Monday, 29 September 2014

A new President for GRUR

JIPLP is delighted to learn that Dr Gert Würtenberger, founding parter of the law firm WürtenbergerKunze, Munich, has been elected as the new President of GRUR.

Subscribers with long memories will recall that, apart from his other contributions to the intellectual property community, Gert is a founder member of the JIPLP Editorial Board. He has also been a valued author, whose articles include

  • "Questions on the law of evidence in plant variety infringement proceedings", Journal of Intellectual Property Law & Practice (2006) 1 (7): 458-466 (abstract here)
  • "The enforcement of judgments of Community trade mark courts", Journal of Intellectual Property Law & Practice (2012) 7 (5): 373-377 (abstract here)

He has authored a considerable number of Current Intelligence case notes and book reviews and spoke at this year's London seminar organised by JIPLP and GRUR Int on Passing Off and Unfair Competition (papers here).

JIPLP wishes Gert all the best as he takes over the reins of office from Professor Hans Peter Kunz-Hallstein. We look forward to continued cooperation with the deeply respected GRUR Int journal and to building on the firm foundations of the relationship between the two publications.

Monday, 22 September 2014

David versus Goliath chocolate trade mark dispute: does size count when applying the concept of genuine use?

Author: Valentina Torelli (Salvador Ferrandis & Partners, Madrid, Spain)

Reber Holding GmbH & Co KG v OHIM, Wedl & Hofmann GmbH, C-141/13 P, EU:C:2014:2089, Court of Justice of the European Union (CJEU), 17 July 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu175, first published online: September 19, 2014

This long-running dispute saw a small and medium enterprise (SME) opposing a large corporation for the exclusivity in the word Walzertraum, which featured in both their trade marks for goods in the same market sector. Resolving this dispute, the CJEU clarified what it is meant by genuine use within the European Union, what criteria are to identify it, what its purpose is, irrespective of the size of the undertakings concerned.

Legal context

Article 43(2) of Regulation 40/94 on the Community trade mark (CTM) provided that, during the opposition proceeding before the Office for Harmonisation in the Internal Market (OHIM), a CTM applicant can require the other party to prove genuine use in the Community of the earlier CTM in relation to the goods and services for which it is registered and on which the opposition is based, unless there are proper reasons for non-use, and provided that two requisites are met:
* the earlier CTM has been used during a period of five years preceding the date of publication of the CTM application; and

* the earlier CTM has at that date been registered for not less than five years.
According to Article 43(3) of Regulation 40/94, the same rule applies to national trade marks in respect of proof of use in the Member States in which they are protected.

Finally, Rule 22(3) of Regulation 2868/95, implementing the CTM Regulation (as amended by Regulation 1041/2005), sets out the guidelines to substantiate the proof of use:
The indications and evidence for the furnishing of proof of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based, and evidence in support of these indications in accordance with paragraph 4.
Although the concept of genuine use is not expressly defined, Community legislation furnishes the criteria whereby the use of a trade mark in the relevant territory is qualified as genuine. In addition, the courts of the European Union have pronounced on this issue several times, addressing both practitioners and users in dealing with the proof of use.

Facts

Austrian company Wedl & Hofmann (W&H) applied to register the figurative mark represented below, mainly featuring the word ‘Walzertraum’, as a CTM for ‘coffee; instant coffee; decaffeinated coffee; sugar’ (Class 30), in August 2005.



A few days after publication of the CTM application, in February 2006, German company Reber opposed, claiming a likelihood of confusion with its earlier national word mark ‘Walzertraum’, registered for ‘bakery products, confectionery, chocolate and sugar confectionery’ (also in Class 30).

W&H cleverly asked for the proof of use of the German Walzertraum mark. While the initial opposition was upheld by the Opposition Division, it was subsequently rejected by the Board of Appeal for lack of probative value of the documents submitted by Reber. These were:
A written statement of Reber's manager, dated 31 January 2007;

Two undated photographs displaying the Reber confectionery;

Copies of the chocolates' monthly lists of sales for the period from March 2001 to December 2002;

Excerpts from Reber's website, displaying different kinds of chocolate marketed by the company, dated 30 March 2004 and 23 January 2007.
The Board of Appeal concluded that Reber had not proved genuine use of its national mark between the relevant period of 13 February 2001 to 12 February 2006. Some of evidence fell outside that period while the other documents, although belonging to that time frame, were insufficient to sustain proof of use under Rule 22(3) of Regulation 2868/95.

On appeal to the General Court, Reber presented two pleas in law. The first plea concerned the wrong interpretation of Articles 42(2) and 42(3) of Regulation 207/2009, in that the Board of Appeal erroneously denied the genuine use of the Walzertraum mark, given the volume of the sales and the number of sale points. The second plea referred to the violation of the principle of equal treatment as Reber had been discriminated against in comparison to multinational companies in respect to the proof of the genuine use. Said Reber, the proof of use is more complicated for a small and medium sized enterprise (SME), especially as regards the volume of sales, and this issue was treated in the present case differently to a previous dispute (R1101/2004-1), in which Reber succeeded in proving the genuine use of one of its marks in similar conditions, where the relevant goods were pralines. The General Court simply affirmed the Board of Appeal's decision as to the first plea in law and rejected the violation of the principle of equal treatment.

Before the Court of Justice of the European Union (CJEU), Reber appealed the contested decision on the same two grounds.

Analysis

The CJEU first observed that the pertinent legislation was Regulation 40/94, given that the Walzertraum CTM had been applied for on 16 August 2005. The court opened its reasoning about the wrong application of Article 43(2) and (3) of this Regulation, citing its previous judgments in Leno Merken C-149/11, EU:C:2012:816, para 29; La Mer Technology, C-259/02, EU:C:2004:50, para 27; and Ansul, C-40/01, EU:C:2003:145, para 43. Accordingly, the concept of genuine use is inherently connected with the trade mark's function as origin identifier of the goods and services for which the mark is registered. That said, use is genuine when it is directed at creating or maintaining a market share in the sector concerned for those goods and services.

The CJEU added that the assessment of the genuine use must be based on all the facts and circumstances relevant to establishing the real exploitation of the trade mark in the course of trade, according to rule 22(3) of Regulation 2868/95. To this extent, referring to its previous case law in Ansul, EU:C:2003:145, para 39, the court explained that, although the use of a mark does not always need to be quantitatively significant to be deemed genuine, the nature of the products and the geographical extent of the use are to be considered.

The CJEU thus concluded that the General Court did nor err in applying the concept of genuine use, considering that the Reber's Walzertraum mark had been geographically and quantitatively limited to a local and narrow exploitation: an annual sale of 40–60 kg of chocolates from March 2001 to December 2002, directed to 80 million German consumers and which occurred solely at the Reber confectionery in Bad Reichenhall, a town of 18 000 inhabitants.

The CJEU also rejected Reber's argument claiming that the assessment of its mark's genuine use should have considered the artisanal nature of the products for which the mark is registered, namely pralines. On the contrary, the court affirmed that such assessment must be based on the products and services as specified in the trade mark application, being simply chocolates in the present case, and not on a specific marketing concept.

Finally, the CJEU said nothing about Reber's marketing on the internet, since this was not a matter of law and it fell outside its competence, and confirmed that the Community and the national trade mark systems are autonomous so that neither the OHIM nor the European judicatures are bound by national decisions. As a consequence, the German decision recognizing the Walzertraum mark's genuine use was not relevant here.

In regard to the second plea in law, the CJEU did not expressly state whether the assessment of the genuine use was more complicated for SMEs than for multinational companies. As Reber only reiterated the same plea and arguments submitted before the General Court with the purpose of securing the revision of that claim, those arguments were inadmissible.

However, it seems that the CJEU agreed with the General Court's reasoning affirming that, when the genuine use of Reber's Walzertraum mark had been assessed, no discrimination had occurred as regards the company's size. The CJEU simply referred to the contested decision on the violation of the principle of equal treatment, both on the ground that the artisanal nature of the chocolates should not play any role in assessing the genuine use and that the General Court is not bound by previous OHIM's decisions.

Practical significance

The concept of genuine use has been conceived to create legal and commercial certainty as regards a real and relevant exploitation of both Community and national trade marks in the European Union Internal Market. This concept plays a fundamental role in trade marks' life cycles as it applies both to the opposition and the cancellation proceedings before the OHIM. Thus the Community legislation has set out the criteria to establish when the use of a trade mark is deemed to be genuine while the European judicatures, as in the Walzertraum case, have elaborated the relevant case law to avoid marks' token uses. Consequently, this ruling serves to enable trade mark holders to maintain their titles and their market shares by means of the use of a mark in connection with its essential function as a business identifier and with the specific products and services for which it is registered. Should it be possible to modify the assessment of the genuine use according to the companies' size, thus providing facilitated treatment for SMEs in respect to multinational corporations, it would lead not only to market distortions but also to violation of the mentioned principle of equal treatment.

Friday, 19 September 2014

How is patent eligibility of computer-implemented inventions to be determined in the United States in view of Alice v CLS Bank?

Author: Susan Keston (HGF Limited)

Alice Corporation Pty Ltd v CLS Bank International and others, Docket No 13-298, Supreme Court of the United States, 19 June 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu154, first published online: September 18, 2014

The US Supreme Court has issued its eagerly awaited decision on whether or not claims to computer-implemented inventions are directed to patent-eligible subject matter, avoiding any pronouncement that either business methods or software inventions are patent ineligible per se, but holding that if claims are directed to a patent-ineligible concept such as an abstract idea, generic computer implementation or recitation of conventional computer hardware is not sufficient to provide the ‘inventive concept’ needed to transform the abstract idea into a patent-eligible invention.

Legal context

In the USA, in contrast to Europe, there is no statutory exclusion from patentability of either computer programs or business methods per se. The claimed invention must, first, be directed to one of the four statutory categories of 35 United States Code (USC) § 101, and, secondly, must not be wholly directed to subject matter encompassing a judicially recognized exception. Quoting from 35 USC § 101:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The judicially recognized implicit exception is that laws of nature, natural phenomena and abstract ideas are not patentable, as noted in US Supreme Court decision (Docket No 12–398) in Molecular Pathology v Myriad Genetics, Inc (2013).

United States case law on computer-implemented inventions has evolved through a series of tests for patent eligibility under 35 USC § 101. In 1981, patentable subject matter was assumed to have the legislative intent of ‘anything under the sun made by man’ in Diamond v Diehr, 450 US 175 (1981), referencing Diamond v Chakrabarty, 447 US 303, 309, 206 USPQ 193, 197 (1980). The decision of the Court of Appeals for the Federal Circuit in State Street Bank and Trust Company v Signature Financial Group, Inv, 149 F 3d 1368 (1998) expanded the scope of patentable subject matter in the USA to include business methods, provided that they produce ‘a useful, concrete and tangible result’. This tangible result test was rejected in favour of the ‘machine or transformation test’ by the Court of Appeals for the Federal Circuit in Bilski v Kappos, 545 F 3d 943, 959–60 (2008). However, the Supreme Court in Bilski, 561 US 593 (2010) disagreed that this was the sole test for determining patent eligibility of a process, deciding it merely provided an ‘important clue’ and decided by a narrow 5:4 majority that business methods are not categorically excluded from patentability.

Facts

Alice, an Australian company, is the assignee of four related patents covering a computerized trading platform for conducting financial transactions in which a third party mitigates settlement risk. Three of the four patents were issued after the State Street Decision of 1998, but before the Federal Circuit Decision in Bilski, while the fourth patent issued just prior to the Bilski Supreme Court decision. The Alice patents comprise between them independent claims to: a method; a data processing system including a computer and a data storage unit; and computer-readable media containing program code. By way of contrast, the Supreme Court decision in Bilski dealt with method claims only.

In the USA, litigation commenced with CLS Bank challenging the validity of the Alice patents, and Alice countersued CLS Bank for infringement. At first instance, the District Court decided that each of the asserted claims of the Alice patents was invalid for not claiming patent-eligible subject matter. A panel of three judges in Court of Appeals for the Federal Circuit (CAFC) subsequently reversed the District Court decision and granted an en banc rehearing before a panel of ten judges at CAFC.

In the en banc CAFC decision, a majority of the judges affirmed the District Court's holding that Alice's method and computer-readable media claims were not patent eligible under 35 USC § 101. However, there was no single consistent legal rationale for this majority decision. Furthermore, the court was evenly split in affirming the District Court's holding that the asserted system claims were not directed to patent eligible subject matter. Given the lack of legal certainty, Alice petitioned the Supreme Court to decide:
Whether claims to computer-implemented inventions—including claims to systems and machines, processes, and items of manufacture—are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court.
The Supreme Court decided unanimously in favour of CLS Bank, holding that the asserted method claims were directed to the abstract idea of intermediated settlement and thus not patent eligible under 35 USC § 101. This conclusion followed from Bilski, because intermediated settlement, like the risk hedging of Bilski, is a fundamental economic practice long prevalent in commerce. The system (or apparatus) claims and the computer-readable media claims of the Alice patents were also found to be patent ineligible under § 101. The court's reasoning was that the method claims recite an abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea.

Analysis

The Supreme Court's rationale in applying the § 101 exception was motivated by ensuring that the basic tools of scientific and technological work, such as laws of nature, natural phenomena and abstract ideas should not be monopolized, because the grant of a patent to such ‘fundamental building blocks’ might impede, rather than promote, innovation. However, they were careful not to construe the § 101 exception so broadly that it would swallow all of patent law, referring to the finding in Mayo, that at some level ‘all inventions … embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas’.

The Supreme Court applied a two-part test for patent-eligibility, adapted from Supreme Court decision in Mayo Collaborative Services v Prometheus Labs, Docket No 10-1150 (2012), as follows:
Part 1: Are the claims at issue directed to a patent ineligible concept (in this case, an abstract idea)?

Part 2: If the claims at issue are directed to an abstract idea, then determine whether or not the claim's elements, considered both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application.
Applying this test specifically to the Alice method claims, the Supreme Court reasoned that mitigation of settlement risk was an abstract idea. Requiring ‘generic computer implementation’ in the method claims failed to transform the abstract idea into a patent-eligible invention. The claims at issue amounted to ‘nothing significantly more’ than an instruction to apply the abstract idea of intermediated settlement, using a generic computer.

Practical significance

Alice v CLS Bank does not pronounce either that software inventions or business methods inventions are patent ineligible per se, but reinforced Bilski and Mayo. The Alice decision expands upon Bilski by providing that method, apparatus and computer-readable media claims are likely to rise or fall together, the recitation of ‘generic computer hardware’ being insufficient to evade patent ineligibility under § 101.

The two-part Mayo framework is already being used by the US Patent and Trademark Office (USPTO) for claims involving the laws of nature/natural phenomena categories of implicit exceptions to patent eligibility. The same test will now be applied to the abstract ideas implicit exception. This test is likely to be difficult to apply in practice and thus falls short of the goal of providing significantly improved legal certainty in the assessment of § 101 patent-eligibility by the USPTO and by the lower courts.

The definition of ‘abstract idea’ relevant to Part 1 of the Mayo framework has been deliberately left open to interpretation by the Supreme Court. In Part 2 of the framework, what is required to transform the abstract idea into something significantly more than an implementation of the idea on a generic computer also lacks certainty. Improvements in the functioning of a computer or improvements in technology seem to be indicative of patent eligibility. These factors will be difficult to assess without reference to relevant prior art, but the court in Mayo rejected a conflation of novelty (§ 102) and non-obviousness (§ 103) with the patent-eligibility assessment of § 101.

Care ought to be taken when drafting new patent applications in the business methods and software fields to clearly describe the underlying technical innovation beyond use of conventional computer hardware.

Defendants in patent infringement disputes are likely to be encouraged by the uncertainties in interpretation of the two-part Mayo framework to raise patent-eligibility as a ground for invalidity at an early stage, such as via a Rule 12 of the Federal Rules of Civil Procedure motion to dismiss, perpetuating the increasing use of post-grant procedures such as post-grant review, inter-partes review or covered business method review, where available.

We can expect the definitions of ‘abstract idea’, ‘generic computer’ and ‘inventive concept’ required to transform the abstract idea into something patent-eligible to be hotly debated in forthcoming patent litigation in the USA.

Sunday, 14 September 2014

Beware of Predatory Publishers

Contributors to JIPLP sometimes email to say that they have been invited to write for often impressive-sounding journals of which they have never heard, and which offer to charge them for the privilege of publishing their work.  These publications are appropriately termed "predatory publishers".  As Wikipedia explains
"In academic publishing, some publishers and journals have attempted to exploit the business model of open-access publishing by charging large fees to authors without providing the editorial and publishing services associated with more established and legitimate journals. "Beall's List", a regularly-updated report by Jeffrey Beall, sets forth criteria for categorizing predatory publications and lists publishers and independent journals that meet those criteria".
Jeffrey Beall's Scholarly Open Access blog carries a list of hitherto identified predatory publishers which, sadly, is a long one. The 2014 list can be surveyed here.

I have just received an email, the relevant parts of which are reproduced below:
13 - September - 2014 
Dear Dr. Jeremy Phillips,

I came across to your research paper titled "Switzerland still not part of Germany, even for trade mark purposes" and feel that your research is having a very good impact
[this "research paper" is actually a 1,350 word Current Intelligence note published this April. I'm not aware of it having any impact on anyone ...].
With a view to begin a long-term fruitful association with you, I invite you to submit your upcoming research articles / papers for publication in Global Journal of Management and Business Research (GJMBR), an international double blind peer reviewed research journal [Has any reader of this blog come across this title or any articles published in it? Has anyone been invited to peer-review any submission made to it? Has anyone had an article rejected by it? It would be good to know].

This may be noted that due date of forthcoming issue GJMBR is 15 October, 2014.

The process of publication is expected to be completed within three to five weeks. Our processes follow rigid quality control measures and comply with international standards in journal publishing. For more details please refer to websites https://GlobalJournals.org (Core Website) and http://JournalofBusiness.org

... 
Yours Sincerely,

Dr. R. K. Dixit

Chief Author (Hon.)

(Fellow of Association of Research in Business [I can find no evidence to suggest that this Association exists])

Global Journals Incorporated [no.150 on Beall's List]
Naturally it is for JIPLP contributors to decide where and how they submit their articles and case notes. However, they are advised to check carefully whether the journals to which they send their work are those which will enable them to reach their target readership, will reflect well upon their professional or scholarly reputation and which offer a truly interactive and constructive peer review and editorial process that will help enhance the quality and the readability of the published product.

Wednesday, 10 September 2014

Karen Millen v Dunnes Stores: CJEU clarifies ‘individual character’ requirement for Community designs

Author: Nina O'Sullivan (King & Wood Mallesons SJ Berwin, London)

Karen Millen Fashions Ltd v Dunnes Stores, Dunnes Stores (Limerick) Ltd, C-345/13, EU:C:2014:2013, Court of Justice of the European Union, 19 June 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu153, first published online: September 9, 2014

The Court of Justice of the European Union (CJEU) has confirmed that, when assessing the individual character of a Community design, it is not legitimate to do so by reference to a combination of features taken from a number of earlier designs. The assessment must instead be made by reference to specific earlier designs taken individually. The CJEU has also confirmed that the holder of a Community design does not need to prove that its design has individual character but must merely indicate what constitutes the individual character of that design.

Legal context

Council Regulation 6/2002 on Community Designs provides for two forms of protection for Community designs: the registered Community design (RCD) and the unregistered Community design (UCD).

Article 4(1) of the Regulation provides that a design will be protected by a Community design to the extent that it is new and has individual character.

Article 6(1) provides that a design will have individual character:
[I]f 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) in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public … .
Article 11 provides that an unregistered design that meets the requirements in Section 1 (i.e. Articles 1-9) of the Regulation shall be protected by UCD for three years from the date on which the design was first made available to the public within the Community.

In relation to infringement proceedings, Article 85(2) states:
[T]he Community design court shall treat the Community design as valid if the right holder produces proof that the conditions laid down in Article 11 have been met and indicates what constitutes the individual character of his Community design … .
Facts

In 2005 Karen Millen, a company, began marketing three women's fashion garments in Ireland: two striped shirts (one blue, one brown) and a black knit top. Dunnes Stores representatives bought samples of the garments and arranged for copies to be made on its behalf, which it put on sale in its Irish stores in late 2006. In January 2007, Karen Millen commenced proceedings in Ireland against Dunnes Stores for infringement of the UCD in its designs. Dunnes Stores accepted that it had copied the designs but disputed that the designs for the three garments were protected by UCD.

In particular, Dunnes Stores argued that:

* the garments did not have individual character as required by Article 6(1) and

* Karen Millen was required to prove, as a matter of fact, that the garments had individual character.

The High Court of Ireland decided in favour of Karen Millen. On appeal, the Irish Supreme Court referred two questions to the Court of Justice of the European Union (CJEU), summarized as follows:
When assessing the individual character of a design for UCD, is the overall impression it produces on the informed user to be considered by reference to whether it differs from the overall impression produced on such a user by:

* any individual design which has previously been made available to the public, or

* any combination of known design features from more than one such earlier design?

Is a Community design court obliged to treat a UCD as valid where the right holder merely indicates what constitutes the individual character of the design or is the right holder obliged to prove that the design has individual character?
Analysis

Individual character

The first question concerned the assessment of the overall impression that a design produces on the informed user compared to that produced by any earlier design which has been made available to the public. Dunnes Stores had relied upon a range of features taken from a number of earlier designs which it argued, taken in combination, meant that the Karen Millen designs lacked individual character.

The CJEU decided that the assessment of individual character should be made by reference to one or more specific earlier designs, taken individually. It rejected Dunnes Stores' argument that the court could take into account a combination of features drawn from a number of earlier designs.

In its earlier decisions on Community designs (Judgment in PepsiCo v Grupo Promer Mon Graphic, C-281/10 P, EU:C:2011:679, and Judgment in Neuman & others v José Manuel Baena Grupo, C-101/11 P and C-102/11 P, EU:C:2012:641), the CJEU had confirmed that, where possible, the informed user will make a direct comparison between the designs at issue. The CJEU emphasized, however, that it did not thereby shut out the possibility of an indirect comparison; a direct comparison could be impracticable or uncommon in the relevant sector (eg because of the characteristics of the items). Accordingly, in some cases it would be legitimate for a court to base the assessment on an imperfect recollection of the overall impression produced by those designs. However, as Advocate General Wathelet indicated in his Opinion, even an indirect comparison based on imperfect recollection was still conducted by reference to specific designs, rather than on specific features from several different earlier designs.

Dunnes Stores relied upon recitals 14 and 19 to the Regulation, which use the expressions ‘the existing design corpus’ and ‘in comparison with other designs’, respectively. However, the CJEU noted, these expressions were not carried through to the articles of the Regulation and did not, in any event, support the view that it was legitimate to take a combination of features in isolation from a number of earlier designs. Dunnes Stores also referred to Article 25(1) of the Agreement on Trade-related Aspects of Intellectual Property Rights (‘TRIPS Agreement’) which provides that ‘… Members may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features … ’. However, the CJEU noted that this was optional wording; Member States were not required to provide for novelty or originality of a design to be assessed in comparison with such a combination of features.

Proof of individual character

On the second question, the CJEU decided that a UCD holder does not have to prove that its design has individual character, but only has to indicate what constitutes the individual character of the design. The wording of Article 85(2) was, the CJEU said, unambiguous. A requirement of proof of individual character would be contrary to the presumption of validity; it would make nugatory the requirement in Article 85(2) that the design holder must indicate what constitutes the individual character of the design and the possibility for the defendant to challenge validity. It would also be contrary to the objective of simplicity and expeditiousness which underpinned the reasoning behind the UCD. Accordingly, the UCD holder was simply required to identify the features of the design which gave it individual character.

Practical significance

Recitals 16 and 25 to the Regulation provide the context for the introduction of UCD, specifically noting its value for those sectors which produce large numbers of designs which may only have a short market life (or indeed which may not actually be commercialized). For those industries—a major one being the fashion industry—the UCD is a valuable right in that it provides an appropriate level (and term) of protection without imposing registration formalities and attendant costs. That said, where appropriate, applying for registered protection through an RCD does have distinct advantages over relying upon UCD protection. As well as providing a longer term of protection (up to 25 years), the registered right can more easily be exploited and enforced (with UCD, there is the additional need to prove copying, over and above the requirement that the alleged infringement does not produce a different overall impression on the informed user). Further, from October 2014, some infringements of registered designs can be the subject of criminal prosecutions in the UK.

The CJEU's decision, while framed in the context of UCD, applies equally to the assessment of individual character of RCDs and harmonized designs under the Design Directive (98/71). It sets a high hurdle for a party wanting to challenge the individual character of a design. The burden of proof is on that party to show that the design does not have individual character, which it will have to prove by reference to specific, earlier designs taken individually, rather than seeking to combine a number of features from the ‘design corpus’ as a whole. This is a particularly important finding for the fashion industry—where it is common for designers to draw on design aspects from a range of previous collections—but also for other design-led industries.