In a ruling by the General Court of the European Union, the EU Registered Design directed to the (in)famous Crocs shoe design has been found invalid following an appeal to Gifi Diffusion’s successful invalidation action.
For an EU Registered Design to be valid, it is required that the design is new and sufficiently different to existing designs.
However, EU Registered Design law allows public self-disclosures of a design to be disregarded from prejudicing the validity of a Registered Design if it was filed within 12 months from the earliest such public self-disclosure. As pointed out by Gifi Diffusion, the Crocs’ design had in fact been disclosed (at least on Crocs’ website and at an exhibition in the US) well before this 12-month self-disclosure “grace period”.
In a further aspect of European Design law, a design can still be considered new over a prior disclosure (no matter when the disclosure took place) if the disclosure could not reasonably have become known to the circles specialised in the sector concerned operating within the EU; this provision effectively allows the most obscure disclosures to be disregarded from prejudicing validity.
Crocs had argued that their earliest self-disclosures were not relevant because of their obscurity; however, the General Court of the European Union was unconvinced by Crocs’ arguments on this point. As a result, the earliest self-disclosures of Crocs’ design were admissible and therefore rendered the EU Registered Design not new.
This decision highlights the paramount importance of seeking registered design protection before any public disclosure of a design, and at the very latest within the self-disclosure grace period that is available in some – but not all – territories. It is also confirmed in this decision that there is a high bar for a disclosure to be disregarded on the grounds of obscurity.
To discuss protecting the IP in your designs, reach out to to our Designs team.
On Monday 19 March 2018, the UK government released an updated Draft Agreement on the withdrawal of the UK and Northern Ireland from the EU and the European Atomic Energy Community. The Draft Agreement was colour coded to represent the level at which the content had been agreed.
As at March 19th, guidelines relating to intellectual property were coloured green meaning they are agreed at the negotiators level but are still subject to technical legal revisions.
Impacts for Trade Marks and Design
If implemented, the proposed guidelines will allow for existing EU registered rights effectively to be transformed into two rights; a continuing EU right and a newly formed UK right. The latter will not be subject to any re-examination in terms of validity and will mirror the subsisting EU right in all aspects (save, of course, for territorial coverage).
Rights owners will be pleased to hear that under the proposed guidelines they are not required to take action in order to effect this change and that it will automatically happen without charge.
For those that may have accrued unregistered design rights in the EU before the end of the transition period, those rights will still be enforceable as such, albeit they will be administered as a UK right subject to the relevant provisions of EU Law.
For applications filed at the EU IPO before the end of the transition period, owners will be given a right to file a corresponding UK application within a prescribed period.
For the full draft text, click here and keep an eye out for further updates on our News and Insights page.
To discuss further, reach out to your attorney.
On Tuesday 13th March 2018, Mathys & Squire Partner, Martin MacLean, and Managing Associate, David Hobson hosted an event at the British Embassy in Copenhagen together with the Danish UK Association and Food Matters Live.
The event focused on means for Danish companies to gain a competitive foothold in the lucrative UK food and beverage market, exploring current trends and regulations, the avoidance of commercial pitfalls, and the commercial advantages provided by appropriate intellectual property protection and due diligence.
Presentations were delivered by Mathys & Squire, UK government (Public Health England), the Department for International Trade, EBS Ltd and Giant Peach, and were well-received by the 50+ industry attendees.
For further information about gaining a competitive edge in the UK food and beverage market click here or please contact David Hobson or Martin MacLean.
On February 26th 2018, Mathys & Squire Partner, Dani Kramer, spoke at the 4th Annual Foreign Law Firms Conference in Tel Aviv, Israel.
Entitled Tomorrow’s Innovation, Today, the conference included panel discussions on topics such as cyber-security, fin-tech, international disputes and AI.
Dani represented the UK in a panel session on intellectual property covering issues such as the implications of Brexit for Israeli firms and the need for Israeli innovators to adopt an international outlook when seeking to protect their innovation and not ignore European and Chinese markets.
With over 400 international attorneys in attendance, the conference is considered the largest international networking event of the year in Israel’s legal market.
To watch the panel in action, please click here. For further questions about our Israeli desk, please contact Dani Kramer.
Most firms take reasonable steps to protect their intellectual property.
Some go with a… tastier approach.
Mathys & Squire Associate, Laura Clews, was interviewed by the host of BBC Radio’s The Food Chain series, Emily Thomas, to discuss trade secrets in the food industry.
Laura’s work in the food technology, chemistry and packaging sectors provided fascinating insight (and the inside scoop) in to just some of the layers of secrecy shrouding the creation of the most common food brands and products.
To hear Laura’s interview on The Food Chain, click here.
For more information about trade secrets and intellectual property in the food industry, contact Laura Clews on [email protected]
On 13 March 2018 the UK deposited its instrument of ratification of the Hague Agreement for Industrial Designs, meaning the UK will shortly join the Hague system for registered designs.
The Hague system provides a centralised process for seeking registered design protection in over 80 countries and therefore provides an efficient way to seek registered design protection in multiple jurisdictions.
The UK’s accession to the Hague Agreement will allow (from 13 June 2018) UK-based applicants to access the Hague system directly – rather than as a Member State of the European Union – even after the UK’s departure from the European Union.
Although the Hague system has historically been relatively underused, several major territories have recently joined including the US, Japan and Russia, giving the Hague system renewed interest.
The Hague system is not however without its pitfalls, not least due to nuances in practices and procedures in many of the Contracting Parties. Care must therefore be taken when using the ever-expanding Hague system.
Please click here to read more, and for any questions about the Hague System please contact your Mathys & Squire attorney.
This year we are delighted to be partnering with Guide Dogs.
The Guide Dogs for the Blind Association is a British charitable organisation founded in 1934. Guide Dogs helps blind and partially sighted people across the UK through the provision of guide dogs, mobility and other rehabilitation services.
We recently held a firm quiz night and were joined by Craig, Dave, his Guide dog Chad – see photos below.
Dave gave a fantastic talk about the life-changing services that Guide Dogs provide to those with sight loss.
Guide Dogs are responsible for 8000 dogs and every penny that is raised will go towards the lifetime cost of a guide dog which is around £55,000.
With over 4,950 guide dog owners in the UK, every little helps.
- £30.00 could help to support a working guide dog partnership for a week
- £60.00 could buy an Off to School Kit for a puppy moving into its first stage of training
For more information about Guide Dogs and the amazing work they do please click here.
The acts that passed through the German Parliament to enable ratification of the Unified Patent Court (UPC) Agreement are now being challenged by the opposition party, Alternative für Deutschland (AfD).
The AfD have called for the repeal of the acts that have put Germany in a position to ratify the Agreement. Uncertainty remains around whether the pan-European Unitary Patent Agreement will therefore come into effect.
In the meantime, with the UK government in a position to ratify the Agreement, the IP Federation (representing British industry) and the Law Society are urging the government to ratify before the end of March; the target date for agreeing the transitional arrangements for Brexit.
To discuss further, contact your Mathys & Squire attorney.
The 28th February 2018 saw the EU Commission release a draft “Withdrawal Agreement” outlining the provisional arrangements for the United Kingdom to withdraw from the EU and from the European Atomic Energy Community.
The text will undergo further review by both the European Council and Brexit Steering Group of the European Parliament before being presented to the UK Government for further negotiation and, as such, is still subject to change.
Key Points
No unexpected guidelines relating to IP.
EU trade mark, design and plant variety rights holders will enjoy comparable registered and enforceable IP rights in the UK via replication of their existing EU registrations.
These UK registrations will not be re-examined by the UK Intellectual Property Office and no charges will be levied.
The information required for the registration will be provided to the UK authorities by the EU Intellectual Property Office, the Community Plant Variety Office and the European Commission.
Patents are unaffected
The text will be welcomed by EU-wide rights holders since it suggests that no loss of rights will occur on account of Brexit.
For the full draft text, click here and keep an eye out for further updates on our News and Insights page.
To discuss further, reach out to your attorney.
The UK Intellectual Property Office (UK IPO) has announced changes to UK patent fees to be introduced from 6 April 2018. Despite increases in both pre-grant fees and some post-grant renewal fees, the UK fees remain competitive compared to patent fees elsewhere around the world.
Notable changes include the introduction of fees for excess claims and description pages. Although common in other jurisdictions, these have not been charged at the UK IPO before. Some fee increases can be avoided by making payments for existing applications early, before the new fees come in on 6 April.
New Excess Claims Fees
Introduced at a rate of £20 per claim over 25 claims, these excess claims fees will form part of the search fee, which must be paid within 12 months of the priority date. Failure to pay excess claims fees will result in the entire application being deemed withdrawn, unlike at the EPO where failure to pay simply results in the additional claims over 15 being considered withdrawn. Since amendment of the claims before search is at the discretion of the UK IPO, applicants should consider the number of claims carefully before filing.
New Excess Pages Fees
Introduced at a rate of £10 per page over 35 as part of the examination fee, these will be payable 6 months from publication of the application. The fees apply only to description pages and not to the claims or drawings pages.
Application Fees
Increase from £20 to £60 with a new £15 surcharge for payment after filing.
Renewal Fees
Increase by £10 each from year 12 onwards as part of the UK IPO’s continued strategy to cover the majority of its costs from renewal fees, rather than pre-grant fees.
Discounts
Discounts for paying fees electronically will increase to £30 for each of the application, search and examination fees.
Contact your Mathys & Squire attorney today to discuss what you may be able to do by way of, for example, early fee payment on existing UK applications and filing strategies for future Patent Applications.
Further information on the UK IPO amendments can be found here.
