Achievements in 10 Years of Community Designs

Paul Maier Director of the European Observatory on Infringements of Intellectual Property Rights, OHIM David Musker Jenkins & Co.

Gerhard Bauer IP consultant Former Chief Trademark Counsel for Daimler AG, Germany Gr é goire Bisson Director, The Hague Registry, Brands and Designs Sector, WIPO Chair: Sir Robin Jacob Professor of IP Law, UCL

RCD Milestones

David Musker R G C Jenkins & Co

Countdown to Sunrise

• • • • • • • Preparatory materials available from 1991.

CDR in force in early 2002.

CDIR finalised October 2002.

Forms available in draft November 2002.

CDFR finalised 16 December 2002.

Filings possible from 1 January 2003 – getting a date of 1 April 2003.

We flew to Alicante 31 Dec 2002.

The Sunrise Filings

• • • Smaller “spike” than for CTMs, but still several thousand filed.

Including 396 GB, 394 JP, 25 CN, 3 KR.

First two filed overnight on 31 December / 1 January – RCD 13 (Casio) and RCD 21 (DaimlerChrysler).

The 1

st

April pioneers

Country of origin 25.00% 23.71% 20.00% 15.00% 10.00% 5.00% 0.00% DE 12.63% 10.82% GB ES 7.22% 6.96% 5.67% 5.15% 4.38% 3.61% 3.09% IT NL Countries US DK SE FR JP

The first registrations

• 138 registered and published on 1 April.

• These were the last to be registered on their date of filing until last two years – typical times were three to six months.

• But 2,659 same-day registrations in 2012.

The first e-Design

• • • • • 46547-0001.

Filed 1 June 2003.

Registered 11 November 2003.

2% in the first year.

Now 81%.

The totals for Year 1

• Total number of designs – 37,084.

Applicant nationalities in Year 1 • Applications: DE, GB, IT, US, FR.

• Designs: DE, IT, US, UK, FR.

Applicant nationalities in Year 10 • Much the same, except that: – US up, GB down; – EU still high; and – China, Taiwan, Korea low despite high domestic filing rates.

Some lesser filing countries …

State Design

CENTRAL AFRICAN REPUBLIC 700299 GABON HONDURAS QATAR SIERRA LEONE 509088 478466 2110981 996376 TURKS AND CAICOS ISLANDS 326632

• 10 designs filed.

• Two of them surrendered.

• Wonder who objected? 

Iran

Democratic People’s Republic of Korea • What do you mean, no RCDs?

Refusals in 2003

• 15 refusals.

• Only five due to “not a Community Design” subject-matter.

• Small number of morality refusals.

Immorality – the dividing line • RCD 5097 – examined late 2003: – Nakedness: good.

– Use of animals: baaad 

Indication of origin?

• RCD 559653 • But why filed through a Hamburg firm?

Designers … Least productive?

• Apple’s 001227003-0001 • 26 designers including Steve Jobs.

• (But many of them also appear on several designs).

Designers … Most productive?

• Jean-Michel Le Broussois: 2,314.

• 1.5 days per design!

• Peter Thun-Hohenstein: 2,005.

• 2 days per design.

• Christophe Decarnin: 1,847.

• 2 days per design.

• Steve Jobs – a mere 422.

• 10 days per design.

Biggest applications?

• Quite a few with several hundred designs.

• Biggest – over 400.

• Does the fee structure benefit “large entities”?

• Is € 80 too cheap?

Year 2 – OHIM case law • • • • • ICD 24 – EREDU v ARRMET The chair – one of the commonest subjects for revocation.

Design revoked.

“Informed User” defined.

Applied in Procter & Gamble v Reckitt Benckiser (UK), Karen Millen v Dunnes (IE).

Year 2 - Appeals

• • • Bicycle Lock – appeal allowed, filing date restored on balance of proof.

Farbmustertafeln – OHIM colour practice defined.

Most influential appeal since then - Lindner Recyclingtech v Franssons Verkstäder R 690/2007-3 Chaff Cutters: – Reversed 1 st

préparatoires.

instance, A-G; contrary to travaux – Followed in UK (Dyson, Samsung v Apple), also in s‘Graveninge.

Customs Enforcement 2011 “As regards design and model rights, a wide variety of products were concerned with an emphasis on shoes, medicines and toys.”

DETENTIONS

Cases Articles Retail value

Total

91,245 114,772,812 €1,272,354,795

Designs

- 1,308,410 €50,894,191

Online enforcement

• e.g. Quads4Kids v Campbell – eBay VeRo takedown • RCD 000474416-0015 • Deferred publication – now surrendered

Civil Enforcement – working as hoped?

• Pan-EU relief available: – first UK case Mattel v Simba, July to October 2003.

– Defendant submitted to injunction under UCD, but RCDs also registered.

• But – is forum shopping still too tempting?

– Is there really a difference between interim and final judgments? Are first impressions best?

– Apple/Samsung, P&G v RB – too many parallel cases?

Scope – is it worth filing at all?

• Piracy often stops with customs, or settles early. • But non-identical copying is more of an issue.

• Are applicants caught both ways?

– OHIM BoA decisions take a broad-brush view of similarity – many designs invalid, but … – Courts appear to take a narrow view – many designs not infringed.

– Do we really have the same test, or is there “murky grey water” in between?

• • • Are we handling validity right?

Invalidation very slow for important cases – e.g. Apple/Samsung still at first instance – e.g. Crocs still awaiting CFI – – Could take eight years to invalidate a design registered in eight hours – average lifetime is less than five years.

So, how to handle stays in infringement?

Should courts look at the state of the art?

– Can vastly increase cost and length of trials – Results in Courts invading OHIM’s territory Should courts dissect functionality? (Ditto.)

Do other rights baffle the market?

• Copyright – e.g. Crocs shoe, Maglite torch, Stokke Tripp Trapp chair.

• Unfair competition – e.g. Apple in Germany.

• Should we harmonise these, to include the safeguards of design law?