ELZABURU Blog - Industrial and Intellectual Property

Author Archives: Elzaburu

Fashion Law. Design protection in the fashion sector (II)

ELZABURU has had the pleasure of working together with the publisher Thomson-Reuters Aranzadi on Fashion Law, a pioneering work in Spain on the subject of fashion law, which was presented on 16 April.

In these short weekly summaries, the professionals at ELZABURU who participated in the work offer us a brief outline of their contributions:

Design protection in the fashion sector.

If there is a word that is inextricably linked with the world of fashion, it is “design”.

The second chapter looks at industrial designs from the legal standpoint, as an appropriate form of industrial property for protection of creations in the fashion sector and as a sort of formal innovation in reference to the features of a product’s appearance per se or its ornamentation.

A brief introduction sets out the legal concept of a “design”, the requirements for protection and the content of the right in the registered design.

It goes on to provide a practical and concise outline of the possible strategies for design protection that a company in the fashion sector can adopt, with reference to the different instruments of protection available under the current legal framework, particularly the concepts of registered and unregistered designs, grace period and deferment of publication, and to how a company in the fashion sector can make use of these concepts in each situation.

Given the increasingly globalised world in which we live, there is naturally a section that deals with the territorial extension of protection of designs and possible strategies for internationalization, focusing in particular on the supranational systems for protection, such as the Community design at the EUIPO and the international design at WIPO, setting out their advantages.

The chapter also touches on the relationship between industrial designs and copyright in the field of fashion. In theory, these two types of protection are accumulative in some cases if the design in question is held to possess the sufficient degree of originality and creativity to be protected as an artistic work. However, many creations in the world of fashion are for goods destined for mass consumption and industrial production, which are unlikely to be classed as artistic works.

The chapter concludes with a section setting out real cases, some of which are certainly unusual, relating to industrial designs in the fashion sector, which the author of the chapter has come across in his years of practice in the field of industrial designs and wanted to share with readers.

 

Authors: Pedro Saturio 

Visit our website: http://www.elzaburu.es/en

 

Blog entries in the series Fashion Law:

1.Trademark protection in the fashion sector (23.04.2018)

2.Design protection in the fashion sector (30.04.2018)

3.Patent protection in the fashion sector (07.05.2018)

4.Protection of fashion through copyright (21.05.2018)

5. Image rights in the fashion sector (28.05.2018)

6.Fashion Law. Data Fashion (04.06.2018)

7.Counterfeiting in the fashion sector (11.06.2018)

8.Exhaustion of rights in the fashion sector (18.06.2018)

9.Corporate reputation in the fashion sector (25.06.2018)

10. Protection of the commercial imagen of a fashion brand (04.07.2018)

11. Websites, Apps & Social Networks (13.07.2018)

12. Valuation of intangible assets (17.07.2018)

13. Licensing (06.09.2018)

Fashion Law. Trademark protection in the fashion sector (I)

ELZABURU has had the pleasure of working together with the publisher Thomson-Reuters Aranzadi on Fashion Law, a pioneering work in Spain on the subject of fashion law, which was presented on 16 April.

In these short weekly summaries, the professionals at ELZABURU who participated in the work offer us a brief outline of their contributions:

Trademark protection in the fashion sector.

The first chapter deals with trademark protection in the fashion sector. It explains in a clear, straightforward and practical manner the main aspects to be taken into account when defining the most appropriate protection strategy in this sector. It provides guidance on what protection to seek, what it should cover and where protection should be sought. In addition to theoretical aspects, it also sets out a number of real examples showing the different types of trademarks available, the classes of goods and services most closely connected with fashion, and the different national, supranational and international systems of protection.

The first step in the strategy is choosing which trademark to register. This chapter provides an explanation of the characteristics of the different types of trademark, focusing on those of particular interest for the fashion sector.

In addition to choosing the most suitable trademark, it is also necessary to formulate a comprehensive and appropriately worded specification of the goods and services to be covered by the trademark. This will help to avoid any potential formal objections during the prosecution of the trademark application at the Trademark Office and will also provide a basis, once the trademark has been registered, for an effective defence of the trademark against competitors.

Another aspect that is covered is the territorial scope of the registered trademark and the best strategy to adopt in a process of internationalization of the trademark.

It also describes the main obstacles that a trademark application can encounter during prosecution, setting out numerous examples of real cases involving trademarks from the fashion sector and suggesting measures to minimise the risks in the process of registering a trademark or to overcome any potential obstacles that might arise.

The chapter also deals with an extremely important aspect, namely, monitoring and defence of a trademark with respect to new trademark filings by competitors. Only by means of proper monitoring is it possible to detect the most problematic new filings that could be detrimental to the exclusive rights in the mark and its reputation. The chapter also suggests measures for a more effective defence.

It naturally also covers strategies for trademark use in the fashion sector. In addition to the more common forms of use of a trademark, the fashion sector offers other more innovative forms, which likewise constitute valid uses of a trademark from a legal standpoint. The chapter analyses each of these possible uses and, by way of illustration, provides several real examples of trademarks from the fashion sector. The final section deals with the processes for updating trademarks and outlines the potential risks of loss of protection that these processes may entail and the best strategy to maintain full protection during the process of adapting to new uses in the marketplace.

In short, the chapter focuses on the aspects of most interest to businesspeople in this sector who are seeking to obtain or strengthen protection for their trademarks and who need to gain an idea of the possible conflict scenarios that they must bear in mind when defining their trademark strategy and their protection at national, European and international level.

Authors: Fernando Ilardia y Cristina Velasco

Visit our website: http://www.elzaburu.es/en

 

Blog entries in the series Fashion Law:

1.Trademark protection in the fashion sector (23.04.2018)

2.Design protection in the fashion sector (30.04.2018)

3.Patent protection in the fashion sector (07.05.2018)

4.Protection of fashion through copyright (21.05.2018)

5. Image rights in the fashion sector (28.05.2018)

6.Fashion Law. Data Fashion (04.06.2018)

7.Counterfeiting in the fashion sector (11.06.2018)

8.Exhaustion of rights in the fashion sector (18.06.2018)

9.Corporate reputation in the fashion sector (25.06.2018)

10. Protection of the commercial imagen of a fashion brand (04.07.2018)

11. Websites, Apps & Social Networks (13.07.2018)

12. Valuation of intangible assets (17.07.2018)

13. Licensing (06.09.2018)

United Kingdom joins the Hague System for registration of international designs.

On 13 March 2018, the United Kingdom ratified its membership of the Hague System for protection of international designs, which will come into effect in the UK on 13 June 2018.

Therefore, from 13 June 2018, it will also be possible to obtain protection for a design in the United Kingdom by means of an international design application under the Hague System. This provides some breathing space for applicants seeking to protect their designs in the United Kingdom, given that Brexit has given rise to serious doubts as to whether the United Kingdom will remain in the European Union’s Community design system.

The United Kingdom thus joins other major countries active in the field of industrial designs that have also acceded to the Hague Agreement in recent years, such as South Korea, USA, Japan and Russia.

There are currently 68 Contracting Parties, including two intergovernmental organizations (the European Union and the African Intellectual Property Organization), and other countries such as China, Canada, Israel and Mexico are also expected to join in the near future.

The following are some of the advantages of the international registration:

  • Application and renewal procedures centralized at the International Bureau (WIPO).
  • Payment of one set of fees, which is normally less expensive than filing several national applications.
  • Straightforward handling of recordals of changes to the owner’s name or address and changes of ownership.

The Hague System is therefore an increasingly attractive option for those applicants seeking protection for their designs in several countries belonging to the System.

Author:  Pedro Saturio

Visit our website: http://www.elzaburu.es/en

     

The European Commission presents its Draft Withdrawal Agreement on the withdrawal of the United Kingdom – Brexit

In a bid for complete transparency, this past 28 February 2018 the Commission, in phase 2 of the negotiating process, made public its Draft Withdrawal Agreement for the countries of the European Union, setting out its proposals for solutions to the inevitable consequences Brexit will bring. Title IV of the Draft deals with Intellectual Property rights, including not just trade marks but also designs, plant variety rights, geographical indications, and designations of origin.

The Commission’s proposal is that the owners of rights registered in the European Union before the end of the transition period should automatically own those same rights in the United Kingdom without having to apply for registration in Britain, without being subject to examination by the British Authorities, and without having to pay for protection of their rights.

In its turn, in a letter sent to the British Government last December 2017, British Intellectual Property practitioners asked the Government to ensure continuity of the protection conferred by the European-wide intellectual property system, in which the United Kingdom has been an active participant, since it is regarded as one of the linchpins for being able to carry on normal business operations.

The position and interests of British practitioners thus appears to converge with the Commission’s proposal in respect of intellectual property rights. The position taken by the British Government remains to be seen.

One of the main stumbling blocks that has arisen in this phase of the negotiations between the Commission and the British Government to draw up a common text for the Withdrawal Agreement is setting a date for the end of the transition period. In its draft released in February, the Commission proposed a final date of 31 December 2020, that is, 21 months after the date set for Brexit, which is 29 March 2019. The British Government considers two years to be a suitable time period but does not want to commit to a hard date and proposes remaining in the single market and Customs Union as long as necessary.

The issue of the end of the transition period is to be discussed at the next meeting of European leaders, scheduled to take place in Brussels at the end of March. Judging from recent statements made by certain authorities, the position of the Government of Spain on this issue is the same as the Commission’s. It sees little point for either the European Union or the United Kingdom in keeping the UK in a system that it would have to continue funding even though it would not be able to take part in decision-making, since it would no longer be present in the institutions of the European Union.

The Member States have displayed unity and consensus during this process of withdrawal by the United Kingdom from the European Union, and they have taken a positive, constructive stance in seeking solutions that do not punish the United Kingdom but instead lay the groundwork for future relations with the UK when the transition period has ended and it ceases to be an EU Member State.

Still, the possibility that the negotiations may fail cannot be ruled out. In this respect, at the same time as it has been drawing up a draft text as a basis for agreement, the Commission has also taken this into account and warned the various economic operators of the possible repercussions that would ensue from a failure to reach agreement.

Spanish companies should therefore be aware that there is a risk that their trade mark rights could cease to have effect in the United Kingdom on 29 March 2019, and for this reason, at least for those companies interested in the British market, it could make sense for them to register their brands as national marks in the United Kingdom, even though their marks have already been registered with EUIPO as EU marks.

We should therefore keep an eye on developments in the negotiations between the Commission and the British Government. The Commission has done its homework and has published its draft Withdrawal Agreement. The ball is now in the British Government’s court.

 

Author: Catherine Bonzom

Visit our website: http://www.elzaburu.es/en

How to determine whether design features are solely dictated by their technical function

In its recent judgment C-395/16 of 8 March 2018, DOCERAM vs. CeramTec, the Court of Justice addressed the controversial issue of the bar against registering a shape dictated solely by its technical function as a Community design. Article 8(1) of Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community Designs (CDR) sets out this bar to registration in those terms. As stated in Recital 10 of that Regulation, its purpose is to prevent the grant of exclusive rights to the owner of an industrial design from interfering with technological innovation.

However, to date, interpretation of that Article by the national courts and by the EUIPO has not been uniform. Basically, two different approaches have coexisted side by side.

  1. On the one hand, there is the so-called multiplicity of forms approach, which holds that if there are different alternative forms of an object performing the same technical function, the design in question cannot be regarded as being dictated solely by its function. This criterion has been followed by the courts of various countries, France, Germany, and Spain among them.
  2. In recent decisions, however, the EUIPO has taken a different approach, which holds that what needs to be examined is whether the designer selected the design features based solely on their functionality or based on other considerations as well. Furthermore, this point is to be assessed from the standpoint of a reasonable, objective observer.

To date the CJEU has not had occasion to issue any ruling on this subject. The occasion has now arisen subsequent to a request for a preliminary ruling submitted by the Oberlandesgericht Düsseldorf in proceedings between the German companies DOCERAM GmbH and CeramTec GmbH. The former company owns several Community design registrations covering the shape of ceramic centring pins used with welding machines to hold the pieces to be welded in position.

In response to infringement proceedings brought based on those registrations, CeramTec GmbH counterclaimed seeking a declaration of invalidity on grounds that the designs were barred under Article 8(1) CDR. The counterclaim was successful, and DOCERAM appealed, contending that there were other, alternative forms that fulfil the same technical function for the product in question. At that point, the Düsseldorf court referred its questions to the CJEU for a preliminary ruling as to which criterion should be employed in assessing the bar to registration.

It turns out that the Court of Justice has rejected the multiplicity of forms doctrine. In its view, it does not follow either from Article 8(1) of the CDR or from any other provision of the Regulation that multiplicity of forms is the only criterion for determining application of the Article. Following the Advocate General’s opinion, the Court further ruled that applying this criterion would enable an operator who has registered various alternative forms fulfilling the same technical function to obtain, in practice, exclusive protection equivalent to patent protection without having to meet the requirements of a patent.

Therefore, the CJEU has taken the alternative approach, holding that what has to be considered is whether, when choosing the features of appearance of a product, considerations other than the need for it to fulfil its technical function, in particular those related to its visual aspect, have been taken into account. Thus, the Court concluded that for the bar to registration in Article 8(1) CDR to apply, a product’s technical function must be the only factor that has determined the features of the product’s appearance, the existence of other, alternative designs being irrelevant in that connection.

On the other hand, in its reply to the second question raised by the Oberlandesgericht Düsseldorf, the Court ruled that assessment of that point does not have to be based on the perception of an “objective observer”.

Instead, again following the opinion of the Advocate General, the Court has held that, in their assessments, the national courts need not base their findings on the perception of an “objective observer” but must take account of all the circumstances relevant to the case. The factors to be taken into account include, in particular, the design in question, the objective circumstances informing the choice of the features of appearance of the product, information on its use, and even the existence of alternative designs that fulfil the same technical function.

Clearly, the criteria set by the Court of Justice in this judgment do not particularly simplify the work of the national courts. This question of technical function will doubtless continue to be a significant source of controversy in proceedings dealing with the infringement and invalidity of industrial designs.

  Author: Carlos Morán

Visit our website: http://www.elzaburu.es/en

Search

Archivo

Formulario de suscripcion

Sí, soy humano*

Se ha enviado un mensaje de confirmación; por favor, haga clic en el enlace de confirmación para verificar su suscripción.
Este email ya está en uso
Debes escribir un email válido
Debes cliquear el captcha
El captcha no es correcto