To gain registration and to press for enforcement, it's important to be able to articulate the precise form that the trade dress takes, which means the essential features comprising it have to be expressed in words. You also have to establish, looking at the object of protection in its entirety, whether it is functional or ornamental. A surprising range of designs have been protected as trade dress, including the Google search engine interface (with the word "Google" in dotted lines since it may be represented in many different forms).
Kenneth finished with some comments on enforcement and remedies. Design patent damages are usually based on a licensee's royalties, but it's also possible to recover the infringer's profits.
Anna Carboni (Redd solicitors), on the hypothetical "2JuicyLucy (t/a 2Juice) v DoubleJuice, Inc" dispute. This part of the programme, in which an Australian business took exception to a product made by an American company, had to be experienced in person in order to be appreciated to the full. It highlighted the salient issues relating not only to Community trade mark and Community design protection and infringement but also to jurisdiction:
Anna reminded us that jurisdiction based on the place of infringement would be national-only in its effect while jurisdiction founded on any other basis could award pan-European injunctive relief subject to anything the Court of Justice said in Case C-235/09 DHL France v Chronopost [noted by the IPKat here]. She also looked at the dispute from the standpoint of the defendant, mentioning the possibility of bringing an action for groundless threats (useful if you think the claimant doesn't have the right to threaten to sue you in the first place), as well as going for a submarine motion such as a declaration of non-infringement (forum-shopping should not be forgotten either).
Happier news came in the form of examples of protection in Australia, New Zealand, Japan and Vietnam, where product design registration laws are more sophisticated.
[who also spoke at INTA's Academic Lunch in Hong Kong this year] -- the first in-houser to speak today. Valerie spoke from the point of view of a lawyer whose employer was in business to make money and who was engaged in trying to stamp out criminal organisations which make and sell counterfeits. Over 30,000 IP infringements have been launched this year and some 100,000 websites shut down. She also indicated the sort of damages LV might recoup in respect of successful infringement actions in France. The sums might sound big but, in relation to the cost of enforcement, they are nothing. If France had better facilities for ordering discovery, LV would be able to recover far more.
Valerie then continued her world tour. In Italy, LV gets good decisions, but they're so slow. In the US and in China (here, contrary to normal expectations), results have been very good. Suing both a luxury hotel and one of its retail tenants turned out to be a good move. However, counterfeiters are becoming better informed and are more legally savvy. This makes it imperative for LV to work well with local IP offices and enforcement agencies in order to retain the initiative.
Axel Nordemann then closed the day with his warm thanks to all participants. Time for