le paquet avant l’achat de celui-ci. En effet, les paquets de cigarettes sont normalement vendus individuellement dans des bureaux de tabac et dans des distributeurs automatiques. Il résulte notamment des restrictions d’âge sur la vente des cigarettes que, dans le cas des bureaux de tabac, les paquets de cigarettes sont normalement présentés à une certaine distance du consommateur qui doit sélectionner le paquet de cigarettes sans le toucher et qui le reçoit ensuite directement du buraliste lorsqu’il effectue son paiement. Dans le cas des distributeurs automatiques, le consommateur reçoit son paquet directement de la machine après l’avoir sélectionné et avoir inséré sa monnaie.")

Please note that the application at issue hab been filed only for "cigarettes" in class 34.

An appeal has been brought on 16 November 2007 by Philip Morris Products SA against the judgment of the Court of First Instance.

By its appeal, the appellant claims that the Court of First Instance infringed Articles 4 and 7(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark. In this respect, it complains, first, that the Court of First Instance based its assessment on a bias against the category of marks in which the mark applied for falls. In finding that consumers are not in the habit of making assumptions about the origin of goods on the basis of their shape or of the shape of their packaging, the Court of First Instance made a factual finding which has no scientific foundation whatsoever and misconstrues the human perception of signs in general, and of shapes in particular.

Second, the appellant complains that the Court of First Instance carried out an incorrect legal analysis of the relevant public's perception of the mark. That error arises, on the one hand, from the fact that the Court envisaged use of the mark only through its incorporation into a packet of cigarettes, although the shape of packaging for a given product can be perceived by the public in a multitude of other forms, such as graphic or three-dimensional representations of the mark in advertising material. The error of assessment arises, on the other hand, from the fact that the Court of First Instance reduced the concept of a mark to its part which is perceptible by a prospective purchaser at the moment immediately prior to his purchase, whilst the public concerned by a mark is composed of all those who may be faced with it in the course of normal use of the mark, which occurs both during the advertising of the product before it has been purchased and during use or consumption of the product after it has been purchased. The appellant claims, thirdly and lastly, that the grounds of the judgment under appeal are contradictory.

We will rely on this decision (once it is published) for further comments on 3D marks and their registrability before the OHIM.

P.S.: Note that the "real" product has been accepted and registered as a CTM:

mercredi 30 janvier 2008

A world wide dispute about ugliness

You should have seen these

While a couple of lawsuits have been settled, the wrangling between Crocs and other shoemakers is playing out in US federal court, the International Trade Commission, Australia and even the OHIM.

Crocs battle to protect patents and designs and other IP rights to their famous plastic shoes. Respondents claim that their shoes use different materials, have unique designs and that Crocs' patents and designs are invalid because the shoe allegedly was invented by Ettore Battiston, not Crocs co-founder Scott Seamans.

In a deposition, Seamans said he was aware of a "Battiston Aqua Clog," a strapless closed-cell resin shoe was sold in 2001. The "aquaclog" was a name used by Canadian company Foam Creations.

"Crocs Inc. now owns Foam Creations and the aquaclog is no longer sold," (Crocs’ spokeswoman). "The Seamans’ invention is the Beach clog as it exists today. The patent is absolutely valid."

They thus say they feel confident that Crocs is taking strides to battle companies that have launched copycat shoes.

On the other hand, on Crocs’ main competitor website, it can be read:

“Just as the United States has the saga of Steve Jobs starting the now-famous Apple company in his friend’s garage, Canada’s Holey Soles had a similar unpretentious start. A Vancouver psychologist, in late 2002, used her garage to begin a business distributing and selling a comfy-but-ugly neon-bright foam clog. By the end of 2006, Holey Soles had gross sales of close to $10 million, with no end in sight.

Holey Soles first sourced its products from Quebec manufacturer Finproject (later to become Foam Creations Inc). The Quebec company had been selling its injection-molded foam clog since 2001 to businesses in Canada and the United States. Among these were the Canadian company Holey Soles, and Western Brands LLC (later to become Crocs Inc) from Colorado, USA.

Of the companies selling the Foam Creations clog, the U.S.-based Western Brands LLC soon gained profile. They added a pivoting strap to the Foam Creations clog, christened it “crocs” and sold it in fall-winter 2002. The American company sensed a business opportunity, and moved aggressively to secure its supply by purchasing the Canadian manufacturer Foam Creations Inc. in 2004.

The foam clogs being sold in the US and Canada had been identical to this point aside from the addition of a pivoting strap for the U.S. shoes sold by Western Brands. The shoe that the US company called ‘crocs’, Holey Soles called their ‘Holey Soles’ model. However, Western Brands was crowding out Holey Soles on the Foam Creations supply chain.

Both Holey Soles and Western Brands had originally been selling essentially the same shoe manufactured by FinProject. However, Western Brands reorganized in January 2005 to become Crocs Inc and adopted an ambitious growth strategy. It called for aggressive initiation of legal actions against competitors, even where the merits of the case were dubious. Weak and struggling companies could be expected to fold under the pressure and costs of litigation.”

It seems that actions are still pending in the US, in Canada, in Australia and in... Europe.

As to OHIM (he Office for Harmonization in the Internal Market), two recent decisions are to be noted:

1°) Crocs’ Community design has been found invalid since it lacks individual character (decision of the Invalidity Division of December 5, 2007). The applicant of the cancellation action was Casper V Sport, a Danish company marketing “Cayman style clog” (sharing the same ugly style).

2°) A few days after (December 12, 2007) the same OHIM’ division has cancelled the Holey Soles’ Community design application… based on a Crocs’ prior shoes.

As to the substance of the case, the Examiners have staed that :

“The informed user is familiar with the clog footwear to which the RCD relates. He is aware of the requirements that such a type of footwear must fulfill in order to perform its function as a clog and of the prior art known to the circles specialized in the sector concerned. In particular, he takes into account that the degree of freedom of the designer is limited by the requirement that such a clog must have a sole and an upper and may also have a strap, which all serve to protect the foot and provide stability to it. All these parts must be adapted to the shape of the human foot and its instep. In consequence, the informed user will pay more attention to the features where the designer was not limited in his creativity, such as the shape of the sole and the heel as well as the shape and configuration of the upper part of the upper, inclusion of a strap and especially to their decorative elements.

Pursuant to Article 6 CDR the overall impression produced on the informed user by the RCD must be assessed by comparison with the overall impression produced on such a user by a prior design cited, wherein the attention is focused on the shape of the design as a whole.

The RCD and the prior designs all have the same general shape of the clog with the same proportions and almost the same configuration. Because the general shape of the clog and its main parts prevail in the overall impression of the clog design, the two designs with the same general shape and almost the same configuration of the upper with strap, the sole and the heel produce the same overall impression on the informed user. Considering the fairly unlimited freedom of the designer in developing the design of the clog, the differences in the presence or absence of the smaller holes on the top surface of the upper and the features of the bottom surface of the sole, and in the colours of the clog, which has a simple overall shape do not render the overall impression produced on the informed user by the RCD different from the overall impressions produced on the informed user by the prior designs.

Therefore, the RCD lacks individual character.”

And this dispute is not settled. The question being: who owns a monopoly on ugliness....

mercredi 23 janvier 2008

Airwick Vs. Febreze (1)

We are today returning to a questionable decision issued on October 10, 2007 between The Procter & Gamble Company and Reckitt Benckiser (UK) Limited by the Royal Courts of Justice (London) and dealing with Community Designs.

The decision can be found here.

The involved designs are the following ones:

The latter had been filed as a Community Design (RCD) under No. 000097969-0001.

At trial, the judge found that Airwick infringed P&G's Febreze design.

On appeal, Lord Justice Jacob allow the appeal of Reckitt Benckiser on infringement since "the similarities between the products are at too general a level for one fairly to say that they would produce on the informed user the same overall impression. On the contrary, that user would get a different overall impression".

You will note from the decision the astonishing set of mental exercises the judge submitted himself.

In this respect, it has to be born in mind that Council Regulation No 6/2002 of 12 December 2001 on Community designs states in Article 10 (Scope of protection): "The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression".

Accordingly Lord Justice Jacob has stressed that the impression which would be given to the informed user by the Air-Wick product is different from that of the registered design. Even though the same features are found in both, there are clear differences between the two sprayers resulting from the different mode of their execution:

- the Febreze sprayer is smaller, has a slightly larger diameter and so looks more compact;

- the head of this sprayer is shallower but also broader, so that the Febreze sprayer fits the hand differently than the Airwick sprayer (with the Airwick sprayer, which has the considerably narrower head, there is a feeling that it could slip out of the user's hand);

- in contrast to the Airwick sprayer, the metal can of the Febreze sprayer tapers upwards, so that the waist begins lower down than in the Airwick sprayer;

- the "train" goes down much further in the Febreze sprayer, so that the lower boundary of the plastic part echoes the angle of the head part far more markedly than in the Airwick sprayer;

- the shape of head too is different: while the head of the Febreze sprayer – to draw a comparison from the animal kingdom – is reminiscent of a snake's head, the shape of the Airwick sprayer head is like a lizard's head.

The problem, in our view, stems from the fact that it is very difficult not to see Airwick as a copy of Febreze even for the the informed user. In other words, plaintiffs would certainly think twice before suing anyone for registered Community design infringement unless there is a total correspondence between the protected design and the alleged infringing product.

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