Conference Proceedings
Reference
Le droit du design / Design Law
DE WERRA, Jacques (Ed.)
DE WERRA, Jacques (Ed.). Le droit du design / Design Law. Genève : Schulthess, 2015, 166 p.
Available at:
http://archive-ouverte.unige.ch/unige:80066
Disclaimer: layout of this document may differ from the published version.
1 / 1
Le droit du design
Design Law
p®opriété intelle©tuelle - intelle tual p operty
www.pi-ip.ch
Le droit du design Design Law
Marcus Höpperger, Grégoire Bisson, Carlo Rusconi,
Nathalie Tissot, David Stone, Michael Ritscher, Bertrand Siffert
Actes de la Journée de Droit de la Propriété Intellectuelle du 5 février 2015
p®opriété intelle©tuelle - intelle tual p operty Jacques de Werra (éd.)
ISBN 978-3-7255-8563-2
© Schulthess Médias Juridiques SA, Genève · Zurich · Bâle 2015 www.schulthess.com
Diffusion en France : Lextenso Éditions, 70, rue du Gouverneur Général Éboué, 92131 Issy-les-Moulineaux Cedex
www.lextenso-editions.com
Diffusion en Belgique et au Luxembourg : Patrimoine, 119, avenue Milcamps, 1030 Bruxelles Tous droits réservés. Toute traduction, reproduction, représentation ou adaptation intégrale ou partielle de cette publication, par quelque procédé que ce soit (graphique, électronique ou méca- nique, y compris photocopie et microfilm), et toutes formes d’enregistrement sont strictement interdites sans l’autorisation expresse et écrite de l’éditeur.
Information bibliographique de la Deutsche Nationalbibliothek
La Deutsche Nationalbibliothek a répertorié cette publication dans la Deutsche Nationalbiblio- grafie ; les données bibliographiques détaillées peuvent être consultées sur Internet à l’adresse http://dnb.d-nb.de.
tions Romandes.
Cet ouvrage constitue le huitième volume de la collection p®opriété intelle©tuelle – intelle tual p operty (www.pi-ip.ch). Il rassemble les contributions qui ont été rédigées à l’occasion de la Journée de Droit de la Propriété Intellectuelle (www.jdpi.ch) organisée le 5 février 2015 à l’Université de Genève sur le thème « Le droit du design / Design Law ».
Il ne fait pas de doute que l’apparence extérieure des produits qui nous entourent est susceptible d’exercer une force d’attraction importante, voire une fascination sur le public des consommateurs. Preuve en est la valeur phénoménale progressivement acquise par une firme califor- nienne à la désormais célébrissime pomme – qui était, il faut le rappe- ler, au bord du gouffre il y a quelques années –. Cette firme a en effet su inventer ou réinventer des produits technologiques à destination de tous à la ligne épurée et attractive, qu’il s’agisse de téléphones, de tablettes ou d’autres produits électroniques. Il est certes clair que l’attractivité de ces produits ne tient pas exclusivement à leur apparence, mais également à leur convivialité et fonctionnalités technologiques. On ne peut toutefois pas doutes que leur « look » y contribue aussi (largement). Il n’est dès lors pas surprenant que nombre d’entreprises dans des secteurs et indus- tries très variés consacrent d’importantes ressources et leur énergie créa- trice à développer des produits au design unique, destiné à les distinguer de ceux de leurs concurrents.
Comment le droit du design peut-il dès lors protéger cette créativité des produits et à quelles conditions ? Juger du pouvoir d’attraction de la forme d’un produit n’est pas tâche aisée. C’est en somme tenter de faire écho sur le plan légal à la phrase du célèbre designer Milton Glaser :
« There are three responses to a piece of design : yes, no and … WOW.
WOW is the one to aim for ».
Pour explorer le domaine évolutif du droit du design, les auteurs des remarquables contributions qui composent ce livre se sont penchés sur diverses facettes de la thématique en droit international et national.
Qu’ils soient chaleureusement remerciés pour leur précieux travail et que M. Pierre Heuzé qui s’est chargé des tâches d’édition du livre trouve ici aussi l’expression de ma vive reconnaissance.
Genève, septembre 2015.
Jacques de Werra
Avant-propos ... V Table des matières / Table of contents ... IX Table des abréviations / Table of abbreviations ... XIII
Marcus Höpperger
New Trends and Developments in Industrial Design Law at the
International Level ... 1
Grégoire Bisson
The Hague System Today and Tomorrow ... 17
Carlo Rusconi
L’appréciation du caractère individuel des dessins et modèles
communautaires dans la pratique de l’OHMI ... 39
Nathalie Tissot
La protection des designs en droit suisse : bilan de la LDes et perspectives ... 61
David Stone
European Union Design Law in the Apple v Samsung Dispute:
Lessons and Perspectives ... 81
Michael Ritscher
Global Protection of Product Designs from a Practitioner’s Point of View .. 129 Bertrand Siffert
La pratique du droit du design dans l’horlogerie et la bijouterie ... 143
Avant-propos ... V Sommaire / Contents ... VII Table des abréviations / Table of abbreviations ... XIII
New Trends and Developments in Industrial Design Law at the International Level
Marcus Höpperger
I. Introduction ... 1
II. Industrial Design Filing Activity ... 3
III. WIPO Fact Finding ... 4
A. Subject Matter ... 5
B. Reproduction of Industrial Designs in Applications ... 6
C. Details in Industrial Design Applications ... 7
D. Deferment of Publication ... 8
E. Grace Period ... 9
F. Filing Date Requirements ... 9
G. Term of Protection ... 10
H. Examination ... 10
IV. Work on a Design Law Treaty ... 11
V. Concluding Remarks ... 15
The Hague System Today and Tomorrow Grégoire Bisson I. The Geneva (1999) Act: Rationale and History ... 18
II. A Slow Take-Off and a Gradual Change for Users ... 20
III. An Impressive List of Declarations, but a Superficial Change for Users .. 22
A. Korea ... 22
B. The United States of America ... 23
C. Japan ... 24
D. Consequences of These Declarations ... 25
IV. A Less Visible but More Profound Change for Users ... 27
A. Relation with a Principal Design, Application or Registration (Japan and the Republic of Korea) ... 28
B. Declaration Concerning Exception to Lack of Novelty and Supporting Documentation (Japan and the Republic of Korea) ... 29
C. Information on Eligibility for Protection under Rule 7(5)(g) and Section 408(d) of the Administrative Instructions
(United States of America) ... 30
V. An Invisible but Fundamental Change ... 31
VI. Some Beneficial Changes at the National Level for Hague Applicants ... 35
VII. Conclusion – Savviest Users Will Benefit More ... 36
L’appréciation du caractère individuel des dessins et modèles communautaires dans la pratique de l’OHMI Carlo Rusconi I. L’utilisateur averti ... 40
II. Le degré de liberté du designer ... 46
A. Les contraintes techniques ... 46
B. Les contraintes normatives ... 47
C. Les contraintes esthétiques ... 47
D. La saturation de l’état de l’art ... 48
III. Principes applicables lors de la comparaison des modèles ... 49
A. L’importance de la visibilité du modèle lors de la comparaison ... 50
B. Le rôle des éléments accessoires dans la comparaison ... 57
La protection des designs en droit suisse : bilan de la LDes et perspectives Nathalie Tissot I. Introduction ... 61
II. Enseignements jurisprudentiels et mise en perspective ... 64
A. Du point de vue des motifs d’exclusion de la protection ... 64
B. Exigences de nouveauté et d’originalité ... 68
C. Principe de la priorité du dépôt (art. 6 LDes) ... 74
III. Conclusions ... 78
European Union Design Law in the Apple v Samsung Dispute:
Lessons and Perspectives
David Stone
I. Background ... 81
A. Apple’s RCD ... 82
B. Summary of the EU Proceedings ... 83
C. Chronology ... 85
D. Scope of this case note ... 87
II. Some Preliminary Issues ... 87
A. RCD or iPad? ... 87
B. Interpreting the Design ... 88
C. Dotted Lines ... 88
III. Provisional Measures ... 91
A. The Netherlands ... 91
B. Germany ... 96
IV. Main Proceedings ... 102
A. United Kingdom ... 102
B. The Netherlands ... 122
C. Spain ... 123
D. Germany ... 125
E. OHIM ... 126
Global Protection of Product Designs from a Practitioner’s Point of View Michael Ritscher I. Introduction ... 129
II. The Project Vitra ... 130
III. Protection of Product Designs by Means of Design Law ... 131
IV. Protection of Product Designs by Means of Trademark Law ... 132
V. Protection of Product Designs by Copyright Law ... 133
A. Utilitarian Purpose ... 134
B. Inseparability of the Design and the Product ... 135
C. Industrial Scale Production ... 136
D. Loopholes ... 137
E. Threshold ... 137
F. The Threshold-Scope Relation (Freedom to Innovate) ... 139
La pratique du droit du design dans l’horlogerie et la bijouterie
Bertrand Siffert
I. Introduction ... 143
II. La création du design ... 144
A. L’analyse de tendances ... 144
B. La phase créative ... 144
III. La protection légale ... 145
A. Le droit du design ... 145
B. Quelques notions ... 146
C. L’objet de la protection ... 147
D. La stratégie de protection ... 149
E. Bref aperçu de la jurisprudence suisse ... 151
F. Les droits connexes ... 153
IV. Les moyens de mise en œuvre ... 161
A. Lettres de mise en demeure ... 161
B. Actions en nullité – opposition ... 161
C. Les actions judiciaires ... 162
V. Conclusion ? ... 165
ADPIC / TRIPS Accord sur les aspects des droits de propriété intellec tuelle qui touchent au commerce, annexe 1C de l’Accord de Mar- rakech du 15 avril 1994 instituant l’Organisation mondi- ale du commerce / Agreement on Trade-Related Aspects of Intellectual Property Rights, Annex 1C of the Marra- kesh Agreement Establishing the World Trade Organiza- tion, signed in Marrakesh, Morocco on 15 April 1994
art. article
ATF Arrêts du Tribunal fédéral ( Recueil Officiel ) ( Suisse )
BGE voir ATF
BGH Bundesgerichtshof ( Allemagne )
c. considérant
cf. conférer
CJCE / ECJ Cour de Justice des Communautés européennes / European Court of Justice
CJUE / CJEU Cour de Justice de l’Union européenne / Court of Justice of the European Union
CO Loi fédérale complétant le Code civil suisse ( Livre cin- quième : Droit des obligations ) du 30 mars 1911 ( RS 241 ) CR PI Commentaire Romand Propriété Intellectuelle, Jacques de
Werra / Philippe Gilliéron ( éds), Bâle 2013
Design Regulation Règlement ( CE ) No 6 / 2002 du Conseil du 12 décembre 2001 sur les dessins ou modèles communautaires, JO du 5 janvier 2002, L 3 p. 1 ss / Council Regulation ( EC ) No 6 / 2002 of 12 December 2001 on Community designs ECDR European Copyright and Design Reports ( Royaume-Uni )
ECR European Court Report
éd. / ed. éditeur / editor
e.g. exempli gratia
EIPR European Intellectual Property Review
EU Trademark Directive Directive 2008 / 95 / EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks ( OJ of the 8 November 2008, L 299, p.5 ) / Directive 2008 / 95 / CE du Parlement Européen et du Conseil du 22 octobre 2008 rap- prochant les législations des États membres sur les marques ( JO du 8 Novembre 2008, L 299, p. 5 ss )
FF Feuille fédérale ( Suisse )
GRUR Gewerblicher Rechtsschutz und Urheberrecht ( Allema- gne )
GRUR Int. Gewerblicher Rechtsschutz und Urheberrecht, Internatio- naler Teil ( Allemagne )
GRUR RR Gewerblicher Rechtsschutz und Urheberrecht Rechtspre- chungs-Report
HGer Handelsgericht
ICD Declaration of Invalidity of a Registered Community Design / Déclaration d’Invalidité d’un Design Communau- taire Enregistré
IIC International Review of Intellectual Property and Compe- tition Law
id. idem
JIPLP Journal of Intellectual Property Law and Practice ( Royaume-Uni )
JdT Journal des Tribunaux ( Suisse )
JO voir OJ
LCD Loi contre la concurrence déloyale du 19 décembre 1989 ( RS 241 )
LDes Loi fédérale sur la protection des designs du 5 octobre 2001 ( RS 232.41 )
LGer Landgericht ( Allemagne )
lit. littera
OGer Obergericht
OHMI / OHIM Office de l’harmonisation dans le marché intérieur ( marques, dessins et modèles ) / Office for Harmonization in the Internal Market ( Trade marks and designs )
OJ / JO Official Journal of the European Union / Journal Officiel de l’Union européenne
OLG Oberlandesgericht ( Allemagne )
p. / pp. page( s )
préc. précité( e )
RCD Registered Community Design / Design communautaire
enregistré
Rec. Recueil
RS Recueil systématique ( Suisse )
RSPIDA / RSPI Revue suisse de la propriété industrielle et du droit d’auteur ( Suisse ) / Revue suisse de la propriété intellectuelle
s. / ss suivant / suivants
SJ Semaine Judiciaire ( Suisse )
sic ! Revue du droit de la propriété intellectuelle, de l’information et de la concurrence ( Suisse )
TC Tribunal cantonal ( Suisse )
TF Tribunal fédéral ( Suisse )
TFEU / TFUE Treaty on the Functioning of the European Union ( OJ C 326, of 26 / 10 / 2012, p. 1 ) / Traité sur le Fonctionnement de l’Union européenne ( JO C 326, du 26 / 10 / 2012, p. 1 )
TRIPS voir ADPIC
U.S. / US United States of America / États-Unis d’Amérique
Design Law at the International Level
Marcus Höpperger*
I. Introduction
The International Council of Societies of Industrial Design has been using since 1969 the following definition of industrial design: «Design is a creative activity whose aim is to determine the formal qualities of objects produced by industry. These formal qualities are not only the external features but are principally those structural and functional rela- tionships which convert a system to a coherent unity both from the point of view of the producer and the user. Industrial design extends to embrace all the aspects of human environment, which are conditioned by industrial production»1. The association has initiated a grass root campaign, which it says will result in a new definition that «reflects the profession today». In particular, it points to what is sees as import- ant changes emerging as a result of the «information and knowledge economy» in which designers are being more and more considered as
«knowledge workers» who develop new processes as much as tangible products2.
Intellectual property law tends to break down rights according to sub- ject matter: patents protect new inventions that are non-obvious and industrially applicable. Copyright protects works – works of literature, musical works, artistic works, works of artistic craftsmanship. Trade- mark rights protect distinctive signs. Design is at the crossroads of intel- lectual property rights. Depending on whether design is new, original,
* Director, Law and Legislative Advice Division, Brands and Designs Sector, World Intellectual Property Organization. The views expressed by the author are personal and do not constitute an official position of the World Intellectual Property Orga- nization (WIPO).
1 Definition accessed at http://www.renewid.com (last accessed 29 July 2015).
2 Ibid.
distinctive, has inventive step or individual character, it may be pro- tected under different intellectual property rights – or cumulatively by several at the same time (see graphic 1).
Statutory definitions of design are very different from the definition pro- posed by ICSID in 1969. Directive 98/71/EC of the European Parlia- ment and of the Council of October 13, 1998 on the legal protection of designs defines design as meaning «the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, con- tours, colors, shape, texture and/or materials of the product itself and/
or its ornamentation»3. US law deals with design protection through the following provision: «Whoever invents any new, original and orna- mental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title»4.
Industrial design law is notoriously divers across countries – both as regards provisions that govern the substantive conditions of protection and procedures for obtaining design registration or the grant of a design patent, as the case may be. Nevertheless, design has experienced a con- stant rise in importance as is shown by international filing and registra- tion statistics.
3 Article 1(a) of Directive 98/71/EC of the European Parliament and of the Council of October 13, 1998 on the Legal Protection of Designs.
4 35 U.S. Code Section 171 – Patents for designs.
Graphic 1
This Article will look into recent international filing trends for indus- trial designs and then go on to introduce some of the work that has been done in WIPO in respect of international norm development for indus- trial designs.
II. Industrial Design Filing Activity
In 2013, an overall of 1.2 million industrial designs were filed world- wide, out of which 75% were filed in five IP Offices, namely the Office of China, the Office for Harmonization in the Internal Market (Trade- marks and Designs) (OHIM) for the European Union, and the Offices of the Republic of Korea, Germany and Turkey. This statistic refers to the design count – in other words counting individual designs in appli- cations rather than applications. This is an important detail and it hints already at one major difference in design registration systems, namely between those that allow individual applications to contain multiple designs5 and those which restrict applications basically to one design.
According to the most recent WIPO statistics, in 2013 an overall of some 956,600 industrial design applications were filed worldwide. Applica- tions numbers have constantly increased since 1995 (yearly applications
5 This provision is regularly subject to conditions such as that the multiple designs belong to the same class of the International «Locarno» Classification for Indus- trial Designs (see for example Article 37 of Council Regulation (EC) No. 6/2002 of December 12, 2001 on Community Designs).
Industrial Design Filing Activity (Source: WIPO Statistic Database 2014)
just under 200,000), where most of the recent growth was driven by China.
Breaking down the design application count 2013 for the top 20 IP Offices shows that China is leading the statistics by far with an over- all number of designs filed in 2013 of some 659,000. China is followed by the EU (OHIM) with some 97,000 designs filed, the Republic of Korea (70,000) and Germany (57,000).
III. WIPO Fact Finding
Between the years 2006 and 2008, the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indica- tions (SCT) carried out an extensive fact finding exercise as to industrial design law and practice in WIPO Member States. This was done with the help of two questionnaires that were circulated to WIPO Member
Trend in Industrial Design Applications Worldwide (Source: WIPO Statistic Database 2014)
States (Questionnaire on Industrial Design Law and Practice Part I and II). The questionnaires are detailed and contain 83 questions on design registration formalities (Part I) and 47 questions on the subject mat- ter of industrial design, the formalities for industrial design registration appeals, Alternative Dispute Resolution, invalidation procedures, and the relationship between industrial designs and trademarks, copyright and unfair competition law (Part II). An overall of 68 Member States responded to Part I of the questionnaire and 42 Member States replied to Part II. A comprehensive compilation of all returns to the question- naires is published in WIPO document WIPO/Strad/INF/2 Rev.2 of June 19, 2009, entitled Summary of Replies to the Questionnaires (Parts I and II) on Industrial Design Law and Practice6. The summary doc- ument is detailed and voluminous and in order to offer a more concise access to its main findings, the SCT Secretariat published an analysis of certain areas in industrial design law and practice, based on the returns to the questionnaires, as well as a quantitative analysis of the returns7.
A. Subject Matter
An overall of 21 different types of subject matter potentially covered by industrial design protection were identified in the questionnaires. Prod- uct shape and product packaging were indicated unanimously by all 42 returns as being covered by industrial design.
High affirmative returns were given for spare parts (32), labels (36), get up and trade dress (30), ornamentation, such as figurative elements and patterns (39), a graphic symbol, such as a drawing, picture or logo (34), or a typeface (34). On the other end of the scale was layout-design of integrated circuits (6), animated icon (13), an architectural plan as such (8), color per se (2) and a mere word or sequence of letters without a particular styling (3). These returns – as well as the returns to the other questions dealt with further down – are of a merely indicative nature.
But they do describe to some extent the landscape of industrial design protected subject matter and show a certain consensus around tradition- ally accepted subject matter (product shape, ornamentation), new and
6 http://www.wipo.int/export/sites/www/sct/en/meetings/pdf/wipo_strad_inf_2_
rev_2.pdf.
7 Document SCT/19/6 http://www.wipo.int/meetings/en/doc_details.jsp?doc_id=
100913.
upcoming subject matter (animated icon) and areas which are mostly considered to be outside of design protection (color per se).
B. Reproduction of Industrial Designs in Applications The reproduction of the industrial design for which protection is sought in the application for registration or the grant of a design patent, as the case may be, is the central part of the application. Different national and regional systems prefer different modes of reproduction and the questionnaire identifies five categories, namely black and white photo- graphs, color photographs, drawings, technical drawings and any other format, for example image files of motion designs.
Returns (64 replies) showed wide acceptance of black and white photo- graphs (60), color photographs (58), drawings (60), with smaller num- bers for technical drawings (36) and other formats (11).
Subject Matter of Industrial Design (42 Replies) (Source: SCT/27/4)
C. Details in Industrial Design Applications 1. Description
Whether or not industrial design applications can – or should – con- tain descriptions of the design or designs contained in the application is an open question. Design registration systems tend to limit the admis- sibility of descriptions and keep them optional8 whereas design patent procedures regularly provide for the filing of a description. Out of 53 returns to that question, 60% indicated that the filing of a description was optional and 40% that it was a mandatory element of the applica- tion.
2. Indication of Product
As regards the requirement in applications to indicate the product to which the industrial design applies, the overwhelming majority of 67 returns stated that such an indication was mandatory (94%) whereas it was optional in 5% of the returns.
3. Multiple Design Applications
Multiple design applications allow applicants to include several indus- trial designs in one and the same application, thereby reducing the administrative efforts for preparing multiple applications. Regularly, design laws that provide for the filing of multiple applications limit this possibility to designs belonging to the same class of the international design classification, or apply additional conditions, such as a require- ment of unity of design. Multiple design applications are mostly to be found in design registration systems that do not carry out substantive design examination. On the other hand, laws that foresee examination as to novelty and/or originality are less accommodating to multiple design applications. Out of the 67 replies to the relevant question, 76% indi- cated that they admitted multiple applications, whereas 24% answered in the negative.
8 For example, Rule 11 of the Common Regulations Under the 1999 Act and 1960 Act of the Hague Agreement Concerning the International Registration of Industrial Designs requires an extra fee in cases where the description of the industrial design exceeds 100 words.
4. Specimens
Somehow related to the reproduction of designs and multiple design application is the question whether and if yes to what extent design reproductions can be substituted or supplemented by specimens of the industrial design. The idea of filing objects with the IP office in lieu of reproductions of the industrial design is somehow old-fashioned and predates the digital revolution which brought easy access to digital cameras and other digital reproduction methods. Nevertheless, it is, for example, foreseen in the European Design Regulation and the Hague Agreement9. The returns to the question on specimens remained very divers and did not indicate a clear picture as to the circumstances under which specimens can be filed. However, what became clear is that 65%
of the returns indicated that the submission of specimens was optional, when it was not permitted in 35%.
Bearing in mind the considerable variety of solutions for the submis- sions of specimens and the often complex procedural issues that arise out of solutions that tie the submission of specimens to a request for the deferment of publication, with subsequent filings of reproductions of designs filed originally in corpore, it is highly interesting to note that only 5% of the Offices that accept specimens indicated that applicants actually make use of this possibility, whereas this is not the case in the remaining 95% of responding Offices.
D. Deferment of Publication
Industrial design protection caters to the need of creative industries with frequently changing product cycles. Design owners therefore value the possibility to defer the publication of a registered design, i.e., to keep it undisclosed to the public during a certain time period following reg- istration. This procedural option exists in design registration systems, which generally do not operate substantive examination and are thus quick to register. In contrast, design patent systems regularly do not foresee the possibility to maintain a granted design patent unpublished during a certain time. Nevertheless, this is set off by the fact that design
9 Article 36(1)(c) of Council Regulation (EC) No 6/2002 and Rule 10 of the Com- mon Regulations under the Hague Agreement. Both provisions limit the possibility to file specimens to two-dimensional designs and only in cases in which the publi- cation of the industrial design is deferred.
patent systems generally do not publish applications and that the design in question remains secret until the patent eventually issues.
Returns to the questionnaire indicated that the situation for deferment of publication is evenly split it the responding Member States, which 51% indicating that deferment was available and 49% that is was not.
Among those returns that said deferment was available, the duration for deferment was indicated with up to six months in 4 respondents, 12 months in 11 respondents and more than 12 months in 15 respondents.
E. Grace Period
Unlike in the area of utility patents, the availability of grace periods for the preservation of the novelty and/or originality of industrial designs in certain cases of disclosure seems to be generally available throughout the membership of the World Intellectual Property Organization. There are, however, difference in the length of the grace period available and returns can be largely divided into two groups. 56% of returns indicated that a grace period of 12 months was available, whereas in 30% of the cases, the grace period was six months. 14% of the returns indicated that a grace period was not available.
F. Filing Date Requirements
The filing date of an application is usually the cut-off date for the deter- mination of prior art and prior rights with regard to the design for which protection is requested. Moreover, it is also the date that deter- mines the start of the priority period under the Paris Convention for the Protection of Industrial Property10. Article 4A.(2) of the Paris Con- vention refers in this context to a regular national filing under domes- tic legislation.
As to the various conditions that must be met for a national filing to be considered as «regular» and thus giving rise to a filing date, the ques- tionnaire identified eleven different possible elements. Returns were generally homogeneous with regard to the following filing date require- ments: a request that the registration of an industrial design is sought (65
10 Article 4 A.(2) of the Paris Convention states that «any filing that is equivalent to a regular national filing under the domestic legislation of a country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority».
out of 66 returns), indications allowing the identity of the applicant to be established (65 out of 67 returns), a sufficiently clear reproduction of the industrial design (63 out of 66). On the other end of the spectrum, a claim is required by only 17 out of 67 returns.
G. Term of Protection
The term of protection of a registered design or design patent remains considerably varied throughout WIPO Member States. 18% of returns indicated a term of protection of 10 years. In 32% of the returns the term was 15 years and in 50% of the returns, the term of protection amounted to 25 years.
H. Examination
Concerning the examination of design applications, out of 66 returns, 28 indicated that only examination as to compliance with formal require- ments was carried out. Conversely, 37 returns indicated full substantive examination. Two and three returns held that substantive examination was carried out in respect of specific products and in respect of specific designs respectively.
Filing Date Requirements (Source: SCT/27/4)
IV. Work on a Design Law Treaty
In case there was any doubt, the WIPO fact finding exercise for indus- trial design law and practice demonstrates the prevailing variety in WIPO Member States’ industrial design protection regimes.
The WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, starting in 2009, thus set out to identify and discuss possible areas of convergence among WIPO Mem- ber States in their industrial design laws and practice11. Work by SCT on possible areas of convergence in industrial design law and practice eventually lead to a draft Design Law Treaty (Articles and Regulations), which was discussed and reviewed several times. The most recent ver- sion of that text is contained in documents SCT/33/2 and 3.
The text of the draft Design Law Treaty as per the 33rd session of the SCT contains 32 Articles and 17 Rules. Future work on that draft will be considered by the WIPO General Assembly in its October 2015 ses- sion.
As part of the work on industrial design law and practice, the WIPO Secretariat conducted a study on the potential impact of this work – should it materialize into an international treaty – on users of the design protection system and on IP Offices, particularly in Developing Coun- tries and Least Developed Countries12. The study was conducted with the help of a two-part survey, namely one directed to IP Offices, and one targeted at users of the design system.
One considerable difficulty for the study stems from the fact that it attempted to measure the impact of an international treaty that does not exist and – thus had to research its potential impact. Furthermore, the provisions the impact of which had to be studied are highly technical, expressed in legal treaty language and not necessarily accessible to lay persons in design law, such as designers. In order to overcome this diffi- culty, the study established the key features of the proposed design law treaty and described it in general terms understandable to a person not familiar with administrative and legal rules for design registration. The
11 WIPO document SCT/21/4.
12 The study is published as document SCT/27/4 and 27/4 Add. Detailed terms of refe- rence for the study are contained in Annex V of document SCT/27/4.
following table presents a simplified description of proposed changes to design law and practice, summarized in nine such changes.
These proposed changes were then used to formulate two question- naires, one addressed to users of the design protection system (the appli- cant questionnaire) and one addressed to industrial property offices of WIPO Member States (the office questionnaire)13.
The applicant questionnaire yielded an overall of 154 returns (74 from high income and 80 from middle and low-income countries). The office questionnaire obtained 59 responses (27 from high income and 32 from middle and low income countries). The study presents a highly detailed analysis of the returns, but overall, the following conclusions can be made.
13 Document SCT/27/4, respectively Annex V and VI.
Proposed Changes to Design Law and Practice (Source: SCT/27/4)
An interesting detail of the returns obtained from users of the design system is their view on how they rank the proposed changes in order of importance. The two most important perceived changes are the possi- bility to register multiple designs and the international standardization of information that is required from design applicants. The least val- ued changes appear to be – somehow surprisingly – a possible twelve months grace period for disclosure, and a reduced need for filing multi- ple representations of designs as part of applications.
Regarding the current implementation of proposed changes, roughly speaking at least 50% of the changes that would be required by the implementation of a future Design Law Treaty are already carried out.
In other words, roughly half of future regulatory changes are already implemented. In this respect, the draft Design Law Treaty effects an international codification of already existing design law and practice rather than setting new standards.
Relative Importance of Changes (Source: SCT/27/4)
As regards the overall impact of the changes proposed in the draft Design Law Treaty on IP Offices – in terms of errors in design procedures, the use of design rights, the overall applicable procedures, the financial aspects of the design registration system and its general administration, all responding Offices indicated that the proposed changes would rep- resent improvement.
Percentage of Countries in Which Change is Already Implemented (Source: SCT/27/4)
Potential Impact on Offices (Source: SCT/27/4)
A similar picture can be drawn from the returns obtained from users – in respect of design activity, profitability, potential overseas registrations, design commercialization, the likelihood of registering designs, and the ease, cost and time of design registrations – where the potential impact was unanimously judged to be positive.
The study also examined and compared the perceived costs of each of the nine individual changes described in general terms. The overall pic- ture that emerged in terms of costs of implementation is that changes might incur a slight increase of costs, with the possibility of introduc- ing multiple design applications being perceived as most costly by high income countries.
V. Concluding Remarks
Industrial design law and practice remains a highly diverse field of intel- lectual property law among the Member States of the WIPO. The work done by the WIPO SCT, in particular in the area of fact finding, defining possible areas of convergence in industrial design law and practice, pos- sible international harmonization and simplification of design laws, and the analysis of the potential impact of such work on users of the design system and industrial property offices, contributes to a better under- standing of the diversity of existing approaches. It has also identified
Potential Impact on Users (Source: SCT/27/4)
areas in industrial design law that could lend themselves to a more com- mon and harmonized approach among Member States. It remains to be seen when and in what final form such work can materialize.
Grégoire Bisson*
After a period of constant but moderate growth, the Hague System for the International Registration of Industrial Designs is about to develop spectacularly following the successive accessions to and ratification of its latest Act, the Geneva (1999) Act, by, respectively, the Republic of Korea, Japan and the United States of America. At the time of writing this article, the former has been an effective member for barely half a year and the latter two’s membership has yet to take effect1. Nonethe- less, bets are high that the induction in the 90-year old system of coun- tries that represent the world’s third, fourth and fifth top jurisdictions for design filings2 is bound to propel the volume of international reg- istrations to an unprecedented scale3. But behind this exciting prospect lies a more profound transformation of the Hague System, tied to the fact that these three nations are joining the System as Contracting Par- ties whose Office is an «Examining Office», that is, according to Arti- cle 1 of the Geneva Act of the Hague Agreement, «an Office which ex officio examines applications filed with it for the protection of indus- trial designs at least to determine whether the industrial designs sat-
* Director of the Hague Registry, Brands and Designs Sector, World Intellectual Pro- perty Organization. The views expressed by the author are personal and do not con- stitute an official position of the World Intellectual Property Organization (WIPO).
1 The ratification of the Geneva Act of the Hague Agreement by the United States of America will come into effect on May 13, 2015. The accession to the Geneva Act of the Hague Agreement by Japan will come into effect also on May 13, 2015. With these, the Hague System will comprise 64 members and cover the territories of 83 countries.
2 See WIPO IP Statistics Data Center http://ipstats.wipo.int/ipstatv2/index.
htm?tab=industrial.With some 659 563 applications received in 2013, the State Intel- lectual Property Office of the People’s Republic of China (SIPO) was the largest Office worldwide in terms of design filings, followed by the Office for Harmoniza- tion in the Internal Market (Trademarks and Designs) (OHIM).
3 The record was 19,108 designs registered in 2002, i.e. the year before the Registered Community Design (RCD) came into force at the European level.
isfy the condition of novelty». Certainly, this is not the first time that this has happened in the history of the System, but the idiosyncrasies of the design regimes in place in the three newcomers, combined with the volume of filings at the domestic level in each, will require the first time implementation of a number of features of the Geneva Act that had yet to be tested in practice. It will also call for a change of attitude from users.
It is that transformation in the basic operation of the Hague System that this contribution intends to explore with a view to guiding current users through the many changes it will mean in practice for them in the future.
However, to tell the future, one needs to understand the present. And to understand the present, one sometimes needs to look at the past. As such, the transformation the Hague System will be going through can only be understood if its fundamental principles and recent history are first briefly recalled.
I. The Geneva (1999) Act: Rationale and History
The Geneva Act is the result of a process that started with the estab- lishment of a Committee of Experts in 1991 and ended with the suc- cessful holding of a Diplomatic Conference that concluded, on July 2, 1999, with the adoption of the Act4. Until then, the Hague System had been running on both the 1934 and the 1960 Acts and enjoying year on a regular, if not spectacular, level of activity. Nonetheless, there was the sense that it could enjoy more popularity if it catered more for the spe- cific needs of certain industries, especially those characterized by short life-cycle products such as the fashion and the textile industries, and if it expanded its geographical coverage.
The second consideration was particularly pressing. At the time the round of discussions for a new Act started in 1991, the system was hardly international, comprising a meagre total of 19 members scat- tered around the world and not all of them linked to one another as the respective membership of the 1934 Act and the 1960 Act did not even completely overlap. Furthermore, to the extent that these Acts were
4 For the history of the Geneva Act, refer to Curchod François, The end of the tunnel for the Hague Agreement Concerning the International Registration of Industrial Designs, in: Antonina Bakardjieva Engelbrekt et al. (eds), Festskrift till Marianne Levin, 2008, pp. 197-211.
largely incompatible with national systems providing for the novelty examination of designs, little expansion was to be expected. More both- ering still, with the one notable exception of Switzerland, filings largely emanated from and designated those few Hague members that were also European Community States, namely the Benelux States, France, Ger- many, Italy and Spain. Thus, as plans were underway at the Community level for a registered design system granting rights across the whole of the European Community, there was legitimate concern that the Hague System would quickly fall into disuse.
To succeed in its objective of expanding the Hague System, the new Act thus needed to provide a link with the forthcoming Registered Com- munity Design. Hence, the document prepared by the International Bureau of WIPO for the first session of the Committee of Experts, held in Geneva from April 9 to 11, 1991, set the stage in unequivocal terms:
«In order to establish the desirable possibility of using the international deposit system under the Hague Agreement with effect for all existing and future regional systems, it would be necessary to provide for the possibility that intergovernmental organizations such as the European Communities and the African Regional Industrial Property Organiza- tion (ARIPO) could join the Hague Agreement […]».
The link took the form of a provision allowing intergovernmental orga- nizations, as opposed to just States, to become party to the new Act5. Clearly, however, for the link to serve any purpose, the Hague System also needed to expand beyond the territory of the European Commu- nities. To achieve this, the revision work needed to hold its promise of making the system more flexible, with a view in particular to making it attractive to examining jurisdictions.
But the process would be a long one, as it often proved difficult to iden- tify solutions allowing countries with a novelty examination system
5 See Article 27(1)(ii). The rest, of course, is history, as both the European Union and the Organisation africaine de la propriété intellectuelle (OAPI) joined the System in 2008, with the former being since the most designated Contracting Party in the System year on. For more details on the history of the link and the first years of the EU’s membership in the Hague System (refer to Francis Gurry, Participation of the European Union in WIPO-administered Registration Treaties, namely the Mad- rid Protocol, in: Florent Gevers/Emmanuel Cornu (eds), The Geneva Act of the Hague Agreement and, possibly, the Lisbon Agreement, The Future Prospects for Intellectual Property in the EU: 2012–2022, Bruxelles, Bruylant, 2011, p. 266).
to join and that would still preserve the basic user-friendliness of the system, let alone enhance it. In particular, the textile industry was ask- ing for a longer deferment period than the maximum one of 12 months allowed under the 1960 Act, a contention that wasn’t sitting well with the needs of Offices carrying novelty examination. To balance this, it was decided that the new Act would contain provisions allowing a Contracting Party to make several declarations, notably that its Office wishes to receive confidential copies of deferred international registra- tions (thereby allowing consideration of the designs contained therein in the examination of other applications) or that deferment cannot be requested when the Contracting Party is being designated in an inter- national application. But more fundamentally, it would contain a num- ber of declarations reserved to Contracting Parties whose Office is an
«Examining Office» and whereby, generally, additional elements would need to be provided in or with the international application that also contained the designation of a Contracting Party having made the cor- responding declaration, including individual (and higher) designation fees. It would also contain provisions allowing a Contracting Party to express certain features of its law so that applicants would then need to take into account, failing which the Office concerned would be entitled to issue a refusal.
Clearly, from the original concept of «a single application, subject to a single set of requirements and leading to a single international reg- istration», the middle piece was somewhat watered down. But it was the price to pay for the successful expansion of the system to jurisdic- tions where design applications are looked at from a substantive point of view.
II. A Slow Take-Off and a Gradual Change for Users
In spite of the concessions made in the fundamental simplicity of the system to cater for the needs of Examining Offices, the Geneva Act was not an immediate success. Probably suffering from the monopoli- zation of efforts undertaken in many jurisdictions towards joining the Protocol to the Madrid Agreement for the International Registration of Marks6, it would take the Geneva Act almost five years for to get
6 Thus, it needs perhaps to be recalled that the Madrid Protocol only came into effect in Japan on March 14, 2000, in the Republic of Korea on April 10, 2003, in the
the necessary accessions or ratifications for its coming into force. And when it finally did come into operation on April 1, 2004, only four of its 11 Contracting Parties were in fact new members in the System. Alas, before operations could even rebound on this welcome expansion, the
«big bang enlargement» of the European Union on May 1, 2004, which brought its constituency from 15 to 25 States, saw the Registered Com- munity Design (RCD) suddenly overlapping with fresh Hague territo- ries (Estonia) as well as older ones (Hungary and Slovenia). The final blow came with the 2007 phase of enlargement, which, by covering other well established members of the Hague System, namely Bulgaria and Romania, made the Hague System even more redundant. This was exemplified by the fact that from 2006 to 2007, the designation rates for these two Contracting Parties fell from 39,9% and 31,2% to 23,2 and 11,1%, respectively.
But membership of the Geneva Act would eventually grow, nibbling at that of the two previous Acts and also securing new territory of its own, amongst which the European Union itself. And along the way, the Geneva Act would also succeed in its original objective of secur- ing members with an «Examining Office». These, nonetheless, have had up to now little bearing on the operation of the System, especially as many of them already were members of the 1934 or 1960 Acts (such as Hungary and Romania) or became a party to the 1960 Act at the same time (the Republic of Moldova), so that in all cases their laws and pro- cedures needed to be aligned with the standards imposed by the older Acts. So, it is really with the Republic of Korea, and now with the USA and Japan, that the legal framework of the Geneva Act is fully imple- mented and the Hague System is being transformed.
To get a better understanding of this transformation, it is important to first take a factual look at the declarations made by the three most recent members.
Unit ed States of America on November 2, 2003 and in the European Union on October, 2004.
III. An Impressive List of Declarations, but a Superficial Change for Users
A. Korea
Korea’s instrument of accession was accompanied notably by the fol- lowing declarations:
a) the declaration referred to in Article 7(2) of the 1999 Act, that, in connection with an international application in which the Repub- lic of Korea is designated, and in connection with the renewal of any international registration resulting from such an international appli- cation, an individual designation fee shall be paid7, except in respect of products belonging to classes 2, 5, or 19 in respect of which level three of the standard designation fee shall apply instead;
b) the declaration referred to in Rule 9(3) of the Common Regulations specifying that the following specific views are required, respectively:
i) for a design of a set of articles: one view of the coordinated whole and corresponding views of each of its components, and
ii) for a design for typefaces: views of the given characters, a sample sentence, and typical characters;
c) the declaration referred to in Rule 18(1)(b) of the Common Regu- lations, whereby the prescribed period of six months for notifying a refusal of protection is replaced by a period of 12 months (except in respect of an international registration for products belonging to classes 2, 5, or 19 of the Locarno Classification); and,
d) the additional declaration referred to in Rule 18(1)(b), whereby, pur- suant to subparagraph (c)(ii) of the said Rule, the international reg- istration will not produce the effect referred to in Article 14(2)(a) of the 1999 Act, if neither a notification of refusal nor a statement of grant of protection was communicated within the prescribed period, due to an unforeseen circumstance, such as a natural disaster. The applicable law provides that, in such a case, the entire period for the procedure will start from the date of a notification of continuation or resumption of the procedure. The Korean Intellectual Property Office (KIPO) will notify the International Bureau of the fact and the new time limit for a decision regarding the grant of protection.
7 At the time of writing this article, the fees are established at CHF 210.– for each industrial design.
B. The United States of America
The instrument of ratification by the United States of America was accompanied notably by the following declarations:
a) the declaration referred to in Article 5(2)(a) of the 1999 Act and Rule 11(3) of the Common Regulations, requiring the indication of a claim as a filing date element, and indicating the specific wording to be used for that purpose;
b) the declaration referred to in Article 7(2) of the 1999 Act and Rule 12(3) of the Common Regulations, that, in connection with an inter- national application in which the United States of America is desig- nated, the prescribed designation fee shall be replaced by an individ- ual designation fee. That declaration also provides that two reduced amounts of that fee further apply to the benefit of applicants who can claim small entity or micro entity status under US law. The declara- tion further specifies that the individual designation fee to be paid comprises two parts, the first part to be paid at the time of filing of the international application and the second part to be paid upon its allowance8.
c) the declaration referred to in Article 11(1)(b) of the 1999 Act, that the law of the United States of America does not provide for the defer- ment of the publication of an industrial design;
d) the declaration referred to in Article 13(1) of the 1999 Act, that, in accordance with the law of the United States of America, only one independent and distinct design may be claimed in a single applica- tion9;
e) the declaration referred to in Rule 8(1) of the Common Regulations relating to the creator and specific contents required under subpara- graph (1)(b), namely an oath of the creator;
8 At the time of writing this article, the fees are established at CHF 733.– for the first part (CHF 367.– for a small entity, CHF 183.– for a micro entity), and CHF 540.–
for the second part (CHF 270.– for a small entity, CHF 135.– for a micro entity).
Those fees cover the whole period of protection under US law, which, to be in line with the minimum imposed under Article 27 of the Geneva Act, was increased from 14 to 15 years from the date of patent by virtue of the Patent Law Treaties Imple- mentation Act of 2012.
9 It needs to be recalled that if a country that has made a declaration under Article 13 is designated and the requirement of unity of design is not satisfied, the designs may nonetheless be filed in the same international application but the Office concerned may refuse protection pending compliance through a procedure of division of the international registration at its level.
f) the declaration referred to in Rule 18(1)(b) of the Common Regula- tions, whereby the prescribed period of six months for notifying a refusal of protection is replaced by a period of 12 months.
C. Japan
Japan’s instrument of accession was accompanied notably by the fol- lowing declarations:
a) the declaration referred to in Article 7(2) of the 1999 Act, that, in connection with an international application in which Japan is desig- nated, and in connection with the renewal of any international reg- istration resulting from such an international application, the pre- scribed designation fee shall be replaced by an individual designation fee10.
b) the declaration referred to in Article 13(1) of the 1999 Act that Arti- cle 7 of the Design Act of Japan requires that only one independent and distinct design may be included in a single application;
c) the declaration required under Article 17(3)(c) of the 1999 Act, spec- ifying that the maximum duration of protection provided by the Design Act of Japan is 20 years from the date of the registration of the establishment of a design right in Japan;
d) the declaration referred to in Rule 9(3)(a) of the Common Regula- tions under the 1999 Act and the 1960 Act of the Hague Agreement, whereby, where the product which constitutes the industrial design is three-dimensional, a front view, a back view, a top view, a bottom view, a left side view and a right side view, each made in compliance with the method of orthographic projection, are required;
e) the declaration referred to in Rule 18(1)(b) of the Common Regula- tions, whereby the prescribed period of six months for notifying a refusal of the effects of an international registration is replaced by a period of 12 months; and,
f) the declaration referred to in Rule 18(1)(c)(ii), where a decision regarding the grant of protection was unintentionally not commu- nicated within the period of 12 months from the publication of the international registration, the international registration shall produce the effect referred to in Article 14(2)(a) of the 1999 Act at a time at which protection is granted according to the Design Act of Japan.
10 At the time of writing this article, the fees are established at CHF 582.– for each industrial design.
D. Consequences of These Declarations
Certainly, the sum of these declarations is impressive and may be intim- idating. However, the changes may not be as profound as they appear.
First, with the exception of Rule 9(3) requirements that will be com- mented further below, international applicants are already familiar with many of the additional requirements or considerations expressed through these declarations. There were already Contracting Parties that had made Article 13 declarations11, or had banned deferment, or declared individual fees or required an extra element as a filing date element. Sec- ond, when it comes to taking into consideration the practical effects of such declarations, including the submission of any additional element so required, users filing through the electronic application interface made available by the International Bureau12 benefit from its embedded intel- ligence which makes unconscious formal or logical mistakes when des- ignating such Contracting Parties virtually impossible. For example, the interface does not allow requesting deferment of publication when Ukraine is designated under the 1999 Act and reminds applicants who designate Romania that they need to provide the name of the creator and provide a description of the industrial design. So when the United States of America and Japan become active members of the Hague Sys- tem, the same kind of safeguards and assistance will come into opera- tion and facilitate users’ compliance with their respective declarations.
Thus, the interface will invite an applicant designating the United States of America to provide the name of the creator and, once this first requirement is complied with, dynamically use that data to prepare the required oath, ready for the creator’s signature13. Similarly, the inter- face will reuse the product indication provided by the applicant to pro- pose a specific text for the claim, leaving to the applicant to confirm or amend. And just like the automated fee calculation sets aside the appli- cation of Korea’s individual fee in favor of the lower standard fee when- ever the application is made for products belonging to class 2, 5 or 19, it
11 Estonia, Kyrgyzstan, Romania, Singapore, the Syrian Arab Republic and Tajikistan already made a declaration under Article 13 of the 1999 Act.
12 91% of all international applications received during the first quarter of 2015 were filed through that interface as opposed to the paper form being used.
13 Alternatively, an existing oath can be uploaded as a pdf. Furthermore, in case of impossibility to provide such a declaration, for example, where the inventor is deceased, a Substitute Statement in lieu of a Declaration of Inventorship could be submitted.
will set aside the full amount of the individual fee for the United States of America in favor of one the two reduced amounts thereof as soon as the applicant has asserted «small entity» or «micro entity» status by ticking the relevant option boxes. The interface will furthermore facil- itate the claiming of that latter status by pointing to the website of the United States Patent and Trademark Office (USPTO) from which the necessary certification form can be filled in and uploaded as part of the international application14. The electronic filing interface will not, how- ever, tell an applicant whether the conditions to fulfill in order to claim either small or micro entity status are met as these are a matter of domes- tic law in the United States of America. For the same reason, the Inter- national Bureau will not challenge the assertions made by the applicant as to his economic status under US law.
Similarly, just like today users designating the Republic of Korea are reminded of the declaration relating to specific views, the system will remind them of Japan’s declaration in that respect. But here again, the interface will not go as far as telling an applicant if the filed reproduc- tions do satisfy this requirement. Nor will the examiner at the Interna- tional Bureau look into the matter. Such examination would be futile and obtrusive since the reasons for requiring specific views under the national legislation concerned relate to substantive examination as well as to legal certainty issues15. In other terms, more than just a purely for- mal matter, a requirement expressed through a declaration under Rule 9(3) is related to substance. This point to a more profound consideration that users will need to have more and more frequently in mind as the Hague System expands to an increasing number of examining jurisdic- tion, which is that someone at the other end of the international regis- tration process will be appreciating their design and its disclosure from a substantive point of view.
14 The requirements to qualify for a reduction for micro entity status are set forth in 37 CFR 1.29 (law of the United States of America) and detailed in Section 509.04 of the Manual of Patent Examining Procedure.
15 Incidentally, it results from Rule 9(4) a contrario that noncompliance with a require- ment expressed through a declaration under Rule 9(3) entitles the Office con cerned to issue a refusal.
