Community design renewals; Competition for copyright?

The Office of Harmonisation in the Internal Market (OHIM) is inviting comments on its draft Guidelines Concerning Prodeedings Before the Office for Harmonisation in the Internal Market (Trade Mark and Designs) - Registered Community Design - Renewal. It seems like only yesterday that the first Community design applications were filed, but the first registrations, dating back to 2003, come up for renewal in April 2008.

Right: People laughing at the funny bits in the Draft Guidelines

OHIM has already made provision for the filing of renewal applications both online and on paper from 1 November 2007 - but what happens thereafter will presumably depend at least in part on the responses and comment that the draft guidelines attract. Please send your comments by email to the affable Vincent O'Reilly by not later than 15 December 2007. The guidelines will be finalised and formally adopted in 2008.


Last week Professor Lionel Bently spoke at an AIPPI-UK meeting (see advance notice here), his topic being "Keeping Copyright in its Place: Copyright as an Industrial Property Right' Unable to be there himself, the IPKat is grateful to Jonathan Kewley (Freshfields Bruckhaus Deringer) for sending him this note on what the good professor said:

"Professor Bently reviewed an area which has vexed intellectual property lawyers for generations: the division between copyright and industrial property rights. The underlying intention of legislation since the Paris Convention for the Protection of Industrial Property 1883 and the Berne Convention for the Protection of Literary and Artistic Works 1886 has been to keep copyright out of the industrial field. However, Professor Bently highlighted how businesses are increasingly using copyright in conjunction with trade mark and patent law to protect and assert entrepreneurial interests, citing the recent cases of Handi-Craft Co v B Free World Ltd [2007] EWHC B10 and Euro-Excellence Inc. v Kraft Canada Inc. (2007) SCC 37 (CanLII).

This overlap was presented as creating a three-fold problem. First, protection of articles of trade becomes so broad as to restrict competition (see Elanco v Mandops [1979] FSR 46).

Left: the AIPPI is tugging at copyright ...

Secondly, the boundaries of copyright law are distorted (see Griggs v Raben Footwear [2005] FSR (31) 706). Finally, trade mark rules are undermined: where an action for trade mark infringement fails, a claim in copyright may succeed (see Trebor Bassett v FA [1997] FSR 211 and FA Premier League v Panini [2004] 1 WLR 1147). A carefully defined legislative framework is subsumed by broadly interpreted copyright protection.

By way of solution Professor Bently considered the introduction of reform to ensure that trade marks are kept out of copyright works. Further, he suggested that the originality test for copyright could be made more rigorous, noting that it is often considered preferable to run copyright cases in the UK because of the low originality test. A higher test of ‘an author’s own intellectual creation’ derived from EC Directives on Computer Programs 91/250, Duration 93/98 and Databases 96/9 could be introduced.

The alternative view is that the broad range of rights available to industry should be welcomed as providing multi-layered protection. Professor Bently reflected that a recalibration of the legislative framework could risk introducing further and unnecessary complexity to the system. Given the prospect of additional complexity, the statement of Jacob J in Philips v Remington [1998] RPC 283 that “unless there is a specific provision preventing rights from co-existing, they just do” communicates a compelling argument in favour of maintaining the status quo.

Right: ... but the copyright organisations may not easily let go.

In a vote of thanks to Professor Bently following his address, Nicola Dagg of AIPPI confirmed that the organisation has taken the decision to consider copyright issues in their new round of scientific work".

The IPKat can't see how or why copyright can be excluded from AIPPI's field of research and discussion, given the convergence not only of rights but of the industries that depend upon them. But Merpel asks, does this mean a turf war between the AIPPI and organisations like ALAI, which have traditionally dominated the copyright field?