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Designwrites & DesignWrites 2015 March Welcome to the fifth edition The role of dotted lines in of DesignWrites registered Community designs According to the OHIM Guidelines1, there are a number of At Bird & Bird we’re passionate about design. DesignWrites permissible ways to exclude certain features from the scope will unravel and explore the seemingly complex world of design of protection afforded to a registered design. A designer protection, offering practical advice by looking at recent design may wish to do this because certain features, whilst not By Ewan Grist, Manon Rieger-Jansen and Jana Bogatz cases, hearing from industry experts and sharing stories from the sufficiently intrinsic to the design for which protection is wider design community. London, The Hague and Munich sought to warrant inclusion, may still be useful to illustrate [email protected] the context of the design or environment in which it is used. [email protected] The OHIM Guidelines permit the use of boundaries, colouring/ [email protected] Get in touch shading and dotted/broken lines for this purpose. Of these, If you would like advice on how best to protect your designs or take action the use of dotted lines seems to be the most widely utilised. to stop copycats, please contact Ewan Grist via [email protected] However, the interpretation given to features demarcated in dotted lines by various courts has proven to be less straightforward than might have been expected. In particular, there has been an unhelpful divergence between OHIM’s approach and the approach taken by certain national courts when construing registered designs containing such features for the purposes of determining infringement. In this article, we explore this divergence and offer some practical guidance on how dotted lines can best be used to enhance the protection offered by registered designs. In this edition... OHIM’s approach to dotted lines According to the OHIM Guidelines2 dotted lines ‘may be The role of dotted lines in registered Focus on the automotive industry: the protection used in a view either to indicate the elements for which no Community designs ........................................................ 01 of spare parts using Community designs ...........................14 protection is sought (for example, ornamentation applied Calculating the infringer’s profits in the UK .....................07 The importance of proving copying of unregistered to the surface of a given product whose shape is disclaimed) rights in fabric designs in the UK ......................................18 or to indicate portions of the design that are not visible in The ‘cookies’ decision – only visible elements determine that particular view, that is, non-visible lines.’ In this regard, RCD 30606-0005 the scope of protection of registered designs ...................08 Women Fashion Power at the Design Museum ..................21 OHIM provide the following illustration of the principle3: Source: OHIM Guidelines. Considering the validity of Community design Industry news ................................................................ 23 for a component part of a complex product ..................... 10 Upcoming industry events and awards ............................ 24 Spanish Supreme Court confirms the lack of standing of distributors to claim compensation 1 Guidelines for Examination in the Office for Harmonization in the Internal Market (Trade Marks and Designs) for design infringement ....................................................12 on Registered Community Designs: Examination of Applications for Registered Community Designs 2 Paragraph 5.3.1 3 RCD 30606-0005 The role of dotted lines in registered Community designs & 01 The inclusion of features in dotted lines tends to be for illustrative One issue facing the High Court was how this dotted line The court’s finding that the dotted line region in the The Dutch Court’s approach purposes. Dotted lines may for instance indicate the context of should be interpreted when determining the scope of Apple design in fact showed a border visible underneath a The issue has been addressed by the Court of Appeal of the design by showing its intended purpose or its scale. In this protection afforded to the design as a whole. Samsung transparent screen is questionable. The scope of a registered The Hague in the Dutch Apple v Samsung proceedings. regard dotted lines can be limiting even if the features depicted in argued that the dotted line indicated an element for which design, and what it does or does not protect, should be The Dutch Court held, similarly to the English Court, that dotted lines do not form part of the protected design themselves. no protection was claimed (as per the OHIM Guidelines). assessed objectively based on the representations filed the dotted lines in design registration should be interpreted See for instance, the bottle below depicted in dotted lines in Apple argued that in fact the dotted lines instead indicated alone as perceived by the informed user. The intention of as part of the design. The court noted from the prior art the design for a portable wine chiller bag which indicates both the presence of a visible border under the screen, which the designer is therefore irrelevant. It is difficult to see how that it was normal for screens of electronic devices to have intended purpose, scale and size (RCD 616057-0001): therefore formed part of the protected design. the court, when faced with these representations and aware a border in the position where dotted line feature in Apple’s The court found that the OHIM Guidelines were just that: of the clear OHIM guidelines on the use of dotted lines, design was located. The informed user would therefore there was no mandatory rule that dotted lines must be could have reached the conclusion that the dotted line in interpret the dotted line feature as a border visible beneath interpreted in a particular way. The court recognised that fact represented something other than a disclaimed feature a transparent surface. Whilst the Supreme Court did not in most cases dotted lines will have been used to indicate without giving some weight to the purported intentions formally deal with this issue when the case was appealed, a disclaimed portion of the design, but that will not always of the designer who prepared the representations, which the Advocate-General in his conclusion agreed with the be the case. With regard to Apple’s design, the court was arguably it was not entitled to do. Court of Appeal, noting that the position set out in the OHIM willing to accept that the dotted line would be understood as Nonetheless, the Court of Appeal upheld the High Court’s Guidelines was at most a ‘starting point’ and not binding. showing a border visible underneath a transparent screen. finding, noting that Samsung’s argument (that the dotted line By contrast, when considering a prior art design shown indicated an element for which no protection was claimed) The German Court’s approach below, the court was happy to conclude that the protruding was akin to a notice-board reading ‘Ignore this notice’. In the German Apple v Samsung proceedings, the Higher unit shown in dotted lines was intended to show that matter The Court of Appeal regarded Samsung’s contention as being Regional Court of Düsseldorf held that it was for the of design law, that aspect was not claimed: that the position would be exactly the same if there were informed user to decide what the dotted lines signified in no dotted lines as if they were there, and found this to be the context of the particular design in question. In relation ‘faintly absurd’. to the inner border demarcated by a dotted line in the Apple RCD 616057-0001 registration, it would be taken to mean that this feature was The Court of Appeal’s reasoning here is questionable as well. Source: Gimex International Groupe Import Export v The Chillbag partially visible or visible only under certain circumstances. A design in which a feature is shown in dotted lines arguably Company Limited & Others, [2012] EWPCC 34. Further, the court indicated that the connector port feature, should not be interpreted in the same way as a design in also shown in dotted lines below, meant that the exact which this feature was absent altogether. In the former case The English Court’s approach positioning was not yet determined and was not to be taken (i.e. showing the disclaimed feature) it does not matter for The water has however been muddied in the Apple v into account in the design. Samsung case4. Apple’s Registered Community Design the purposes of infringement whether the allegedly infringing (181607-0001) for a handheld computer featured an inner design also has this feature or not. In the latter case however border demarked by a dotted line: (i.e. with the feature simply absent altogether), the design will rightly be construed as not having that feature, and Source: Samsung Electronics (UK) Ltd v Apple Inc, hence the presence of the feature on the allegedly infringing [2012] EWHC 1882 (Pat), [2012] EWCA Civ 1339. design would be a clear point of difference, pointing towards a finding of non-infringement. Hence, including a disclaimed feature, even though not within the protected scope of the design, arguably gives a broader scope of protection than simply not including it at all. It is hoped that the courts will provide clearer guidance on RCD 181607-0001 the relevance of dotted lines in the near future. Source: Samsung Electronics (UK) Ltd v Apple Inc, [2012] EWHC 1882 (Pat), [2012] EWCA Civ 1339. RCD 181607-0001 Source: Samsung Electronics (UK) Ltd v Apple Inc, [2012] EWHC 1882 (Pat), [2012] EWCA Civ 1339. 4 Samsung Electronics (UK) Ltd v Apple Inc, [2012] EWHC 1882 (Pat), [2012] EWCA Civ 1339 02 & The role of dotted lines in registered Community designs The role of dotted lines in registered Community designs & 03 Using dotted lines in filing strategies Increasingly, there is a trend for designers to file a series of registered designs (usually by way of multiple applications) for a single central design, each with a different feature or combination of non-essential features ‘dotted out’.
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