enforcement of international registrations under the geneva act of the hague agreement a...

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

AIPLA Annual Meeting 2012

Dr. Henning Hartwig, Attorney-at-Law, Munich

I. Introduction

II. Establishing Design Rights under the Geneva Act

III. Challenging Design Rights under the Geneva Act

IV. Enforcing Design Rights under the Geneva Act

V. Conclusion

Agenda

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 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).”

http://www.wipo.int/hague/en/

I. Introduction

The Hague Agreement is constituted by three different

Acts, namely:

(1) The London Act of June 2, 1934

(2) The Hague Act of November 28, 1960

(3) The Geneva Act of July 2, 1999

I. Introduction

Total number of Contracting Parties

II. Establishing Design Rights

under the Geneva Act

II. Establishing Design RightsA. Conditions

1. Who (authorized applicants)?

Article 3 Geneva Act

Any person that is a national of a State that is a Contracting

Party or of a State member of an intergovernmental

organization that is a Contracting Party, or that has a

domicile, a habitual residence or a real and effective

industrial or commercial establishment in the territory of a

Contracting Party, shall be entitled to file an international

application.

2. Where (territories of protection)?

Country or intergovernmental organization being party

of the Hague Agreement (“Contracting Parties”)

On January 1, 2008, the EU also acceded to the Geneva

3. What (contents of application)?

Language: English, French or Spanish

Reproduction: photographs or other graphic

representations

Multiple application: up to 100 designs of the same Locarno

Deferred publication: up to 12 months (Hague Act) or 30

months (Geneva Act) from filing or

priority date

No prior national application or registration required

4. How (registration procedure)?

Substantive Examination (if any) by the Office of designated

Contracting Party provided by national legislation

Refusal of protection

(refusal period may be replaced by a period of 12 moths by

Examining Offices)

Grant of Protection

(considered as granted if no notification of refusal has been sent within the refusal period)

Within six months

Examination or non-examination of validity – different realities:

No examination ex officio Examination ex officio

European Union Germany Egypt

Benelux Greece Finland

Bulgaria Norway Georgia

Croatia Singapor Hungary

Denmark Switzerland Iceland

France Turkey Kyrgyz Republic

5. How long (duration of protection)?

Initial period of protection: Five years

Renewal: One ore more additional

periods of five years

Maximum duration: corresponds to the

maximum duration

provided by the law

of the Contracting

Belize 15 Latvia 25

Benelux 25 Liechtenstein 25

Benin 15 Monaco 50

Bulgaria 25 Mongolia 10

Côte d’Ivoire 15 Morocco 50

Croatia 25 Namibia 15

Egypt 15 Niger 15

Estonia 25 Macedonia 25

France 25 Moldova 25

Gabon 15 Romania 25

Georgia 15 Senegal 15

Germany 25 Serbia/Montenegro 15

Greece 25 Singepore 15

Hungary 25 Slovenia 25

Iceland 25 Spain 25

Italy 25 Switzerland 25

North Korea 15 Turkey 25

Kyrgyzstan 15 Ukraine 15

6. How much (costs)?

Three different types of fees (in Swiss francs), namely:

• Basic fee

• Publication fee

• Standard fee or individual fee for each Contracting Party

Fee calculator on http://www.wipo.int/hague/en/fees/

II. Establishing Design RightsB. Effects

Article 14 (1) 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.

II. Establishing Design RightsB. Effects

Office of each

Contracting Party

Formal requirements and procedures

Substantive requirements and procedures

III. Challenging Design Rights

III. Challenging Design RightsA. Applicable Law

Law of each Contracting Party

Formal requirements Substantive requirementsSubstantive requirements

Substantive questions governed by the law of each designated

Contracting Party

Geneva Act

III. Challenging Design RightsA. Applicable Law

Invalidity proceedingsInvalidity proceedings

Invalidity proceedings must be initiated with the competent

authorities of each Contracting Party

Competent authorityof each

Contracting Party

III. Challenging Design RightsB. A comparison: Law of selected Contracting Parties

European Union

1. European Union

Article 4 (1) Community Design Regulation („CDR“)

A design shall be protected by a Community design to the

extent that it is new and has individual character.

1. European Union

Article 7 (1) CDR

(…) 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 (…), 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.

1. European Union

Step 1: Determining the prior art

Filing date: 01.04.2003

Disclosure: 1957

Disclosure: 1984

Disclosure: 1990

RCD 21-0001

1. European Union

Article 5 CDR

A design shall be considered to be new if no identical

design has been made available to the public (…) before

the date of filing of the application for registration of the

design for which protection is claimed, or, if priority is

claimed, the date of priority.

Designs shall be deemed to be identical if their features

differ only in immaterial details.

1. European Union

Step 2: Novelty

Identity?

1. European Union

Article 6 (1) CDR

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 of filing

the application for registration or, if a priority is claimed,

the date of priority.

1. European Union

Step 3: Individual character

Same overall impression?

1. European Union

Article 6 (2) CDR

In assessing individual character, the degree

of freedom of the designer in developing the

design shall be taken into consideration.

1. European Union

General Court of the European Union, decision of

September 9, 2011 – Kwang Yang Motor v Honda Giken:

Switzerland

2. Switzerland

Article 2 (1) Swiss Designs Act

A design shall be protected to the extent that it is new

and has individual character.

2. Switzerland

Requirements for protection

European Union Switzerland

A design shall be protected by a Community design to the extent that it is new and has individual character.

A design shall be protected to the extent that it is new and has individual character.

2. Switzerland

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.

2. Switzerland

(…) a design shall be deemed to have been made available to the public if it has been published (…), 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.

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.

2. Switzerland

Step 2: Novelty

A design shall be considered to be new if no identical design has been made available to the public (…).

Designs shall be deemed to be identical if their features differ only in immaterial details.

A design is not new, if an identical design has been made available to the public (…).

2. Switzerland

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.

2. Switzerland

Different overall impression?

2. Switzerland

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 (…).

A design does not have individual character if its overall impression differs only in immaterial features from a design (…).

2. Switzerland

Comparison test

•One-to-one

•Informed user

Comparison test

•Short-term memory

•Potential purchaser

Turkey

3. Turkey

Article 5 Turkish Designs Act

Protection shall be granted to a design which is new

and has individual character.

3. Turkey

Requirements for protection

European Union Turkey

A design shall be protected by a Community design to the extent that it is new and has individual character.

Protection shall be granted to a design which is new and has individual character.

3. Turkey

A design shall be considered new if before the date of

reference no identical design has been made available

to the public in the world. Designs differing only in

immaterial details shall be deemed to be identical. To

make available to the public shall cover of all actions of

sale, use, publication, publicity, exhibiting, or such

similar activities.

3. Turkey

(…) a design shall be deemed to have been made available to the public if it has been published (…), 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.

To make available to the public shall cover of all actions of sale, use, publication, publicity, exhibiting, or such similar activities.

3. Turkey

Step 2: Novelty

A design shall be considered to be new if no identical design has been made available to the public (…).

Designs shall be deemed to be identical if their features differ only in immaterial details.

A design shall be considered new if (…) no identical design has been made available to the public in the world.

Designs differing only in immaterial details shall be deemed to be identical.

3. Turkey

Article 7 (1) and (3) Turkish Designs Act

A design shall be understood to have an individual character

if the overall impression it creates on the informed user is

significantly different from the overall impression created on

the same user by any design referred to in the second

paragraph of this Article.

In the assessment of the individual character, the emphasis

of evaluation shall be on the common features of the designs

and the degree of freedom of the designer in developing the

design shall also be taken into consideration.

3. Turkey

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 (…).

A design shall be understood to have an individual character if the overall impression it creates on the informed user is significantly different from the overall impression created on the same user by any design (…).

Norway

4. Norway

Norwegian Designs Act implements EU Directive

98/71/EC (Directive on legal protection of Designs)

Requirements for protection correspond to CDR, i.e.,

Disclosure

Novelty

Individual Character

IV. Enforcing Design Rights

IV. Enforcing Design RightsA. Applicable Law

Law of each Contracting Party

Formal requirements Substantive requirementsSubstantive requirements

Substantive questions, such as determining the scope of protection

of a design, are governed by the law of each Contracting Party

Geneva Act

IV. Enforcing Design RightsA. Applicable Law

procedural issuesprocedural issues

Procedural issues related to the enforcement of a design are ruled

by the national procedural law of each Contracting Party

procedural lawof each

Contracting Party

IV. Enforcing Design RightsB. A comparison: Law of selected Contracting Parties

European Union

1. European Union

Article 10 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.

In assessing the scope of protection, the degree of freedom

of the designer in developing his design shall be taken into

consideration.

Step 1: Determination of the (degree of) scope of

protection (Article 10 [2] CDR)

Step 2: Comparing asserted and accused design

in order to find or deny “same overall

impression” (Article 10 [1] CDR)

1. European Union

Switzerland

2. Switzerland

Article 8 Swiss Designs Act

The scope of protection of a design shall include any

design providing the same characterizing features and,

therefore, producing the same overall impression.

2. Switzerland

Infringement test

The scope of protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.

The scope of protection of a design shall include any design providing the same characterizing features and, therefore, producing the same overall impression.

2. Switzerland

Infringement test

In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.

( – )

2. Switzerland

Comparing asserted and accused design

Different overall impression?

2. Switzerland

Comparing asserted and accused design

Comparison test

•One-to-one

•Informed user

Comparison test

•Short-term memory

•Potential purchaser

Turkey

In determining the scope of protection all designs which

produce on the informed user a significantly similar overall

impression (…) shall be taken into consideration.

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.”

3. Turkey

Infringement test

The scope of protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.

In determining the scope of protection all designs which produce on the informed user a significantly similar overall impression (…) shall be taken into consideration.

3. Turkey

Infringement test

In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.

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.

Norway

4. Norway

Norway Design Act implements EU Directive 98/71/EC

(Directive on legal protection of Designs)

Requirements for infringement correspond to CDR, i.e.

Assessing the scope of protection of a design

Finding infringement of a design

IV. Enforcing Design RightsC. Exemplary case law

The Jewelry Box case

International design DM/031388

(Claimed countries: inter alia Germany, France, Switzerland)

versus

Accused design

Switzerland Germany France

Swiss Supreme Court (decision of January 8, 2007)

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.

×“short-term memory test” is – at least – not allowed

under German design case law

×no direct link between validity and infringement under

German design case law

Karlsruhe Appeal Court (decision of November 25, 2009)

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.

Paris Appeal Court (decision of September 12, 2007)

(…) the designs cited by the defendant [i.e., 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 case law allows such a

comparison between accused (!) design and prior art in

order to find validity of the asserted (!) design

V. Conclusion

( + ) ( – )

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 without any 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)

Thank you for your attention!

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