DesignWrites - Bird & Bird

May 2016

& DesignWrites

Welcome to the eighth 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…. UK: The Supreme Court upholds finding of noninfringement in long running Trunki case ........................ 1 …Now that the dust has settled on Trunki, some valuable reminders for designers ..................................................... 4 EU: Why registered Community designs (RCDs) are a helpful tool against infringers in the EU ........................... 7 The importance of design in the workplace......................11 3D printing – a game changer? ........................................ 14

EU: The "repair clause" cannot affect trade mark protection.......................................................................... 16 New EU tool harmonises product indications for registered Community designs ........................................ 18 Upcoming industry events and awards ...........................20

UK: The Supreme Court upholds finding of noninfringement in long running Trunki case In March 2016, the UK Supreme Court dismissed Magmatic's appeal against the Court of Appeal's finding that its registered Community design was not infringed by PMS' Kiddee Case product.

Magmatic had alleged that PMS' Kiddee Case products infringed the registered Community design ("RCD"), which protected its Trunki product (see images below).

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

Court2. On 9 March 2016, the Supreme Court upheld the Court of Appeal's judgment. The Supreme Court regarded the Court of Appeal as having made three criticisms of the High Court's judgment: 1 the High Court had failed to give proper weight to the overall impression created by the RCD as that of a horned animal, which was significantly different from the overall impression created by the Kiddee Case which, due to aspects of its surface decoration (e.g. colouring, spots and stripes) created a different overall impression (i.e. of something other than a horned animal);

At first instance in July 2013, the High Court1 found that the RCD had been infringed on the basis that the RCD and the Kiddee Case designs created the same overall impression. However, this decision was overturned by the Court of Appeal in February 2014, which found that there was no infringement. Magmatic appealed to the Supreme

2 the High Court failed to appreciate the impact of the lack of ornamentation on the surface of the RCD and its presence on the Kiddee Case; and 3 the High Court failed to take account of the colour contrast between the body and wheels/straps in the RCD.

1http://www.twobirds.com/en/news/articles/2016/uk/supreme

-court-upholds-finding-on-non-infringement-in-long-runningtrunki-case

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The Supreme Court is the highest court in the UK.

UK: The Supreme Court upholds finding of non-infringement in long running Trunki case & 01

Given these material errors in the approach taken by the High Court, the Court of Appeal felt that it was entitled to reach its own view on infringement. The Supreme Court emphasised that an appellate court should only interfere with the decision of the trial judge where the trial judge had erred in principle in reaching his decision. The issue for the Supreme Court therefore was whether the Court of Appeal's three criticisms were justified or not.

more likely to be interpreted as not excluding surface decoration than a CAD (i.e. a CAD representation was generally more likely to be interpreted as including a lack of surface decoration as a feature of the design). This was consistent with the Apple v Samsung4 decision in which the lack of surface decoration was considered to be a feature of the asserted design (a view which the Supreme Court noted was shared by the German and Dutch courts in the parallel proceedings in Apple v Samsung, and the CJEU in H&M).

1 The 'horned animal' appearance The Supreme Court agreed with the Court of Appeal that the overall impression created by the RCD was that of a horned animal. The Supreme Court noted that the High Court had failed to mention the significance of the horns when addressing the RCD's overall impression in its judgment and the Supreme Court concluded that it had therefore wrongly overlooked this important feature of the RCD. Accordingly, the Supreme Court found that the Court of Appeal's first criticism was justified.

Turning to the question of whether a lack of surface decoration was a feature of the RCD in this particular case, the Supreme Court thought there were arguments both ways, but decided it did not need to reach a conclusion, given that the Court of Appeal had not done so either. 3 The impact of the tonal contrast The Supreme Court noted that the CADs used in the RCD clearly showed a (colour non-specific) tonal contrast between the body of the case on the one hand and the wheels and the strap on the other. Absent any other plausible reason for this, the Supreme Court agreed with the Court of Appeal that the RCD did not protect just the shape alone, but also the tonal contrast between these features. The High Court on the other hand had viewed the RCD as just protecting the shape alone and had not taken account of the tonal contrast (which was absent in the Kiddee Case) when comparing the designs. The Supreme Court therefore agreed with the Court of Appeal's criticism.

2 The impact of surface decoration/ornamentation The Court of Appeal took the view that the fact that the RCD was unadourned reinforced the overall impression it created (i.e. that of a horned animal). Further, the surface decoration of the Kiddee Case (e.g. its colouring and spots) also influenced the overall impression it created: in one design to give the impression of a ladybird with antennae, in another a tiger with ears. As obiter, the Supreme Court agreed that absence of surface decoration could, as a matter of principle, be a feature of a registered design. Whether it was in fact a feature of a given registered design turned on the proper interpretation of the representations used in the registration. Referring to the Procter & Gamble case3, the Supreme Court noted that whilst each registered design must be interpreted in its own context, representations by way of line drawings were much 3

[2007] EWCA Civ 936

In conclusion, by agreeing with the Court of Appeal's criticisms of the High Court's approach (and that the High Court judge had therefore materially misdirected himself), the Court of Appeal was entitled to reconsider the question of infringement and reach its own 4

[2012] EWCA Civ 1339

02 & UK: The Supreme Court upholds finding of non-infringement in long running Trunki case

conclusion. Because the Court of Appeal had done so on the correct basis in law, the Supreme Court should be reluctant to interfere with the conclusion reached and indeed it would not do so. Magmatic's appeal was therefore dismissed and the Court of Appeal's decision that there was no infringement was upheld.

Comment The Supreme Court's decision, which is its first considering the Community design regime, will undoubtedly be met with disappointment by many in the design sector. It marks the conclusion of a long standing, but ultimately unsuccessful, battle by Magmatic to rely on its design registrations to prevent what many would see as a discount knock off product from competing on the market. It is widely accepted that Magmatic's Trunki product is a highly innovative product, which has met with significant critical and commercial success, with numerous awards for its design. Magmatic had prudently taken steps to protect its design by obtaining Community registrations. It was further accepted that PMS entered the market with the specific intent of offering a discount model of the Trunki. Despite this, but with considerable sympathy for Magmatic, the Supreme Court had to agree with the Court of Appeal in finding that the design of Kiddee Case was just too far removed from Magmatic's design registration to constitute an infringement.

Read on to further explore the implications for designers…

UK: The Supreme Court upholds finding of non-infringement in long running Trunki case & 03

…Now that the dust has settled on Trunki, some valuable reminders for designers The Supreme Court's recent decision in Trunki was unsurprisingly met with uproar in the design community, amid renewed calls for more to be done to protect innovative design in the UK.

However, claims that the Trunki decision has plunged design protection into turmoil seem wide of the mark. In truth, whilst the outcome was undeniably unfortunate for Magmatic, nothing in the Trunki decision substantially undermines the value of existing registered Community designs ("RCDs") or the importance of filing properly considered RCD portfolios for new products. Indeed, Trunki largely reinforces what was already known about the potential pitfalls to avoid when implementing an effective design filing strategy. Here are three observations in light of Trunki: 1 RCDs can be enormously powerful IP rights. An RCD provides monopoly-style protection for both 2D and 3D designs throughout the whole of the EU for up to 25 years. It is inexpensive and very quick to register as it is not subject to substantive examination. Nor is it limited to any particular type of goods or use. The price of these significant benefits however is that the scope of protection drawn around an RCD is generally construed rather narrowly (although it can be widened if the evidence shows that there was significant design freedom and/or the design differed markedly from the design corpus).

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

2 The designer has the freedom to choose up to seven different images per RCD to show the outside world what they are seeking to protect. These representations and these alone, determine what is and what is not protected as part of that design. Great care should therefore be taken when choosing how and what to show in these images because this will affect the scope of protection that the designer ultimately enjoys. Consideration should be given to, amongst other things: the kind of image used (photographs, greyscale CADs with or without tonal contrasts, or line drawings); whether to file in colour or with surface decoration; which views of a 3D design to show; whether certain elements should be disclaimed using broken lines; and whether a thicket of RCDs should be filed around the central design, etc. Consideration should also be given to what the notional infringer is likely to copy. Whilst the designer has almost limitless freedom in how he represents his design, he is bound by what he decides to do. In Trunki, the CAD images used in the RCD showed a distinct tonal contrast between the wheels and the body of the case.

04 & …Now that the dust has settled on Trunki, some valuable reminders for designers

It is quite possible that, had there been no tonal contrast (which was a main point of difference to the Kiddee Case design); the outcome might have been different. 3 It is important to appreciate the limits of design law. Design registrations exist solely to protect the appearance of a specific design, not the type of product to which that design has been applied or its concept. Protection for a type of product or product concept may be available in limited circumstances under patent law and/or passing off, but not design law.

Much of the frustration surrounding the Trunki decision was that design law had failed to prevent a competitor coming onto the market with the same type of product as the unarguably innovative Trunki suitcase. That is true, but it has never been the role of design law to prevent this kind of competition.

…Now that the dust has settled on Trunki, some valuable reminders for designers & 05

EU: Why registered Community designs (RCDs) are a helpful tool against infringers in the EU Designers have a variety of different mechanisms at their disposal to protect the design of their work product. For example, protection can be achieved by trade mark, design and/or copyright law and also competition law. While each of the possibilities has advantages and disadvantages, the registered design rights may, in many cases (if filed in the appropriate manner), be a very useful tool against copycats as they can be easier to enforce than other IP rights and unfair competition law claims.

Easy acquisition of RCDs The registration procedure for RCDs is very quick, simple and cheap. The EUIPO (formerly "OHIM") does not examine the validity of an RCD application on the merits (i.e. protectability). The examiner only checks whether the design which is the subject of the RCD application qualifies as a design in general (e.g. an RCD would not be available for fresh fruit) and whether it contains any element that might offend public policies or morality (e.g. if the design contains racist messages).

By Jana Bogatz Munich [email protected]

may, after the registration of the design, request that it be declared invalid. Many different designs can be included in the same RCD application (a "multiple application") provided that they all fall under the same Locarno class (i.e. they belong to the same type of goods). The costs for each additional design (e.g. a variation in the style or colour of a product) are relatively low. Where the product is only to be disclosed to the public at a later stage, it is possible to request the deferment of publication for a maximum period of 30 months in order to keep the design's registration confidential. The registration process at the EUIPO is also very fast, especially when compared to equivalent processes for trade marks and patents. A registration certificate can be obtained within a few days from application.

In particular, there are no absolute grounds for refusal of an RCD as there are for trade marks (e.g. descriptiveness, lack of distinctiveness). Further, the registration procedure does not provide for oppositions from the owners of prior third party rights. However, third parties

EU: Why registered Community designs (RCDs) are a helpful tool against infringers in the EU & 07

Object of protection The enforceability of RCDs largely depends on the object of protection, namely the item for which protection was sought in the RCD application. Generally speaking, the designer has various possibilities to protect the design of his work product. For example, it is possible to file photos of the work product, threedimensional images or line drawings. The representation may be in colour or in black and white. Further, depending on the design, one can apply for protection for the entire product (e.g. a chair, a bottle etc.) or only for parts of it (e.g. lunette of a watch, wheel rims etc.). There is no rule of thumb as to which is the best way to protect a design. Rather, the best means of protection should be considered on a case-by-case basis. In any case, it should always be kept in mind that RCD protection requires that the design is new and has individual character. A design is considered "new"if it varies in more than just "immaterial details" from other existing designs. The test of "individual character" is a bit more complex as it is necessary to assess whether the design, compared to earlier designs, creates the overall same impression on the "informed user" (i.e. a notional person with knowledge of designs in the applicable field of activity).

There is a 12 month grace period, enabling the designer to disclose a new design to the public (e.g. to investors or at a trade show) and apply for an RCD up to 12 months later. This allows the designer to 'test' their designs on the market before committing to the expense of filing.

Scope of protection and maintenance of rights An RCD enjoys unitary protection in all 28 EU Member States. Whereas a registered trade mark can potentially be renewed indefinitely, an RCD lasts for a maximum of 25 years, requiring renewals every five years. Another difference between RCDs and trade marks is that an RCD may theoretically cover all goods but trade marks only cover those specific goods for which the trade mark is registered. Further, as there is no requirement to use a design, an RCD cannot be subjected to cancellation proceedings for non-use, unlike trade marks.

08 & EU: Why registered Community designs (RCDs) are a helpful tool against infringers in the EU

Enforcement of RCDs An RCD gives the owner an exclusive right to use the design in the course of trade. Protection extends to any later design creating the same overall impression on the informed user. The owner of an RCD can seek to enforce its rights through a main action or a motion for preliminary injunction before a Community Design Court. Due to the fact that RCDs are valid throughout the EU, it is possible in certain circumstances for a court to grant pan-European relief and prevent further sale of the infringing product anywhere in the EU. Further, the owner of an RCD may also file an application with the customs authority in one or more EU Member States requesting that customs authorities search for and seize suspected infringing products entering or exiting the EU.

Advantage of RCDs compared to other IP rights In addition to RCDs, other IP rights, such as unregistered design rights, copyright and trade marks, may also be used as a tool for the protection of a design. Further, national competition law (or passing off in the UK) can provide additional protection. The IP right or the combination of IP rights that are the most appropriate for the protection of a design should be evaluated on a case by case basis. For instance, enforcing an Unregistered Community Design, which has a relatively short period of protection (three years), might be a challenge as in order to establish title to the design, the designer will need to prove in detail how, when and by whom the design was created. It is often the case that the only available documentation does not meet the strict requirements set by the courts. Designs may also be protected under copyright law but, as there is no European-wide harmonised copyright law, the requirements and the scope of protection of the law differ between the various EU Member States. While some countries are more copyright-owner friendly (e.g. the Netherlands or France), copyright enforcement is rather more difficult in other countries (e.g. Germany and the UK).

EU: Why registered Community designs (RCDs) are a helpful tool against infringers in the EU & 09

The importance of design in the workplace This autumn, Bird & Bird will open its contemporary new building at 12 New Fetter Lane. With plans to grow its London headcount, all of the firm's London lawyers will be under one roof in a specially commissioned new building in the heart of London's legal district.

By Jane Blackett and Kevin Britchfield (MCM Architecture Ltd) London [email protected]

The new premises will have a dedicated business lounge, especially useful for international clients, whilst the central location will provide a welcoming business hub that better connects its clients, lawyers and business services staff. Nicholas Perry, Head of the London Office at Bird & Bird says: "Our striking new building in London represents an exciting milestone in our plans to grow and modernise the firm over the coming years. We are all very excited about working in a dynamic space that better resonates with our clients' working environments and enhances our collaborative culture”. More generally, workplace design is increasingly becoming a core part of future business thinking. Here, Kevin Britchfield, Operations Director at MCM Architecture Ltd,5 considers current workplace design

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MCM Architecture was appointed by Bird & Bird as their designers and architects for all the interior of 12 New Fetter Lane.

and what’s driving the future needs of the corporate world…

Current Trends in Workplace Design Constant and challenging change will continue to drive the purpose and energy of the corporate world. As a result, commercial offices need to be much more responsive to the demands of current and future business agendas – key considerations are:  Property portfolios will better suit business' needs if they can be re-freshed and re-organised more frequently, buildings will more effectively support business if they are more readily adaptable. Space has to support frequent re-organisation as the workforce continues to re-shape within and around the edges of the corporate body.  Successful businesses are increasingly built on a capacity to convert corporate knowledge and the experience of their people into new products, services and solutions. Workspaces need to support active collaboration in spaces where debate and information can be shared in a lively interactive environment.

The importance of design in the workplace & 11

 Something like 50% of people are introverts who will never perform at their best in the high energy of noisy collaboration. Spaces for reflection and consideration followed by deep thought and calm conversation may be a far more productive form of collaboration.  People who come together informally are removed from the pressure of an instant opinion, a quick answer. Conversation over coffee with a colleague you never usually speak to can bring forth unexpected creativity.  Social spaces nurture the wellbeing of an organisation and allow shared values to be reinforced. In a world where mobility is king and time is fragmented, spaces that bring people together for informal conversation foster happy and productive organisations. The responses to these needs are shaping the future property requirements of today's biggest and brightest corporate organisations: Buildings as an organisational heart and hub As work becomes more dispersed, the importance of a corporate base that reinforces brand, culture and 'coming together' activities increases. Portfolio flexibility As headcount flexes in response to changing workloads, organisations are looking to create flexible portfolios that include an element of short-term instant access space. Spaceless growth It’s all about managing growth within existing space where possible. Typical observation data still shows only 64% utilisation for desks, 39% for average office use and an average number of meeting no-shows at 40%, so the focus is on extracting greater utility from existing space not on taking more space. Choice Spaces that offer different work-settings to support collaboration, networking, discussion, focus, concentration and friendship. Workplace solutions 12 & The importance of design in the workplace

that offer users menus of workspace that teams can swap in or out as business changes, ideally assembled from elements that users can re-configure, are the order of the day. Blur Between client spaces and work spaces, between personal and professional activity and between work and play. Each organisation has different boundaries whether determined by compliance, confidentiality or preference but achieving overlap delivers greater real estate efficiency, dilutes silo working and softens team boundaries. Talent Space and design as a motivator for attracting and retaining exceptional people. Workplace is rarely the key deciding factor but great workplaces communicate values and offer a tangible example of investing in the best for people versus inefficient workplaces that wear down, drain motivation and challenge long term loyalty. Wellbeing Healthy people are happier, less prone to sickness and more likely to be productive. Increasingly organisations want explicitly healthy workplaces, either by specification, sustainable design, provision of gyms and healthy food or access to health and welfare programmes. Healthy workplaces are increasingly justified as a valid differentiator for attracting and retaining the best. Technology For some of the most agile workers, the screen - rather than desk - is their workplace. As technology becomes wireless and disconnected from the building, our industry should be challenging the office building - floor heights, services infrastructure even natural ventilation. Technology has reshaped the workplace in the last few years. In coming years Artificial Intelligence (AI) is expected to transform the way businesses carry out many of today’s tasks and activities. Who will we be designing workspace for?

Brand / identity and culture The three areas that express the unique personality and values of an organisation and where the workplace must be shaped to be unique and relevant to each company and its people. There are a number of recent completed workplace projects which reflect these trends:  For its new London headquarters at Fitzroy Place, Estee Lauder set the explicit goal of creating the ultimate workplace that would attract and retain staff, and that would fully reflect its many different brands to visitors and staff. Every decision was checked against these two drivers, and the resulting building, which provides an exceptionally rich experience to staff (far removed from what has been the corporate norm), has been hugely well received by staff and clients.  At the Edge Building in Amsterdam, Deloitte have embraced the latest technology to support a fully agile working model. A bespoke app recognises staff as they arrive, and personalises the immediate environment to suit their preferences. The building has also set a new global benchmark for a sustainable building.  Back in London, the Alphabet Building on Finsbury Square looks to reposition an existing commercial building to reflect the changing workplace needs of businesses. It fuses the modern corporate HQ with the small office cluster buildings preferred by tech companies and start-ups, and provides a number of shared business and social spaces for use by all the occupiers.

The importance of design in the workplace & 13

3D printing – a game changer? Following in the footsteps of many Bird & Bird offices, on 1 March 2016 our Budapest team hosted a seminar on 3D printing to give clients the opportunity to learn more about this rapidly evolving and potentially disruptive technology.

By Bettina Kövecses Budapest [email protected]

The event included live demonstrations which aimed to highlight the capabilities of the new technology and the wide spectrum of possibilities it will offer to many industries. The seminar attracted attendees from national and international companies, including senior staff from the Hungarian Intellectual Property Office, the Collective Right Management Association for Authors' Copyrights (Artisjus) and the National Board Against Counterfeiting. During the seminar Bird & Bird lawyers and industry professionals discussed why 3D printing could be a gamechanger and what role the law can, and will, play as 3D printing becomes more common place, in particular with respect to design rights. We even drew special attention to the existence of unregistered community design rights and raised awareness regards disclosure and enforcement. The presentations also considered key commercial, IT and product regulatory issues, as well as providing ideas for a strategic approach to maximising the protection and exploitation of the various IP rights that might arise from using the technology, such as design rights. Topics that raised particular interest centred around how to identify, tackle or profitably work

14 & & 3D 3D printing printing – – aa game game changer? changer? 14

around certain types of infringement issues such as illegal use of CAD files, the actual (re)creation of protected items, and whether applying any trace-backs is possible or worthy at all. In respect of the necessary and extensive IT support needed for this technology, attendees were curious to know whether IT service providers and 3D printer operators will be liable for contributory infringement and/or product liability; or whether there is any initiative to introduce a levy system or similar on 3D printers. More practical and less theoretical discussions concerned the protection and use of 3D scanned data, especially personal and certain health data, and also the effect of the new technology on existing licence and even supply/manufacturing agreements. Experts from KVINT-R, a local company and authorised reseller of 3D Systems (a US company considered the market leader in certain 3D printing technologies) provided an overview of 3D printing technologies including current and future opportunities. 3D printers and a selection of 3D printed works were displayed for attendees to see.

Comment 3D printing is a revolutionary manufacturing method and therefore has to be treated with great care and attention. The devil lies in the detail. Rights holders, manufacturers and market participants should be aware that new 3D printing technologies will cause a shift away from normal patterns of manufacture towards a complicated network of fabrication, where the end user/customer can actively participate in the manufacturing process. This change also means a shift in the burden of legal responsibilities, for example product and contractual liabilities. From an IP perspective, the number and type of potential infringers are likely to increase and therefore it is necessary to consider a new comprehensive approach to maximising IP protection. Depending on the industry sector, a matrix of protection schemes can be implemented by drawing on existing IP protection mechanisms. Review of supply and licence agreements is a must in order to reflect changes that 3D printing may introduce, and to secure proper enforcement of IP rights. Rights having a shorter period of protection (such as design rights) may be re-valued as these can be obtained more easily and may be "upgraded" according to the pace of this rapidly evolving technology.

3D printing – a game changer? & 15

EU: The "repair clause" cannot affect trade mark protection On 6 October 2015, the Court of Justice of the European Union ("CJEU") issued a preliminary ruling in the case between Ford Motor Company and Wheeltrims srl (C-500/14). The CJEU decided that the "repair clause" contained in the designs regulations could not limit the trade mark protection that existed. Ford Motor Company ("Ford") is a well-known manufacturer of vehicles, spare parts and car accessories. Its goods are marked with its trade marks ("Ford Trade Marks"). Wheeltrims srl ("Wheeltrims") is a distributor of spare parts and car accessories. It sells wheel trims on which trade marks of various car companies (including those of Ford) are reproduced, without the consent of car manufacturers. Ford filed a lawsuit in the Court of Turin against Wheeltrims to prevent them from further distributing wheel trims bearing the Ford Trade Marks and seeking compensation for damages. Ford argued that the unauthorised reproduction of the trade marks on the wheel trims constituted an infringement of their exclusive rights in the Ford Trade Marks. Ford further argued that it was not necessary for Wheeltrims to use the Ford Trade Marks to indicate the origin of the original part that the spare part or car accessory is designed to replace; a mark that was not protected as a Ford Trade Mark would suffice. Wheeltrims argued that the use of the Ford Trade Marks was merely descriptive and based its defence on the

By Alicja Wolny Warsaw [email protected]

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repair clause . Wheeltrims argued that in reproducing the Ford Trade Marks on the wheel trims, they did not intend to indicate the origin of the spare parts (i.e. the wheel trims) but instead to identify the manufacturer of the main product (i.e. the car). Additionally, the use of the trade marks on the wheel trims was meant to recreate the aesthetic and descriptive features of the original component part in order to restore the original appearance of the complex product (i.e. the car). The Court of Turin acknowledged that Wheeltrims' actions were not necessary to indicate the origin of the wheel trims. However, the Court had doubts regarding the scope of the application of the repair clause given that the CJEU had not yet expressed its opinion on the relationship between the trade mark protection and the repair clause. The repair clause (Art 110 of the Community Design Regulation 6/2002) provides: "Until such time as Amendments to this Regulation enter into force on a proposal from the Commission on this subject, protection as a Community design shall not exist for a design which constitutes a component part of a complex product used within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance." 6

16 & EU: The "repair clause" cannot affect trade mark protection

The Court of Turin considered two possible interpretations. First, that the repair clause was derogation from the protection afforded by design rights, thereby maintaining trade mark rights, second that the repair clause "trumps" trade mark rights. In accordance with the second interpretation, the reconstruction of the appearance of the complex product needs to be exact. Thus, it should be made independently of the existence of another industrial property right, in particular resulting from the trademark registration. This gives the producer of the original and non-original spare parts the possibility to conduct business in compliance with the principle of equality. The Court of Turin referred its questions concerning the scope of the repair clause to the CJEU. The CJEU issued a decision stating that: 1 undisturbed competition was provided for in the provisions contained in the Community trade mark Regulation and Trade Mark Directive; and that 2 the protection of trade mark rights provided by the Trade Mark Directive and/or Community trade mark Regulation could not be impinged upon by the repair clause. Consequently, the CJEU ruled that the repair clause does not allow manufacturers of spare parts and accessories to reproduce marks on their products which are identical to the registered trade marks owned by the car manufacturer simply because that use of the trade mark would lead to the restoration of the original appearance of the complex product. The judgment is fundamental to design law as it establishes the boundaries between the regimes of design and trade mark protection.

EU: The "repair clause" cannot affect trade mark protection & 17

New EU tool harmonises product indications for registered Community designs Varying interpretations of acceptable PIs among Member States have resulted in the development of different practices in national intellectual property offices.

By Tobias Hawksley Beesley London [email protected]

What does DesignClass do? Background When applying for a registered Community design right ("RCD") an applicant must specify the type of product for which protection is sought by identifying a 'product indication' ("PI"). Varying interpretations of acceptable PIs among Member States have resulted in the development of different practices in national intellectual property offices. In an effort to better represent all the goods for which a design could be registered, the European Union Intellectual Property Office ("EUIPO"), formerly "OHIM", and national EU intellectual property offices launched 'Convergence Project 7 – Harmonisation of Product Indications' in 2014. The results of this collaborative initiative include a harmonised and consolidated PI database, and the roll-out of DesignClass - an extensive, free, online resource of pre-accepted PIs 7

DesignClass serves as the searchable user interface of the harmonised and consolidated PI database, housing approximately 13,000 PI concepts translated in to all official EU languages; it is based around the traditional Locarno Classification taxonomy and is divided schematically into 32 classes (i.e. class 2 for articles of clothing and haberdashery) and 233 subclasses (i.e. subclass 6 for gloves). Users can browse or search a product for which they wish to identify an appropriate PI to view pre-approved suggestions. Links are also 8

available to the EUIPO's DesignView database so that would-be applicants can view competing RCDs. Traditionally, if a particular PI that you wish to specify as part of an RCD application does not appear in the Locarno alphabetical list, each office must separately determine whether the stated PI(s) is acceptable based on their respective criteria.

available to users .

By incorporating PIs that have been pre-approved and pre-translated by the 24 participating EU offices, in

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DesignClass http://euipo.europa.eu/designclass/

DesignView https://www.tmdn.org/tmdsview-web/welcome

18 & New EU tool harmonises product indications for registered Community designs

addition to the traditional Locarno Classification, DesignClass enables users to undertake a more transparent and comprehensive search. This dual functionality enables DesignClass to distinguish itself from the EUIPO's more basic Eurolocarno web-based 9

tool which has been available for a number of years .

How useful is it? The primary purpose of PI classification is administrative in terms of providing users the ability to search RCD databases easily to aid with applications or view competing RCDs, and indeed authorities state that neither the indication of products nor their classification affects the scope of protection of an RCD "as such". That is not to say however that a design's proper classification is unimportant – as part of RCD invalidity proceedings, for example, the EUIPO notes the PI for which an RCD is registered in order to assess the overall impression of the product created on the 'informed user'. First and foremost however, PIs exist to aid applicants and examiners, and by utilising the pre-approved PIs available via DesignClass, applicants can save on both cost (i.e. of translations) and avoid unnecessary filing delays, whilst also limiting the risk of an objection based on mere formalities. Although DesignClass is now live, the EUIPO have stressed that it is still under development. It is expected to be finalised during the course of 2016, and for certain national EU intellectual property offices to eventually implement the tool in to their own e-filing systems. Meanwhile, DesignClass still represents a useful addition to the EUIPO's publicly available databases, and indicates a step forward for the harmonisation of RCD practice in the EU.

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Eurolocarno https://euipo.europa.eu/eurolocarno/

New EU tool harmonises product indications for registered Community designs & 19

Upcoming industry events and awards

Dwell on Design Los Angeles 24 – 26 June 2016 Los Angeles, USA A 3-day modern home show displaying innovative products and talks from some of the design industry leaders. https://www.asid.org/content/dwell-designlos-angeles

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/

20 & Upcoming industry events and awards

London Design Festival 17 – 25 September 2016 London, UK An annual event showcasing London as the design capital of the world. http://www.londondesignfestival.com/

Design Thinking 2016 27 – 29 June 2016 Adelaide, Australia Looking at applying design thinking to create innovative products and services. http://www.designthinkingaustralia.com.au/

What Design Can Do! 30 June – 1 July 2016 Amsterdam, the Netherlands Designers from around the world gather to discuss the impact of design. http://www.whatdesigncando.com/amsterdam2016/ Upcomingindustry industryevents eventsand andawards awards&&21 21 Upcoming

Contacts

Ewan Grist

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

Manon Rieger-Jansen

Tel: +31 (0)70 353 8800 [email protected]

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twobirds.com Aarhus & Abu Dhabi & Beijing & Bratislava & Brussels & Budapest & Copenhagen & Dubai & Dusseldorf & Frankfurt & The Hague & Hamburg & Helsinki & Hong Kong & London & Luxembourg & Lyon & Madrid & Milan & Munich & Paris & Prague & Rome & Shanghai & Singapore & Stockholm & Sydney & Warsaw Bird & Bird is an international legal practice comprising Bird & Bird LLP and its affiliated and associated businesses. Bird & Bird LLP is a limited liability partnership, registered in England and Wales with registered number OC340318 and is authorised and regulated by the Solicitors Regulation Authority. Its registered office and principal place of business is at 15 Fetter Lane, London EC4A 1JP. A list of members of Bird & Bird LLP and of any non-members who are designated as partners, and of their respective professional qualifications, is open to inspection at that address. 27981720.1