The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10. Presenting a live 90-minute webinar with interactive Q&A Design Patents and the New Hague Agreement Option: Evaluating the Benefits and Risks of Filing an IDA Understanding the Implications for Design Patent Prosecution Today’s faculty features: 12pm Eastern | 11am Central | 10am Mountain | 9am Pacific THURSDAY, JULY 16, 2015 Betty Berendson, Senior Information Officer, The Hague Registry, Brands and Designs Sector (BDS), World Intellectual Property Organization, Geneva, Switzerland Tracy-Gene G. Durkin, Director, Sterne Kessler Goldstein & Fox, Washington, D.C. Bernard Volken, Partner, Fuhrer Marbach, Bern, Switzerland
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The audio portion of the conference may be accessed via the telephone or by using your computer's
speakers. Please refer to the instructions emailed to registrants for additional information. If you
have any questions, please contact Customer Service at 1-800-926-7926 ext. 10.
Presenting a live 90-minute webinar with interactive Q&A
Design Patents and the New Hague
Agreement Option: Evaluating the
Benefits and Risks of Filing an IDA Understanding the Implications for Design Patent Prosecution
• File a single international application for a single international registration (IR) in which one or more Contracting Parties (CP) are designated
“Bundle of Rights”
• If no refusal, the resulting international registration has the effect of a grant of protection in each designated Contracting Party. Substantive issues are governed by the law of each designated Contracting Party.
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General Advantages of the Hague System
One Office for filing
One language
One currency
One international registration
One renewal
One modification
Foreign attorney or agent (first needed if refused)
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Geographical Scope of the Hague System
49 Geneva Act (1999) (including EU and OAPI)
82 Jurisdictions covered
Recent: RoK, JP, USA
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Hague System: Foreseen Expansion
Coming soon
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The Hague System website
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Hague System Fee Calculator
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Filing an international application
37
Filing an international application
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Filing an international application
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Filing an international application
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Filing an international application
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General requirements regarding reproductions
One single view per reproduction
The industrial design must be represented alone
Neutral background
No technical drawings, dimensions or axes
Minimum size: 3cm x 3cm (at 300 dpi)
Maximum size: 16cm x 16cm (at 300 dpi)
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Technical requirements regarding image files
Image format: JPEG or TIFF
Resolution: 300x300 dpi
Maximum file size (per file): 2 Megabytes
Color: RGB or Grayscale
Borders: between 1 and 20 pixels
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Filing an international application
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Representation of the industrial design
DM/086605 “Trap for insects (electric)”
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Representation of the industrial design
DM/084694 “Outdoor and indoor furniture with integrated lights”
1.3
1.2 1.1
1.4
2.1
2.2
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Filing an international application
47
Filing an international application
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Filing an international application
49
Filing an international application
50
Declarations made by the United States of America
Requirement of unity of design
Individual designation fee payable in two parts
Special requirements concerning the creator – declaration
of inventorship
Claim as additional mandatory content
No deferment of publication
Date of the effect of the international registration (upon
issuance of a design patent by USPTO)
Maximum duration of protection – 15 years
Security clearance requirement for the designs created in
the United States of America
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Declarations made by Japan
Requirement of unity of design
Certain views of the designs required (front view, back view,
top view, bottom view, left view, right view)
Date of effect of the international registration (upon
registration of the establishment of a design right in Japan)
Maximum duration of protection – 20 years
Declarations made by the Republic of Korea
Certain views of the designs required (set of articles;
4. Specific issues: protection of trade dresses and logos
5. Parameter for a tailor-made filing strategy
6. Practice/jurisdiction
7. Conclusion
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Patent (in most jurisdictions): examined
tendency to consider the patent as barely
attackable
1. Introduction
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Design (in most jurisdictions) = not examined
tendency: design considered as being weak
1. Introduction
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• Design protection is clearly
underestimated
• Why: legal presumption of validity
turn of the prove burden
The truth is in the middle
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Design infringement affirmed!
Plaintiff // Defendant
Swiss Federal Court, July 13,
2004 “Pendant”
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- Defendant failed in proving lack of novelty.
- Lack of novelty is irrelevant if not proved.
- “Missing examination” of a design is partially
“compensated” by the legal presumption.
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Court Plaintiff Defendant Decision
Copenhagen
Maritime and
Commercial
Court
(22 May 2008,
No. V-0052-7)
Reisenthel
Accessoires
Zebra A/S Infringement
affirmed.
Defendant had
to pay
damages.
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Court Plaintiff Defendant Decision
Copenhagen
Maritime and
Commercial
Court
(25 Jan 2008,
No. V. 68/06)
Staff ApS Marc Lauge
A/S
Confusingly
similar trousers
Infringement
affirmed.
Defendant had
to pay
damages.
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General Court C-345/13
Karen Millen vs. Dunnes,
Decision 19 June 2014
Karen Millen Dunnes
(Savida label)
(Irish High Court, unregistered Community design rights).
Karen Millen Dunnes
(Savida label)
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“The right holder of a design is not required to
prove that it has individual character”.
= right holder is released from burden of prove
regarding existing novelty!
(interpretation of the General Court of article
85 II of Regulation 6/2002 [presumption of
validity - defense as to the merits])
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Legal presumption = advantage in case of conflict
• for sending cease and desist letters,
• and in case of preliminary injunctions
and for negotiating licenses.
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Art. 2 I Locarno Classification: “Subject to the requirements prescribed by this Agreement, the international classification shall be solely of an administrative character. Nevertheless, each country may attribute to it the legal scope which it considers appropriate. In particular, the international classification shall not bind the countries of the Special Union as regards the nature and scope of the protection afforded to the design in those countries.”
2. No principle of specialty
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Decision by the UK Court of
Appeals (23. April 2008)
Spiky balls for use as laundry aids, registered designs under Nos. 000217187-0001 – 004; application date 2004:
Sold and used as a
massage ball since
2002:
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The parties settled the case amicability.
However, one of the judges argued:
“…this case gives rise to points of law of
general importance which have an impact on
those not directly engaged in this particular
dispute. Where our judgment may clarify that
which has been moot and the result is of wider
public interest, I take the view that we should
make our conclusions known and so I have been
in favour in this case of handing down this
judgment.”
73
The Court stated:
“the right gives a monopoly over any kind of goods according to the design. It makes complete sense that the prior art available for attacking novelty should also extend to all kinds of goods”.
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3. No use requirements!!
Trademarks registered for 45 classes: often confronted with “defensive trademark jurisdiction”
Problem solved with design:
- no principle of specialty
- no use obligation!
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Design
• no “principle of specialty”, no “use obligation”
= huge scope of protection
• Corrective: time limitation.
Trademark
• Timely unlimited
• corrective: “principle of specialty” and “use
obligation”
“corrective
against abuse” Monopoly
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“An industrial design may consist of three dimensional features, such as the shape of an article, …”.
(http://www.wipo.int/designs/en)
4. Protection of Trade dresses
and logos
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Trade dresses – unfair
competition and design protection
Nestlé DM/077205 Nestlé DM/074008
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1. 9th Locarno edition (1st January 2009): „graphic symbols and logos“.
2. Some Trademark Offices were reserved regarding logo-filings, what now is no longer the case. As a matter of fact, the number of logo applications significantly increased since 2009 in most jurisdictions.