Design registration could be the answer.
If the design was published less than twelve months ago and you are in the European Union, you can use either national or community registered design applications to provide protection against others creating designs which create the same overall impression on the informed user. You may think that sounds rather contrived form of words but it does mean what it says and the courts are willing to grant relief. Design registration is a much better option than trademark protection if you are looking to protect new forms of trade dress and you live in a competitive environment where me-too designs will emerge if you don't stand up for yourself.
Design registration is how you stand up.
You can file design applications at the UK Patent Office or at OHIM. Since OHIM gives you protection in all 25 countries of the European Union, provides an online filing system allows you to put multiple designs in an application for a very modest fee, there is not much point in using national offices. There is nothing to prevent you filing the application yourself, but you may find it beneficial to take some professional advice.
Since 1 October 2006 it has been (as a result of the Regulatory Reform (Registered Designs) Order 2006 published on 26 July 2006) possible to register designs in the UK following the same style as OHIM practice. In short we have a deposit system without examination for novelty, allow multiple designs in a single application and permit deferred publication at a price. The office is still talking about paper forms but already has the legislation to provide for electronic communications. The developments are described here.
There is also a completely new consolidated set of Registered Designs Rules 2006 with new forms.
|UK Design||Community Design|
|Total official fee for first design immediate publication||£60 = 90||350|
|-second to tenth designs||£40 = 60||185|
|-eleventh design on||£40 = 60||80|
|Initial fee for first design delayed publication||£40 = 60||230|
|-second to tenth designs||£20 = 30||115|
|-eleventh design on||£20 = 30||50|
|Maximum delay to publication||12 months from filing||30 months from earliest priority|
|Publication fee for first design||£40 = 60||120|
|-second to tenth designs||£40 = 60||60|
|-eleventh design on||£40 = 60||30|
|Total cost for first design||£80 = 120||350|
|-second to tenth designs||£60 = 90||185|
|-eleventh design on||£60 = 90||80|
These are the fees payable to UK Intellectual Property Office. No one can discount them for you. What you pay for professional help is of course negotiable.
OHIM provide a useful list of European decisions on cases involving the Community Design.
This case concerned Community design No 000097969-0001 for a sprayer designed in 2002 that launched the febreze open air air freshener - a product that has won prizes for its designers for the originality of its design - and the airwick odor stop container below. The febreze product is also the subject of a patent for solving the problem of finger fatigue which the EPO offered to grant on 7 December 2006.
The judge considered who the informed user might be and, after consideration of the Woodhouse case below , decided it was user of sprayers aware of recent product trends. He stripped the colour and artwork of the other product out of consideration and compared the two products in their naked forms as that was what was shown in the design representation. The original finding of infringement was reversed on appeal in a judgement of Jacob, LJ on 10 October 2007. As the first Court of Appeal level case its one to watch. The original judge was considered to be in error because he did not compare the overall impressions of the two products. Jacob considered that for infringement the difference did not need to be clear - just different. Now the design was much admired and the infringement much derided so they must be different. Hence no infringement. This also had the happy result of bringing the UK into line with the view in Austria.
Another key teaching was that its what impresses the informed user now rather than what sticks in the mind that creates the overall impression.
The original finding of validity was not challenged but it is now clear that the threshold of originality for validity is a clear difference from the prior art whereas to avoid infringement the design needs to be just different.
Mr Justice Pumfrey drew attention to some obscure effects of deferred publication Community Design Registrations, particularly that while the design is unpublished, it is to be treated as only an unregistered design. Therefore infringement during this period requires proof of copying as well the notification to the alleged infringer of the design (UK deferment carries no such consequence).
Quads4Kids started proceedings to restrain a threat of community design infringement. This is actionable in the UK under UK law - not necessarily wrong elsewhere in Europe. Dr Campbell had used the VeRO system to have a listing removed. Ebay were not really afraid that Dr Campbell would sue them. Indeed he made it quite clear to the judge that he had no intention of starting proceedings. Nevertheless Pumfrey J was clear that "It is entirely wrong for owners of intellectual property rights to assert them without litigation" and decided that there was an enough of an arguable case that a threat existed to allow an injunction to be granted. That will be the end of it and the bikes can still be sold. It seems probable however that Dr Campbell's design was not valid as there was evidence that the Quads bikes had been sold before the designs were filed in February 2006 and possibly even before the beginning of the grace period.
The case does illustrate just how powerful a design registration. If Dr Campbell's case had been sound, he would have had little to fear in starting proceedings.
The Panini case was made by the Alicante Design Court in April and concerned the infringement of a design for an object for children to collect illustrated on the left below:
by a cereal giveaway that also spins.
The court concluded that the two objects did not create the same overall impression so there was no infringement. The curved outline was not taken and the back profile changed and these influenced the court. A fuller note is published in the OHIM newsletter.
The court was not asked to opine on validity. Each case is very much decided on its own facts. There is a careful line to be drawn by the courts in not granting too broad monopoly rights that could inhibit design freedom and creativity, yet protecting designers from having their work imitated.
This is a Patents County Court decision made by Judge Fysh on the 25th July 2005. As reported in the CIPA Journal of September 2005, this looks like just the case to provide some practical illustrations on the value of design registration. Unfortunately, the design was cancelled because it had been filed in the name of a company that could not claim to be the owner - shades of US fraud on the patent office. The case also illustrates that it is important to decide what to show in the design. In this case the design illustrated a bracket and lantern both of which contributed to the impression formed on the informed user. Sales of the lantern alone would not have infringed the design. Here the judge felt that the informed user was more than the man on the street but not a manufacturer. Instead he was a regular member of an urban development team, aware of the products available on the market and having some knowledge of technical considerations. This does not sound too different from the relevant consumer of trademark practice.
IPKat reports that the case is to be found in 2006 RPC 1 which is apparently out now.
See my report of a talk given by Paul Maier in July 2006 on the Community Design System.
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Copyright 11 October 2007