Achievements in 10 Yearsof Community Designs

Paul MaierDirector of the European Observatory on Infringements of Intellectual Property Rights, OHIM

David Musker Jenkins & Co.

Gerhard BauerIP consultantFormer Chief Trademark Counsel for Daimler AG, Germany

Grégoire BissonDirector, The Hague Registry, Brands and Designs Sector, WIPO

Chair: Sir Robin Jacob Professor of IP Law, UCL

RCD Milestones

David MuskerR 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 1st April pioneers

23.71%

12.63%

10.82%

7.22% 6.96%5.67% 5.15%

4.38%3.61% 3.09%

0.00%

5.00%

10.00%

15.00%

20.00%

25.00%

DE GB ES IT NL US DK SE FR JP

Countries

Country of origin

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 509088

HONDURAS 478466

QATAR 2110981

SIERRA LEONE 996376

TURKS AND CAICOS ISLANDS 326632

Iran

• 10 designs filed.

• Two of them

surrendered.

• Wonder who

objected?

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).

• 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 1st instance, A-G; contrary to travaux préparatoires.

– Followed in UK (Dyson, Samsung v Apple), also in s‘Graveninge.

Year 2 - Appeals

Customs Enforcement 2011

DETENTIONS Total DesignsCases 91,245 --Articles 114,772,812 1,308,410Retail value €1,272,354,795 €50,894,191

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

Online enforcement

• e.g. Quads4Kids v Campbell

– eBay VeRo takedown

• RCD 000474416-0015

• Deferred publication –

now surrendered

• 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?

Civil Enforcement – working as hoped?

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?