New OHIM President

Thanks to our friends at OHIM for leaking us the forthcoming Press Release on their new President.  Is it just this author, or are heads of OHIM, like policemen, getting younger?

-------------------------------------------------
PRESS RELEASE
New President for OHIM

António Serge De Pinho Campinos, 41 years old, of Portuguese nationality, takes over as the new President of the Office for Harmonisation in the Internal Market (OHIM) as from 1 October.

Mr Campinos graduated from the University of Montpellier with a Master's Degree in Public Law and a Post Graduation in Community Law, and started his career at the Court of First Instance of the European Communities, before moving on to roles in the banking sector and then the Public Administration in Portugal.

Mr Campinos, who has wide international experience in the field of intellectual property and is fluent in Portuguese, English, French and Spanish, became President of the Directive Council of the National Institute of Industrial Property in Portugal in 2005. He has been closely associated with OHIM for a number of years, serving first as head of the Portuguese Delegation in the office's Administrative Board and then as its Chairman, since 2008.

At OHIM, he took a leading role in a number of important issues, contributing for the reshaping of the institutional cooperation framework with the Office's stakeholders, the reduction of the Community trade marks fees for applicants and making the Administrative Board's work more efficient, effective and transparent, particularly through promoting and supporting the participation of users' organisations in the OHIM governing bodies.
-------------------------------------------------

We note from the Decision to appoint him that he was born in Poitiers, France as well as being French-educated, (don't they have data protection over there in Brussels?) so he ticks that box too.  We wish him all the very best, from Class 99.

Slovenia in focus

Will Slovenian RCD filings for 2010 top 2008's record tally of 113? You can work it out (clues below)

This post is a "first" for Class 99 -- the first time the word "Slovenia" has appeared, according to the weblog's search facility. This small, attractive and industrious mountainous republic is the focal jurisdiction in the current issue of OHIM's Alicante News. According to OHIM, which may be struggling to say something bright and incisive:

"With just over 600 registrations since 2003, the registered Community design is reasonably popular with Slovenian undertakings. Last year there were more than 100 RCD filings with classes 25, 7 and 6 in highest demand.

The majority of Slovenian filers prefer the online route, with over 96% now using e-filing and the remaining applications coming by mail".

2008 was a good year for filings, there being 113 of them, or one nearly every three days. If you disregard weekends, public holidays and saints' days, that's nearly one every two days. Assuming that OHIM is open seven hours a day, this works out at around one Slovenian application reaching Alicante every 15 working hours ...

New Kosovo design law

Thanks to Petosevic for news of updated Kosovo design and trade mark laws.  A link to their item is here:  According to them, "The new Law on Industrial Design will replace the 2005 Law No. 2005/02-L45, while the new Law on Trademarks will replace the 2006 Law No. 2006/02-L54, currently in force in Kosovo."
Recent news indicates that relations between Kosovo and other parts of former Yugoslavia are stabilising.  Adoption of new IP regime is often an early indicator of moves towards ultimate EU membership.  Will the Union some day welcome Islamic European states?  Personally I would expect this to increase the stability of the region, though Turkey's candidature has proven problematic in the past.

Lego hit a brick wall - shape mark blocked by the ECJ

Another chapter in the longrunning Lego saga closes, with the ECJ today upholding OHIM in finding the distinctive red interlocking bricks invalid as a Community Trade Mark (Case C‑48/09 P, Lego Juris A/S v OHIM (Mega Brands Inc., intervening)).

The bricks were rejected as functional.  The ECJ followed their earlier reasoning in Case C-299/99 Philips v Remington and Case C-371/06 Benetton Group in rejecting the "multiple shapes" approach and finding invalidity based on, amongst other things, Lego's own earlier patents.  According to the ECJ, "the legislature has laid down with particular strictness that shapes necessary to obtain a technical result are unsuitable for registration as trade marks".  However, interestingly, although they ruled out trade mark protection they left the door open elsewhere - the matter "can, where appropriate, be examined in the light of rules on unfair competition" - over which the ECJ currently has no competence and Europe has no harmonisation.

Since trade marks are out and unfair competition is in, where does that leave designs?  The particular kind of "functionality" involved in Lego bricks is that usually called "must fit", which is specifically excluded from design protection in Europe.  However, there is an exclusion-from-the-exclusion for modular products such as Lego bricks.  The legislature would therefore seem to have taken a narrower view of the functionality exclusion for designs, as the A-G commented in the Philips case.

The narrower functionality exclusion proposed by the A-G would only bite where a design could be made in only a single shape, and the ECJ point out, in Lego, the time-honoured fear that problems arise "if various purely functional shapes of goods were registered at the same time, which might completely prevent other undertakings from manufacturing and marketing certain goods having a particular technical function."  These concerns were also recently voiced by OHIM in the "Chaff Cutters" case R 690/2007-3, and by the UK court in Dyson v Vax.

Aside, however, from "must-fit" situations (which are specifically dealt with in European design law) I am hard-put to envisage any situation where a design could consist of a simple shape for which there were only a few discreet alternatives - I am not sure it is a realistic prospect. 

Is the A-G right?  Or is unfair competition the only hope for even mildly functional designs?  A pretty threadbare hope if so.

Pingpong pogs at the ECJ

Regular readers will recall the longrunning battle between Pepsico and Grupo Mon Promer over the former's RCD for pogs/rappers/Tazos.  At first instance, the design was revoked; the OHIM Appeal Board reversed; then the General Court re-reversed.  We are pleased to see that the case has now moved up to the ECJ.  After this, no further appeals are possible (although national judges will no doubt feel free to make remarks about how much they'd like to reverse it, or change the law, if they could).
The ECJ case is pending as C-281/10P.  A link to the reference is here.
The grounds are that the General Court violated Council Regulation (EC) No. 6/2002 by:

a)    failing to take into account the constraints on the designer in developing the contested design;

b)    wrongly interpreting the notion of the "informed user" and his attention level;

c)    applying erroneous criteria in its assessment of "different overall impression";

d)    carrying out a comparison between the designs based on actual products in the file rather than on the designs as registered; and

e)    basing the comparison on distorted facts.

As to point (e), we wish them all the best with that since appeals can only be on points of law and this is blatantly a scarcely-disguised point of fact. As to point (d), well, we see the issue, but the UK courts have long held themselves able to look at specimens alongside the design, otherwise it is difficult to compare like with like (the Australian court has disagreed in LED Technologies v Elecspess which, we note, has just been upheld on appeal though not on that point).

Points (a) to (c) should, however, give the ECJ a chance to air its views on the validity threshold and thus, indirectly, scope of designs since the two tests are largely the same.  We'll keep watching this space so you don't have to.

Furniture fun

The IP Doctor feature in the ACID e-newsletter is fun. In the current issue, "IP Doctor focuses on furniture", the following questions are asked, then answered:

Q I am an independent furniture designer but I do incorporate previous design features into my own original work, such as Chippendale style legs etc. Does this affect the rights in my design?

Q My company produces reproduction furniture based on items from the 18th and 19th centuries. Are we able to register any of the designs we produce?

Q I have often seen furniture marketed as ‘in the style of’ for example, Charles Eames. Is this permissible under UK Design Law?

Right: a "Charles Eames Inspired Office Chair Soft Pad High Back"

Q My company has been producing a very successful range of bedroom furniture for some years. Another company has recently approached me and said that now I have to allow them to produce it also. Is this right?

Q I have produced a chair design which I think is suitable for mass production. What sort of documentation should I have in place before I contact manufacturers in the Far East for production quotes?

I've eliminated the answers.  The challenge is to supply your own, then check them off against the answers provided.  You can also try (i) supplying them to a colleague, trainee, client or other good soul and seeing how they score and (ii) going off for a few drinks with colleagues, then spring the questions on them all and measure the degree of variation between their answers ...