Achievements in 10 Years of Community Designs

Paul Maier Director of the European Observatory on Infringements of Intellectual Property Rights, OHIM David Musker Jenkins & Co. Gerhard Bauer IP consultant Former Chief Trademark Counsel for Daimler AG, Germany Gr é goire Bisson Director, The Hague Registry, Brands and Designs Sector, WIPO Chair: Sir Robin Jacob Professor of IP Law, UCL

RCD Milestones David Musker R G C Jenkins & Co

Countdown to Sunrise Preparatory materials available from CDR in force in early CDIR finalised October Forms available in draft November CDFR finalised 16 December Filings possible from 1 January 2003 – getting a date of 1 April We flew to Alicante 31 Dec 2002.

The Sunrise Filings Smaller “spike” than for CTMs, but still several thousand filed. Including 396 GB, 394 JP, 25 CN, 3 KR. First two filed overnight on 31 December / 1 January – RCD 13 (Casio) and RCD 21 (DaimlerChrysler).

The 1 st April pioneers

The first registrations 138 registered and published on 1 April. These were the last to be registered on their date of filing until last two years – typical times were three to six months. But 2,659 same-day registrations in 2012.

The first e-Design Filed 1 June Registered 11 November % in the first year. Now 81%.

The totals for Year 1 Total number of designs – 37,084.

Applicant nationalities in Year 1 Applications: DE, GB, IT, US, FR. Designs: DE, IT, US, UK, FR.

Applicant nationalities in Year 10 Much the same, except that: – US up, GB down; – EU still high; and – China, Taiwan, Korea low despite high domestic filing rates.

Some lesser filing countries … StateDesign CENTRAL AFRICAN REPUBLIC GABON HONDURAS QATAR SIERRA LEONE TURKS AND CAICOS ISLANDS326632

Iran 10 designs filed. Two of them surrendered. Wonder who objected?

Democratic People’s Republic of Korea What do you mean, no RCDs?

Refusals in refusals. Only five due to “not a Community Design” subject-matter. Small number of morality refusals.

Immorality – the dividing line RCD 5097 – examined late 2003: – Nakedness: good. – Use of animals: baaad

Indication of origin? RCD But why filed through a Hamburg firm?

Designers … Least productive? Apple’s designers including Steve Jobs. (But many of them also appear on several designs).

Designers … Most productive? Jean-Michel Le Broussois: 2, days per design! Peter Thun-Hohenstein: 2, days per design. Christophe Decarnin: 1, days per design. Steve Jobs – a mere days per design.

Biggest applications? Quite a few with several hundred designs. Biggest – over 400. Does the fee structure benefit “large entities”? Is € 80 too cheap?

Year 2 – OHIM case law ICD 24 – EREDU v ARRMET The chair – one of the commonest subjects for revocation. Design revoked. “Informed User” defined. Applied in Procter & Gamble v Reckitt Benckiser (UK), Karen Millen v Dunnes (IE).

Bicycle Lock – appeal allowed, filing date restored on balance of proof. Farbmustertafeln – OHIM colour practice defined. Most influential appeal since then - Lindner Recyclingtech v Franssons Verkstäder R 690/ Chaff Cutters: – Reversed 1 st instance, A-G; contrary to travaux préparatoires. – Followed in UK ( Dyson, Samsung v Apple ), also in s‘Graveninge. Year 2 - Appeals

Customs Enforcement 2011 DETENTIONS Total Designs Cases91,245-- Articles114,772,8121,308,410 Retail value€1,272,354,795€50,894,191 “As regards design and model rights, a wide variety of products were concerned with an emphasis on shoes, medicines and toys.”

Online enforcement e.g. Quads4Kids v Campbell – eBay VeRo takedown RCD Deferred publication – now surrendered

Pan-EU relief available: – first UK case Mattel v Simba, July to October – Defendant submitted to injunction under UCD, but RCDs also registered. But – is forum shopping still too tempting? – Is there really a difference between interim and final judgments? Are first impressions best? – Apple/Samsung, P&G v RB – too many parallel cases? Civil Enforcement – working as hoped?

Scope – is it worth filing at all? Piracy often stops with customs, or settles early. But non-identical copying is more of an issue. Are applicants caught both ways? – OHIM BoA decisions take a broad-brush view of similarity – many designs invalid, but … – Courts appear to take a narrow view – many designs not infringed. – Do we really have the same test, or is there “murky grey water” in between?

Are we handling validity right? Invalidation very slow for important cases – e.g. Apple/Samsung still at first instance – e.g. Crocs still awaiting CFI – Could take eight years to invalidate a design registered in eight hours – average lifetime is less than five years. – So, how to handle stays in infringement? Should courts look at the state of the art? – Can vastly increase cost and length of trials – Results in Courts invading OHIM’s territory Should courts dissect functionality? (Ditto.)

Do other rights baffle the market? Copyright – e.g. Crocs shoe, Maglite torch, Stokke Tripp Trapp chair. Unfair competition – e.g. Apple in Germany. Should we harmonise these, to include the safeguards of design law?