It never rains, but it pours…(Brands & IP Newsnotes - issue 1)
27 September 2015
Registered designs are used to protect the appearance of products. In considering whether to allow registration, several factors come into play: what else is already out there (the ‘prior art’); who will use it (the ‘informed user’); and what ‘degree of freedom’ does the designer have in arriving at the particular design?
A recent case in the EU General Court in relation to an umbrella, Senz Technologies v OHIM - Impliva (Parapluies), serves as a useful reminder of the strength of Community designs. In seeking to invalidate the registered designs, the applicant argued the designs did not produce a different overall impression from that of an umbrella registered nearly 10 years earlier.
The Court held that Senz should have been aware of the umbrella patented in the US (n.b. in the US patents can cover designs) a decade earlier. In holding it was ‘prior art’, the Court stated that: “it would be imprudent for designers seeking to register designs in the EU not to check for the existence of prior art in one of the world’s major IP registers [namely the US Patent and Trademark office]”.
But despite the ‘prior art’, and the limited design freedom open to the designer (there are only so many ways an umbrella can look), the Senz umbrella did create a different overall impression from the earlier product. There were differences in the canopies that would be noticed by the informed user. The patented product had a flat surface at the top with curved lateral sides forming a regular octagon. The designs on the other hand had a pyramid shape on top and sides that formed an irregular octagon.
Designers should be mindful of what already exists and must carry our appropriate searches to establish ‘prior art’. But the Court will take into account technical constraints and minor differences may get the design over the line.This article was first published in the Brands & IP newsnotes publication - issue 1.
EU trade mark reforms come closer (Brands & IP newsnotes - issue 1)27 September 2015
Seven years after the European Commission started its evaluation of the European trade marks framework, the texts of the new proposed legislation were finally published in June 2015.
You’re cabbing a laugh (Brands & IP Newsnotes - issue 1)27 September 2015
The High Court has refused an application by the manufacturer of the iconic London black cab (“LTC”) for permission to adduce survey evidence in a claim for passing off.
What’s New Copycat? (Brands & IP newsnotes - issue 1)27 September 2015
Last year, consumer group Which? carried out a comprehensive survey of the copycat product packaging market in the UK. It found that over 150 of retailers’ own-label products “mimicked” the market-leading brand-owner’s packaging.
A copyright work in 140 characters? (Brands & IP Newsnotes - issue 1)27 September 2015
It isn’t easy to keep your social media followers entertained with rafts of enthralling and hilarious new material.
When “logos” turn into “no-goes” (Brands & IP Newsnotes - issue 1)27 September 2015
As we move even deeper into an age of digital advertising and social media, it is becoming increasingly important for businesses to have a short hand for their brand; something which denotes the business, stands out as a guarantee of origin and makes the brand instantly recognisable. We’re talking about logos.
Access to justice: IPEC 1 - MoJ 0 (Brands & IP Newsnotes - issue 1)27 September 2015
Conducting litigation in a cost effective and proportionate manner can be a challenge, especially if it involves big brand owners going toe to toe. But help is at hand in the form of the Intellectual Property Enterprise Court (‘IPEC’).
Not so-far, Sofa Workshop (Brands & IP newsnotes - issue 3)27 September 2015
If a trade mark proprietor does not make ‘genuine use’ of its marks, they may be vulnerable to attack from third parties.