May 2015

1. Designs

Australia

The Advisory Council on Intellectual Property (ACIP) recently released its report on the Australian designs system, which is the first comprehensive review of such law since the implementation of the Designs Act 2003.
Notable recommendations include:
• That the recommended changes be enacted as soon as practicable so as to address anomalies and bring Australian designs law into better alignment with equivalent laws of major trading partners, international treaties and proposed international treaties.
• That Australia should give serious consideration to joining the Hague Agreement and the proposed Designs Law Treaty for the harmonisation of filing requirements.
• Extending the maximum term to 15-years, but only if Australia joins the Hague Agreement.
• Using the term ‘uncertified design’ for designs that have been registered but not certified to make it clearer that the design does not confer enforceable rights until certified.
• Requiring a request for examination of the design by the first renewal deadline (five years).
• Introducing a system of opposition following certification, provided the request for examination recommendation is accepted.
• Reducing the fees payable for each additional design in multiple design applications.
• Having automatic publication at six months after the filing date, with the possibility to request publication earlier if desired.
• Allowing the Statement of Newness and Distinctiveness to be amended, in ways that identify particular visual features of the design as new and distinctive, up to the point of certification.
• Introducing a grace period of six months before the filing date (subject to the filing of a declaration), together with a prior user defence.
• Allowing partial product registrations if there are significant advantages to Australian applicants and that it does not give rise to substantial practical or legal issues overseas.
• Introducing border protection measures that align with the Trade Marks and Copyright Acts (Notice of Objection Schemes) to allow for the seizure by Customs of alleged design infringements which are identical to certified designs.

Europe

In Senz Technologies BV v OHIM a European General Court overturned a Board of Appeal decision which had held that two umbrella designs were invalid on account of being anticipated in a prior US patent. Both of Senz’s designs and the prior US patent disclose an asymmetrical umbrella with a mirror image along one axis and an off-centre support shaft.
While ultimately overturning the Board of Appeal decision, the General Court upheld many of the Board of Appeals findings. Firstly, the US patent was held to be prior art that could reasonably be known to the circles specialised in the sector concerned within the European Union. The USPTO database is freely accessible and it would be remiss of a European specialist in the sector concerned not to search it given that the US has a strong design history and it is also a primary trading nation with Europe.
The General Court also agreed with the Board of Appeal’s characterisation of the informed user as someone wishing to use an umbrella, who needs to purchase one and who has become informed on the subject. The informed user knows the various models of umbrella and the features which they normally have and will show a relatively high degree of attention, but neither the unusual shape of the umbrellas at issue nor the fact that they may be solely a fashion accessory affects the informed users level of attention.
It was common ground between the parties that the umbrellas are intended to be highly wind resistant and this places design limitations on the possibilities for varying the shape and depth of the canopy, ribs and eye savers. Consequently, the degree of freedom of the designer in the present case is limited, meaning that even minor differences between the earlier patent and the contested designs suffice to produce different overall impressions on the informed user.
In comparing the designs the General Court found significant differences in the overhead, lateral and underneath views of the respective designs, particularly with respect to the canopy shapes. In making that assessment the General Court noted that appearance of an asymmetrical umbrella may be regarded as innovative or even original, but it is not so striking that a user would lose sight of all the other notable features of the umbrella.

2. Trade Marks

Europe

In Louis Vuitton Malletier (LVM) v OHIM a General Court of the Court of Justice upheld a Board of Appeal of OHIM decision which held that LVM’s Community trade mark for a brown and beige chequerboard pattern is invalid. The Board of Appeal of OHIM held that the chequerboard pattern was a basic and banal feature composed of very simple elements and that it was well-known that that feature had been commonly used with a decorative purpose in relation to various goods, including the class 18 goods covered in the specification. Further, it held that the chequerboard pattern lacked features capable of distinguishing it from other representations of chequerboards, and so was not capable of fulfilling the essential identification or origin function of a trade mark. Furthermore, it held that LVM’s evidence did not establish that the mark had acquired distinctive character through use, either before or even subsequent to the application to register the mark.
The General Court noted that distinctive character must be assessed, firstly by reference to the products or services in respect of which registration has been applied for, and secondly by reference to the perception of the relevant public, which consists of average consumers of the products or services in question, who are reasonably well informed and reasonably observant and circumspect.
With regard to the first assessment it was noted that the goods in question may contain fabric parts, meaning that the pattern at issue may cover their surface and thus correspond to the outward appearance of the goods. On this basis the General Court held that the Board of Appeal was correct to hold that the mark lacked distinctiveness since it coincided with the appearance of the product in question. It was also noted that the pattern does not contain any notable variation in relation to the conventional representation of chequerboards and is the same as the traditional form of such a pattern. Similar conclusions regarding the conventional nature of the mark were found in relation to its weft and warp structure and the brown and beige colours. The General Court found that these components had correctly been assessed by the Board of Appeal of OHIM, both separately and as a whole.
While accepting that there was some ambiguity, the General Court clarified that the Board of Appeal had correctly assessed acquired distinctiveness on the basis of evidence up to the date of the application for a declaration of invalidity. In particular it had not restricted its assessment to evidence up to the date of application for registration. Regarding evidence of distinctiveness LVM argued that it should only have to demonstrate acquired distinctiveness in a substantial portion of the countries that were members of the EU at the application filing date. However, the General Court concurred with the Board of Appeal finding that acquired distinctiveness needs to be shown for all countries that were members of the EU at the application filing date. The General Court held it would be paradoxical to require a Member State to refuse to register as a national mark a sign that is devoid of any distinctive character in its territory and, on the other hand, that that same Member State has to respect a Community trade mark relating to that sign for the sole reason that it has acquired distinctive character in the territory of another Member State.

United Kingdom

In Starbucks (HK) Ltd v British Sky Broadcasting Group PLC the UK Supreme Court’s assessment of the conditions required for establishing passing off confirms a divergence with the test that is applied in Australia and New Zealand.
Starbucks (HK) have established reputation in Hong Kong for the name NOW TV in relation to TV content provided over the internet, with that name being used since 2006. While Starbucks (HK) do not operate in the UK they claimed to have reputation in that brand in the UK on account of travelers between the countries and also on account of its presence on the internet. Starbucks (HK) sought to use that alleged reputation to prevent Sky from using NOW TV as the name of its new internet TV service, which it launched in July 2012.
In essence Starbucks (HK) argued for recognition of ‘spillover’ reputation. Spillover reputation allows for reputation in another jurisdiction in the assessment of reputation in the jurisdiction of interest if it can be shown that there is a mechanism (usually travelers) by which that reputation would reach a sufficient proportion of relevant consumers in the jurisdiction of interest. Since the 1990’s spillover reputation has been accepted as a valid consideration in the assessment of passing off actions in Australia and New Zealand.
However, agreeing with both the High Court and the Court of Appeal, the Supreme Court rejected Starbucks (HK)’s argument. It maintained the UK policy that a claimant in a passing off claim has to establish that it had actual goodwill in the jurisdiction and that such goodwill involved the presence of clients or customers in the jurisdiction for the products or services in question. Spillover reputation or mere awareness of the claimant within the jurisdiction is not sufficient to amount to goodwill.