Event Report: INTA Designs Conference 2018
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| The IPKat on the way to the INTA Designs Conference back in February |
"Although INTA is traditionally the home of trade mark discussions and debate, the INTA Designs Conference hosted talks from a number of lawyers, judges, and government officials which focused exclusively on the so-called ‘unloved child’ of IP rights – designs.
The conference saw lawyers from the US, Europe and Asia share their practice points and thoughts on how to navigate the complex world of design law. From designer bag-counterfeiters in China to cutting-edge Danish furniture designers, panellists shared their experiences of how parties from all over the world rely on (and circumvent) design laws to their benefit.
Harmonisation and Brexit
Brexit was on several speakers’ minds as they discussed the future of designs for their companies. During the Industry panel, James Sweeting, in-house counsel for Superdry, emphasised the importance of unregistered designs rights (UDRs) for fashion companies and expressed concerns for what will happen to these post-Brexit. This was echoed by Natasha Hinds-Payne, in-house counsel for Cath Kidston, who commented that UDRs were essential to cover those non-signature products that are nonetheless important to the business.
Stephen Rowan of the UKIPO confirmed, however, that at the moment there are no certainties about the survival of UDRs (and indeed RCDs) in post-Brexit UK. IP rights are on the agenda for talks with the EU, but for now, Stephen advised, companies should just be thinking carefully about their filing strategies. He had no comment on the increasingly common trend of double-filing (where companies are choosing to ‘hedge their bets’ and register their designs both in the UK and EU).
That being said, there was optimism from the UKIPO – both Stephen and Michael Carter, also of the UKIPO, emphasised that Brexit will not stop Member States from learning from one another and working together in the spirit of the EUIPO Convergence Programmes.
Filing strategies
In-house lawyers from all companies stressed that filing needs to be a collaborative effort with the business. Counsel from Philips and Superdry advised seeking the designers’ input on what layers of protection the product needs – in particular, whether partial designs may need to be filed – and on what is particularly novel or interesting about the item. Panellists also stressed the importance of considering where to file your design: forgetting to file in the country of manufacture can lead to expensive cancellation actions if (e.g.) a Chinese counterfeiter beats you to the post, explained Dan Plane of IPS (Hong Kong).
Timelines were also a hot topic, with speakers sharing their struggles around navigating the different national grace periods and definitions of ‘disclosure.’ Horror stories were recounted both during the conference and after of inadvertent disclosures by celebrities and consumers on social media, with Kimiya Shams of Devialet stressing that a filing application must be timed close to any public disclosure to minimise the risk of falling foul of grace periods and quickly counterfeited products.
A helpful session with Gregoire Bisson of WIPO, Kenneth Davis of Morgan Lewis (US) and Michael Maier of Coty Germany tackled the substantive parts of a design application. The panel generally agreed that drawings were preferable to photographs, to avoid rejections based on (e.g.) lack of clarity or clashes between images. Audience members were urged to be careful dealing with the law on the number and type of views to be depicted, multiple embodiments, and partial designs, all of which vary widely based on jurisdiction. A common sentiment was that the description can be of immense help to the filing party, allowing them to (e.g.) explain what certain types of shading or dotted lines mean. This sentiment was in fact shared by Mr Justice Arnold, who called for the reform of the current law (which currently doesn’t allow for written descriptions to be taken into account for infringement purposes.)
Global enforcement and anti-counterfeiting
Seeking and enforcing national injunctions was explored in detail by a panel made up of Sara Ashby of Wiggin LLP, Paolo Beconcini of Squire Patton Boggs (Hong Kong) and Christopher Carani of McAndrews, Held & Malloy (US). In Europe, Sara emphasised the need to go to the correct national court to seek an pan-European injunction based on the jurisdictional gateways, while – for infringements in China – Paolo encouraged designs rights holders to go to the civil (rather than administrative) courts, and only with genuine evidence of infringement. The US courts were distinguished from other courts in respect of damages, for the fact that they do not apportion damages based on the part of the product which is infringing, but – rather – will order a total account of profits for the product as a whole.
For those seeking tips on how to actually present infringement cases in court, David Stone of Allen & Overy LLP led a light-hearted Q&A session with a panel of judges, including Harri Salmi of the EUIPO Boards of Appeal, Her Honour Judge Clarke of IPEC, and His Honourable Mr Justice Arnold (who will be known to many IPKat readers). Questions ranged from whether it was useful to present examples of the infringed / infringing product in court (the answer was generally yes) to whether the judges had ever decided a case in their sleep (one judge answered – perhaps worryingly – in the affirmative).
Non-legal routes of enforcement were also encouraged by a panel on anti-counterfeiting measures. Klaus Hoffmeister of the Central Customs Unit for IP in Germany encouraged designs rights owners to use national customs authorities to prevent imports and exports of counterfeit versions of their product, and he was echoed by Erica Weiner of Michael Kors, who recommended sending customs authorities pictures of genuine vs. fake products and as much information as possible so they can identify counterfeits. Other practical measures were also suggested by speakers: counsel for Superdry, for example, encouraged open dialogues with suppliers to ensure the supply chain for the product is robust (and that there are no sales to unauthorised third parties).
Technology and the future of designs
The benefits and drawbacks of technological advances were debated in detail by several panels. While (e.g.) the increase in social media and the advent of 3-D printing were largely considered dangerous and conducive to future design infringements – the latter, in particular, was considered by Nick Kounoupias of Kounoupias IP to be the greatest threat to IP rights since the invention of the internet – there was also hope that advances in this area could work to our advantage. A more advanced and up-to-date designs database to allow for full clearance searches, for example, would allow rights holders clarity over existing and conflicting designs.
On the whole, there was a strong feeling amongst speakers that designs should – and will – become a stronger tool in the arsenal of IP rights holders. With brands owners facing potential difficulties registering shape marks in the trade marks sphere, and image and perceptions becoming increasingly more important amongst consumers, this conference perhaps signalled the beginning of an era in which designs rights are considered equal – if not superior – to their counterparts."
