Function Above Form - CJEU Discusses Copyright Protection over Functional Designs

Protection over functionality in relation to copyright is a bit of a contentious subject. Many laws around the world, including in the EU, preclude protection from extending to methods of procedures, potentially including functional aspects of a particular form of expression. The idea of this is to prevent the use of copyright in the way of patents to protect some specific function, giving the rightsholder a much longer period of protection than under patent legislation. Nevertheless, the issue has been litigated before, and the CJEU was set to decide on the matter once and for all earlier this Summer, and finally handed down its decision in June 2020. 

The case of Brompton Bicycle Ltd v Chedech/Get2Get concerned a folding bicycle sold by Brompton, whose design's comprises three different folding positions. The design was patented, however the patent has expired. Get2Get sold a similar bike (called the "Chedech"), which also featured three folding positions. Brompton subsequently took Get2Get to court over copyright infringement, with the defendant arguing that you cannot have copyright in functional designs, i.e. the technical function of the bike design. After a period of litigation in the Belgian courts the matter ultimately ended up with the CJEU. 

The CJEU was asked two questions, which it combined into one; "...whether Articles 2 to 5 of [the InfoSoc] Directive must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result", meaning, can Brampton have copyright in the three-fold design of their bike. 

The court first discussed the requirements for a "work" under EU case law, namely, that it has to be an original subject matter which is the author’s own intellectual creation and an the expression of that creation. This is slightly different when it comes to subject matter that has been dictated by technical considerations, such as the design of a bike. 

In relation to originality, the courts will have to keep in mind that there can be no "work" as such if "...that subject matter cannot be regarded as possessing the originality required for it to constitute a work", which leaves it ineligible for copyright protection. In relation to expression of that 'work' it needs to be identifiable with sufficient precision and objectivity. 

With that said, the Court noted that "...a subject matter satisfying the condition of originality may be eligible for copyright protection, even if its realisation has been dictated by technical considerations, provided that its being so dictated has not prevented the author from reflecting his personality in that subject matter, as an expression of free and creative choices". This would allow for works with functional designs to be protected, provided that the technical considerations included in that design haven't prevented the author from creating it using their own determination as discussed above in relation to originality. 

The Court then moved onto discussing the actual design of the Brampton bike and whether it could be protected by copyright. 

The design of the bike is clearly necessary to obtain a certain technical result, namely that the bicycle may be folded into three positions. Even though there remains the possibility that choice shaped the design of the bike, the Court was unable to conclude that it was indeed a 'work' pursuant to the above Articles, as further evidence would be required. 

The Court further noted that even though the existence of other possible shapes which can achieve the same technical result makes it possible to establish that there is a possibility of choice, this does not in itself show that the design is an original one. In addition, the intention of any alleged infringer is not relevant for the assessment of originality, but courts can indeed consider the existence of a patent over the design (even if expired), but only to the extent that the patent(s) make it possible to reveal what was taken into consideration in choosing the shape of the product concerned.

After all of the above discussions the Court summarized their decision on the matter: "... Articles 2 to 5... must be interpreted as meaning that the copyright protection provided for therein applies to a product whose shape is, at least in part, necessary to obtain a technical result, where that product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality, which it is for the national court to verify, bearing in mind all the relevant aspects of the dispute in the main proceedings". 

The decision opens the door for national courts to consider the application of copyright in relation to functional designs, and will be quite important for companies wishing to protect those designs going forward. The big hurdle will be evidence, at least in this writer's opinion, as it will be difficult to demonstrate clear decision-making and choice by the author simply by showing designs of a bike. It would clearly have to show a trail of decision-making, potentially even deviations from earlier designs, to show that the author has exercised sufficient thought and scrutiny to fulfill the requirements of originality. It will remain to be seen how national courts will apply this going forward, and what evidence will/might be sufficient to establish copyright in functional designs. 

Kit Kat Kontinues - Advocate General Wathelet Dismisses Appeal on Kit Kat Shape Trademark

One would've never imagine a chocolate bar could be litigated over for many years, but the Kit Kat saga has proven that even the most seemingly mundane things can be worth a tremendous monetary investment. After the EU General Court decision last year (discussed more here) you could have imagined the matter has been largely concluded. This was clearly not the case, as Mondelez appealed the decision, which has now reached the desk of Advocate General Wathelet. They issued their opinion only last week, which will give direction to the CJEU who will decide the matter once and for all later this year.

Although discussed extensively on this blog, the case still merits a short introduction. The matter Société des produits Nestlé v Mondelez UK Holdings & Services concerns the design of the Kit Kat chocolate bar, which Mondelez has registered as a trademark (EUTM 2632529). Cadbury, now Mondelez, filed for an application of invalidity regarding the mark sometime after, with the matter being decided by the General Court last year. Nestle appealed the decision (which went against them), ending up heading to the CJEU via the Advocate General.

The case on appeal hinges on the extent of the territory that you need to show distinctive character that is acquired through use of the trade mark under Article 7(3) of the CTM Regulations. In the General Court Nestle failed to show use throughout the EU, not just in a substantial part of it, and therefore the mark was invalidated.

A Kit Kat Kounterfeit

Per the decision in August Storck KG v OHIM, the CJEU set the bar for the acquisition of distinctive character through use as requiring "…evidence… that [the mark] has acquired, through the use which has been made of it, distinctive character in the part of the [EU] in which it did not, ab initio, have such character". Adding to this, the CJEU noted that an argument for acquired distinctiveness could be rejected if there is no evidence of use, as detailed above, in a single Member State. Subsequent cases have shown that partial acquisition of distinctive character within the EU is not enough, as there needs to be 'quantitatively sufficient evidence' of acquired distinctiveness.

Looking at the above, the AG did, however, not shut the door entirely on partial acquisition of distinctiveness. They added that a mark could have acquired distinctiveness in the entire EU if evidence is provided for "…a quantitatively and geographically representative sample" of the EU. This means taking into account the various links between the national markets of Member States, and whether those links negate a lack of evidence for acquired distinctiveness in the bigger picture within Europe. Potentially a more regional approach has to be taken and therefore acquired distinctiveness could be extrapolated for any missing countries, i.e. produce evidence for the Nordics and other such 'collectives' of countries if evidence for all Member States is missing for others within those 'collectives'.

Having considered the missing evidence discussed in the General Court's decision, the AG concluded that Nestle's appeal should be dismissed.

While we are still awaiting the CJEU's decision on this matter, things don't look great for Nestle, or 3D marks in general. It will be difficult for many proprietors of such marks to show acquired distinctiveness within the EU, or most of it. It remains to be seen whether the CJEU will go in a different direction, but it seems very unlikely considering the General Court's decision and now the AG's opinion.

Only a Technicality - CJEU Decides on What Amounts to a 'Technical Function' in Registered Designs

The protection of designs is complicated, no less because the design of a particular product can often be tied to the end function it is meant to achieve. A functional element of a design might not attract protection as a design, since the regime only protects (to put very simply) aspects of designs that are of more aesthetic value. What amounts to a feature that won't be protected is difficult to decide, as many aesthetic features can often achieve a technical result as well. This prompts the question, when is a feature like that protectable or not? The CJEU took on this question on a case decided only a few weeks ago.

The case of DOCERAM GmbH v CeramTec GmbH concerned the manufacture and sale of technical ceramic components by DOCERAM, in particular, weld centring pins for the automotive and textile industries. Many of these designs are registered as Community designs (RCD 242730). CeramTec also manufactures and sells similar centring pins in the same variants as DOCERAM's registrations. DOCERAM subsequently took CeramTec to court for design infringement, with the matter ultimately ending on the desk of the CJEU.

The referring court asked two questions, which related to the factors in determining whether a design is one that is solely dictated by its technical function, and therefore not registrable under Article 8(1) of the Community Design Regulation.

The first question, as set out by the Court, asked whether "…Article 8(1)… must be interpreted as meaning that, in order to ascertain whether the features of appearance of a product are solely dictated by its function, the existence of alternative designs is decisive, or whether it must be established that function is the only factor which dictated those characteristics".

Having considered the legislation and relevant case law, the Court determined that "…Article 8(1)… excludes protection… for features of appearance of a product where considerations other than the need for that product to fulfil its technical function, in particular those related to the visual aspect, have not played any role in the choice of those features, even if other designs fulfilling the same function exist". In short, even if alternative designs exist, the only relevant consideration is whether the technical function is the only factor which determined the features in question and the applicability of Article 8(1).

With regards to the second question, the referring court asked whether "…Article 8(1)… must be interpreted as meaning that in order to determine whether the relevant features of appearance of a product are exclusively dictated by its technical function, that finding must be based on the perception of the ‘objective observer’".

The Article does not set out any requirements on the perspective of the assessment above, unlike other provisions in the Regulation. That in mind, the objective of the Regulation nonetheless does require national courts to take account of all the objective circumstances relevant to each individual case when determining whether features of a design are covered by the provision.

The Court finally set out that "…in order to determine whether the relevant features of appearance of a product are solely dictated by its technical function… the national court must take account of all the objective circumstances relevant to each individual case. In that regard, there is no need to base those findings on the perception of an ‘objective observer’".

The case sets out clear guidelines on the assessment of features in designs that may or may not be solely dictated by their technical function. Designs are often a pile of uncertainty, being very difficult to protect (as illustrated well by the Trunki case, more on which here). Having a clearer idea as to how the lines are drawn for protection helps both proprietors and others disputing the registrations.

Problem Fixed - CJEU Decides on IP and the Right to Repair Goods

Tinkering with old gadgets or cars is a beloved pastime for many, and often prolongs the life of the goods you own even beyond their warranty periods. Many manufacturers are making it increasingly difficult to repair items, particularly high-end electronics, and with discussions heating up relating to Apple's slow-down of their devices due to hardware aging, it is conceivable even more important for people to fix their old items. We've discussed IP issues relating to repairing or tinkering with tractors, but there has been very little judicial consideration around it. In that vein, what are the limits of IP and peoples' right to repair their goods? The CJEU took this question on late last year.

The case of Acacia Srl v Pneusgarda Srl and Audi AG concerned the sale of alloy rims for cars, for which Audi owns several registered community designs (e.g. RCD 132899 and 207667). Acacia manufactured rims under the brand WSP Italy, sold on their website, which are identical to the rims registered by Audi. The rims made by Acacia were clearly stamped as not made by the OEM, and were sold exclusively as replacement parts for the purpose of making repairs. Audi took Acacia to court over design infringement, with the matter ending up with the CJEU. Porsche had a similar matter joined with the Audi case against Acacia.

The Court joined the questions from both matters, which, essentially inquired about EU law in relation to repairs and design infringement.

The first combined question dealt by the Court asked whether "…Article 110(1) of Regulation No 6/2002 must be interpreted as meaning that the ‘repair’ clause in it makes the exclusion of protection as a Community design for a design which constitutes a component part of a complex product which is used for the purpose of the repair of that complex product so as to restore its original appearance subject to the condition that the protected design is dependent upon the appearance of the complex product".

The restoration of a vehicle's appearance is important, especially in a crash situation, and without the exception this wouldn't be possible. The Article 110 exception allows for this, and the CJEU had to therefore consider the provision's remit.

The CJEU rejected the condition that the exception only operates where the design is dependent upon the appearance of the complex product due to the absence of this phraseology in the legislation. The provision also protects against captive markets, where only the design holder can produce certain spare parts, allowing for consumers to purchase less expensive alternatives and not be tied to one particular provider. The Court therefore set out that "…Article 110(1)… must be interpreted as meaning that the ‘repair’ clause in it does not make the exclusion of protection as a Community design for a design which constitutes a component part of a complex product which is used for the purpose of the repair of that complex product so as to restore its original appearance subject to the condition that the protected design is dependent upon the appearance of the complex product".

The Court then moved onto the second combined question, which asked "…to which conditions the ‘repair’ clause in Article 110(1)… subjects the exclusion of protection as a Community design for a design which constitutes a component part of a complex product which is used for the purpose of the repair of a complex product so as to restore its original appearance".

The CJEU quickly set out that the provision is subject to three conditions: (i) the existence of a Community design; (ii) the presence of a ‘component part of a complex product’; and (iii) to the need for ‘[use] within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance’.

It's not just sellers who struggle with auto repairs

In specifying these conditions, the Court first observed that the second condition (as rights exist in the wheel rims) covers "…multiple components, intended to be assembled into a complex industrial or handicraft item, which can be replaced permitting disassembly and re-assembly of such an item, without which the complex product could not be subject to normal use", and that a wheel rim would indeed fall under this definition.

With regards to the third condition, the CJEU saw that 'use' of that product for the purpose of repairing that product includes making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes. This use, however, has to be with the aim to 'permitting the repair of the product', which encompasses the situation where, if that part were faulty or missing, this would prevent the product's normal use.

In short, the 'use' of the product, set out above, needs to be necessary for the repairing of that product if it has become defective through damage or lack of original parts. Purely aesthetic repairs wouldn't be covered by the provision, as it's only for convenience. Even still, the repairing would have to be done ‘so as to restore its original appearance’.

What this amounts to is that "…the component part must be used so as to restore the complex product to the appearance it had when it was placed on the market". The CJEU also added that the clause only applies to component parts of a complex product that are visually identical to the original parts.

In short, the CJEU saw that "…the ‘repair’ clause in it makes the exclusion of protection as a [RCD] for a design which constitutes a component part of a complex product which is used for the purpose of the repair of that complex product so as to restore its original appearance subject to the condition that the replacement part must have an identical visual appearance to that of the part which was originally incorporated into the complex product when it was placed on the market".

The Court then moved onto the final combined question, which asked "…whether Article 110(1)... must be interpreted as meaning that, in order to rely on the ‘repair’ clause in that provision, the manufacturer or seller of a component part of a complex product must ensure and, in that case, how it must ensure, that the component part can be purchased exclusively for repair purposes".

As detailed above, the repair clause is subject to a number of conditions, and in particular ones that emphasises a genuine need for repairs. This imposes compliance on part of the downstream user, not just the seller. This means that the seller needs to inform the buyer that "…the component part concerned incorporates a design of which they are not the holder and, on the other, that the part is intended exclusively to be used for the purpose of the repair of the complex product so as to restore its original appearance". Similarly, this needs to be ensured and enforced through contractual means with the buyer. Finally, "…the manufacturer or seller must refrain from selling such a component part where they know or, in the light of all the relevant circumstances, ought reasonably to know that the part in question will not be used in accordance with the conditions laid down in Article 110(1)".

In summary, the CJEU stated that "…Article 110(1)… must be interpreted as meaning that, in order to rely on the ‘repair’ clause contained in that provision, the manufacturer or seller of a component part of a complex product are under a duty of diligence as regards compliance by downstream users with the conditions laid down in that provision".

The case is a very important one, and clarifies the provisions surrounding the repairing of vehicles or goods owned by an individual and in particular the sale of those goods for repair. The onus is clearly on the seller, which makes sense, as they are the ones likely to benefit from the sales of the goods for repair, rather than the rightsholder.

Source: D Young

Citation Needed - CJEU Decides on Use of Registered Designs as Citations for the Sale of Goods Online

Marketing your goods online can be very tricky, especially if you are in the business of making proprietary goods or accessories relating to well-known brands or goods. Using the name, image or design of the goods your items relate to is almost necessary to communicate the relationship of the goods to the consumer, but without proper authorisation this can be a thorny issue. The law does allow for the use of registered designs for some purposes, but could the use of a design for the sale of goods be allowed under EU law? The CJEU took on this question in late September, giving some clarity to those wishing to do so.

The case of Nintendo Co. Ltd v BigBen Interactive GmbH dealt with the manufacture sale of remote controls and other accessories for the Nintendo Wii gaming console by BigBen, selling them online to consumers in France, Belgium and Luxembourg, and to its German subsidiary. The German entity sold the goods, manufactured by BigBen in France, to consumers in Austria and Germany. The German entity in itself does not hold any stock, but orders them when needed from the French entity. Both companies used images of the Wii and its official accessories (protected by registered designs, e.g. here and here) in the sale of these goods. Nintendo took both entities to court in Germany for design infringement.

The CJEU faced three questions in the matter, specifically dealing with whether the court of a Member State has jurisdiction over the matter where the infringement happened elsewhere; is this use allowed as citation under EU law; and how the place of infringement would be determined.

The first question, as summarized by the court, asked in essence whether the Community Designs Regulation (along with Article 6(1) of the Jurisdiction Regulation) gives jurisdiction to a court to impose an injunction against a party who is supplied by another party in another Member State for infringement of a registered design.


The CJEU first dealt with the issue of jurisdiction. Article 82 of the Community Designs Regulation sets out that "…claims fall primarily within the international jurisdiction of the courts of the Member State in which the defendant is domiciled or, if he is not domiciled in any of the Member States, in any Member State in which he has an establishment". This can also include the Member State where the act of infringement has been committed or is threatened. For Article 6 of the Jurisdiction Regulation to apply there has to be a connection between various defendants in different jurisdictions "…that it is expedient to determine those actions together in order to avoid the risk of irreconcilable judgments resulting from separate proceedings". The court also highlighted that, under case law, two companies in the same group acting in an identical or similar manner would constitute the same situation of fact.

According to the CJEU, "…the territorial jurisdiction of a Community design court seised of an action for infringement within the meaning of Article 81(a)… extends throughout the European Union also in respect of the defendant who is not domiciled in the Member State of the forum". This means that there would be no jurisdictional issue with regards to pursuing a company in a different Member State through a national court within the EU.

The court then moved onto the second issue of use of the design as a citation. The question posed to the court, in short, asked whether Article 20 of the Community Designs Regulation meant that the use of a registered design by a third party, without authorisation, to demonstrate goods being sold online would be use as a citation and therefore allowed.

Burt definitely needed a citation (Source: xkcd)

The CJEU first looked at the meaning of 'citation'. They emphasised the designs' use for an illustrative purpose, in that "…a third party that lawfully sells goods intended to be used with specific goods corresponding to Community designs and reproduces the latter in order to explain or demonstrate the joint use of the goods it sells and a product corresponding to a protected design carries out an act of reproduction for the purpose of making ‘citations'". The use, however, would be assessed using three cumulative conditions: "…the compatibility of the acts of reproduction with fair trade practice, the absence of undue prejudice to the normal exploitation of the design on account of such acts and mention of the source".

The first condition look at whether the reproduction of the design falls within 'honest practices in industrial or commercial matters', i.e. should the design be reproduced in such a way as to create an impression of a commercial connection between the two entities, it would not be made for the purpose of citation. The second condition concerns the reproduction of the design that negatively affects the economic interest or their normal exploitation by the rightsholder. The third condition is simply attribution, so that a reasonable and observant consumer will know the design's commercial origin.

The court concluded that in the matter at hand the reproduction would be for the purpose of citation if it fulfils all of the above conditions.

Finally, the court addressed the last question of where the infringement would be committed between the two group companies, as the group companies reside and have committed infringements in several EU Member States. The CJEU, having considered the legislative framework, considered that "…the ‘country in which the act of infringement was committed’ within the meaning of Article 8(2) of that regulation must be interpreted as meaning that it refers to the country where the event giving rise to the damage occurred, namely the country on whose territory the act of infringement was committed". This hones down the legislation as applying to where the act was committed, rather than the damage occurring (i.e. infringement in Germany damaging a country in France).

As acknowledged by the court, IP does leave this interpretation as difficult, since the act could happen in a variety of locations in one time. In the light of this, the CJEU set out that "… where the same defendant is accused of various acts of infringement falling under the concept of ‘use’ within the meaning of Article 19(1) of [the Community Designs Regulation] in various Member States, the correct approach for identifying the event giving rise to the damage is not to refer to each alleged act of infringement, but to make an overall assessment of that defendant’s conduct in order to determine the place where the initial act of infringement at the origin of that conduct was committed or threatened". In the situation in the current matter, the place where the goods were put on sale online would be where the infringement took place.

 The CJEU's decision is a very interesting one, and while they made no assessment on the particular infringements in the case, it still gives national courts the tools to do so themselves in a more flexible manner rather than just designating each infringement in its respective country. This will make the assessment of infringement, and similarly of citation, much clearer for the future.

Throwing a Flag - The Use of an Amazon Listing can be TM Infringement and Passing Off

With more sales of goods being conducted online, it is often very difficult to distinguish your goods from a cascade of others, particularly on third-party selling platforms like Amazon. How these platforms often work is either by listing individual sales in isolation, therefore potentially swarming the website with similar, isolated sales of the same goods, or by lumping them together in one entry, promoting the best price for the consumer from all of the sellers on that listing (how Amazon works, for example). But with this mixing of sellers on a given listing could there be trademark infringement or passing off in these instances over the original goods being sold? A recent Intellectual Property Enterprise Court decision looked at this very question.

The case of Jadebay Ltd & Ors v Clarke-Coles Ltd (t/a Feel Good UK) dealt with the sale of aluminium flagpoles on Amazon. Jadebay sold the flagpoles under the trademark "Design Elements" (UKTM 2653159) on the platform through a licensor, which were listed under the seller "DesignElements" on the website. The defendant, Feel Good, listed their equivalent flagpole, with a lower price, under the sale Amazon listing, ultimately becoming the default seller of the goods on the listing. The claimants took Feel Good to court, alleging both trademark infringement and passing off due to Feel Good's use of the listing for inferior, non-identical goods, also excluding the trademark as above.

Judge Clarke, the presiding IPEC judge for the case, first considered the matter of trademark infringement. Under section 10(2) of the Trade Marks Act 1994, a trademark is infringed if, in short, it is used in the course of trade and there is a likelihood of confusion on part of the public, including association with the registered trademark.

The use of a sign in the course of trade includes "…offering or exposing goods for sale, putting them on the market or stocking them for those purposes under the sign", or simply used "…in the context of commercial activity with a view to economic advantage and not as a private matter". A variety of principles are applied when considering a likelihood of confusion, set out in more detail in the decision of Comic Enterprises Ltd v Twentieth Century Fox Film Corporation (discussed more here).

An alternate claim under section 10(3) of the TMA sets out that a trademark is infringed when it a person "…uses in the course of trade, in relation to goods or services, a sign which is identical with or similar to the trade mark, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark".

Finally, the claim of passing off concerns the elements set out in Reckitt & Colman Product v Borden (discussed more here), which look at goodwill or reputation, misrepresentation leading to deception or a likelihood of deception, and damage resulting from the misrepresentation.

Judge Clarke then turned to analysing the issues at hand, starting with trademark infringement.

In her view, the average consumer would be an average flagpole-buying consumer, purchasing it for their home or commercial setting. The purchase would be driven by considerations of utility, quality and price rather than aesthetics or design, and that his purchase will be a considered one, rather than a whimsical or impulsive one, leading to an inclination of looking at the details and specifications of the listing used.

In terms of the use of the sign that was complained about, i.e. the name "Design Elements", the judge saw that it had been used by the Defendant. I her view "…[w]hether the sign complained of appears in the listing title itself, or in the descriptor 'by DesignElements', it still acts to indicate the origin of the goods for sale on the listing". The descriptor isn't merely a shop name, but an indicator of manufacturing origin, and a sign of their quality to the consumer.

Throwing your flags away isn't a viable option to avoid infringement

Looking at the actual similarities of the signed complained of and the registered trademark above, the judged had to consider their visual, aural and conceptual similarities (does it sound the same, look the same and cover the same or similar good/services). Their aural and conceptual similarities were not disputed by the defendant, so the judged quickly determined them to be identical. As to their visual similarity, the judge concluded that, as the trademark and the sign complained of share the same words in the same order, and while they are connected as one word, they are nonetheless separated by the capitalization of both words. Lastly, stylistically there were few differences between the two. Judge Clark therefore decided that the sign and the trademark had a high degree of similarity.

The judge then moved onto the next components in infringement. She swiftly determined that the sign is clearly used in the course of trade, and that it was used in relation to similar goods (i.e. the sale of flagpoles).

The next step is to establish a likelihood of confusion on the part of the average consumer. In her view, after a review of all of the circumstances, there was a high probability of a likelihood of confusion. This included factors such as the similarity of the sign and the trademark, careful consideration by the average purchasing consumer and the likelihood that the average consumer would think the product came from Design Elements. While she considered the lack of evidence of actual confusion, this didn't change the ultimate determination.

The judge concluded that there was therefore trademark infringement under section 10(2).

Judge Clark moved onto infringement under section 10(3). In looking at the trademark's reputation in the UK, the first limb of the test under the subsection, the judge saw that reputation in relation to the trademark only existed with the people who had bought a flagpole bearing the trademark. Without proper evidence as to the relevant public judge Clark couldn't establish that the trademark would have a reputation amongst a significant part of the relevant public. Infringement under section 10(3) therefore failed.

Finally, the judge turned to the claim of passing off, and determined that the defendant had passed off their goods as the claimant's.

It was quickly established that the claimant's business did have goodwill in the UK (albeit at a very low threshold on non-triviality). According to the judge, the sale of many flagpoles of a number of years, including garnering positive reviews, clearly demonstrated goodwill. The judge also agreed that a substantial number of members of the public would be misled by the defendant's listing, especially once the consumer would dive deeper into the details of the listing and the flagpoles themselves. Finally, the judge saw that almost every sale the defendant made would have been a lost sale to the claimant, and they had suffered damage as a result.

The case is quite the curious one, since it has, in effect, created a new type of trademark offense. Should someone use a pre-existing Amazon listing, they could potentially infringe on any associated trademarks, and would have to be careful to sell goods under that particular brand. The decision does set the bar quite high, and anyone selling authentic goods for a lower price would be safe, but anyone trying to ride the coat tails of a more well-known brand, selling inferior or different branded goods, might just fall foul of the precedent set.

Get a Grip - CJEU Decides on 'Hybrid' EUTMs With Technical and Decorative Features

The registration of trademarks can be quite finicky, especially when it comes to the nuance of graphical representation and what it covers (the Trunki case being a poignant reminder in the UK of the same in registered designs). One has to distinguish between the decorative and functional or technical features of the registration, without which your mark could be under threat for invalidity. After a lengthy battle in the EUIPO, spanning nearly 20 years, a case dealing with the same subject matter has faced its ultimate decision in the CJEU.

The case of Yoshida Metal Industry Co. Ltd v EUIPO dealt with the registration of a trademarks for the design of a knife handle by Yoshida (marks 1371244 and 1372580), which comprised of a metal handle with black dots in the handle (signifying circular indents in the metal). The marks were ultimately registered by the EUIPO; however, the decision was challenged by Pi-Design AG and Bodum. Having lost at the Board of Appeal and the General Court, Yoshida finally appealed to the CJEU.

Yoshida's arguments hinged only on the infringement of Articles 7(1)(e)(ii) and 51(3) of the Community Trade Mark Regulation.

Under Article 7(1)(e)(ii), a trademark cannot be registered if "signs which consist exclusively of… the shape of goods which is necessary to obtain a technical result". Case law, particularly in the LEGO decision, has noted that a shape cannot be rejected solely on the ground that it has functional characteristics. The dots used in the handles were, according to Yoshida, a hybrid mark, having both aesthetic and functional characteristics, therefore remaining registrable under Article 7.

The CJEU considered that, in adopting the wording used in Article 7 above, the exclusion of marks solely on their technical result or nature would be contrary to the law's intention, and clearly intends for marks that only incorporate the technical result and no aesthetic component to be unregistrable. Similarly, the introduction of one or more minor arbitrary elements in a sign, all of whose essential characteristics are dictated by the technical solution to which that sign gives effect, won't alter the conclusion that the sign would only achieve a technical result. Even so, a mark can still be registered if the sign incorporates major non-technical elements that play an important role in the shape of the sign.

Some sharp wit

The Court determined that "...the fact that the sign concerned has ornamental and fanciful aspects does not preclude the ground for refusal under Article 7(1)(e)(ii)... from applying, in so far as those aspects do not play an important role in the shape of goods at issue, all the essential characteristics of which must perform a technical function". In short, even if the sign has ornamental aspects along with the major technical features, it can still be rejected. This follows the decision by the General Court, who saw that Article 7(1)(e)(ii) applies where all the essential characteristics of the sign perform a technical function. The CJEU therefore rejected Yoshida's appeal under Article 7.

The second argument on appeal was under Article 51(3), which excludes particular goods and services applied for only if the invalidity grounds apply to those goods and/or services exclusively. Yoshida argued that the General Court had failed to consider Article 7 as above for all of the goods and services in question (particularly in relation to those that lacked handles, i.e. whetstones, and kitchen utensils and containers).

The Court swiftly despatched this argument, as Yoshida had neglected to bring the argument forward earlier during the proceedings, particularly at the stage when the consideration over the relevant goods were made. They had only limited themselves to the above argument under Article 7, ignoring Article 51 entirely. The CJEU therefore rejected the second argument simply for a lack of raising it at the General Court, barring them from arguing it at the CJEU.

The case brought up a very interesting argument, albeit a flawed one when looking at the wording of the Regulation. The CJEU's decision make sense, since, if Yoshida's argument were allowed, the introduction of any non-technical features to a sign could then avoid the limitation of registering those types of features. As long as the important parts of the sign registered for are the ones that create the technical feature, the mark should not be registered. This writer is sure that both Yoshida and Bodum are happy the case is over, even if the decision didn't swing their way.

Gimme a C! - Cheerleader Outfit Designs Protected by Copyright, Says US Supreme Court

Having discussed the Varsity Brands case in the US Court of Appeals nearly 6 months ago, this writer was quite excited to hear the Supreme Court's decision in the same case. While cheerleader outfits and their designs touch on very few people's lives, the matter still will shed light on very seldom discussed aspects of copyright; something that many IP practitioners and academics will appreciate quite a bit. The Supreme Court handed down its decision only last week.

Without discussing the facts in too much detail, the case of Star Athletica LLC v Varsity Brands Inc. dealt with two companies that design and manufacture cheerleading outfits, which often incorporate fanciful designs and patterns to distinguish the cheerleaders from each other (and to bring in their respective schools' colors). Varsity had registered over 200 such designs, many incorporating "...combinations, positionings, and arrangements of elements that include chevrons, lines, curves, stripes, angles, diagonals, inverted [chevrons], coloring, and shapes". The designs at issue are registrations 299A, 299B, 074, 078, and 0815 (viewable at the Appendix to the judgment). Varsity took Star Athletica to court over copyright infringement, specifically relating to the designs above, with the matter ultimately ending in the Supreme Court.

The crux of the matter lies in whether the designs used by Varsity are protected by copyright under 17 USC 102(5) as pictorial, graphic of sculptural works, and whether they would be classed as a 'useful article' under the provision, meaning an article "…having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information", therefore not being protected by copyright. Useful articles would only be protected by copyright if they incorporate "...pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article". This would mean that the design used, and wished to be protected, needs to stand out on its own from the article its used on, otherwise it will be deemed as merely functional and won't be protected.

Justice Thomas, handing down the majority's opinion, then moved onto whether the designs actually can be identified separately from, and can exist independently, from the utilitarian aspects of the uniforms.

The Court set out the ordinary interpretation of the statute's text, in that for the design to be identified separately from the useful article, the decision-maker only needs to "...be able to look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities". This is pretty much as simple as it gets, as the identification of a design in the article, so long as it doesn't blend into the article or isn't a part of its functionality, is most likely quite straightforward in many instances. The second part, the independent-existence of the design, is a determination of "...that the separately identified feature has the capacity to exist apart from the utilitarian aspects of the article". The design therefore has to retain its design value, i.e. remain a work capable of being protected under section 102(5); however, it still cannot be a useful article in itself even if separated from the original article it was applied to, nor will it give rise to rights in the useful article it was applied to even if it is protectable outside of that article.

In summary, "...a feature of the design of a useful article is eligible for copyright if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium". What remains curious is the subjectivity involved in the test, where the decision-maker has to only identify the design and imagine is outside of the useful article for it to potentially be protected.

Some don't need fancy patterns to distinguish themselves in cheerleading

In applying the test to the designs in question, Justice Thomas determined that the decorations were features that had pictorial, graphic or sculptural qualities. They also, if removed from the outfits themselves, were separate from the useful article, possibly being usable in another medium, for example on a canvas as a two-dimensional work of art. The removal of the designs would not replicate the uniforms, but merely the designs used in them, therefore not making them a useful article in themselves. While the designs do include the outline of the uniform, Justice Thomas rejected the argument that this would reproduce the useful article as whole, as the artistic value in the work still remains, even recreated with the outline of where it would be applied to. This would not, as discussed above, create rights in the useful article or its construction, but merely the design.

Star Athletica put forth a wealth of arguments to contradict the above determination. Among them Justice Thomas rejected the assertion that, for protection to be afforded for the design, both the design and the useful article have to exist as such when separated (i.e. as a protectable design and a useful article in themselves), where the extracted design would solely be an artistic feature, as the focus is on the design rather than the article it was taken from and the end-result after separation for it is irrelevant. Applied art would be protected if separated, even if it fulfilled some useful aspect in the article.

The Supreme Court therefore held that the designs in the cheerleader outfits are protected by copyright, and rejected the appeal.

While the majority issued its, arguably at least, straightforward decision, there was some dissent from Justice Breyer and Justice Kennedy. The Justices, in their joint dissent, argued that the design and the dress (as depicted in the registrations) were not separable, and would merely reproduce the dress in the new 'separated' design. Due to this lack of both physical and conceptual separation, the design would not be protected under copyright. The dissent's viewpoint clearly stems from the depiction of the designs, but this writer would argue that their perspective would entail a great deal of splitting hairs. While it is clear one has to treat the design as it is presented in the registration, it is still possible to apply common sense when looking at the design from a subjective point of view, which affords this ability to both identify and imagine the design separate from the outline of a dress (or the three-dimensional depiction of the same).

The case if a very interesting one, and has finally set a clear test for the consideration of useful articles and designs in the same. While the subjectivity of the test can, and most likely will, ruffle some feathers, it seems to be the simplest and most logical approach to assessing the designs, but does leave the outcomes of cases in the hands of the respective judges and their subjective viewpoints. In its simplicity lies some level of concern, as it will undoubtedly impact the "knock-off" business, but rightsholders would argue this is the right, and desired outcome.

A Big Bite of the Apple - Supreme Court Decides the Fate of Design Patents

The two titans of technology, Apple and Samsung, have fought long and hard over many aspects of intellectual property law, especially ones relating to the design of the (now ancient, at least in smartphone terms) iPhone. The two companies have fought legal battles all over the world since 2011, with varying results for both parties. After a monstrous $1.05 billion award of damages to Apple in earlier cases by a jury, the matter ended up with the Supreme Court, who were destined to look at an aspect of design patents often overlooked by the judiciary, even if it was merely from a damages perspective. The Supreme Court handed down its judgment in early December.

The case of Samsung Electronics Co. v Apple Inc., dealt with design patents owned by Apple on aspects of the iPhone, in particular a black rectangular design (D618,677), the same with a bezel on a surrounding rim (D593,087), and a colourful grid of 16 icons on a black screen (D604,305). Samsung employed similar design aspects in its various smartphones (including the Galaxy S line), and Apple took them to court for infringement in the aforementioned design patents. What the Supreme Court were tasked to determine was the infringement, and subsequent award for damages for infringement, under section 289 of the US Patent Act.

The above section provides a remedy for damages when "[a] person who manufactures or sells “any article of manufacture to which [a patented] design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit". While this is more straightforward in instances of whole infringement of a simple, single article, it is more difficult, as admitted by Justice Sotomayor (handing down the Court's unanimous judgment), in cases with complex, multi-component items and subsequent profits using the infringing elements.

Complexity comes with a need for introspection

What remains key is the liability for the infringing articles where the designs have been applied, which has been traditionally set at "…the extent of his total profit, but not less than $250". This then means you have to initially identify the 'article of manufacture' to which the infringed design has been applied, and then calculate the infringer's total profit made on that article of manufacture.  The Court therefore had to decide "…whether, in the case of a multicomponent product, the relevant “article of manufacture” must always be the end product sold to the consumer or whether it can also be a component of that product". This would either enable the patent holder to claim all profits made by selling the Samsung smartphones (i.e. the whole phone), or restrict the damages that can be claimed (i.e. only allowing damages for the particular designs used, and not the whole phone) by the rightsholder.

The Supreme Court left quite a bit unanswered in relation to the question of when an article of manufacture would be the whole product, or simply a component thereof, which, at least to this writer's mind, is a huge part of this matter and many others involving complex technology. Arguably, as the decision will be sent to the Federal Court for a rethink, the lower rungs will have to fill this space; however, there is a chance that an agreement will not be reached (yet again) by the lower courts, and the Supreme Court will have to address this matter in the future.

Justice Sotomayor saw that, after a simple reading of the term 'article of manufacture' that it would encompass both an individual component of a product, or the product as a whole. Design patents can be acquired for both, and while a component has to be embodied in an article, the designs can themselves only cover those components.p

The Supreme Court ended up saying very little in their judgment, and the future of design patents, especially in the smart device space, will remain very unclear. Whether the Federal Court comes up with a good test for the above remains to be seen, but this writer for one thinks the Supreme Court should've added more meat to their decision. Although they did highlight some issues with the parties' briefs, one would have concieved that some more guidance was to be given. Either way, the decision is important, and sets the scene for Apple and Samsung to compete more for the future of their devices and their designs.

Source: IPKat

Before the Supreme Court - Copyright Protection of the Design of Uniforms in the US Court of Appeal

In the light of the pending US Supreme Court decision regarding copyright protection in the design of cheerleaders' uniforms, this writer thought it would be good to set the scene for the decision by discussing the decision handed down by the Court of Appeal. The judiciary rarely takes on design copyright cases, as often their value is negligible or protection is not even sought (especially in the US where copyright registration is an important part of IP).

The case of Varsity Brands Inc. v Star Athletica LLC dealt with the design of a cheerleader uniform, comprising of several different designs, incorporating various colors that divide the uniform into specific shapes and segments (visible here). The designs themselves were of non-functional nature, and were only intended to be of aesthetic value. The original works were produced and sold by Varsity Brands, who noticed that a competitor, Star Athletica, also sold similar outfits in competition with Varsity's uniforms, and took the company to court for copyright infringement and a number of other civil claims in competition.

The Court of Appeal first took on the issue of whether Star Athletica has infringed Varsity Brands' copyright in the uniforms; the designs for which have been successfully registered at the US Copyright Office. After lengthy discussions, the Court did agree that successful registration at the Copyright Office could offer prima facie, although rebuttable, protection and acceptance of copyright in a given work. Star Athletica did, however, argue that the designs were in themselves useful article, and thus not protectable by copyright. The designs therefore would need to be "…identified separately from, and are capable of existing independently of, the utilitarian aspects of the article" for copyright protection to be afforded.

What amounts to a useful article is an article that has a utilitarian function that is not there merely to convey the appearance of the article (i.e. for aesthetic reasons). Following the above, the Court established that this would be determined by a two-prong test: "…first, whether the design for which the author seeks copyright protection is a 'design of a useful article,' and if so, second, whether the design of the useful article 'incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the [useful] article'".

Alan's Halloween outfit was totally non-functional

The Court then turned to the first prong of the test on separability, meaning that the article would not be a useful one, but only conveys the items appearance.  As illustrated by the Court's discussion, both appellate and first instance courts have struggled to formulate a concise and uniform approach in determining what would amount to a 'useful article'. The Court moved on to applying what they considered to be the correct approach, which would be applying a number of questions based on the Copyright Act itself. These questions are effectively to ask whether the design is "…a pictorial, graphic, or sculptural work", and if so, whether the design is a useful article within the definition above. The Court would then have to ask "…[w]hat are the utilitarian aspects of the useful article", which can include several aspects (for example, aesthetic, functional and non-functional elements).

Once the Court has identified the relevant utilitarian aspects of the design, it would then finally move onto assessing whether "…the viewer of the design [can] identify pictorial, graphic, or sculptural features separately from... the utilitarian aspects of the useful article", and if these features could exist separately from the design itself (i.e. are removable from the design and don't impact its functionality). If either one, or both, of the final questions fails, the design is not protected by copyright.

The Court subsequently moved onto its consideration of the copyright protection for Varsity Brands' designs. They quickly answered the first two questions in the affirmative, expanding on the second question that the designs, represented in sketches of the uniforms, have an "intrinsic utilitarian function that is not merely to portray the appearance of [clothing] or to convey information". They then set out the particular utilitarian aspects of the designs, which were to "cover the body, wick away moisture, and withstand the rigors of athletic movements". The Court rejected Star Athletica's assertion that the uniforms, through a decorative function, would not be copyrightable, as, rightfully so, this would cause artworks and other similar works to not be protected by copyright by virtue of their decorative function

Finally, the Court sought to answer the final two questions. In determining the separability of the pictorial, graphic or sculptural features (particularly the arrangement of stripes, chevrons, zigzags, and color-blocking), the Court saw that they could indeed be separated, as they do not enhance the uniform's functionality, and the uniforms remain fully identifiable even in the absence of this stylisation due to its distinctive shape. Additionally, purchasers would be able to distinguish each style from each other, and choose accordingly, making the designs separate and individual and therefore protectable. Even so, would they still exist independently of the utilitarian aspects of the uniforms, even if separable? The Court said yes, as the features could be incorporated into a number of garment styles, even if they are not meant for cheerleaders (meaning the designs are transferable), and do not affect the uniform's functionality for those purposes even if used or not. Following the answers to the questions the Court ultimately determined that the designs were copyrightable.

The Court distinguished this from the design of a dress, which, through its shape rather than a mere graphical addition adorning its surface, as its shape, cut and other features are "…inextricably connected with the utilitarian aspects of clothing" and thus can't be identified separately. This illustrates the difference in protectability for fabric designs and dress designs.

As is clear the US courts desperately need a unifying precedent to determine what the correct test is in relation to useful articles and the extent of copyright protection thereof. The Supreme Court's decision is still forthcoming, and this writer will be curious to see whether they follow the Court of Appeal's test, or formulate a different one entirely.

A Piece of Humble Pie - Design of Apple Pie Not Registrable, Says US Court of Appeals

What is more enjoyable than a case involving food and an intellectual property law? This writer for one will freely admit his love of both, and any case that presents a scenario mixing the two is a delight. Many recent cases have touched on the design of various food items, including the recent Kit Kat litigation in the UK (discussed more here) and in the CJEU (discussed more here), and as manufacturers and makers of edible goods compete for marketshare, the shape of these items can become quite valuable and important. One still has to distinguish this from recipes (discussed more here), and while they are much less likely to be protectable, shapes are a different matter altogether. With that said, could you protect the shape of a dish, specifically a pie? The Court of Appeals in the US aimed to answer this question only late last month.

The case of Sweet Sweet Desserts, Inc. v Chudleigh's Ltd dealt with a design of a single-serving apple pie, meaning a whole pie meant for one person in a neat, convenient package. This particular food item was the creation of Scott Chudleigh, the owner of an apple farm and bakery in Ontario, Canada. It consisted of a ball-like shape, with upward facing, spiralling petals that overlap each other, encasing the apple pie filling within. He subsequently filed for a trademark in 2005 (US trademark 2262208, which includes an illustration of the design). The pies where distributed to various companies for resale, including a discussion with Applebee's in the US for the sale of the item in their restaurants, but the negotiations fell through. In 2010 Applebee's approached Sweet Sweet Desserts to create a single-serving apple pie, much akin to the idea conjured by Mr Chudleigh, who developed an "apple pocket" with a pie-like bottom and an overlapping spiral top design, leaving a gap in the top (subjectively quite similar to Chudleigh's apple pie design).  After launch Mr Chudleigh noticed, through online advertising, the similarities of the two designs, and took Sweet Sweet Desserts to court over trademark and trade dress infringement.

Little Jimmy's "floor pie" was received with less enthusiasm

The first issue dealt with by Justice Shwartz was whether Chudleigh's design was merely functional, and thus not registrable as a trademark. 15 USC section 1125(a) prohibits the use of any marks that would deceive a consumer as to the origin of goods or services, potentially including the aforementioned design, provided the design is not only functional and thus not a designation of such an origin. Justice Shwartz further set out that "...in general terms, a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article". Even if a feature were deemed to not be functional, a court can still find against the owner should the mark put competitors "...at a significant non-reputation-related disadvantage", therefore potentially restricting competition in the field (i.e. if a design or shape of a mark is essential or near-essential to the creation or presentation of certain types of goods).

What the Court found was that the design was indeed functional, as "...the shape of the dough is essential to the purpose of an effective single-serving fruit pie, and affects its cost and quality". Arguably this is correct, since the folding of the dough in order to seal the filling into the pie does just that, and does not, at least for the most part, act as purely decorative, clearly designating an origin for those particular pies. Mr Chudleigh admitted to this fact somewhat, stating that the use of the dough in that particular shape was designed to save on cost and to fill a particular market need for single-serving pies. Additionally, the number of 'petals' in the pies would be predominantly as a functional aspect, giving the best results for holding in the filling and baking, again enforcing a lack of decorative purpose and pure functionality. The Court therefore determined the design to be functional, and revoked Mr Chudleigh's registration.

The final claim dealt with by the court was Sweet Sweet Desserts' claim for tortious interference with their relationship with Applebee's through Mr Chudleigh's assertion of his alleged rights (being very similar to groundless threats in the UK). Justice Shwartz quickly ruled against this claim, determining that Mr Chudleigh's cease-and-desist letter, sent to Applebee's after his discovery of the Sweet Sweet Desserts' apple pie, since the letter was an "...objectively plausible effort to enforce rights" and not a sham to extract a settlement from the parties prior to a full case. Even though he failed in the case at hand, losing his rights in the design, does not take away from his legitimate belief at the time as to the existence of these rights. The Court ultimately allowed the application for summary judgment for both parties.

The case, albeit not ground-breaking in any way, is a curious predicament for the law, especially considering the uncertain world of food-related trademarks and rights. This writer would fully agree with the Court, since the design of the pie was purely functional, and any decorative or indicative purposes were either incidental or minor in the grand scheme of things. It is unclear whether Mr Chudleigh could have succeeded in a claim for passing off in the UK, and this writer sure does have his doubts as to this, but the idea would seem to be a novel one as a hypothetical.

Source: JDSupra

Trunki Aftermath - UKIPO Issues Guidance on Design Applications

Since the Supreme Court's decision in Trunki, which this writer somewhat disagreed with, there has been some uncertainty as to the place of designs in the UK, particularly in relation to the question of lack of ornamentation and the illustration of designs in the applications. In the light of this uncertainty, the UK Intellectual Property Office recently sought to give applicants (and their legal advisers) some degree of clarity in this matter.

The UKIPO's note DPN 1/16 ("Guidance on use of representations when filing Registered Design applications") gives guidance on the filing of various illustrations and their implications; something many legal practitioners desperately needed since the above decision. The note is by no means legally binding, but certainly a very persuasive and important document when considering advise being given to potential applicants of registered designs in the UK.

The crux of this issue is the use of more simple designs that aim to protect shape alone, and more intricate ones, which seek to protect the shape and the look and/or ornamentation of the design. The former of the two offers a much wider scope of protection, whereas the more intricate a design is, arguably the harder it is to succeed in a like-for-like assessment of infringement. Case law has not settled this matter entirely, with line drawings possibly protecting only shape or to also include even minimalist ornamentation (as was seen in Trunki, i.e. a lack of ornamentation could be construed as a feature, weighing against included ornamentation in another product). The note does also acknowledge that a lack of ornamentation can be a feature (as opposed to the obiter comments presented in the Trunki decision, as mentioned above), which was a question that needed to be settled due to a lack of a referral to the CJEU by the Supreme Court.

Frustrations over design applications were palpable

Although not discouraging the use of CAD drawings, such as in Trunki, the UK IPO still highlights that "[w]hen using more detailed CAD-type representations, the visible presence of apparently-incidental features such as, for example, shading and light reflection, may still be taken into account by a Court or Tribunal, and may have the effect of limiting protection to shape ‘and more’. Therefore, when seeking to protect shape-only, applicants are advised to use simple line drawings, without any colour or tonal differences, and without any visible surface features or decoration". One can appreciate that, should an applicant want the broadest protection possible, they should seek to use line drawings rather than CAD imagery. The decision in Procter & Gamble does raise the possibility of this being an issue for any additional features, but this writer would hesitate a guess that most would want to aim for shape-only protection over uncertainty as to any 'incidental' features raised in opposition or infringement proceedings.

The UK IPO further highlights the possible use of disclaimers in filings, where features not intended for protection are excluded in the application, which can be done both in "...graphic form (for example, by circling those elements which are intended for protection, or by blurring-out those elements which are not), or in written form (by drafting and submitting a statement which explicitly states what is or is not intended for protection)". This is important in a CAD image context, where shading and color differences (e.g. a black handle) can be issues down the line, but can be remedied using these limitations.

The Office summarises their guidance at the end of the note, which sets out quite clearly that "Applicants should be careful when selecting representations to ensure that they accurately reflect what the design is intended to protect. Designers should always give thought as to how their design might be exploited by others, and ask themselves whether the features disclosed in their chosen representations accurately convey what they are seeking to protect. In all cases, the protection conferred is likely to be assessed by reference to features disclosed in the representation(s) submitted, rather than by reference to the ‘type’ or ‘format’ of representation used". As one can see, the format of the representation (i.e. whether a CAD image is used or a line drawing) will not be the determining factor limiting the protection of the design, but the features it discloses, including possibly a lack of ornamentation in a more fleshed-out image.

This writer applauds the UK IPO for taking on this important question, and offering applicants more guidance on what to do and how to do it, so as to avoid any unwanted decisions like in Trunki. Designs are an often overlooked feature within IP, not helped by many questions such as this swirling in its vicinity, and proactive addressing of issues such as here should help things progress into a more accepted and used space for applicants.

All Packed Up - UK Supreme Court Rejects Trunki Appeal

Community Registered Designs rarely get their time in the spotlight, but the Supreme Court's decision on the Trunki saga has been one that many intellectual property practitioners have been waiting for. The case is an important one, and sets the tone for the future of 3D registrations as designs, potentially impacting the vast amount of CRDs that use these types of illustrations (mainly through the use of CAD imaging) as their registration. With bated breath this writer awaited the decision, which was published yesterday.

The case of PMS International Group Plc v Magmatic Limited dealt with the Trunki travel case, designed by Robert Law in the late 1990s (at the time called the 'Rodeo'). The case is intended for kids, allowing them to ride the suitcase as well as use it in its traditional sense, incorporating child-friendly animal themes in its finished look. Mr. Law subsequently sought registration for the design, and attained his CRD in 2003 (No. 43427-0001), exclusively licencing the sale and manufacture of the design to Magmatic Limited, his own company. The registration used CAD imaging in the illustration of the Trunki suitcase, using a degree of tonal contrast to showcase the different components of the design (incorporating no decorations apart from the tonal differentiation of the wheels, "horns" and the strap at the top, for example). PMS International, having noted the success of the Trunki case, designed and manufactured its own version called the Kiddee Case, which incorporated a very similar design and child-friendly decorations (although, as the Court noted, with some distinct elements in the decorations and/or colors used). Magmatic then started the proceedings over the infringement of their design, ultimately culminating in the Supreme Court's decision.

What the Supreme Court had to answer was whether the Kiddee Case "...produce[s] on the informed user a different overall impression" from the registered Trunki design, therefore not infringing the design. This includes, to put it plainly, the appearance of the two products, especially in the light of the features shown in the CRD, reflecting the choices of the applicant at the time of filing (restricting or broadening the registration based on the inclusion or exclusion of features and/or ornamentation).

The Court had to deal with the disagreement between Justice Arnold and Lord Justice Kitchin in the first instance and appeal decisions, which dealt with the absence of ornamentation and the effect of the included two-toned coloring in the CRD documentation as detailed above. Lord Neuberger, handing down the unanimous decision of the Court, dealt with the disagreements in three parts, discussing each affecting element individually per the Court of Appeal's decision.

The horned animal appearance

In the judgment of the Court of Appeal, Lord Justice Kitchin considered that Justice Arnold had not fully given weight to the overall impression of the CRD as a 'horned animal', and the distinction between it and the more 'insect' appearance of the Kiddee Case, resulting in the Kiddee Case not infringing the design.

The Supreme Court agreed with Lord Justice Kitchin, and determined that Justice Arnold had not given proper weight to the overall appearance of the two cases. This is clearly a subjective assessment on Lord Neuberger's part, and this writer, although can see his point, will disagree that the judge did not consider the overall impression. Justice Arnold seemed to focus on the suitcase shape of the CRD, rather than its fanciful impression, and both perspectives can be accepted, however, he did not entirely dismiss the impression the design made as an animal or creature with 'horns'.

Decoration of the Kiddee Case

Similarly, Lord Justice Kitchin disagreed with Justice Arnold on the ornamentation of the Kiddee Case, and the lack thereof in the CRD. In his mind, the lack of ornamentation made the overall impression of the CRD seem more like a horned animal, whereas the ornamentation in the Kiddee Case highlighted its distinction from the former as a bug with antennae (or a tiger with ears), forming a wholly different impression on an informed user.

Intricate design or not, Trevor struggled with suitcases

The Supreme Court, again, agreed with Lord Justice Kitchin, confirming that "...the absence of decoration on the CRD reinforced the horned animal impression made by the CRD". Lord Neuberger did, however, consider that the inclusion of some ornamentation could potentially detract from the overall impression given as a horned animal, if sufficiently distinctive or eye-catching. This writer would wholly disagree with Lord Neuberger, and thinks that the lack of ornamentation should focus the inspection on the non-fanciful elements of the infringing product, and should not be included in the consideration of overall impression. What is important in the CRD is the shape or design of the product, and the lack of ornamentation should focus the assessment on just that, the design, rather than additional elements that can (arguably) be irrelevant to the design of an item, rather than its aesthetic appearance.

Lord Neuberger did address the appellant's concerns over the lack of ornamentation and its impact on a CRD (or in subsequent infringement actions), albeit obiter. In his mind the "... absence of decoration can, as a matter of principle, be a feature of a registered design" and that "...if absence of ornamentation is a feature of a registered design, that does not mean that because an item has ornamentation, it cannot, for that reason alone, infringe the registered design in question: it merely means that the fact that an allegedly infringing item has ornamentation is a factor which can be taken into account when deciding whether or not it does infringe that design".

His Lordship focused on the images as CAD images, rather than line drawings, and determined that the lack of ornamentation (although including colors and/or textures) would be treated as potentially distinguishing in the former, but not the latter. The inclusion of ornamentation reinforced the former point on distinction as different creatures, rather than be a full point of contention in its own right. He concluded that (again, obiter) "...the point of principle [is] that absence of ornamentation can be a feature of a Community Registered Design".

The two-toned coloring of the CRD

The final point of contention was Lord Justice Kitchin's disagreement in the use of tonal colors in the CRD, meaning the difference in color (gray and black) in some features, like the wheels or the strap on top. In his mind, the difference is an intention to include contrasting colors, rather than to simply distinguish the components, which implies a desire to use those contrasting colors in the actual registration as defining features. This brought into focus the color scheme of the Kiddee Case, further impacting the above assessment on its overall impression through these ornamental features. Arguably one can agree with the Supreme Court here, as the inclusion of different colors will be taken as that, even if the clear intention to differentiate the parts was not there at the time the application was drafted. Whether this is necessary or useful for the purposes of CAD drawings is beyond this writer's knowledge, but would be an interesting aspect of discussion if this is indeed the case.

Lord Neuberger agreed with Lord Justice Kitchin, and saw that the inclusion of contrasting colors in the registration (with or without the intent to do so) bares a need for the items to be compared in the same vein, i.e. through an assessment of not only shape, but color as well. He concluded that "...the design claimed in this case was for a wheeled suitcase in the shape of a horned animal, but that it was not a claim for the shape alone, but for one with a strap, strips and wheels and spokes in a colour (or possibly colours) which contrasted with that of the remainder of the product". The Supreme Court therefore upheld the decision of the Court of Appeal, and saw that the Kiddee Case did not infringe the CRD and made a different overall impression to the Trunki.

The Supreme Court also rejected a referral to the Court of Justice of the EU, determining that there is no question that requires answering, even in the light of the consideration that a lack of ornamentation could be a feature, which will remain a point of contention.

The case clearly will alter CRD practice, especially when CAD images are quite often used as the basis of the registration (with line drawings clearly being the preferred option from now on). What this writer finds perplexing is the lack of concrete answers, especially in the light of the question of a lack of ornamentation as a feature, and further laments the Supreme Court's rejection of a referral to the CJEU on these points. Lord Neuberger restricted his comments to obiter only, and a lack of referral will leave this question in the shade for the foreseeable future. Nevertheless, the Trunki saga has been an eventful one, and this writer has enjoyed the ride, but is saddened by the Supreme Court's lack of answers and an arguable wrong outcome.

Taking a Break - Kit Kat Decision Issued by ECJ

For all lovers of confectionery goods the name Kit Kat will undoubtedly be a familiar one, even without its highly memorably slogan. The iconic British chocolate bar has been around since the 1930s, and above all else what many will remember is its shape, comprising of five individual chocolate covered wafer 'fingers' connected at the base by a lawyer of chocolate. As such shapes can be protected through intellectual property law, but whether Kit Kat's design is truly distinctive enough to be protected as a trade mark, has been a contested question here in the UK for several years, ultimately being referred to the European Court of Justice by Justice Arnold nearly two years ago in Société Des Produits Nestlé SA v Cadbury UK Ltd [UK High Court of Chancery]. As a result the ECJ handed down its judgment in September this year.

The case of Société Des Produits Nestlé SA v Cadbury UK Ltd [European Court of Justice] dealt with an application for a trademark by Nestle for a three-dimensional representation of the Kit Kat bar, omitting the embossed words "Kit Kat" from the top of the chocolate bar's individual fingers. After the application's publication Cadbury submitted an opposition against its registration, arguing a lack of distinctive character, initially having the mark rejected by the UK Intellectual Property Office, ending in Nestle's appeal to the UK High Court.

Justice Arnold submitted three questions to the ECJ prior to his later judgment applying the Court's consideration.

The ECJ started by answering the second question posed by Justice Arnold. What was asked was seen as "...whether Article 3(1)(e) of Directive 2008/95... must be interpreted as precluding registration as a trade mark of a sign consisting of the shape of goods where that shape contains three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result".

After a very brief consideration of precedent, especially relating to the prevention of any registration monopolizing a technical solution or functional characteristics, the Court determined that "...Article 3(1)(e)... must be interpreted as precluding registration as a trade mark of a sign consisting of the shape of goods where that shape contains three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, provided, however, that at least one of the grounds for refusal of registration set out in that provision is fully applicable to the shape at issue". What remains key is the refusal of registration based on a single ground under Article 3(1)(e), even if, predominantly, the shape does not fall under all of the grounds. Public interest in the strict enforcement of the grounds of refusal was important in the Court's view, as a contrary position would allow for the monopolization of the very subject matter the Article seeks to disallow. What is uncertain is how this applies to a shape as whole and its respective components. Would a shape be negated as a whole if it contains a part that would fall under the grounds (negating the registrability of the whole design)? Arguably, this would be the case, but the decision leaves this unclear.

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The Court then moved on to the third question, which it saw as asking "...whether Article 3(1)(e)(ii)... under which registration may be refused of signs consisting exclusively of the shape of goods which is necessary to obtain a technical result, must be interpreted as referring only to the manner in which the goods at issue function or whether it also applies to the manner in which they are manufactured". As the wording of the sub-section does not discuss the manner of manufacture for the goods, the Court had to decide whether it implicitly does so. They quickly decided against this, setting out that "...that Article 3(1)(e)(ii)... must be interpreted as referring only to the manner in which the goods at issue function and it does not apply to the manner in which the goods are manufactured". The inclusion of manufacturing methods, in this writer's mind, would encroach onto the territory of patents, and how a product is made does not designate its origin; the primary function of trademarks.

Finally, the Court proceeded to question one, which was set out as "...whether an applicant to register a trade mark which has acquired a distinctive character following the use which has been made of it within the meaning of Article 3(3)... must prove that the relevant class of persons perceive the goods or services designated exclusively by that mark, as opposed to any other mark which might also be present, as originating from a particular company, or whether it is sufficient for that applicant to prove that a significant proportion of the relevant class of persons recognise that mark and associate it with the applicant’s goods".

Again, considering precedent in brevity, the Court saw that "...in order to obtain registration of a trade mark which has acquired a distinctive character following the use which has been made of it within the meaning of Article 3(3)... regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark, the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company". What the question therefore requires is that the proprietor of the mark has to prove that the relevant class of people perceive their mark, in this case "Kit Kat", to only originate from them and not other proprietors selling similar goods, even if the goods contain other registered trademarks (or a design, in this case). The onus would be on Nestle to show that the shape of the chocolate bar, regardless of the inclusion of the words "Kit Kat", would be indicative of the source of the bar by itself (i.e. a distinctive feature). The Court did omit Justice Arnold's question on reliance on the mark, focusing on their 'perception' and 'recognition' of the mark. Arguably reliance does not necessarily follow the two, but this writer thinks, in the Court's mind, their intention is to include reliance through perception, as seeing and knowing a mark in conjunction with another would still carry some weight in the purchase decision, effectively creating a level of 'reliance'.

The case has since been referred back to the High Court for ultimate decision, but this writer thinks, based on earlier considerations, that the shape of the Kit Kat bar might not be enough to distinguish it from other similar ones to allow for the registration of the mark. The ECJ's answers to the questions seemed unsurprising, however leaving many things uncertain or somewhat unanswered, but give more nuanced guidance, which is never too abundant in today's legal sphere. How the case will be applied in the future is uncertain, but hopefully this application will manifest even more clarity as a result.

Source: IPKat