Design Law Seminar In Geneva Discusses Current Issues And Concerns

Experts gathered in Geneva recently to discuss current issues and future developments in the protection of industrial designs and its importance, and give practical advice on suitable ways to protect and enforce the design rights.

Coming from various institutions, such as the World Intellectual Property Organization, the Office for Harmonization in the Internal Market (OHIM), universities and law firms, speakers attempted to build the bridge between the theory and practice, discussing a broad variety of design law issues from the institutional perspective but also from the academic and practitioner’s standpoint.

The 5 February seminar titled “Design Law” was organised by Prof. Jacques de Werra from the Law Faculty of the University of Geneva in collaboration with Ingres, a Swiss-German professional association for industrial property. It is part of a series of seminars organised by the university yearly since 2008.

Grégoire Bisson, director of the Hague Registry at WIPO, talked about the Hague System, which is an international registration system overseen by WIPO that allows design owners to obtain protection for their industrial designs in territories that are parties to the WIPO’s Hague Agreement Concerning the International Registration of Industrial Designs by means of a single international application filed with WIPO.

Discussing the features of the Hague system and its advantages for users, he mentioned the design filing trends with an increase by hundred seventy percent of designs filed worldwide in 2013 compared to 2004 and an increase of ten percent of designs filed using the Hague system in 2014 compared to 2013.

According to Bisson, the objectives of the 1999 Geneva Act of the Hague Agreement were to attract the participation of intergovernmental organisations as well as countries with substantive examination systems.

Both the European Union and the African Intellectual Property Organization joined the Geneva Act. As a result of this, there was a 250 percent increase in international applications since the EU joined in 2008. Some 75 percent of international applications designated the EU and 60 percent came from the EU, Bisson noted.

In terms of the second objective, which, in words of Bisson, will bring about the transformation of the Hague System, Korea, the United States and Japan recently acceded to the Geneva Act (IPW, WIPO, 11 February 2015), and other countries, including Russia and China, have undertaken concrete measures in view of joining the Hague System.

The anticipated transformation entails two changes. First, design applications will be subject to additional requirements. The second change is the substantive appreciation by offices, which means that the proposed design is examined against prior designs for novelty and non-obviousness.

To mitigate these new complexities of the system, Bisson pointed to the several measures that have been undertaken, including an intelligent e-filing system, talks to align practices amongst offices, and changes to the Hague legal framework, such as to the requirements regarding reproductions so as to introduce more flexibility regarding disclosure of industrial designs and of a “feedback mechanism”.

“The Hague system will largely remain simple, but design law is not, so do not be simplistic!” Bisson concluded.

Community Designs

The next speaker, Carlo Rusconi, member of the Third Board of Appeal of OHIM, addressed the concept of ‘individual character’ of European Community designs and models in the practice of the Office for Harmonization in the Internal Market.

The focus of his presentation was the three elements of the individual character test that a design needs to fulfil, together with the novelty test, in order to be afforded protection as a Community design within the meaning of Article 6 of the Council Regulation (EC) 6/2002 of 12 December 2001.

In accordance with Article 6, a design will have an individual character, if “the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public.” The degree of freedom of the designer in developing the design shall be taken into consideration (freedom of design).

Rusconi explained that an ‘informed user’ is not an engineer, architect, or designer, neither an average consumer, but is a user who is particularly observant, either because of his personal experience or his extensive knowledge of the sector in question.

He then pointed to the four possible constraints to the “freedom of the design”, namely technical constraints, legal constraints, aesthetic constraints, and ‘crowded art’.

The presenter also delved into questions of comparison, for example, whether designs need to be compared with a combination of features taken in isolation and drawn from a number of earlier designs, or with one or more earlier designs, taken individually.

In tackling these issues, Rusconi made an extensive reference to the relevant case law of the Court of Justice of the European Union and the Boards of Appeal of OHIM illustrating what the courts have said with respect to each of the elements when faced with the examination of ‘individual character’ of a design.

Protection, Legal Issues

Nathalie Tissot, professor at the Law Faculty of the University of Neuchâtel, looked into the issue of protection of designs under the Swiss law, discussing the uncertainties of the Swiss Federal Law on the Protection of Designs of 5 October 2001, which came into force in July 2002, and its interpretation by Swiss courts.

The practitioner’s perspective was offered by David Stone, partner at Simmons & Simmons, Michael Ritscher, partner at Meyerlustenberger (Zurich) and Bertrand Siffert, counsel at Chopard.

David Stone talked about issues of design law in the Apple v Samsung case in Europe and some of the challenges involved in the case.

Ex parte injunctions are particularly troubling in design cases, he emphasised. In order to assess whether or not a design is valid, “we need to know about the prior art, what aspects of the design are solely dictated by technical function, and the freedom of the designer. None of these are available to the court deciding on an injunction ex parte without hearing the other side,” he observed.

Stone also brought up issues concerning jurisdictional provisions in the Design Regulation, which attempt to have only one decision in relation to a Community design, providing that there should be no forum shopping.

He pointed to the fact that once OHIM is seized of an invalidity application (the application has been properly submitted), no court in a member state may hear an infringement action. “It does not stop, however, an application for a declaration of non-infringement,” he noted.

Stone discussed other questions such as the importance of getting any features analysis right and the “legal fiction” of the informed user, and how the courts addressed them in the Apple v Samsung case.

He concluded by emphasising that “jurisdictional provisions are extremely important” and that it is crucial for a lawyer to be aware not only of his or her own jurisdiction but to have a pan-European approach.

Another practical tip was that it is important to educate the tribunal about the design corpus, technical function, and design freedom, “to get the judge from being a consumer to being an informed user,” he said.

Ritscher, also using a real life example – a major Swiss design company Vitra – gave practical insights on the protection of designs.

He emphasised the advantages of the design law protection compared to other types of IP protection, such as: speediness and lower cost; existence of a legal assumption of validity; 25 years of protection, which for “most products nowadays is more than sufficient”; and better protection for technical features.

“The number of design registrations has dropped in Switzerland,” he said. Such a drop “is a bad sign as people have not understood how powerful this mechanism is,” he added.

Ritscher also pointed to the possibility of protecting designs as three-dimensional trademarks under the European law as it explicitly provides for the trademark protection of the shape of goods.

According to Ritscher, these registrations are important because of enforcement, as they constitute proof for a police or customs officer to seize counterfeit products.

Another possibility to protect designs is through copyright. However, according to Ritscher, there are several obstacles to the enforcement of copyright protection, including functional nature, inseparability of design and product, free movement of goods, and the threshold standard.

Ritscher concluded with some practical takeaways, which include: always register a design, which is a “powerful weapon”, he said; keep unregistered design rights in mind; assume everything is copyright protected and have the copyright assigned.

Bertrand Siffert gave some practical tips on filing an application for design registration, such as excluding all elements lacking novelty, filing elements separately so that each element has its own protection.

Siffert talked about various means of enforcement, such as a cease and desist letter, nullity action and opposition, legal action before civil or criminal courts, and custom registration.

He also referred to the possibility of enforcement on the internet by means of a takedown notice, which is an online form available for internet-based retailers, whose use is, however, limited for design infringement.

In his concluding remarks, he emphasised the importance of identifying and tracking networks of counterfeiters and depriving counterfeiters of revenue.

Elena Bourtchouladze (LLB, DEA) holds a PhD degree in Public International Law from the Graduate Institute (Geneva) with focus on the WTO TRIPS Agreement and WIPO Conventions. She is a researcher at IP-Watch, and has experience in regulatory and litigation at a multinational company and an international organisation.