WIPO Global Forum Of Intellectual Property Authorities Geneva, September 17-18, 2009 Panel 5B: Industrial Design Registration Key Design Issues Andrew Parkes Special Reporter (Trade Marks & Designs) FICPI

FICPI International Federation of Intellectual Property Attorneys, established 1906 Membership solely of intellectual property attorneys in private practice About 5,000 members in 86 countries/regions Broadly representative of the free profession Purpose: to serve interests of members and their clients

FICPI and Designs Long-standing interest in field of design protection Dedicated working group on designs Rome Symposium 2001 Active in the SCT Regards design registration as important form of protection for innovation

Enhancing Design Protection Internationally - Difficulties for Users Laws and practices differ around the world 56 members of the Hague System, of whom 35 are members of the Geneva Act But differences in national/ regional laws affect design protection whether or not the Hague System is used

Key Design Issues Substantive No international minimum requirements for subject matter that can be registered Ideal: a broad definition of designs Designs no longer strictly “industrial” European Community law defines ‘product’ as any industrial or handicraft item But Paris Convention, Hague Agreement and TRIPs all refer to “industrial designs”

Definition of ‘Design’ European Community law ‘design’ means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation CDR Art. 3a; HD Art. 1a

Definition of ‘Product’ European Community law ‘product’ means any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs CDR Art. 3b; HD Art. 1b

Patentable designs US law ‘Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor …’ 35 U.S.C. 171 Basic difference in approach to graphic symbols, for example. Overlap with trademarks in Europe. Computer icons: protectable as 2-dimensional design or as part of a display screen? Or not at all? New FICPI Survey to be carried out.

Interpretation of Design Registrations Desirable to have consistent interpretation of the scope of rights granted –Effect of claim –Effect of Statement of Novelty –Effect of description of characteristic features –Effect of markings on drawings, e.g dotted lines, shading

Effect of Classification Desirable to have consensus on whether the scope of protection is limited to: –The product(s) indicated in the application –Products in the same Locarno class or sub-class –Any products whose design produces a similar overall impression What products infringe? What products are relevant to novelty?

Functional features Desirable to have consensus on functional features –To what extent may they be registered? –To what extent are they protected if design is registered for article as a whole?

Grace Period Many countries/regions allow disclosure in certain period of time before filing or priority date, in certain circumstances, without affecting novelty But exceptions and varying time periods are traps for users

Key Design Issues Formalities Discussed at the SCT 20 th and 21 st Sessions Next discussion at the 22 nd Session Looking for possible areas of convergence in design law and practice Practical importance for users to see these accepted

Scenario: Applicant filing a first application for protection of a design Hoping to file around the world with Paris Convention priority Using Hague Agreement (Geneva Act) or national applications Wants to be able to use one set of drawings for all applications Reproduction of the Design (Representations)

Issues regarding Representations Maximum numbers of views allowed Obligatory views Acceptability of dotted or broken lines to represent matter that is not part of the design Acceptability of shading to distinguish the design from parts of the article that do not contribute to the design

Issues regarding Representations (2) Use of colour Photographs

Multiple Design Registrations Number of designs allowed in one application Common characteristics –Same Class –Same distinctive character –Unity of design, unity of production, unity of use Variants

Novelty Issue for Designs Design must be novel for valid protection Grace period in some countries/regions but not all Grace period generally for “own” disclosure or bad faith disclosure only

Novelty Issue (2) Because of novelty requirement, important for applicant to keep filing date and priority date If novelty would be lost, applicant CANNOT refile an application to meet local requirements.

Searching Designs Users need fully searchable and user- friendly databases FICPI Design Group has done a Design Searching Survey among our members Responses from 34 countries/regions around the world Accessible as EXCO/US09/CET/1203 at

FICPI Searching Survey Substantial majority of databases in this survey are searchable online, e.g by proprietor name, title or Locarno Class Substantial majority of databases allow representations to be viewed Few make the Statement of Novelty or Claim available

Searching by Visual Features Locarno Classification lists products in which designs are incorporated. Some Offices also apply Vienna Classification of Figurative Elements of Marks to designs, as supplementary tool. Need for system to classify designs by appearance

Ad Hoc Group of the Locarno Union Pilot Group study Pilot Group proposal for a system to facilitate searches for designs by reference to visual features. Common Categories: shape and/or ornamentation, surface and colour. Concentrating on Class 6 (furniture). Indexing system currently under trial. Much work to be done.

Conclusion FICPI sees increasing international recognition of the importance of designs. We encourage greater participation by Member States in the work of the SCT on designs. We are pleased to assist as observers in this work and in the study on reform of the Locarno Classification.