Handbags at Dawn: Live Report 3

Following a hearty lunch, or a speed-eating lunch for this Kat, one of the two David's, David Musker of Jenkins, (picture, left) opened the afternoon proceedings. This Kat is always astonished by how extensive Musker's to-hand design right knowledge is and this presentation was no exception. He opened his presentation with some impressive statistics that this Kat was unable to jot down in the brief time they were up (can anyone help?).

Before launching to his main speech, Musker highlighted that the big design case to watch was the Crocs appeal. Having lost at first two instances, Crocs are going to roll dice again and the party on the other side is bankrupt so the may fare better.

Grupo Promer v OHIM and PepsiCO (T-9/07) was the first case Musker discussed. Musker said that the process is strange because OHIM turns up and argues against you, even though they may actually agree with you. This case concerns "Pogs". It seems from this case that the concept of design freedom was constrained because it was confined to a genus of items, i.e. it was a pog so it had to look like a pog. Jeremy raised the interesting point that the shape constraints was self-imposed by the manufacturers because it does not necessarily follow that because it is a 'Pog' it has to look how pogs are normally recognized. Musker recognized this issue as being interesting and that it was particularly relevant to the fashion industry, for example, if one is making a gladiator sandel, one would be constrained in making it look like a 'gladiator sandal' normally looks, but they really not need be.

Comparing the overall impression is a difficult exercise, not least because it is the final issue the court generally determines. The take away message in this case was that the most visible surfaces are the most significant elements. Also, where there are common elements within a genus, those banal features are features that the informed user is so bored of seeing that they are no longer significant enough to be protected and are thus ignored.

Shenzhen Taiden v OHIM and Bosch (T-153/08) concerned conferencing units that sit in the middle of a desk (please don't ask this Kat to explain it any more clearly than that). It was put forward that this design was highly technical in terms of design, but Musker expressed some doubt on this. The design was registered as an international design by WIPO. The informed user was held to be "anyone who regularly attends meetings... where participants have a conference unit". The informed user in this case knows about the various units on the market, but does not have the technical knowledge about what is inside - they only have the user's knowledge of how it works. The design freedom issue was mostly a non-issue as there was wide design freedom. It was said, but not proved, that there was a design trend in this area of product. But just because there is a trend does not mean it HAS to look that way. The Court said that such a trend was irrelevant. The Court held that because there was plenty of design freedom, the two designs at issue were too similar and the design was invalid.

Beifa Group v OHIM and Schwan-Stabilo (T-148/08) concerned the shape of highlighters (picture, right - an example of a highlighter for those who are unfamiliar). The design was registered in in 2005, revoked in 2006, which was upheld on appeal in 2008, but it was then nullified by the General Court in 2010. The issue was how you treat a prior trade mark registration against a registration for a design. The analysis is that of a trade mark infringement approach. They are identical goods, so the only issue is whether the two look the same. The interesting practical point was proof of use. The design proprietor said that if this is essentially a trade mark infringement case he put the trade mark proprietor to proof as to whether the trade mark has been used for the past five years. The court held that this was acceptable and it will be likely that proof of use for registered trade marks in design right cases will be necessary in upcoming cases.

These cases are cautious reviews of the OHIM Board of Appeal, suggested David Musker. With relative low reversal rates in OHIM now through Board of Appeal to General Court, Musker suggests that these rates will continue.

Musker said the above cases seem consistent with what is coming out from the UK, legally speaking. He said that there was no reason to jump on the back of the English courts (yet, this Kat thinks). The main lesson for the fashion industry is that there is now some relatively consistent case law, but who knows what the ECJ will make of it. Designs that buck the trend will have a broader scope than a "me-too" design. A "me-too" design will not afford as much protection.

David Stone from Simmons & Simmons was up next, saying he was about to fuse Joe Cohen's speech with Muskar's to help brands implement protection of their IP before getting to the point of litigation.

Stone likes registered community design because protection is not referenced to particular goods or services and because they are "quick, cheap, and easy". There is also no examination and one can register designs within 48 hours. It is at the point of registration that the design is presumed valid by the courts. Stone says this is a great and somewhat immediate way to deter potential infringers. Validity of the design is also not dependent on use. Stone then showed the audience various examples of representations of registered designs. He suggested that photographs were not as good as line drawings in offering broad protection. Also, Stone advised, is to go for black and white drawings not color as protection will be wider.

Stone went through several excellent slides of examples of design fashion registrations. Reporting on these various illustrative elements is too tricky to reproduce here without going into pages of dicta. But, Stone emphasized that fashion brands should not forget to register labels, logos, fabric and ornamentation.

To prevent a copier from searching the register of designs with the goal of infringing a design, one can defer publication of the design for at least 30 months, which is an excellent way to prevent copying especially where where a design has a limited commercial life. Musker interrupted and said that copiers regularly name search every day to see where new designs have come up in order to infringe. He said that there are people out there, especially where you are a big fashion name, who are watching OHIM's website so suggests to defer publishing for as long as possible or publish under a different name to prevent search results coming up under the brand names. However, it as added by Stone, that you have to publish before you can commence proceedings for infringement of registered designs.

Stone went on to discuss unregistered protection. Stone emphasized that the design needs to be disclosed first in the EU and the disclosure needs to be documented. Disclosure in the EU will set the three-year period of protection running, but it will also start running a 12 month grace period. Within this 12 month you can file for EU registered design rights. Stone said that this is something to bear in mind for foreign companies to ensure that they register within 12 months of disclosure. As Joe Cohen mentioned earlier, it is important to keep a record of the design and when it was launched. There needs to be good sales records and product orders and accurate date stamps for the disclosure of the design. These records may be important if a case ever goes to trial.

Burberry Ltd v Creaciones Camal in 2006 which had to do with a similar tartan print as Burberry's. Stone also cited Louis Vuitton and Calvin Klein v Bouzekri in 2007 which related to the bright multicolor LV signet print which was copied in colour and style but instead of LV there was a CK. The copy was invalidated due to LV and CK's prior rights. However, this ruling was questioned regarding the mosaicking of these two prior rights.

Ortiz v Camm-Way in 2008 was case concerning an obscure part of the section which prevented the invalidation of the use as herald or a city name. OHIM said that only hte city could bring such a claim

Karen Millen Ltd v Dunnes Stores [2007] in the High Court of Ireland where Karen Millen's original purple low-V neck top and a striped princess cut button-down shirt was the subject of the dispute. There were two copies here which the court seemed to rely on as showing a course of conduct of copying. The court held that the informed user is "a woman with a keen sense of fashion, a good knowledge of designs of women's tops and shirts previously available to the public, alert to design and with a basic understanding of any functional or technical limitations on designs for women's tops and shirts."

J Choo v Towerstone [2008] the case where the IPKat's friend, Jacqueline Reid, was counsel for the claimant was again trotted out as being one of the best design right cases in the UK. Stone did criticize the description of the overall impression of the bag as being something that a patent lawyer would have authored, and not the informed user.

Stone went through a few more European cases before concluding with his love of registered design rights. He explained that unregistered designs are a good back up and good for high turnover fashion items. But he warned about the UK unregistered design rights should only be used as a last resort.

Jeremy asked if the registered design system has improved the legal realm for protection of designs. Stone said this was difficult to answer because of the few decisions in this area and that the rescission has also deflated registrations and litigation. Stone suggested that it was also the individual designers, not just the large fashion houses, that benefited from the registration process.