As part of its harmonisation agenda, OHIM is working together with the offices of the EU’s member states on a number of harmonisation goals – perhaps the most famous of which to date is the treatment of colour/black and white trade marks. CP6 is another project, in this case looking at graphic representation of designs.
In short, can practices be harmonised around designs accepted for registration, particularly relating to:
- Should a neutral background be required?
- What graphical disclaimers, such as dotted lines, blurring or contrasting colours, should be allowed?
- What types of views should be mandatory?
The MARQUES position
MARQUES’s Designs Team commented on the CP6 proposals, in a paper available here.
In short, MARQUES’s position is a simple one – it is up to designers and their representatives to decide how best to disclose a design, whilst ensuring that the representation is clear and precise.
Unlike trade marks, design protection can be lost forever if a filing deadline is missed. Therefore, it is important to ensure that filing requirements are as few as possible, and that design applications are not readily rejected.
This, of course, has to be balanced with ensuring that design representations are clear – users of the system, including other traders, need to know what has been protected, so that they can adjust their behaviour accordingly. It is in the interests of all users of the system that, for example, there is a general understanding of what dotted lines mean, and consistent interpretation of dotted lines at OHIM, national offices (and the BOIP) and in courts in member states.
Flexible approach favoured
Therefore, MARQUES does not advocate strict rules for registration of an RCD or a design in a member state – such an inflexible approach may lead to clarity, but it also risks rejecting large numbers of designs, especially those filed by SMEs, or on the basis of priority claims from outside the EU. This would not be in the interests of users.
Rather, MARQUES advocates a flexible approach to registration (that is, most things would be allowed to register), but a strict clarity around what certain drafting tools and conventions mean. Thus, MARQUES advocates not rejecting a photograph showing a chair against the background of a room also showing a TV, a carpet etc, but making it clear to users of the system that any such registration would have a different scope of protection to a filing for the chair on its own. This is likely to have an impact on both validity and enforcement of the right.
By David Stone of Simmons & Simmons, Chair of the MARQUES Designs Team
Issue 043
The next Coexistence Agreement Workshop will be held in Bucharest, Romania on Wednesday 10th September. Booking is also now open for Meet the Judges in Vienna, Austria on Friday 17th October.
MARQUES members have taken part in a number of events and activities in the past month. Here are some of them.
Among the posts on Class 46 and Class 99 this month: the Apple Store trade mark decision, stripes as trade marks and Hague Agreement spring clean.
The CP6 project in the Cooperation Programme tackles graphic representation of designs. David Stone of the Designs Team explains the proposals, and the MARQUES response to them.
ICANN’s latest meeting was held in London last month, and proved to the biggest ever. Nick Wood of the Cyberspace Team reports.
The US Patent and Trademark Office found that the REDSKINS trade mark for Washington DC’s American football team was disparaging to Native Americans. Janet Satterthwaite reports.
António Campinos's term as President of OHIM has been extended, it was announced on 27th June.
