For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Wednesday, 20 March 2013

Everything you ever wanted to know about Community Design law but were afraid to ask

1 April 2013 will mark a very important milestone in intellectual property in Europe, namely the 10th anniversary of the beginning of the Community Registered Designs system.  So it is handy timing that David Stone’s book European Union Design Law – A Practitioners’ Guide [OUP, 2012, ISBN 978-0-19-964517-6] hit our bookshops at the end of last year.  This moggy was begging to be the IPKat reviewer for this new volume, and his wish was granted.

David Stone
Having settled down with the book and read it cover to cover (the reason for the delay in producing this review), the IPKat is delighted to report that it is a fantastic tome.  In fact, this reviewer is agog with amazement at how wonderful it is, and words alone are barely sufficient to express what an incredible job David has done.

The difficulty with the subject is that the Community design system introduced a plethora of new legal concepts, and 10 years has been wholely inadequate for OHIM and the courts to adequately deliberate on the full implications of all of them.  There has only been one case that has been to the highest tribunal, the Court of Justice, and that case was not factually ideal for some of the key concepts (individual character, informed user, overall impression) to be fully explored.  There are some areas where the law is quite settled and agreement has been reached; some areas where jurisprudence is limited, and not infrequently early decisions have clearly (or arguably) made errors; and yet other areas where there is only the legislative text to guide us, and the law must be deduced from that alone.

The book itself
With his superb writing style and astonishing economy of words, David has managed in an incredibly short book to fully explain the whole law, making it clear in magisterially concise manner whether he is describing settled law, law in flux, law where there is still room for doubt, or (as happens not infrequently) law where he considers that some existing decisions are in error.  The reader is left in no doubt as to David’s view on every single issue, and will have cause to disagree with him only very occasionally.

The result is a book that contains in under 500 pages (in a slim and elegant red tome) the apparent content of a much more extensive text.  This reviewer has had occasion while the book has been in his possession to check a number of relatively obscure points of EU design law, and in every single case the book has contained the answer, and in almost all cases the answer has readily been ascertainable very quickly, thanks to the excellent headings and indexing.  In only one case was the answer elusive – is double protection by Community and national registered designs for the same design permitted? – and the answer was difficult to find because the Regulation refers to “simultaneous” protection, and it was indexed under that term (the answer is yes, by the way).

Despite the high density of information packed into the pages, the book is very readable, and this reviewer did read it from beginning to end, in order.  The pages have a beautiful uncluttered layout, and while there is obviously a limit as to how much can be digested in one sitting, the reading experience is very pleasant.  Unexpectedly, some parts are laugh-out-loud funny (for this feline anyway), my favourites being “The Directive lists some of the objectives of the European Union, which design law might struggle to achieve on its own” and “Without wishing to burden Article 39 with expectations of a distinguished future ...”.  But everywhere the assured, understated and ironic prose is a pleasure to read.

The book is set out in 23 logically ordered chapters, including “Novelty”, “Individual Character”, “Infringement”, “Remedies”, and “Two Case Studies”.  The text quotes primary legal provisions in context only to the extent that it is required (there is no wholesale reproduction of the Regulation or the Directive).  Caselaw from OHIM and all over Europe is extensively cited – the Table of Cases is 14 pages long – and secondary literature and comment (including many articles by our own blogmeister) are referred to as necessary.

There were times when I did not entirely agree with David, and other times where David’s background as a solicitor practising mainly in trade marks was apparent, and a practitioner coming from a patent background (like me) would approach a subject in a rather different way.  But these are minor quibbles, and inevitable in an area of law that is still in flux.

David Musker’s seminal exposition of the (then) new Community design law was written when there was no caselaw or OHIM practice at all to guide us.  After 10 years, the time is come for a book which takes account of judicial and OHIM treatment in the meantime.  If you have any interest in design law and were not lucky enough to get a review copy, go and buy it!

If you are as excited by the upcoming anniversary as the IPKat, you may wish to know that this moggy and the blogmeister (and David Stone himself) will be in Alicante for a celebratory conference in April.  Come and see us there!

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