Enforcement of International Registrations under the Geneva Act of the Hague Agreement A Pan-European Perspective AIPLA Annual Meeting 2012 Dr. Henning Hartwig, Attorney-at-Law, Munich

I.Introduction II.Establishing Design Rights under the Geneva Act III.Challenging Design Rights under the Geneva Act IV.Enforcing Design Rights under the Geneva Act V.Conclusion Agenda

I.Introduction

4 „The Hague System for the International Registration of Industrial Designs provides a mechanism for registering a design in countries and/or intergovernmental organizations member of the Hague Agreement. It is administered by the International Bureau of WIPO located in Geneva, Switzerland. The System offers the owner of an industrial design a means of obtaining protection in several countries by simply filing one application with the International Bureau of WIPO, in one language, with one set of fees in one currency (Swiss Francs).”

5 I.Introduction  The Hague Agreement is constituted by three different Acts, namely: (1)The London Act of June 2, 1934 (2)The Hague Act of November 28, 1960 (3)The Geneva Act of July 2, 1999

6 I.Introduction  Total number of Contracting Parties

II.Establishing Design Rights under the Geneva Act

8 II.Establishing Design Rights A.Conditions 1.Who (authorized applicants)? Article 3 Geneva Act Any person that is a national of a State that is a Contracting Party or of a State member of an intergovernmental organization that is a Contracting Party, or that has a domicile, a habitual residence or a real and effective industrial or commercial establishment in the territory of a Contracting Party, shall be entitled to file an international application.

9 II.Establishing Design Rights A.Conditions 2. Where (territories of protection)?  Country or intergovernmental organization being party of the Hague Agreement (“Contracting Parties”)  On January 1, 2008, the EU also acceded to the Geneva act

10 II.Establishing Design Rights A.Conditions 3. What (contents of application)?  Language: English, French or Spanish  Reproduction: photographs or other graphic representations  Multiple application:up to 100 designs of the same Locarno class  Deferred publication: up to 12 months (Hague Act) or 30 months (Geneva Act) from filing or priority date  No prior national application or registration required

11 II.Establishing Design Rights A.Conditions 4. How (registration procedure)?

12 II.Establishing Design Rights A.Conditions 4.How (registration procedure)?

13 II.Establishing Design Rights A.Conditions Application directly sent to the International Bureau Formal examination by the International Bureau Publication in the International Designs Bulletin Upon publication, claimed Contracting Party notified of registration 4. How (registration procedure)?

14 II.Establishing Design Rights A.Conditions Substantive Examination (if any) by the Office of designated Contracting Party provided by national legislation Refusal of protection (refusal period may be replaced by a period of 12 moths by Examining Offices) Grant of Protection (considered as granted if no notification of refusal has been sent within the refusal period) Within six months 4. How (registration procedure)?

15 II.Establishing Design Rights A.Conditions 4.How (registration procedure)?  Examination or non-examination of validity – different realities: No examination ex officioExamination ex officio European UnionGermanyEgypt BeneluxGreeceFinland BulgariaNorwayGeorgia CroatiaSingaporHungary DenmarkSwitzerlandIceland FranceTurkeyKyrgyz Republic

16 II.Establishing Design Rights A.Conditions 5.How long (duration of protection)?  Initial period of protection: Five years  Renewal:One ore more additional periods of five years  Maximum duration:corresponds to the maximum duration provided by the law of the Contracting Party

17 II.Establishing Design Rights A.Conditions Belize15Latvia25 Benelux25Liechtenstein25 Benin15Monaco50 Bulgaria25Mongolia10 Côte d’Ivoire15Morocco50 Croatia25Namibia15 Egypt15Niger15 Estonia25Macedonia25 France25Moldova25 5.How long (duration of protection)?

18 II.Establishing Design Rights A.Conditions Gabon15Romania25 Georgia15Senegal15 Germany25Serbia/Montenegro15 Greece25Singepore15 Hungary25Slovenia25 Iceland25Spain25 Italy25Switzerland25 North Korea15Turkey25 Kyrgyzstan15Ukraine15 5.How long (duration of protection)?

19 II.Establishing Design Rights A.Conditions 6.How much (costs)?  Three different types of fees (in Swiss francs), namely: Basic fee Publication fee Standard fee or individual fee for each Contracting Party  Fee calculator on

20 II.Establishing Design Rights B.Effects Article 14 (1) Geneva Act The international registration shall, from the date of the international registration, have at least the same effect in each designated Contracting Party as a regularly-filed application for the grant of protection of the industrial design under the law of that Contracting Party.

21 II.Establishing Design Rights B.Effects Office of each Contracting Party Formal requirements and procedures Substantive requirements and procedures

III.Challenging Design Rights under the Geneva Act

23 III.Challenging Design Rights A. Applicable Law Law of each Contracting Party Formal requirements Substantive requirements  Substantive questions governed by the law of each designated Contracting Party Geneva Act

24 III.Challenging Design Rights A. Applicable Law Invalidity proceedings  Invalidity proceedings must be initiated with the competent authorities of each Contracting Party Competent authority of each Contracting Party

25 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties European Union

26 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 1. European Union Article 4 (1) Community Design Regulation („CDR“) A design shall be protected by a Community design to the extent that it is new and has individual character.

27 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 1. European Union Article 7 (1) CDR (…) a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed (…), except where these events could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the Community.

28 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 1. European Union  Step 1: Determining the prior art Filing date: Disclosure: 1957 Disclosure: 1984 Disclosure: 1990 RCD

29 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 1. European Union Article 5 CDR A design shall be considered to be new if no identical design has been made available to the public (…) before the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority. Designs shall be deemed to be identical if their features differ only in immaterial details.

30 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 1. European Union  Step 2: Novelty Identity?

31 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 1. European Union Article 6 (1) CDR A design shall be considered to have 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 (…) before the date of filing the application for registration or, if a priority is claimed, the date of priority.

32 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 1. European Union  Step 3: Individual character Same overall impression?

33 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 1. European Union Article 6 (2) CDR In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.

34 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 1.European Union  General Court of the European Union, decision of September 9, 2011 – Kwang Yang Motor v Honda Giken:

35 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties Switzerland

36 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 2. Switzerland Article 2 (1) Swiss Designs Act A design shall be protected to the extent that it is new and has individual character.

37 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 2.Switzerland  Requirements for protection European UnionSwitzerland A design shall be protected by a Community design to the extent that it is new and has individual character. A design shall be protected to the extent that it is new and has individual character.

38 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 2. Switzerland Article 2 (2) Swiss Designs Act A design is not new if an identical design has been made available to the public prior to the filing date or priority date in case that this design could have been known to the relevant public operating within Switzerland.

39 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 2.Switzerland  Step 1: Determining the prior art European UnionSwitzerland (…) a design shall be deemed to have been made available to the public if it has been published (…), except where these events could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the Community. A design is not new, if an identical design has been made available to the public prior to the filing date or priority date in case that this design could have been known to the relevant public operating within Switzerland.

40 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 2.Switzerland  Step 2: Novelty European UnionSwitzerland A design shall be considered to be new if no identical design has been made available to the public (…). Designs shall be deemed to be identical if their features differ only in immaterial details. A design is not new, if an identical design has been made available to the public (…). (-)

41 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 2. Switzerland Article 2 (3) Swiss Designs Act A design does not have individual character if its overall impression differs only in immaterial features from a design, which could have been known to the relevant public operating within Switzerland.

42 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 2.Switzerland  Step 3: Individual character

43 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 2. Switzerland Different overall impression?

44 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 2.Switzerland  Step 3: Individual character European UnionSwitzerland A design shall be considered to have 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 (…). A design does not have individual character if its overall impression differs only in immaterial features from a design (…).

45 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 2.Switzerland  Step 3: Individual character European UnionSwitzerland Comparison test One-to-one Informed user Comparison test Short-term memory Potential purchaser

46 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties Turkey

47 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 3.Turkey Article 5 Turkish Designs Act Protection shall be granted to a design which is new and has individual character.

48 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 3. Turkey  Requirements for protection European UnionTurkey A design shall be protected by a Community design to the extent that it is new and has individual character. Protection shall be granted to a design which is new and has individual character.

49 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 3.Turkey Article 6 Turkish Designs Act A design shall be considered new if before the date of reference no identical design has been made available to the public in the world. Designs differing only in immaterial details shall be deemed to be identical. To make available to the public shall cover of all actions of sale, use, publication, publicity, exhibiting, or such similar activities.

50 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 3.Turkey  Step 1: Determining the prior art European UnionTurkey (…) a design shall be deemed to have been made available to the public if it has been published (…), except where these events could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the Community. To make available to the public shall cover of all actions of sale, use, publication, publicity, exhibiting, or such similar activities.

51 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 3.Turkey  Step 2: Novelty European UnionTurkey A design shall be considered to be new if no identical design has been made available to the public (…). Designs shall be deemed to be identical if their features differ only in immaterial details. A design shall be considered new if (…) no identical design has been made available to the public in the world. Designs differing only in immaterial details shall be deemed to be identical.

52 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 3.Turkey Article 7 (1) and (3) Turkish Designs Act A design shall be understood to have an individual character if the overall impression it creates on the informed user is significantly different from the overall impression created on the same user by any design referred to in the second paragraph of this Article. In the assessment of the individual character, the emphasis of evaluation shall be on the common features of the designs and the degree of freedom of the designer in developing the design shall also be taken into consideration.

53 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 3.Turkey  Step 3: Individual character European UnionTurkey A design shall be considered to have 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 (…). A design shall be understood to have an individual character if the overall impression it creates on the informed user is significantly different from the overall impression created on the same user by any design (…).

54 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties Norway

55 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 4.Norway  Norwegian Designs Act implements EU Directive 98/71/EC (Directive on legal protection of Designs) Requirements for protection correspond to CDR, i.e., Disclosure Novelty Individual Character

IV.Enforcing Design Rights under the Geneva Act

57 IV.Enforcing Design Rights A. Applicable Law Law of each Contracting Party Formal requirements Substantive requirements  Substantive questions, such as determining the scope of protection of a design, are governed by the law of each Contracting Party Geneva Act

58 IV.Enforcing Design Rights A. Applicable Law procedural issues  Procedural issues related to the enforcement of a design are ruled by the national procedural law of each Contracting Party procedural law of each Contracting Party

59 IV.Enforcing Design Rights B. A comparison: Law of selected Contracting Parties European Union

60 IV.Enforcing Design Rights B. A comparison: Law of selected Contracting Parties 1. European Union Article 10 CDR The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.

61 IV.Enforcing Design Rights B. A comparison: Law of selected Contracting Parties  Step 1: Determination of the (degree of) scope of protection (Article 10 [2] CDR)  Step 2: Comparing asserted and accused design in order to find or deny “same overall impression” (Article 10 [1] CDR) 1.European Union

62 IV.Enforcing Design Rights B. A comparison: Law of selected Contracting Parties Switzerland

63 IV.Enforcing Design Rights B. A comparison: Law of selected Contracting Parties 2. Switzerland Article 8 Swiss Designs Act The scope of protection of a design shall include any design providing the same characterizing features and, therefore, producing the same overall impression.

64 IV.Enforcing Design Rights B. A comparison: Law of selected Contracting Parties 2.Switzerland  Infringement test European UnionSwitzerland The scope of protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression. The scope of protection of a design shall include any design providing the same characterizing features and, therefore, producing the same overall impression.

65 IV.Enforcing Design Rights B. A comparison: Law of selected Contracting Parties 2.Switzerland  Infringement test European UnionSwitzerland In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration. ( – )

66 IV.Enforcing Design Rights B. A comparison: Law of selected Contracting Parties 2. Switzerland  Comparing asserted and accused design Different overall impression?

67 III.Challenging Design Rights B.A comparison: Law of selected Contracting Parties 2.Switzerland  Comparing asserted and accused design European UnionSwitzerland Comparison test One-to-one Informed user Comparison test Short-term memory Potential purchaser

68 IV.Enforcing Design Rights B. A comparison: Law of selected Contracting Parties Turkey

69 IV.Enforcing Design Rights B. A comparison: Law of selected Contracting Parties Article 11 Turkish Designs Act In determining the scope of protection all designs which produce on the informed user a significantly similar overall impression (…) shall be taken into consideration. In determining the scope of protection, common features shall be given more weight than differences and the degree of freedom of the designer in the development of the design shall be taken into consideration.” 3.Turkey

70 IV.Enforcing Design Rights B. A comparison: Law of selected Contracting Parties 3.Turkey  Infringement test European UnionTurkey The scope of protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression. In determining the scope of protection all designs which produce on the informed user a significantly similar overall impression (…) shall be taken into consideration.

71 IV.Enforcing Design Rights B. A comparison: Law of selected Contracting Parties 3.Turkey  Infringement test European UnionTurkey In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration. In determining the scope of protection, common features shall be given more weight than differences and the degree of freedom of the designer in the development of the design shall be taken into consideration.

72 IV.Enforcing Design Rights B. A comparison: Law of selected Contracting Parties Norway

73 IV.Enforcing Design Rights B. A comparison: Law of selected Contracting Parties 4.Norway  Norway Design Act implements EU Directive 98/71/EC (Directive on legal protection of Designs) Requirements for infringement correspond to CDR, i.e. Assessing the scope of protection of a design Finding infringement of a design

74 IV.Enforcing Design Rights C. Exemplary case law The Jewelry Box case International design DM/ (Claimed countries: inter alia Germany, France, Switzerland) versus Accused design

75 IV.Enforcing Design Rights C. Exemplary case law The Jewelry Box case SwitzerlandGermanyFrance

76 IV.Enforcing Design Rights C. Exemplary case law The Jewelry Box case Swiss Supreme Court (decision of January 8, 2007) According to the Designs Act it is not a synoptic one-to-one comparison of two designs that is decisive but rather the overall impression of the respective design that the potential purchaser retains in his short-term memory. (…) The criterion for assessing individual character of the design-in- suit shall correlate with its scope of protection.

77 IV.Enforcing Design Rights C. Exemplary case law The Jewelry Box case × “short-term memory test” is – at least – not allowed under German design case law × no direct link between validity and infringement under German design case law

78 IV.Enforcing Design Rights C. Exemplary case law The Jewelry Box case Karlsruhe Appeal Court (decision of November 25, 2009) When comparing the complete existing design corpus as asserted by the defendant with the overall impression of the asserted design by way of an overall assessment, there is no tendency to be found that the specific appearance of the asserted design determining its overall impression is also produced by any of the prior designs.

79 IV.Enforcing Design Rights C. Exemplary case law The Jewelry Box case Paris Appeal Court (decision of September 12, 2007) (…) the designs cited by the defendant [i.e., as prior art] do not offer the same characteristics as the accused design which has its own new physiognomy and which also reveals, by the combination of its characteristics elements as claimed, a creative effort bearing the imprint of its author’s personality.

80 IV.Enforcing Design Rights C. Exemplary case law The Jewelry Box case × Neither German nor Swiss case law allows such a comparison between accused (!) design and prior art in order to find validity of the asserted (!) design

81 V.Conclusion ( + )( – )  Minimum of formalities  Languages (EN, FR or ES)  Multiple application (up to 100 different designs)  Only one set of reproductions required  Refusal or invalidity in one of the designated Contracting parties without any influence on the entire registration  All substantive questions are determined by the law of each Contracting party (no harmonization)  All proceedings as regards substantive questions take place at the responsible authority or court of each Contracting Party (no harmonization)

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