Enforcement of International Registrations under the Geneva Act of the Hague Agreement A Pan-European Perspective

Enforcement of International Registrations under the Geneva Act of the Hague Agreement A Pan-European Perspective Dr Henning Hartwig BARDEHLE PAGENBERG Partnership Prepared for AIPLA Annual Meeting Washington D.C. October 25, 2012 hartwig@bardehle.de 1

I. Introduction The Hague System for the International Registration of Industrial Designs provides a mechanism for registering a design in countries and/or intergovernmental organizations which are member of the Hague Agreement. It is administered by the International Bureau of WIPO located in Geneva, Switzerland. The System offers the owner of an industrial design a means of obtaining protection in several countries by simply filing one application with the International Bureau of WIPO, in one language, with one set of fees in one currency (Swiss Francs). 1 The Hague Agreement Concerning the International Registration of Industrial Designs, originally from 1924, is constituted by three different Acts, namely: 2 (1) The London Act of June 2, 1934 ( London Act ) (2) The Hague Act of November 28, 1960 ( Hague Act ) (3) The Geneva Act of July 2, 1999 ( Geneva Act ) More than 30 countries and/or intergovernmental organizations joined the Hague Agreement within the last 12 years: The total number of Contracting Parties is 60 (December 31, 2011) 1 2 http://www.wipo.int/hague/en. The texts of all treaties are available on http://www.wipo.int/hague/en/legal_texts. 2

II. Establishing Design Rights under the Geneva Act A. Conditions 1. Who (authorized applicants)? Not everyone is allowed to file an international application. The entitlement is limited to natural persons or legal entities having a real and effective industrial or commercial establishment, or a domicile, in at least one of the Contracting Parties to the Hague Agreement, or being a national of one of these Contracting Parties, or of a Member State of an intergovernmental organization that is a Contracting Party. 3 2. Where (territories of protection)? Protection can be obtained in all countries or intergovernmental organization ( Contracting Parties ) party to the Hague Agreement, by designating the Contracting Party in which protection is desired. Since January 1, 2008, the European Union ( EU ) is a party to the Geneva Act. 3. What (content of application)? An international application must be filed in English, French or Spanish on the official form or through the electronic filing (E-filing) 4 interface made available by the International Bureau on the WIPO website and must contain, inter alia, a reproduction of the industrial design concerned (photograph or other graphic representations), together with the designation of the Contracting Parties in which protection is sought. A single international application may comprise up to 100 different designs ( multiple application ) belonging to the same class of the international classification of Locarno 5. 6 Upon request, publication may be deferred for a maximum period of 12 months (under the 1960 Act) or 30 months (under the 1999 Act) from the filing date or the priority date. 7 An international application does not require any prior national application or registration. An industrial design can therefore be protected for the first time by way of an international registration and may cover all Contracting Parties, including the country of origin. 4. How (registration procedure)? An international application is normally sent directly to the International Bureau, either by way of E-filing or by using the paper application form. 8 The International Bureau (only) examines, whether the application complies with the formal requirements. The International Bureau does not examine for the presence of substantive requirements, such as novelty or individual character of the design. Substantive requirements are determined by the law of each Contracting Party. Thus, whether and to which extent a substantive examination is carries out is determined by each designated Contracting Party. 3 4 5 6 7 8 Article 3 Geneva Act. http://www.wipo.int/hague/en/forms. The latest edition of the Locarno Classification can be found at http://www.wipo.int/hague/en/classification.html. Article 5 Geneva Act. Article 5 (5) Geneva Act. http://www.wipo.int/hague/en/forms. 3

The international application found in order is recorded in the International Register and, unless deferment of publication has been requested, published in the International Designs Bulletin (on the WIPO website). This publication contains all the relevant data concerning the international registration, including a reproduction of the design. Upon publication, each Contracting Party for which protection is claimed is notified of the registration. Each Contracting Party is entitled to carry out any substantive examination provided for by its own legislation. A refusal of protection if any must be notified to the International Bureau within six months from the date of publication in the International Design Bulletin. Under the 1999 Act, however, any Contracting Party whose office is an examining office, or whose law provides for the possibility of opposition to the grant of protection, may declare that the refusal period of six months is replaced by a period of 12 months. 9 Examples of examining and non-examining Offices are: 10 no examination (ex officio) of validity broader examination BENELUX Germany Egypt (limited examination as to novelty) Bulgaria Greece Finland (limited examination as to novelty) Croatia Latvia Georgia (limited examination as to local novelty) Denmark Montenegro Hungary (examination of novelty not including designs whose applications were filed before but published after the date of the international application, or where any priority date lies before the date of application) Estonia Norway Iceland (limited examination as to novelty) European Union Singapore Kyrgyz Republic (substantive examination by patentability conditions, for novelty and originality before publication) France Slovenia Lithuania (limited examination as to novelty) Former Yugoslav Republic of Macedonia Turkey Republic of Moldova (examination as to universal novelty) In cases where the registration is refused by the office of a Contracting Party, the applicant has the same remedies as he would have if he had filed the application directly with the national office concerned. 11 The International Bureau is not involved in this procedure. If no notification of refusal has been sent within the refusal period, the registration is considered as granted. 5. How long (duration of protection)? International registrations are valid for an initial period of five years. They can be renewed for one or more additional periods of five years, depending on the maximum duration of protection allowed by each Contracting Party. 9 10 11 Article 12 (1) and (2) Geneva Act. On http://www.wipo.int/hague/en/members/profiles/index.jsp most of the Contracting Parties provide information on examination issues. Article 12 (3) lit b Geneva Act. 4

6. How much (costs)? B. Effects Costs of an international application consist of three different types of fees: 12 A basic fee; A publication fee; A standard fee or an individual fee for each designated Contracting Party. The effect of an international registration is laid down in Article 14 Geneva Act: The international registration shall, from the date of the international registration, have at least the same effect in each designated Contracting Party as a regularly-filed application for the grant of protection of the industrial design under the law of that Contracting Party. Consequently, the applicable law regarding any substantive questions as for example validity, scope of protection or alleged infringement of an international design is that of the Contracting Party where protection has been obtained. The International Bureau is not involved in any of these questions. III. Challenging Design Rights under the Geneva Act A. Applicable law Any substantive questions of validity of an international design are governed by the national law of each designated Contracting Party. Likewise, invalidity proceedings must be initiated with the competent authorities of each Contracting Party. B. A comparison: Law of selected Contracting Parties In the following, requirements for validity of registered designs are summarized for selected Contracting Parties (EU, Switzerland, Turkey and Norway) in order to identify both similarities and differences. The EU, in this regard, shall serve as a point of reference. 1. European Union According to Article 4 Community Design Regulation ( CDR ) 13 the requirements for protection of a Community design are: Novelty Individual character Novelty and individual character of a Community design have to be assessed by comparing the Community design with the existing design corpus. This results in the following order of tests as regards validity of a registered Community design: Disclosure (determination of the relevant prior art according to Article 7 CDR) Novelty (according to Article 5 CDR) Individual character (according to Article 6 CDR) 12 13 A schedule of fees as well as a fee calculator are available at www.wipo.int/hague/en/fees. Full text at http://oami.europa.eu/ows/rw/resource/documents/rcd/regulations/62002_en_cv.pdf. 5

a) Disclosure (Article 7 CDR) Article 7 CDR determines to what extent prior publications have to be taken into consideration as prior art: For the purpose of applying Articles 5 and 6, a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date referred to in Articles 5 (1) lit a and 6 (1) lit a or in Articles 5 (1) lit b and 6 (1) lit b, as the case may be, except where these events could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality. Thus, while the location of disclosure does not matter ( universal disclosure ), not every publication is capable to challenge validity of a registered Community design. The consideration of a publication as prior art depends on a reasonable possibility of getting knowledge in the normal course of business by the circles specialized in the sector concerned, operating within the Community. b) Novelty (Article 5 CDR) Pursuant to Article 5 (1) CDR, the requirement of novelty is fulfilled if no identical design has been made available to the public before the filing date or date of priority. Pursuant to Article 5 (2) CDR, designs shall be deemed to be identical if their features differ only in immaterial details. c) Individual character (Article 6 CDR) Pursuant to Article 6 (1) CDR a registered Community design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public ( ) before the date of filing the application for registration or, if a priority is claimed, the date of priority. Article 6 (2) CDR stipulates that the degree of freedom of the designer in developing the design shall be taken into consideration in assessing individual character. As regards the effect of the degree of freedom of the designer, the General Court of the European Union summarized the law as follows 14 : 14 Decision of September 9, 2011, Case T-11/08 Kwang Yang Motor v Honda Giken. 6

2. Switzerland a) Requirements for protection The requirements for protection of a registered design in Switzerland are determined in Article 2 of the Federal Act on the Protection of Designs of October 2001 (Swiss Designs Act) 15 : Article 2 (1) Swiss Designs Act: A design shall be protected to the extent that it is new and has individual character. Article 2 (2) Swiss Designs Act: A design is not new if an identical design has been made available to the public prior to the filing date or priority date in case that this design could have been known to the relevant public operating within Switzerland. Article 2 (3) Swiss Designs Act: A design does not have individual character if its overall impression differs only in immaterial features from a design which could have been known to the relevant public operating within Switzerland. b) Comparison with Community Design Regulation A comparison of the requirements for protection of a design in Switzerland with EU standards shows that the wording of the basic requirements ( novelty and individual character ) is more or less the same. However, the following differences can be identified: Whereas the Community Design Regulation uses the term immaterial details in connection with the novelty test, this terminology can be found in Article 2 (3) of the Swiss Designs Act, specifying the requirements for individual character. Whereas, according to European case law, individual character of a Community design has to be determined by way of a one-to-one comparison of two designs, the Swiss Supreme Court considers the overall impression of the respective design retained in the short-term memory of a potential purchaser as decisive: 15 German, French and Italian version to be found at http://www.wipo.int/wipolex/en/details.jsp?id=11905. 7

Article 6 CDR uses the term informed user while the Swiss Supreme Court claims the potential purchaser as being decisive. 3. Turkey a) Requirements for protection The requirements for protection of a registered design in Turkey are determined in Articles 5 to 7 of the Turkish Decree Law No. 554 ( Turkish Designs Act ) 16. Article 5 (1) Turkish Designs Act: Protection shall be granted to a design that is new and has individual character. Article 6 Turkish Designs Act: A design shall be considered new if, before the reference date, no identical design has been made available to the public in the world. Designs differing only in immaterial details shall be deemed identical. The notion of making available to the public shall cover all forms of sale, use, publication, advertising, display or other such activities. Article 7 (1) Turkish Designs Act: A design shall be regarded as having individual character if the overall impression that it conveys to the informed user is significantly different from the overall impression conveyed to the same user by any design referred to in the second paragraph of this Article. Article 7 (2) Turkish Designs Act: For any other design to be used to determine, by comparison, the individual character of a design: (a) it shall have been made public in Turkey or elsewhere in the world before the application date; or (b) it shall have been published by the Institute as a registered design, and its term of protection shall not have expired on the application date of the design with which it is to be compared. Article 7 (3) Turkish Designs Act: When individual character is determined, emphasis shall be placed on the common features of the designs, and the degree of freedom exercised by the designer in developing the design shall also be taken into consideration. b) Comparison with Community Design Regulation A comparison of the requirements for protection of a design in Turkey with EU standards shows that the wording of the basic requirements ( novelty and individual character ) is more or less the same; Article 6 (2) Turkish Designs Act identical to Article 5 (2) CDR considers immaterial detail as not detrimental to novelty; as regards individual character, Article 7 Turkish Designs Act also uses the term informed user and Article 7 (3) Turkish Designs Act more or less corresponding to Article 6 (2) CDR stipulates that the degree of freedom of the designer shall be taken into consideration. However, the following differences can be identified: Whereas Article 7 CDR determines one single standard for considering prior art in view of novelty and/or individual character, the Turkish Designs Act appears to provide two different tests of disclosure. 16 English version to be found at http://www.wipo.int/hague/en/legal_texts/laws.jsp?code=tr. 8

Furthermore, according to Article 7 (2) lit b Turkish Designs Act, and as regards individual character, registered designs amount to relevant prior art only if still active and not expired (which is not provided by Article 7 CDR). Whereas Article 6 (2) CDR only speaks of a different overall impression without determining the necessary degree of differences, Article 7 (2) Turkish Designs Act explicitly requires a significantly different overall impression. 4. Norway a) Requirements for protection The requirements for protection of a registered design in Norway are determined in Sections 3 to 5 Norwegian Designs Act 17 : Section 3 (1) Norwegian Designs Act: Design right may only be granted if the design is new and has individual character. Section 3 (2) Norwegian Designs Act: A design shall be considered new if no identical design has been made available to the public before the date of filing of the application for registration or before the date of priority, if priority is claimed ( ). Designs shall be deemed to be identical if their features differ only in immaterial details. Section 3 (3) Norwegian Designs Act: A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date referred to in the second paragraph. In assessing individual character the degree of freedom of the designer in developing the design shall be taken into consideration. Section 5 Norwegian Designs Act: A design shall be deemed to have been made available to the public under this Act if it has been published following registration or otherwise. The same shall apply if the design has been exhibited, used in trade or otherwise disclosed. The design shall nevertheless not be regarded as having been made available to the public if 1. it could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned operating within the EEA 18 through circumstances, as referred to in the first paragraph, before the date of filing of the application for registration or, if priority is claimed, before the date of priority ( ), or 2. it has solely been disclosed to other persons under explicit or implicit conditions of confidentiality. b) Comparison with Community Design Regulation Norway, as Member State of the EEA, accepted to adopt its legislation to EU law. Thus, the Norwegian Designs Act implements EU Directive 98/71/EC on legal protection of designs so that Norwegian requirements for design protection correspond to those stipulated in the CDR (which is in this regard not different from the Directive). 17 18 English version to be found at http://www.wipo.int/hague/en/legal_texts/laws.jsp?code=no. European Economic Area. 9

C. Conclusion Although the terminology of the basic requirements for protection are more or less the same, comparing EU design law with Swiss and Turkish design law shows that the standards for testing disclosure, novelty and individual character are different to some extent. IV. Enforcing Design Rights under the Geneva Act A. Applicable law Any substantive questions of enforcing design rights under the Geneva Act, such as determining the scope of protection of an international design registration, is governed by the national design law of each designated Contracting Party. Likewise, any procedural issues related to the enforcement of an international design registration are ruled by the national procedural law of each Contracting Party. B. A comparison: Law of selected Contracting Parties In the following, the test for infringement of an international design registration is reviewed on the basis of the legislation of four Contracting Parties (EU, Switzerland, Turkey and Norway) in order to identify both similarities and differences. The EU, again, shall serve as a point of reference. 1. European Union Pursuant to Article 10 (1) CDR, the scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression. Further to that, Article 10 (2) stipulates that the degree of freedom of the designer in developing his design shall be taken into consideration. Consequently, the infringement test consists of two separate steps: (1) Determining the (degree of) scope of protection of the asserted design (Article 10 [2] CDR) (2) Comparing the asserted and accused design in order to find or deny a different overall impression (Article 10 [1] CDR) 2. Switzerland a) Infringement test Pursuant to Article 8 Swiss Designs Act 19, the scope of protection of a design shall include all designs having the same characterizing features and, therefore, producing the same overall impression. 19 A German, French and Italian version of the Swiss Designs Act can be found on http://www.wipo.int/wipolex/en/details.jsp?id=11905. 10

b) Comparison with Community Design Regulation A comparison between Swiss and EU standards for finding infringement of an international design registration shows that, notwithstanding consistent terms ( same overall impression ), some major differences can be identified: Swiss design law apparently does not provide, different from Article 10 (2) CDR, an independent step of determining the scope of protection of a design. Whereas Article 10 (1) CDR requires no different overall impression only, without determining the necessary degree of differences, Article 8 Swiss Designs Act explicitly requires the same characterizing features which is more detailed. It seems that, as in case of testing validity, Swiss design law will apply the shorttime-memory test of a potential purchaser when comparing the asserted and accused design in order to find infringement, whereas under the CDR a side-by-side comparison is the general rule. A further difference applies as regards the relevant person comparing the two designs (informed user versus potential purchaser). 3. Turkey a) Infringement test The standards for testing infringement of an international design registration are set in Article 11 Turkish Designs Act: Article 11 (1) Turkish Designs Act: In determining the scope of protection all designs which produce on the informed user a significantly similar overall impression in conformity with Article 7 shall be taken into consideration. Article 11 (2) Turkish Designs Act: In determining the scope of protection, common features shall be given more weight than differences and the degree of freedom of the designer in the development of the design shall be taken into consideration. b) Comparison with Community Design Regulation Comparing Turkish and EU standards for infringement shows that the basic requirements ( same overall impression ) are more or less the same. Article 11 (1) Turkish Designs Act also uses the term informed user while the degree of freedom of the designer shall be taken into consideration. However, the following differences can be identified: Whereas Article 10 (1) CDR requires no different overall impression when comparing asserted and accused design in order to deny infringement, Article 11 (1) Turkish Designs Act requires a significantly similar overall impression for finding infringement. Whereas the wording of Article 10 CDR does not provide a link to the validity test to be carried out under Article 6 CDR, Article 11 (1) Turkish Designs Act requires a significantly similar overall impression in conformity with Article 7, i.e., test for individual character, for finding infringement. 11

Whereas Article 10 (2) CDR requires to consider the degree of freedom of the designer, in assessing the scope of protection of a design, pursuant to Article 11 (2) Turkish Designs Act common features shall be given more weight than differences and the degree of freedom of the designer in the development of the design shall be taken into consideration. 4. Norway a) Infringement test Pursuant, to Section 9 (2) Norwegian Designs Act, the design right shall apply to any design that does not produce on an informed user a different overall impression. In assessing the scope of the design right, the degree of freedom of the designer in developing the design shall be taken into consideration. b) Comparison with Community Design Regulation Since the Norwegian Designs Act implemented EU Directive 98/71/EC on legal protection of designs, the requirements for infringement correspond to those stipulated in the CDR. C. Exemplary Case Law 1. German Federal Supreme Court Writing Utensils 20 In the underlying case, the claimant was the owner of the international design registration DM/64576 and a corresponding national Polish design registration. No. 23 25 of the International design registration claimed protection for, inter alia, Germany and showed the following representations: No. 23 No. 24 No. 25 The defendant produced and distributed the following ball pens in Poland and Germany, replicating the intermediate portion of the International designs registration (No. 24 25): 20 German Federal Supreme Court, decision of March 24, 2011 Case I ZR 2011/08 Writing Utensils. 12

The parallel infringement proceeding in Poland based on the national Polish design registration was unsuccessful. As regards the relation of the Polish and German proceedings the German Federal Supreme Court found 21 : The action before the Polish courts concerned Polish design No. 6751, the protection of which is restricted to Poland. The subject matter of the present proceedings is the protection of plaintiff s designs 23 25 of international design registration no. DM/064576 protection for which is limited to Germany. Accordingly, the two proceedings are based on different causes of action (territorially restricted protection in Poland or in Germany) and different facts (infringement of different rights). Nor, in the light of the fact that the registered designs concern different countries of protection, is there a risk that the decisions in the proceedings at issue will be irreconcilable within the meaning of Article 34 No. 3 Brussels I Regulation and not recognized in the other country. 2. The Jewelry Box case The Jewelry Box case had been subject to three different proceedings in Switzerland, Germany and France, each of them based on the very same international design registration as depicted below, covering each of the three Contracting Parties: International design registration DM/031388 The defendant was producing and delivering the following jewelry boxes: Due to the character of a bundle of national design rights, the right holder and plaintiff had to prosecute his design rights against the defendant s jewelry boxes in each of these three countries. The plaintiff was successful; Swiss, French and German courts found validity and infringement each but applying deviating standards and arguments. a) Swiss Supreme Court 22 According to the Designs Act it is not a synoptic one-to-one comparison of two designs that is decisive but rather the overall impression of the respective design that the potential purchaser retains in his short-term memory. ( ) The criterion for assessing individual character of the design-in-suit shall correlate with its scope of protection. 21 22 German Federal Supreme Court, decision of March 24, 2011 Case I ZR 2011/08 Writing Utensils. Swiss Supreme Court, decision of January 8, 2007 4C.344/2006/len Jewelry Box. 13

At least German design case law allows neither a short-term memory test nor a direct link between validity and infringement, according to the German Federal Supreme Court. b) Karlsruhe Appeal Court 23 When comparing the complete existing design corpus as asserted by the defendant with the overall impression of the asserted design by way of an overall assessment, there is no tendency to be found that the specific appearance of the asserted design determining its overall impression is also produced by any of the prior designs. It appears questionable whether French and/or Swiss design case law would support such approach taken by the German appellate court. c) Paris Appeal Court 24 V. Conclusion The Paris Appeal Court found when testing validity of the International design registration over various prior designs that: ( ) the designs cited by the defendant [as prior art] do not offer the same characteristics as the accused design which has its own new physiognomy and which also reveals, by the combination of its characteristics elements as claimed, a creative effort bearing the imprint of its author s personality. Neither German nor Swiss design case law allows such a comparison between the accused (!) design and prior art in order to find validity of the asserted (!) design. The pros and cons of the Hague System can be summarized as follows: (+) ( ) Minimum of formalities Languages (EN, FR or ES) Multiple application (up to 100 different designs) Only one set of reproductions required Refusal or invalidity in one of the designated Contracting Parties: no influence on the entire registration All substantive questions are determined by the law of each Contracting Party (no harmonization) All proceedings as regards substantive questions take place at the responsible authority or court of each Contracting Party (no harmonization) The Hague system, therefore, similar to the Madrid system, is merely a procedural agreement facilitating obtaining protection and administering registrations rather than a harmonization of any substantive questions. Substantive law is determined by each Contracting Party. 23 24 Karlsruhe Appeal Court, decision of November 25, 2009 6 U 51/09 Jewelry Box. Paris Appeal Court, decision of September 12, 2007 6/07720 Jewelry Box. 14