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Thursday, 5 May 2016

ITMA opens the lid on Trunki

The IPKat never likes to miss a gathering of IP experts, particularly when the experts are as renowned as the group who congregated together last week to talk about design law following the Supreme Court's decision in the Trunki case (reported here).

The event was a seminar held by ITMA (the Institute of Trade Mark Attorneys) on 27 April at the offices of Gowling WLG. The IPKat was delighted to receive the following report from Lydia Birch and John Coldham (who chaired the seminar), both of Gowlings, who write as follows.

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A stellar cast of speakers was involved, including Michael Hicks and Mark Vanhegan QC (acting as counsel for and against Trunki respectively), Nathan Abraham, Head of UK Examination Practice for Trade Marks and Designs at the UKIPO, Martin Howe QC, Guy Tritton and His Honour Judge Hacon.

Trunki – a panel discussion on the practical implications
Absence of ornamentation was the first point of call, with Mark Vanhegan QC welcoming the result that lack of ornamentation was capable of protection as a positive feature, bringing more certainty for designers looking to protect minimalist designs. This was consistent with European law, he said, although it didn't go unnoticed that the decision actually dodged the issue of whether an absence of ornamentation was a feature in the Trunki design itself.  The same could be said for the 'Like for Like' test (where the accused product should be assessed on the same terms as the scope of the claimant's registration).  The Supreme Court only addressed this as obiter.  The UKIPO wanted a reference to the CJEU on these key points, but they remain to be argued out in future cases.

The panel then considered how you represent a design as "shape only" on the European register, where disclaimers are permitted, but cannot be used for interpretation (unlike in the UK).  It was agreed across the panel that it would be extremely difficult to be certain that you have protected just the shape in this context.  Mark Vanhegan's view was that there was "no harm" in putting some wording onto the European application – it may be used to aid interpretation, and he pointed to EUIPO decisions where such wording had been taken into account.

Given that no Registered Community Design case has succeeded in the Court of Appeal, should designers bother with them?  The unanimous view of the panel was that registered designs are extremely important – perhaps increasingly so, as the UKIPO reported a 32% year on year increase in design applications.   The panel simply cautioned that designers should review their existing portfolios, and consider multiple design applications, either via different forms of representation or via registering different parts of a product, when filing.  As this is an application for a monopoly, care should be given to the scope claimed.  The fact that the UKIPO is about to reduce the fees for filing UK designs dramatically later in 2016 was flagged as a major advantage of the UK system, whereby designers can get a bedrock of designs from which they can internationalise the more successful ones within the priority period.  Jon Parker, Gowling WLG's new man in Dubai, cautioned that designers should be wary of relying on the European grace period, as it invalidates design applications in many other parts of the world.

The UKIPO confirmed that it would be publishing some guidance shortly in the form of a new Designs Practice Note.

Martin Howe QC – don't rush out to buy your copycat retro tub chairs just yet …

Martin Howe QC of 8 New Square discussed the overlap between designs and copyright.  Howe considered the impending repeal of s.52 CDPA 1988 (currently limiting copyright to 25 years for industrially manufactured artistic works), confirming that the repeal is (currently…) due to take effect on 28 July 2016 (see IPKat update here).  However, he did not see this as opening the floodgates of litigation, as he reminded the audience how hard it might be to prove something is a "work of artistic craftsmanship".  He suggested that this is the only real category that will catch 3D works, as classifying industrially created designs as sculptures was no longer really an option post-Lucasfilm.  As a result, he suggested, the calls from the media (see here) to buy up replicas before it is too late might be a little hasty.

Guy Tritton – how to stop your 3D designs falling flat

Guy Tritton of Hogarth Chambers discussed the complexities of registering 3D objects as trade marks.  Aside from the duration of the protection, the main benefit (over design protection) is that prior art is not a concern.  Registering a 3D object as a trade mark, however, is not without its hurdles. The trouble is that no-one really markets a product without an associated word mark.

Evidence will be needed to establish association.  But what might work?  Looking at the KitKat case, with seemingly high quality survey evidence showing that 50% of people recognised the four bar shape as being a KitKat, this still wasn't enough to succeed.  So how do you prove the point?  Ideas include carrying out a survey using a different or unknown brand on the product to see if people think the product is a rip off or must be under licence of the original trade mark owner. If the latter, then this would show that the shape denotes trade mark origin.  Better still, brand owners should actually promote their products on the basis of shape alone, in order to create the evidence required.

HHJ Hacon – how to impress an IPEC Judge

Judge Hacon, in his effortlessly pragmatic manner, provided some useful pointers on how to stay on the right side of the judges in the IPEC:

  • When filing an unregistered design claim, submitting more than five "sub-designs" for consideration would get short shrift and the audience was advised to pick their best ones at the outset.  This might be 5, or maybe fewer.
  • Hacon cautioned that commonplace arguments were more difficult to prove than they seemed, and so such arguments rarely succeed. A party would need to identify all the features in that design that are reasonably striking to the eye, and then plead that there's an article within the prior art that has all those features and therefore renders those features commonplace.  If you don't think you're going to be able to prove it, don't plead it in the first place.
  • In relation to Registered Designs, Judge Hacon wanted to see similar limitations.  There is rarely a need for many items to evidence the design corpus, suggesting a possible maximum of 10.  Even then, he would only want the Defendant to be putting forward suggestions in that regard, as it is the Defendant which has the strongest incentive to find the works most similar to the claimed designs.
  • HHJ Hacon confirmed that IPEC was ably set up to deal with interim injunctions (although reminded the audience that they are not available on the small claims track), and if the matter is suitably urgent, contact his clerk to get it heard quickly.  Whenever the need has arisen, he has been able to hear urgent applications within a few days, if not quicker.
  • The audience seemed particularly interested in the issue of summary judgment.  Judge Hacon confirmed that it is available in the IPEC, and as it stands an application of this type would have a hearing within about 6 weeks.  
  • Asked about whether registered designs could be heard by the small claims track, Judge Hacon confirmed that this was being "actively reconsidered".
  • Judge Hacon was also asked about the new "competitor" alternative to the IPEC, the Shorter Trial Scheme.  He said that he did not see it as a competitor; he welcomed any option that allows parties access to the court system in the way that suits their needs.  In fact, he said, the Chancery Division has not seen a drop-off of cases since IPEC has launched – instead, more cases are being brought, showing that the IPEC is increasing access to justice.  The Shorter Trial Scheme was created partially off the back of the success of the IPEC, and Hacon saw the principal differences being the scale costs and damages cap.  For parties who dislike these aspects of the IPEC but like the rest, the Shorter Trial Scheme may be the best option.  
  • Finally, there was a question about court fees – if you do not know how much your claim is worth, can you guess low, and pay the difference in fee if you later find out the damages are likely to be higher than you thought?  The short answer was, provided it is done in good faith, there is no harm in paying a lower court fee at the outset and increasing it later as appropriate (as suggested in a previous post here).  If not in good faith, however (perhaps because you knew the damages were likely to be high but hoped for settlement), it could be an abuse of process.


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