9th edition

October 2016

& DesignWrites

Welcome to the ninth edition of DesignWrites by Bird & Bird At Bird & Bird we're passionate about design. DesignWrites will unravel and explore the seemingly complex world of design protection, offering practical advice by looking at recent design cases, hearing from industry experts and sharing stories from the wider design community.

Get in touch If you would like advice on how best to protect your designs or take action to stop copycats, please contact Ewan Grist via [email protected]

In this edition…. Brexit and design protection in the UK .................................. 1 Using design rights to protect logos ....................................... 4 Guidance given on graphical representations of designs ........ 6 Singapore: Important changes to Singapore design law ....... 12 Poland: Important changes to Polish design law .................. 15 Grace period: not all disclosures are created equal ............... 17 UK: Copyright protection for industrially produced artistic works extended.................................................................. 20

EU: Mere failure to register a licence shall not prevent the licensee from taking enforcement action against infringers.. 22 UK: Evidence too flimsy to invalidate registered designs for pop-up cards ...................................................................... 24 Focus on fashion: how the industry is shaking up to beat lookalikes to the shop floor and meet consumer demand..... 26 Upcoming industry events and awards................................28

Brexit and design protection in the UK On 23 June 2016, the UK voted by a narrow majority to leave the EU. Leaving the EU will have significant consequences in many areas of trade and commerce which are governed to some extent by EU law. This is particularly so in the case of designs and trade marks which have for many years benefited from availability under EU law of unitary 'Community' rights, which are enforceable throughout the EU.

By Ewan Grist London ewan [email protected]

Once the UK leaves the EU, it is likely that such Community rights will no longer offer protection in the UK and that separate rights will be needed for ongoing protection there. The removal of the Community design right in particular will inevitably leave a hole in the armour of designers seeking to protect and enforce their designs in the UK. It remains to be seen whether, post-Brexit, design owners will simply have to rely instead on the pre-existing national UK design regime or whether new legislation will be introduced to plug the gaps left by the outgoing Community design regime.

It is possible, albeit unlikely, that a bilateral agreement is reached between the EU and the UK whereby the existing Community design regime is extended to cover the UK as well as the EU. From a design perspective, everything would effectively carry on as before. More likely however is that upon leaving the EU the Community design regime will immediately cease to apply in the UK (although Community designs will of course continue to protect designs throughout the EU). This has ramifications for both registered and unregistered design rights.

What does this mean for design owners operating in the UK now? The good news is that, in the short term, nothing changes. For at least the next 2 years, whilst negotiations between the UK and the EU take place over the terms of the UK's withdrawal, the UK will remain a fully functioning Member State of the EU and so Community designs (both registered (RCDs) and unregistered (UCDs)) will continue to give protection in the UK for that period.

The impact on registered designs Fortunately, UK law already provides for a national UK registered design (UKRD) regime which mirrors the RCD regime in all substantive areas including both the requirements for validity and the rules for infringement. This is set out in the UK's Registered Designs Act 1949. Whilst the popularity of obtaining UKRD protection waned somewhat following the introduction of RCD protection in 2002 (which cost roughly the same as UKRD protection but gave protection throughout the EU), a UKRD has always been available and will continue to be post-Brexit.

And what about when Brexit actually happens? No one yet knows exactly how the UK will extract itself from the EU or what the subsequent relationship between the EU and UK will look like.

In planning for Brexit, it is highly likely the UK government (through the UK IPO) will introduce a mechanism by which

Brexit and design protection in the UK & 01

existing RCDs can be 'converted' into the equivalent UKRDs1, whilst maintaining the original filing/priority date. This would leave the design owner with the existing RCD (giving protection in the EU), but also with a new UKRD (giving protection in the UK). How this conversion will operate (automatic or opt-in, reexamination or not, fees payable, etc) will be the subject of much discussion over the coming months/years, but there will not be any firm answers for quite some time. There is therefore a degree of uncertainty here. In terms of new designs being created in the run up to Brexit, the designer has a choice: (i) continue to file RCD applications only and hope to be able convert these RCDs into UKRDs later on; or (ii) file both RCD applications and UKRD applications now to avoid having to rely on any future conversion mechanism and the uncertainty as to what that might entail. The option chosen is likely to depend on the commercial importance/value of the design in question. Some larger design owners are opting for the security of getting the UKRD now (alongside the RCD), despite the potential for duplicate protection in the UK. The impact on unregistered designs Protection afforded by unregistered design rights is a critical weapon for those companies for which, either due to the cost of filing or the short expected lifetime of the design, design registration cannot be justified. Unfortunately, the impact of Brexit on the unregistered design protection regime is more complex and potentially problematic for designers than is the case for the registered design protection regime. This is principally because, whilst national UK design law already provides for a UK unregistered design right (UKUDR) under the Copyright, Designs and Patents Act 1988, this right does not mirror the Unregistered Community Design right (UCD). For instance, a UCD protects the appearance of the whole or a part of a product (so 2D or 3D designs), whereas a UKUDR

1 A similar conversion mechanism is also anticipated for EU trade marks.

02 & Brexit and design protection in the UK

only protects the shape/configuration excluding surface decoration (so effectively only 3D designs). The validity requirements for a UCD are that the design be novel and have individual character over prior designs, whereas for a UKUDR the design must be original (i.e. not copied) and not commonplace. Finally, for a UKUDR, there are a number of complex 'qualification' criteria which in some cases mean that designs created by non-EU designers will not qualify for UKUDR protection at all. A consequence of this mismatch is that some designs may potentially only attract UCD protection but not UKUDR protection. Whilst UCD protection remains available (whilst the UK is in the EU), this may not matter much in practice. However, post-Brexit, when UCD protection ceases to be available, those same designs may not have any protection whatsoever (unless the designer sought registrations), and would be sitting ducks for copycats. On this basis it is recommended not to rely on a UCD but instead to seek a registered design right. A further difficulty is that, under the current EU design legislation, it is likely that new designs first made available to the public (e.g. displayed at a trade show) outside the EU will immediately lose any UCD protection entitlement which they might have had if they had first been displayed inside the EU. Once the UK leaves the EU, this would mean that a new design first displayed within the UK would not then obtain UCD protection in the EU. Unless an RCD had been obtained to protect that design in the EU, it too could be wholly unprotected. It remains to be seen whether the UK government will attempt to rectify these and other issues with new UK design legislation (perhaps even creating a new Community-style UK unregistered design right). Assuming it does not, or at least that it does not do so in time for Brexit, designers are advised to start registering their most commercially valuable designs now, to avoid the uncertainty over the scope and applicability of future unregistered rights.

Key points  Nothing will change for at least 2 years – Community designs will continue to give protection in the UK for that time.  Your RCD portfolio remains as valuable as ever. Continue to file for RCD protection as normal.  RCDs will likely be convertible into equivalent UK registered designs post-Brexit.  Options for unregistered design protection may be weaker post-Brexit. Starting now, consider obtaining registrations for commercially valuable designs.

Brexit and design protection in the UK & 03

Using design rights to protect logos Registered trade marks are often considered to be the only way to protect logos, but many companies are now using design rights together with trade marks (and, in some cases, instead of them) to protect their logos. Design rights are therefore not only a valuable means of protecting the designs of a company’s product range; they are also increasingly being used for brand protection purposes. This article gives an insight into the benefits of EU design rights and the differences between trade marks and design rights.

Advantages Registering a logo as a design right can have many advantages. Firstly, a Registered Community Design (RCD), which is enforceable throughout the EU, can be obtained in a matter of hours because there is no substantive examination of the application by the EUIPO. This is greatly different from the registration of an EU trademark, which will take at the very least three-and-a-half to four months to obtain. Secondly, because an RCD can be obtained almost immediately and an unregistered Community design right arises automatically, design rights may also be a good tool to provide immediate protection to a new logo/brand whilst it acquires the distinctiveness on the market which is necessary for trade mark registration. Thirdly, obtaining RCD protection is relatively inexpensive and filing costs can be reduced further by filing a number of designs as part of a multiple application. A logo could, for instance, be filed simultaneously in all the colours of the rainbow. 04 & Using design rights to protect logos

By Manon Rieger-Jansen and Nina Dorenbosch The Hague [email protected] [email protected]

Finally, once granted, there is no obligation to use the RCD – unlike trade marks it cannot be revoked on the basis of nonuse. Requirements While there is a presumption of validity, in order to validly invoke a design right the design must be new and have individual character over pre-existing designs. This means that an old logo cannot become a valid RCD, unless only the designer himself/herself disclosed it during the 12 month grace period preceding the RCD filing date. The requirement of individual character relates to the figure of the design only; the meaning of the words will not be taken into account. This means, for instance, that any logos comprising only words (or a word) written in a common font without any figurative elements are unlikely to be accepted as a valid design right.

Infringement An RCD that has been filed in the specific Locarno class 32 (logos) is not limited to any particular type of goods. It can therefore be enforced against any other design creating the same overall impression on the informed user regardless of the type of product. It may therefore be easier to take action against dissimilar types of goods on the basis of an RCD rather than a trade mark, because trade marks are registered only in respect of specified classes of goods or services. On the other hand, the notional "informed user" that is said to assess the overall impression of design rights is generally held to be better informed and more attentive than the notional "average consumer" who is said to decide on trade mark infringements. Hence he may be more likely to spot differences between designs, which may lead to a finding of non-infringement.

Term of protection Another point of difference from trade marks is that the maximum term of protection of an RCD is 25 years, as opposed to a potentially infinite term of protection for trade marks (subject to use and renewals). Summary Design rights can both complement and improve upon the protection of logos provided by trade marks. A well thoughtthrough filing strategy should consider both types of rights in order to achieve the best possible protection for the brand.

Using design rights to protect logos & 05

Guidance given on graphical representations of designs The EUIPO and a number of national IP Offices across Europe (the 'Offices') recently released guidance entitled the 'Common communication on the graphic representation of designs' (the 'Common Practice'). Its main purpose is to further increase transparency, legal certainty and predictability for the design application process.

Scope of the Project The Common Practice relates to design application examination procedures only. It is not intended to give advice on the scope of protection afforded by design rights under national or European law. To this end, it does not cover all topics arising in the context of the examination of design applications but instead only contains guidance regarding the use of (i) Visual Disclaimers, (ii) different Views and (iii) the requirement for a neutral background in representations of designs that are filed for design protection ('design representations'). The Common Practice also considers the quality standard for applications received by the Offices electronically and by paper, including the quality of the graphical representations that are used. A glossary of the terms used in the Common Practice, and throughout this article, can be found at the end of this article. Implementation by the EUIPO and the national IP Offices At the time of writing the Common Practice has been implemented by the EUIPO and the following countries: Bulgaria, the Benelux countries, Cyprus, Czech Republic, Germany, Denmark, Estonia, Spain, France, Greece, Croatia, Ireland, Iceland, Italy, Lithuania, Latvia, Norway, Poland,

06 & Guidance given on graphical representations of designs

By Jana Bogatz Munich [email protected]

Portugal, Romania, Slovenia, Slovak Republic, Turkey and the 2 UK . Use of Visual Disclaimers Until the implementation of the Common Practice there were no harmonised pan-European rules on the use of Visual Disclaimers in design representations. This led to an inconsistent understanding by examiners across Europe as to the purpose of Visual Disclaimers in design representations. A Visual Disclaimer will only be accepted if it clearly indicates (directly or indirectly) that protection is not being sought for certain features shown in the design representation. Further, if the design is represented in more than one View, the Visual Disclaimer must be shown consistently across all views.

2 Austria, Finland, Hungary, Malta and Sweden generally support the Common Practice but have not implemented it yet. Other countries have only implemented parts of the Common Practice: Estonia has not implemented the Visual Disclaimer provisions; Norway, Croatia and Slovenia have not implemented provisions regarding Views; and the Czech Republic has not implemented provisions regarding Snapshots.

Generally, graphic or photographic design representations should only show the claimed design. However, to reinforce the correct understanding of a design, it might be helpful to show the design in the context in which it is meant to be used. In such cases the use of (self-explanatory) Visual Disclaimers may be necessary. If line drawings are used in design representations (see Example 13), the use of Broken Lines is recommended for Visual Disclaimers. If this is not possible for technical reasons (for example where stitching is illustrated on clothes) or if photographs are used, the use of Blurring (see Example 2), Colour Shading (see Example 3) or Boundaries (see Example 4) is recommended.

Example 1

Example 2

Example 3

Example 4

Use of various types of Views The applicant should always choose Views of the design that are considered appropriate for a clear, full and detailed disclosure of the design. If all the features of the design cannot be displayed in one single View, the applicant may submit complementary/additional Views, subject to the maximum number of Views allowed by each Office. Generally, the design representations can be filed in the form of drawings, photographs and any other means of visual representation admitted by the Offices. It is important that the Views must belong to one and the same design. Applicants may file one or more Views of the same design, but each View must be shown separately. If a product consists of several parts, at least one View must present the whole product. A single Magnified View is acceptable provided that the magnified part is already visible in one of the other submitted Views (see Example 5).

3 All images have been sourced from EUIPO: https://euipo.europa.eu/tunnelweb/secure/webdav/guest/document_library/contentPdfs/about_euipo/who_ we_are/common_communication/common_communication_7/common_com

Example 5

munication7_en.pdf.

Guidance given on graphical representations of designs & 07

If the design is shown in different configurations (or alternative positions) these Views of the design must be shown separately. Further, no part of the design may be added or removed i.e. the whole design must be represented in the View (see Example 6).

Examples 7

Example 8

Sectional Views of a product are admissible in order to complement Aspect Views by illustrating a feature or features of the appearance of the product such as the contour, surface, shape or configuration of the product. Example 6

The same applies to products which are shown in Exploded Views (i.e. where the parts of a product are shown disassembled) in order to clarify how the parts fit together. In an Exploded View at least one View must show the product assembled and the other View must show all the parts of the product disassembled in a separate single View in close proximity and in order of assembly (see Example 7). If a part of a product is shown in isolation, the Partial View (or fragmentary view) must be combined with at least one View representing the assembled product, i.e. the different parts need to be connected to each other (see Example 8).

However, such representations have to refer to the same design and should not be submitted without other traditional Views. Further, such representation may not show technical indications, such as axial lines, sizes (dimensions), numbers, etc. (see Example 9).

Example 9

08 & Guidance given on graphical representations of designs

For a sequence of Snapshots or an animated design (e.g. animated icons, animated graphic interface) it is possible to show a single animated design at different specific moments in time, in a clearly understandable progression. All Views of an animated design need to be visually related (i.e. they must have features in common) and bear numbers in such a way so as to give a clear perception of the movement/progression (see Example 10).

According to the Common Practice, in order to assess if a background is 'neutral', the following aspects should be taken into consideration: colours, contrast, and shadows. A single or predominant colour in a background is always acceptable if it stands out against the colours of the design; in other words, the background does not have to be white (see Example 11). Graduating colour or more than one colour used in a background is acceptable if the design is clearly distinguishable (see Example 12). The contrast between the design and the background must allow for all features of the design to be clearly visible (see Example 13).

Example 11

Example 12

Example 13

Shadows or reflections are only acceptable as long as all features of the design remain unambiguously visible. In particular, shadows may not interfere with or hide parts of the design or distort the contour or shape of the design.

Example 10

Finally, the Common Practice recommends that a design should be represented using only one visual format (drawing or photograph) and not a combination of both formats in order to avoid disclosing aspects that contribute to a different overall impression. Use of Neutral Background There has been no common EU-wide interpretation of the concept of a neutral background in design representations.

Comparative overview on quality standards of the format of Views During the preparation of the Common Practice, a review was conducted of the quality standards required for applications received by electronic means and by paper by the Offices. However due to 'legal restraints' no common practice on the standard of design representations included in the applications was reached. Instead, the Common Practice contains a benchmark study and has recommendations on the quality of design representations expected to be filed where pictures or line drawings are used. If drawings are used, they should be of 'good quality' avoiding poor line quality, blurry lines, substantial pixilation, lines

Guidance given on graphical representations of designs & 09

which merge forming black and undefined areas, drawings which are excessively small or large as well as drawings with signs of deletion or correction. In the case of photographs, the design representations must be of good quality avoiding undefined areas due to a lack of lighting, glare on shiny, reflective or transparent surfaces, blurriness (unless used as a disclaimer), poor contrast as well as obvious deletions or corrections. Comment The Common Practice offers welcome clarification on the quality of design representation expected by the Offices and also the ways in which design representations can be represented through the use of certain tools. This clarification and the more universal approach across the EU will allow practitioners and design owners to better represent their designs consistently across Europe. If design owners and practitioners follow this advice, their applications should, in theory, be stronger and be less likely to be challenged and found to be invalid.

10 & Guidance given on graphical representations of designs

Glossary of Definitions taken from the Common Practice

Partial View: a view showing a part of a product in isolation. A partial view can be magnified.

Alternate Positions: a view which shows that a design can be modified into several configurations without any addition or removal of any parts.

Sectional Views: are cutaway portions that complement aspect views by illustrating a feature or features of the appearance of the product such as the contour, surface, shape or configuration of the product.

Aspect Views: show the design from certain directions (angles) and encompass the following views: front view, top view, bottom view, right side view, left side view, back view and perspective views.

Snapshots: a short sequence of views used to show a single animated design at different specific moments in time, in a clearly understandable progression.

Blurring: a type of Visual Disclaimer that consists of obscuring the features for which protection is not being sought in drawings or photographs of a design application. Boundaries: a type of Visual Disclaimer used in drawings or photographs of a design application to indicate that no protection is sought for the features that are not contained within the boundary.

View(s): a visual representation of the design. It may reproduce the design from various directions (angles) or at different moments in time or in various states. Visual Disclaimers: indicate that protection is not being sought for, and registration has not been granted for, certain features of the design shown in the representation. Thus, they indicate what is not intended to be protected.

Broken Lines: Broken Lines consist of a trace made up of dots or dashes (or a combination of both) and are used to indicate that no protection is sought for the features that are shown using an interrupted trace. Colour Shading: a type of Visual Disclaimer that consists of using contrasting tones of colour to obscure sufficiently the features for which protection is not being sought in drawings or photographs of a design application. Design: a “design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of 4 the product itself and/or its ornamentation. Exploded Views: consist of views where the parts of a product are shown disassembled in order to clarify how the parts fit together. Magnified Views: show one part of an overall design in an enlarged scale. 4 Article 1 (a) of the Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs.

Guidance given on graphical representations of designs & 11

Singapore: Important changes to Singapore design law As Singapore gears towards an innovation-driven economy, more and more businesses are recognising the potential that good design has to enhance the value of their products.

By Lorraine Tay and Ling Yee Neo Singapore [email protected] [email protected]

This is demonstrated by the increasing number of designs filed with the Intellectual Property Office of Singapore (IPOS). According to statistics provided by IPOS, there has been a 46% increase in design applications filed by Singapore-based or local applicants from 2005 to 2014, with jewellery and communication devices being the most popular types of designs filed. Recognising the increasing significance of designs as a potential growth sector, the Singapore Design 2025 Masterplan was released by the DesignSingapore Council, revealing a 10-year initiative intended to develop the design sector in Singapore and to expand the role of designs as a driver of innovation and value creation. The fostering of designs as a key innovation driver must be supported by the strengthening of the legal framework for the protection of corresponding intellectual property rights. Businesses must be able to fully capitalise upon their intellectual property rights in the design, as well as rigorously enforce these rights against third party infringers, in order to derive the full benefits from their design works. To achieve this strengthening of the legal framework, in conjunction with the release of the Masterplan, a review and reform of the Singapore Registered Designs Act (RDA) has

12 & Singapore: Important changes to Singapore design law

been undertaken. The legislative reform, being the first of its kind since the RDA's enactment in 2000, is welcomed by legal practitioners and design owners alike. The proposed amendments ensure that the legislation is up to date in addressing the issues and challenges posed by newer and nontraditional forms of design arising from technological advances and changing business models, and in affording stronger design protection to design owners. Amendments to the RDA are expected to be implemented in late 2016. What, then, is the practical significance of these legislative amendments to design owners?

Impact of Amendments to the RDA Designs no longer have to be applied to an article via an "industrial process" Under the present regime, a design only qualifies for registration if it is applied to an article via an "industrial process". This restrictive definition limits the protection of designs to factory-manufactured and industrially produced articles, which is not in keeping with the newer and more innovative methods for the making of products in this day and age (e.g. by 3D printing).

The removal of the "industrial process" requirement also presents a broader and more inclusive scope for the types of registrable designs, which can now encompass handmade or artisanal items. Undoubtedly, this is good news for small businesses in the artistic and creative industries, which can now rely on the RDA for protection of the intellectual property rights in their design works. Virtual or Projected Designs are now protectable Designs no longer have to be applied onto a physical article. Instead, virtual designs projected onto various different mediums and surfaces, or even space (e.g. a virtual keyboard), would be eligible for protection under the revised RDA. To qualify for protection, however, the subject matter of the design must nonetheless be sufficient, certain, and definable. In other words it must:  Be capable of being represented clearly and without subjectivity; and  Retain the same design features irrespective of the surface or medium on which they are projected. Confirmation of registrability of Graphical User Interfaces Graphical User Interfaces (GUIs) refer to the visual interface which allows a user to interact with a computer system. The importance and commercial value of a GUI has long been recognised by the IPOS, which had previously issued a document to confirm the registrability of the GUI under the current RDA. In this regard, the revamped RDA will continue to affirm the registrability of GUI designs, whether static or animated. However, the GUI designs must be:  Capable of being represented clearly and without subjectivity on a static medium; and  Where the design is dynamic, capable of being represented through a series of freeze frames. Designs no longer have to be "kept secret" before an application is filed Under the current regime, a design must satisfy the criteria of novelty before it is registrable. In other words, it must not have been disclosed or made available to the public anywhere

in the world prior to the filing of the application, save in limited prescribed circumstances (e.g. at selected international exhibitions). The strict requirement for novelty, as well as a general lack of awareness of the legal position, has caused a number of design owners and designers to unwittingly jeopardize the novelty of their own designs by disclosing these to the public prior to filing an application. Even when design owners are aware of the legal requirements, they are often faced with a dilemma as to whether or not to invest in the filing of a design application, given the costs involved and the uncertainty as to the market's receptivity to their products. The revised RDA addresses these issues by allowing a 12month grace period for design owners to file the design application after disclosure of the design, in line with the grace period available under EU Community design law. The restriction on disclosure at international exhibitions will also be removed which will enable design owners to test the popularity of their designs on the market before deciding whether filing an application is worthwhile. This also provides a "second chance" to design owners who wish to seek protection of their design rights after disclosure of their design. Designers given stronger rights with respect to their works The amended legislation reverses the default position of ownership of rights in a commissioned design work, with the intention of providing stronger protection to individual designers and small-medium sized enterprises, such as design-houses, who might be unaware of their legal position and rights. Whereas the commissioner used to own the rights in a commissioned design work by default, the amended legislation means that the default position is that ownership falls to the designer. Parties, however, remain free to modify this default position amongst themselves via contractual agreements.

Singapore: Important changes to Singapore design law & 13

Colour recognised as a design feature Under the present regime, design protection is afforded to the features identified in a registration certificate, as to the shape, configuration, pattern or ornamentation, regardless of colour. The amended legislation, on the other hand, recognises that the use of colours (and their interplay or combination) could create a distinctive visual effect which serves as a significant design feature of a pattern or ornamentation, and is thus worthy of protection. Colour is therefore protectable as a design feature in the revised legislation. It should be noted, however, that the design protection will not extend to colours per se.

Comment Overall, the reformed RDA will bring the regime more closely into alignment with the business practices and realities in the present-day design landscape, and will more effectively address issues posed in protecting newer and more innovative forms of designs. Designers and design owners can now look forward to stronger protection of their design rights under the RDA, which will be effected by changes such as the broadening of the scope of protection, and the relaxation of the grace period allowed for the filing of a design application after the disclosure of the design to the market. It follows that this will also mean an increase in the valuation of design registrations for businesses. Designers and design owners should closely monitor the legislative changes expected to take place at the end of this year in order to effectively leverage the stronger protection of design rights available following this reform.

14 & Singapore: Important changes to Singapore design law

Poland: Important changes to Polish design law In December 2015 and April 2016, two major amendments to the Polish Industrial Property Law (IPL) came into force. These amendments contain many key changes, in particular with regards to Polish national registered designs.

By Alicja Wolny Warsaw [email protected]

One of these important changes is the repeal of Article 116 of the IPL which prevented registered designs benefiting from copyright after their registered rights expired. This means that, following the repeal, design owners no longer have to choose between copyright or registered design rights to protect their designs. Before the amendment Article 116 provided that copyright protection did not apply to products:  produced according to the specifications of a registered design applied for at the Polish Patent Office; and  put on the market after the expiration of the relevant registered design. In other words, the design was only protected under copyright during the registered design's registration period, that is, only for a period of 20 years following the application date of the registered design. After the registered design expired, the design was not eligible for copyright protection. The old law allowed 'replicas' of registered designs to be manufactured immediately after the expiry of the registered design, whereas the manufacture of 'replicas' of designs that were not registered constituted copyright infringement.

The 'moral' rights of the design's author (for example to claim authorship and to be identified by name on the product) were, and continue to be, protected after the expiration of the design registration. 5

CJEU judgment in Flos v Semeraro Initially, the abovementioned restriction contained in Article 116 was generally recognised by Polish legal doctrine as being compliant with EU law and, in particular, the EU Directive on the legal protection of designs6 (the Directive) on the basis that each Member State could determine the degree of copyright protection afforded in their jurisdiction. However, this approach changed in 2011 following Flos v Semeraro and, consequently, Article 116 of the IPL was repealed. In this judgment the CJEU held that Article 17 of the Directive must be interpreted as precluding national legislation of a Member State which prevents copyright protection applying to a design which:  entered the public domain before the date that the national legislation came into force; 5 Flos SpA v Semeraro Casa e Famiglia SpA , C-168/09, 27 January 2011 6 Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs

Poland: Important changes to Polish design law & 15

 was protected by a now-expired design right registered in or in respect of that Member State; and  otherwise meets all the requirements for copyright protection. Moreover, the CJEU stated that Article 17 of the Directive must be interpreted as precluding national legislation of a Member State which, with regard to any third party who has manufactured or marketed products based on designs, for a substantial period of 10 years or more (or completely), prevents copyright protection of designs which:  entered the public domain before the date that the national legislation came into force; and  otherwise met all the requirements to be eligible for copyright protection.

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Advantages and disadvantages of the repeal of Article 116 Although Article 116 has now been repealed, it arguably had some benefits, which are now lost. For example, it clarified the legal situation on the market (it made it easier to establish whether a product was protected or not) and it had a positive influence on competition as it prevented monopolisation of certain design-led product solutions. On the other hand, Article 116 was an exception to the position in the EU which created inconsistency between Member States. It could also be argued that the discrimination of the works which qualified both for copyright and design protection and the limitation of their copyright protection only to the duration of the design registration right was unjustifiable. Only time will tell whether this new regime, which affords designs stronger protection (by way of registered design rights and copyright), will in fact serve to support innovation and creativity in Poland.

Grace period: not all disclosures are created equal The EUIPO Board of Appeal has drawn a distinction between types of disclosures of designs made during the 12 month grace period preceding registration, inferring that the protection will apply only to disclosures made to test the product on the market, and not to the disclosure of a design through first round filing and publication.

In June 2010, the French fashion house Isabel Marant filed for a Registered Community Design (RCD) for a shoe design (RCD 1). RCD 1 included photos and black and white line drawings of the shoe, as shown in Figure 1 below. Six months later, in December 2010, Isabel Marant filed a second RCD (RCD 2) for a very similar shoe design as shown in Figure 2 below. The only apparent difference between RCD 1 and RCD 2 was the difference in colour and tone. Skechers USA France applied to the EUIPO to invalidate RCD 2 on the basis that it lacked novelty and individual character, inter alia, over RCD 1. Isabel Marant argued that RCD 1 should not be taken into consideration for the purposes of assessing the novelty and individual character assessment of RCD2 because RCD 1 was disclosed by the designer itself within the 12 month grace period. It therefore fell within Article 7(2) of Community Design Regulation (EC) No 6/2002 (the 'Regulation') which provides that such designs should be disregarded for the purposes of assessing novelty and individual character. The Invalidity Division agreed, but on 27 October 2015 the Board

By Christophe Arfan Paris [email protected]

7

of Appeal overruled this decision holding that (i) RCD 2 was devoid of novelty and lacked individual character over RCD 1 and (ii) Article 7 of the Regulation had been 'misapplied'. A closer look at Article 7 According to the Regulation, a design may be protected as an 8 RCD if it is new and has individual character , meaning that no identical design must previously have been made available 9 to the public and it must create a different overall impression 10 on the informed user. A design is "deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or 11 otherwise disclosed". However, a grace period is permitted by Article 7(2) which effectively allows designers to ‘test’ their designs in public before deciding whether to file for RCD protection. The disclosure of the design by the designer during this 12 month grace period will not be taken into account for 7 Skechers USA France vs. IM Production, Société par Actions Simplifiée, Case R 2427/2013-3 dated 27 October 2015. 8 Article 4 of the Regulation 9 Article 5 of the Regulation 10 Article 6 of the Regulation 11 Article 7 of the Regulation

Grace period: not all disclosures are created equal & 17

the purposes of assessing the novelty and individual character of the subsequently filed RCD (provided of course the filing was made within 12 months from the first public disclosure). It was generally assumed that any disclosure by the designer during this 12 month grace period would not cause a problem for a subsequent RCD filing for the same design. However, the Board of Appeal has now found that the grace period only applies in instances where the design is made available to the public specifically to test the product on the market (for example through advertising campaigns or presentations to specialist press or potential buyers). As the filing (and subsequent publication) of an RCD was not part of such testing (rather it was simply an administrative act), it was not an Article 7(2) disclosure, and therefore had to be taken into account when assessing the novelty and individual character of a later filed RCD. Whilst the Board of Appeal correctly notes that the stated purpose of the grace period in Recital 20 of the Regulation is to allow designers to test their designs in the market place for a limited period before deciding whether to seek RCD protection, Article 7(2) of the Regulation, which provides for the grace period, makes no distinction between different types of disclosures. It simply refers to disclosures “by the designer, his successor in title, or a third person as a result of information provided or action taken by the designer or his successor in title…during the 12 month period preceding the date of filing of the [RCD]…”. Despite the wording of Article 7(2), the Board of Appeal has seen it fit to read a further qualification into it – namely that it only applies to market testing disclosures and not disclosures which could be considered administrative in nature. The Board of Appeal’s decision has two consequences in particular. Firstly, many designers will have previously adopted the practice of filing a first round of RCDs to protect the core design towards the beginning of the grace period before filing

18 & Grace period: not all disclosures are created equal

a second batch of RCDs later on in the grace period as the product is refined and tweaked, perhaps in response to market reaction. This is particularly common in the fashion industry for example, where designers may show their collections to press and buyers, and then develop the design for retail over the following months. These subsequently filed RCDs may now be vulnerable to a challenge. This effectively means that the 12-month grace period for a particular design 'stops' when an RCD is first filed and published. Any subsequently filed RCDs for a similar design can be invalidated by the first RCD. Secondly, the designer must now consider whether a given disclosure during the grace period is likely to be considered as being for the purposes of market testing or for some other purpose, so as to determine whether it falls within Article 7(2). In some cases this will be clear, but not in others. This is an area of uncertainty. Filing strategies following this decision In light of the Board of Appeal's decision, one solution would be to request deferment of publication of the first round of RCDs within the grace period until after the second (or subsequent rounds) of RCDs have been filed. Provided the first round of RCDs are not published, they cannot be cited as prior art against the subsequent RCDs. Alternatively, designers may instead be inclined to wait until towards the end of the grace period to file all their RCDs as this will afford the designer the maximum time to amend, refine and tweak the design before needing to file it. However, in doing so, designers run a greater risk that, in the meantime, a third party may independently create and disclose a novelty/individual character-destroying design. It remains to be seen whether the Board of Appeal’s decision will be appealed to the General Court.

Figure 1 – RCD 1

Figure 2 – RCD 2

Grace period: not all disclosures are created equal & 19

UK: Copyright protection for industrially produced artistic works extended Recent changes to UK copyright law will see designers of 'industrially produced' artistic works afforded the same length of copyright protection as other copyright works, meaning an increase from the currently afforded 25 year term to 70 years from the death of the creator. This means that copyright protection for industrially produced artistic works which are over 25 years old will effectively be reinstated. These changes will, for instance, have profound implications for designers (or their assignees/licensees) of iconic industrially produced artistic works which are over 25 years old and which hitherto may have had no basis to take action against unauthorised replicas in the UK. There will of course also be major implications for manufacturers and retailers of such replicas, whose business model may well depend on such products. What's changing in the law? From 28 July 2016, industrially produced artistic works have been entitled to copyright protection for the life of the creator plus 70 years. This is significantly longer than the 25 year protection period currently afforded to such works by section 52 of the Copyright, Designs and Patents Act 1988, which is being repealed. As a transitional arrangement, there will be a grace period of 6 months running to 28 January 2017 (the 'depletion date'):

By Ewan Grist and Daisy Dier London [email protected] [email protected]

 Copies produced, imported or acquired under a contract entered into after 4:30pm on 28 October 2015 but before 28 July 2016 may be sold or dealt with until 28 July 2016; and  Copies made or imported with a contract date after 28 July 2016 must be licensed, or used under a copyright exception. It is important to note that not all classic designs will qualify as 'artistic works' within the meaning of copyright law. Unless it can be established that a given article has the requisite artistic quality to be deemed an 'artistic work', it will not be entitled to copyright protection in the first place. Most everyday articles of furniture, for instance, are unlikely to be deemed 'artistic works', even if they are generally considered to embody attractive (and possibly even iconic) design. Such non-artistic articles can only be protected in the UK by design law, the maximum protection for which (in the case of registered designs) is 25 years.

 Copies imported or made before 4:30pm on 28 October 2015, or produced or imported between this date and the depletion date of 28 January 2017 but for which the contract entered into was before 4:30pm on 28 October 2015, may be sold or dealt with until 28 January 2017;

20 & UK: Copyright protection for industrially produced artistic works extended

What does this mean for designers? Designers of industrially produced artistic works are set to benefit from the extension as the lifetime (and hence potential value) of their rights has been very considerably increased. Designers may wish to review their commercial arrangements, such as licence fees. Designers may also wish to take action against non-compliant manufacturers and retailers of unauthorised replicas after the relevant deadline date. What does this mean for the manufacturers/retailers of unauthorised replicas? Manufacturers and retailers which have legitimately been making or selling unauthorised replicas of classic designs now need to carefully review their product range and decide whether they can safely continue to sell these products after the aforementioned deadlines, or indeed whether they should approach the copyright owner for a licence. What does this mean for consumers? Simple possession of an unauthorised replica (other than in the course of business) will not amount to an infringement of copyright. However, it is likely that unauthorised replicas of classic designs may become harder to find following the selloff deadlines. It remains to be seen whether a market for lower cost authorised items will now develop.

UK: Copyright protection for industrially produced artistic works extended & 21

EU: Mere failure to register a licence shall not prevent the licensee from taking enforcement action against infringers On 22 June 2016 the Court of Justice of the European Union (CJEU) confirmed in case C-419/15 that a licensee may bring infringement proceedings and can claim damages for its losses on the basis of a Registered Community Design (RCD) licence, even if the licence was not registered.

By Domien Op de Beeck and Natalia Zebrowska Brussels and Warsaw [email protected] [email protected]

14

Background Emker SA is the owner of an RCD for a design for laundry balls.12 Its exclusive licensee in Germany, Grüne Welle Vertriebs, brought an infringement action claiming damages against a competitor, Thomas Philips. Thomas Philips appealed the decision, arguing that Grüne Welle Vertriebs had no legal standing to bring a damages claim on the basis of the RCD because its licence had not been registered. The Oberlandesgericht in Düsseldorf referred a number of questions to the CJEU. Can a licensee bring infringement proceedings even if the licence was not registered? Under Article 32(3) of the Council Regulation (EC) No 6/2002 on Community designs (the Regulation), a licensee of a Community design may normally initiate infringement 13 proceedings itself with the design holder's consent. The Regulation also states that the grant or transfer of an RCD

licence shall be entered in the register and published and shall only have effect with respect to third parties after entry in 15 the register. As the Oberlandesgericht also pointed out, a literal reading of the provisions above may lead to the conclusion that a licensee cannot assert its licence against third parties in the absence of its registration. The CJEU decided otherwise, taking into account the context and objectives of the legal provision at hand: to protect parties who may have rights in the RCD as an object of property, but not in the context of infringement proceedings. Can a licensee claim its own damages, or only those suffered by the right holder? Whilst the Regulation explicitly states that the licensee can seek compensation for its own damages by intervening in 16 proceedings launched by the design holder, no such

14 Art. 32 (5), ibid 12 RCD 0008770030-0001

15 Art. 33 (2), ibid

13 Art. 32(3) of the Regulation

16 Art. 32 (4), ibid

22 & EU: Mere failure to register a licence shall not prevent the licensee from taking enforcement action against infringers

damages award is expressly allowed for if the licensee initiates proceedings. The CJEU decided that Articles 32(3) and (4) of the Regulation should be read together, and found that nothing served to prevent a licensee from seeking damages if it had itself initiated the proceedings.

Comment This decision comes as no surprise and is fully in line with a CJEU judgment rendered in a comparable EU trade mark 17 case earlier this year. The Benelux Court of Justice also 18 rendered a similar judgment over 10 years ago. Indeed, the finding that even those licensees who have failed to register their licences should not be precluded from bringing infringement proceedings seems both reasonable and fair. That being said, such decisions will not stimulate the registration of licences nor improve the reliability of the IP registers. Even now the IP registers often do not accurately reflect the actual licensing situation on the market. While under current CJEU case law this might not be an issue in relation to infringement proceedings, it does remain an important concern, for example when assessing the company's intangible value during due diligence.

17 Youssef Hassan, C-163/15 18 Benelux Court 28 February 2003, Zoontjes

EU: Mere failure to register a licence shall not prevent the licensee from taking enforcement action against infringers & 23

UK: Evidence too flimsy to invalidate registered designs for pop-up cards A recent request to invalidate fifteen UK registered designs for 3D pop-up greetings cards failed due to the insufficiency of the evidence provided. Photographic evidence was not robust and did not demonstrate that alleged prior art was in existence at the relevant date, and otherwise "flimsy" documentary hearsay evidence lacked credibility. Background This dispute centres on fifteen registered designs for pop-up 3D cards, including a decorative birthday cake, a sailing ship, and London landmark Big Ben. All the designs were 19 registered in 2013, and all comprise both the front cover and the 3D pop-up element at the centre of the card (and various views thereof). Dragon 007 Ltd (the Applicant) requested the invalidation of the Registered Designs (RDs) under section 1B(1) of the UK's Registered Designs Act 1949 (as amended) on the basis that they were not novel and that they lacked individual character. The Applicant's director submitted that he started selling comparable cards in the UK in or around 2011, which were sourced directly from a company in China, and that these cards are now commonly available across Europe, Australia and Southeast Asia. He submitted as evidence a number of photographs to compare the cards he sells to those that are the subject of the RDs, and letters from his Chinese supplier and the market hall where he trades.

19 UK registered designs numbered consecutively from 4031656 to 4031670.

By Tobias Hawksley-Beesley London [email protected]

Decision All of the applications for invalidation failed for a number of distinct reasons. Firstly, the request to invalidate failed immediately, and unsurprisingly, in respect of five of the designs on the grounds that the Applicant did not provide representations of any alleged prior art. In respect of the remaining ten registered designs, the Applicant identified alleged prior art and provided pictures of what he claimed were prior designs as compared against what he stated were the comparable contested registered designs. Some of the alleged prior art showed both a front cover (i.e. when the card is closed) and the internal pop-up element (i.e. when the card is open), however, two of the representations did not show the front cover. Given that the registered designs must be construed as consisting of the parts visible in the registration, and thus both the front cover and internal parts contribute to the design and its overall impression, these two representations of alleged prior art showing the internal element only were not sufficient to demonstrate that they shared the same overall impression as the respective registered designs. Further, it was held that the absence of the front cover from the alleged prior art was material, in

24 & UK: Evidence too flimsy to invalidate registered designs for pop-up cards

particular, because this is the part of the product which will first be encountered by the informed user. Turning to the question of whether the alleged prior art (which did show the front cover of the cards) could be relied upon for the remaining eight designs, whilst the examiner did not necessarily “disbelieve the applicant's narrative” (i.e. that he had been selling pop-up cards since 2011 and thus before the application filing date of the registered designs, being the relevant date for assessment) the evidence was insufficient to even warrant a detailed analysis of whether the comparable cards were materially different – photographs of alleged prior art were taken after the relevant date, the signatories of the letters were not identifiable, one was not dated, and both appeared to have been solicited for the purposes of the hearing.20

Comment This decision serves as a useful reminder of the importance of obtaining robust evidence. In respect of prior designs, sufficient pictorial evidence (especially for designs with a number of distinct views) is needed together with proof that the design was indeed disclosed to the public before the priority date. Evidence should be dated, clearly signed by an identifiable individual and independently written.

UK registered design (No. 403165)

Alleged prior art 20 Images sourced from the IPO and the decision document

UK: Evidence too flimsy to invalidate registered designs for pop-up cards & 25

Focus on fashion: how the industry is shaking up to beat lookalikes to the shop floor and meet consumer demand

By Daisy Dier

At the time of going to print, London Fashion Week is in full swing. This is off the back of the Spring/Summer 2017 New York shows and the forerunner to the Milan & Paris shows.

London [email protected]

This is show season, when fashion editors and buyers spend four weeks living out of their suitcases while they jump from fashion capital to fashion capital.

month wait. In an age where consumers are used to having everything 'instantly' this model is becoming increasingly out of sync with the modern consumer.

Once understated and perfunctory affairs where buyers and selected press would gather in a small salon to see the collections, the shows have become more and more extravagant, each with an A-list front row to beat the next and with social media – lots and lots of social media. It is social media which has become a double edged sword for the fashion houses. On the one hand it has been embraced warmly by (most) luxury fashion houses, who use it to tweet, post, regram and snapchat photos of their collections, celebrities wearing their products and advertising campaigns. On the other hand, it has made them more vulnerable than ever to copying.

The problem has also been that 'inspired by' products (or sometimes even clear copies) often make it to shop floors on the high street much quicker than six months, sometimes within a matter of weeks.

Traditionally the collections are shown approximately six months in advance of hitting the shop floor. This means that the Spring/Summer collections are shown in September and the Autumn/Winter collections are shown in February/March, resulting in a disconnect between the speed at which consumers can see the collections (within minutes or even instantaneously via live streaming) and the speed at which they can actually buy the collections, an average six

There has been some debate as to how much damage this actually causes original designers. Would a customer who pays £50 for a pair of shoes really be in a position to spend £500 on a pair? This argument is offering increasingly less comfort. A customer who routinely spends £500 on a pair of shoes may well spend £50 on a pair of similar shoes if they could have them straightaway and be on trend instantly. Also some customers may well splurge on an expensive item and then be happy to complete their wardrobe with high street fashion that looks like the real thing. In response to the problems caused by this time lag between the shows and the looks hitting the shop floors, the fashion industry is seeing a radical shake-up of its normal rhythm. Burberry, who have led the way over the past decade with their use of social media and online retail are, somewhat predictably, also leading the way here too and will now sell

26 & Focus on fashion: how the industry is shaking up to beat lookalikes to the shop floor and meet consumer demand

their clothes direct from the catwalk. They will not be alone in this as others, such as Tom Ford and Ralph Lauren, have also adopted the same 'see-now-buy-now' model, thereby reducing this time lag and with it, the window of opportunity for copyists. Other designers, such as Victoria Beckham, allow customers to 'pre-order' items from their shows, thereby allowing customers to order 'instantly' without disrupting normal production timelines. Of course, not all fashion houses have the resources to replicate the see-now-buy-now model. The reason for the six month lead time is for the designers to take orders and fulfil them. Unlike the normal high street model of 'stack 'em high, sell them cheap', high fashion is produced in much smaller quantities to a higher standard and therefore the production time and costs are significantly greater. It is yet to be seen how these changes by some high end designers will affect the fashion industry more generally and indeed what effect it will have on the desirability or volume of 'inspired by' products on the high street. It is inevitable that the high street will continue to be led by the styles and themes found on the catwalks. This is, after all, what the customer expects and provided the designers' IP rights (most notably design rights and copyright) are respected, there is nothing untoward about that. Customers who can afford to wear the 'real thing' will be happy as they can purchase (and wear) the products instantly. The losers in the shake-up will likely be the smaller fashion houses who do not have the resources to sell 'straight from the catwalk' on a see-now-buy-now basis. However, only time will tell how this will change the industry at large.

Focus on fashion: how the industry is shaking up to beat lookalikes to the shop floor and meet consumer demand & 27

Upcoming industry events and awards PopTech Maine, USA 20 – 22 October 2016 PopTech's next event "Culture Clash" focusses on exploring the challenges and opportunities that come with cultural barriers. Attended by a varied audience: designers., scientists, s http://poptech.org/culture_clash

AIGA Conference 17 – 19 October 2016 Las Vegas, USA One of the biggest design events in the USA with more than 100 speakers and thousands of attendees from around the design industry. http://www.aiga.org/2016conference/

28 & Upcoming industry events and awards

Design Matters 16 28 – 29 September 2016 Copenhagen, Denmark Design Matters will discuss new developments in digital design. https://designmatters16.dk/

Biennale Interieur 2016 Kortrijk, Belgiun 14 – 23 October 2016 25th silver edition of the design event focussed on design, product development and innovation. https://interieur.be/

Specix Architecture & Design White Event Sydney 10 November 2016 Sydney, Australia Annual event for interior designers and architects. http://www.eventbrite.com.au/e/specixarchitecture-design-white-event-sydney-tickets25712290152?aff=es2

Dubai Design Week 24 – 29 October 2016 Dubai, UAE An annual event showcasing London as the design capital of the world. http://www.dubaidesignweek.ae/

Upcoming Upcomingindustry industryevents eventsand andawards awards&&29 29

Contacts

Ewan Grist Tel: +44 (0)20 7415 6000 [email protected]

Manon Rieger-Jansen Tel: +31 (0)70 353 8800 [email protected]

Follow us @twobirdsIP www.linkedin.com/company/318488

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