PROTECTION OF INDUSTRIAL DESIGNS

1
PROTECTION OF INDUSTRIAL DESIGNS

• Dr. Katalin Szamosi
• S.B.G.K. Patent and Law Offices, Budapest

2
Background

• Growing need in the industry to protect the
  shape, packaging of the products
• Two forms of registered IP rights
• Trademarks
• Designs (possibility of unregistered design as
  well)

3
Overview

• Protection as Trademarks
• Protection under EU law
• Grounds of refusal/invalidity
• Lack of distinctive capability and Descriptive
  signs
• Shape-specific grounds of refusal/invalidity
• Protection as Designs
• Protection under EU law
• Grounds of refusal/invalidity
• Comparative Advantages and disadvantages

4
Protection of 3D trademarks in EU law

• Shape of goods or of their packaging may
  constitute a trademark provided that they are
• capable of being represented graphically and
• they have distinguishing capability
• they are not excluded from protection

5
Concept of distinctive capability

• Definition of the ECJ for a mark to possess
  distinctive character it must serve to identify
  the product in respect of which registration is
  applied for as originating from a particular
  undertaking, and thus to distinguish that product
  from products of other undertakings
• Acquired Distinctiveness may be used to overcome
  objections

6
Assessment of distinctive capability

• The goods and services
• The perception of the relevant persons
• The market share
• The use and promotion of the mark
• Statements from chambers of commerce and industry
  or other trade and professional associations
• Solely national trade usage

7
Distinctive Capability test in ECJ Preliminary
Rulings I

• General
• minimum distinctive capability is sufficient
• ECJ no stricter test must not be applied for 3D
  marks

8
Distinctive Capability test in ECJ Preliminary
Rulings II

• However the ECJ found that for 3D marks
• it may in practice be more difficult
• the perception of the average consumer is not
  necessarily the same as for other marks
• consumers are not in the habit of making
  assumptions about the origin of goods based on
  the shape
• distinctiveness must be found without analytical
  or comparative examination

9
ECJ Case Law I

• Various Tablets
• Lack of distinctive character
• Consumers are not oriented as to the source of
  origin by the colors and shapes
• APPEALS REJECTED

10
ECJ Case Law II - Torches

• Lack of distinctive character
• The Shape should have a striking feature in
  order to be distinctive
• The Shape must depart significantly from the norm
  or customs of the sector in order to be
  distinctive
• APPEAL REJECTED (C136/02 P)

11
ECJ Case Law III

• C-286/04P (30 June 2005)
• The mark consists of a combination of features
• No evidence that the composite mark would be
  greater than the sum of its parts
• APPEAL REJECTED

12
ECJ CASE LAW IV

• C-173/04P (12 January 2006)
• It is difficult for the consumers to recognize
  the pouch as an expression of specific products,
  since this packaging is commonly used on the
  market
• APPEAL REJECTED

13
ECJ Case Law V

• August Storck KG v OHIM
• C-24/05P (delivered on 22 june 2006)
• 3D trademark
• APPEAL REJECTED

14
ECJ Case Law VI

• August Storck KG v OHIM
• C-24/05P (delivered on 22 june 2006)
• Applied for as FIGURATIVE mark
• APPEAL REJECTED

15
Recent CFI Decisions

• Lemonade Bottle Lack of distinctive
  capability Appeal rejected by CFI (T-12/04)
• BIC Lighter - Lack of distinctive capability
  Appeal rejected by CFI (T-262-263/04)

16
Recent CFI decisions II

• T-129/04 (15 March 2006)
• 3D mark applied for in class 29, 30, 32
• CFI
• Overall impression does not significantly depart
  from norm or customs of the sector
• The public does not see it as source of origin
• APPEAL REJECTED

17
Lack of Distinctive Capability Conclusions I

• ECJ principles
• the same test should be applied for 3D
  trademarks minimum degree of distinctive
  character is sufficient
• a shape does not need to have a capricious
  addition
• ECJ CFI concrete cases
• minimum degree of distinctive capability is not
  sufficient,
• the threshold for 3D marks is significantly higher

18
Lack of Distinctive Capability Conclusions II

• The shape must have some striking feature which
  attracts attention
• Only a mark which departs significantly from the
  norm or customs of the sector
• The mark must be fanciful, original, unusual, or
  arbitrary

19
Lack of Distinctive Capability Conclusions III

• European approach
• very strict,
• the threshold of distinctive capability is high
  for 3D marks.

20
Descriptive Signs

• Signs that merely describe characteristics shall
  be freely used by all
• No decided cases on this basis
• 3D marks are rather analyzed on the basis of lack
  of distinctive capability

21
Shape-specific grounds of Refusal/Invalidity

• Three excluding provisions
• shapes that result exclusively from the nature of
  the goods themselves (no ECJ case law, no
  frequent application by OHIM)
• shapes which give substantial value to the goods
  (no concrete examples yet)
• shapes which consist exclusively of shapes that
  are necessary to obtain a technical result
  (functionality).

22
Functionality

• Not to allow registration of mark in order to
  acquire or perpetuate exclusive rights relating
  to technical solutions.
• ECJ interpretation if essential functional
  features of the shape are attributable only to
  the technical result
• No concrete ECJ cases
• Figurative marks?

23
Conclusions of Trademark Protection

• Advantages of TM protection
• Practically unlimited protection term (renewal
  every 10 years)
• Relatively strong protection against confusion
• Disadvantages of TM protection
• in-depth analysis of the absolute grounds of
  refusal during the registration procedure
• Higher costs compared to designs
• Very difficult to achieve registration

24
Design Protection

• Designs protect the appearance of the whole or
  a part of a product
• Protection requirements
• Novelty and
• individual character
• Definition provides for a very wide scope to
  protect products
• Design is another possibility to protect the
  outside appearance of a product or packaging

25
Design Protection Requirements

• Novelty
• if no identical design has been made available to
  the public beforehand
• Designs are identical if their features differ
  only in immaterial details
• World-wide novelty, exception designs that could
  not be reasonably have become known to informed
  circles in the Community
• Individual character
• if the overall impression it produces on the
  informed user differs from the overall impression
  produced on such a user by any design which has
  been made available to the public beforehand
• the degree of freedom of the designer in
  developing the design shall be taken into
  consideration

26
Design Protection Exclusions

• Solely technically dictated shapes are excluded
  from design protection
• Interconnections (must fit) excluded
• Not visible parts of complex products are
  excluded
• Designs contrary to public policy or to accepted
  principles of morality are excluded

27
Material requirements of Design Protection

• The threshold of individual character for designs
  is lower than that of distinctive character for
  trademarks
• Functionality is a major obstacle for marks, but
  its threshold for designs is generally lower

28
Case Law

• No case law from the ECJ
• No preliminary rulings
• No decisions in concrete cases
• Case law invalidity decisions of the OHIM
  relating to protection requirements (primarily
  novelty and individual character)

29
OHIM Case Law I

• RCD above
• Applicant the product below (black and white)
  was brought to the EU market before the priority
  date
• OHIM only the colors are different
• No identity (Novelty found)
• But lack of individual character
• RCD DECLARED INVALID (20 December 2006)

30
OHIM Case Law II

• Rehabilitation equipments
• RCD (above), Applicant product below was
  disclosed before the priority of RCD
• OHIM characteristic features are identical, but
  there are differences (colors, RCD has no extra
  fixed support, but has small metallic chains and
  attached pieces of leather)
• No identity (novelty found)
• But lack of individual character
• RCD DECLARED INVALID (12 December 2006)

31
OHIM Case Law III

• RCD (left), prior product (right) put on the EU
  market before priority date of the RCD
• OHIM RCD is mounted on wheels and corners are
  different, but the characteristic features are
  the same (housing is of cubic form with black
  panels enclosing a central portion)
• No identity but the same overall impression
• RCD CANCELLED (31 August 2006)

32
OHIM Case Law IV

• RCD (left), prior product (right)
• OHIM there are differences shape of fuel tank,
  of the vent, of the air filter, of the muffle
  cover, of the starter cable
• OHIM RCD produces overall impression of a
  compact and modern engine, where components are
  integrated while prior product has impression of
  old-fashioned product where component parts
  maintain their individuality
• APPLICATION REJECTED (20 August 2006)

33
OHIM Case Law V

• RCD above, prior product below disclosed in a
  trade magazine (perfume bottles)
• OHIM the prior design and the RCD are identical
  (same shape, proportions) RCD lacks novelty
• RCD DECLARED INVALID (2 March 2006)

34
OHIM Case Law VI

• RCD (left) priority 25/08/2004
• RCD Holders product subject to the RCD was put
  in commerce by the holder in the EU in 2002,
  before the RCDs priority (right)
• OHIM there are differences between RCD and the
  product (shape of the handle, difference in
  color, in use of SEGADO sign) but characteristic
  features are the same
• No identity, but the same overall impression
• RCD DECLARED INVALID (1 December 2005)

35
OHIM Case Law VII

• RCD (above), prior national designs (middle and
  below)
• Animal foodstuffs
• OHIM No identity, no same overall impression,
  since RCD has 5-arm configuration, and the prior
  designs 4 arms (X shape) results in a
  different overall impression
• APPLICATION REJECTED (29 August 2005)

36
OHIM Case Law VIII

• RCD (above), prior Community Design (below)
  bottle bag, bottle carrier
• OHIM Detailed analysis of similar and different
  features -lot of differences (height ratio,
  handle part, etc.) thus no identity and no same
  overall impression
• APPLICATION REJECTED (8 May 2006)

37
OHIM Case Law IX

• RCD (above) prior product (below) plush
  animal toys
• OHIM the Teddy bears are the same, but the
  clothes are different (fire brigade on RCD,
  police, Sherlock Holmes on product)
• APPLICATION REJECTED (22 November 2006)

38
Advantages of Design protection

• registration procedure is a lot simpler, the
  examination is less stringent (no search, no
  substantive examination or opposition)
• possibility for unregistered design
• low costs compared to trademarks
• unlimited number of designs in one application
  (if in same Locarno class)
• easier to obtain protection for shapes of
  products and their packaging as designs than as
  trademarks
• lower threshold of individual character and
  functionally dictated shapes

39
Disadvantages of Design Protection

• limited protection term (up to a maximum of 25
  years)
• higher risks of a subsequent invalidation of the
  design
• Narrower scope of protection against confusion
• no case law or interpretation from the CFI or the
  ECJ (uncertainty)

40
Conclusions

• Trademark protection is stronger, but it is more
  difficult to achieve registration
• Obtaining design protection is cheaper and
  simpler, but subsequent invalidity is a real
  danger
• more use of design protection since trademark
  route is difficult
• If appropriate, applying for parallel protection
  via designs and trademarks

41
Thank You for Your Attention