Marques: Why designs matter for brand owners

Designs are all around us: in a connected and globalised world, colours, shapes and patterns are key to the ways we communicate—including how brand owners communicate information to consumers.

Scientific studies show that the brain processes visual information (such as that on packaging, or the packaging shape itself, or a logo) more quickly than written information. Indeed, research indicates that as much as 80% of communication is non-verbal.

Studies by neuropsychologists such as Christian Scheier (who spoke at the 2015 Marques Annual Conference in Vienna) also suggest that consumers are more likely to make buying decisions based on the look of products than based on brand names. Yet, many courts and trademark offices continue to treat trademark applications for non-traditional marks with scepticism, making it hard to obtain such registrations and even harder to enforce them.

It is not surprising, therefore, that IP rights owners are increasingly turning to design law to help them protect their valuable brands. Marques has recognised this for some time, and the dedicated Designs Team was set up several years ago. Today, we have members from all over the world, including private practice lawyers as well as representatives of companies such as JT International, Unilever, ThyssenKrupp, Bulgari, Adidas, Nestlé and Volkswagen.

The Designs Team seeks feedback from rights holders and design creators on how the design law systems can address their concerns and better help them protect their valuable product and brand assets. Through regular participation in forums such as those hosted by the EU IP Office (EUIPO) and the World IP Organization (WIPO), we can raise these points and promote the development and harmonisation of design law systems worldwide. We are working on four main initiatives at the moment.

EU design reform

The EU registered Community design system is now more than 20 years old. The Design Directive dates from 1998 and the Community Design Regulation from 2002. Following the review of the EU trademark system, the European Commission has embarked on an evaluation of how the design system is working at EU and national levels. It has commissioned an economic (2015) and legal (2016) review, and ran a stakeholder consultation from December 2018 to April 2019.

Marques has provided comprehensive input into the design law reform discussion, both in its own right and in a joint paper with our sister IP associations ECTA and INTA. Following extensive discussion with members, Marques identified five main issues in its paper:

(1) Spare parts    
Marques believes that the discussion over the spare parts issue does not have to, and should not, be an obstacle to pushing forward with the design law reform agenda. On the merits of the issue, Marques contends that the legal status as to spare parts should not be changed with a view to raise further hurdles for design right owners to establish and enforce design rights for spare parts. The most appropriate solution will evolve under competition law rules.

(2)  No general visibility requirement            
Marques strongly objects to the suggestion in the legal review that there should be a general visibility requirement for design protection. To the contrary, Marques wishes to clarify the law in order to emphasise that a design generally does not need to be visible at any particular time or in any particular situation in order to attract protection, and that with regard to the exception to that rule, regarding component parts of complex products, there should be a clarification that this notion is aimed at dealing with spare parts markets, specifically for complex machinery.

(3)  Technicality 
Marques requests that article 8(1) of the Regulation and article 7(1) of the Directive be amended so that the multiplicity of forms test is the guideline for assessing whether a design feature is solely dictated by its technical function. It should be clarified that the threshold for “technicality” is not met in case of mere functionality of a design.

(4)  Disclosure rules              
Marques recommends that stricter requirements be introduced for prior published designs to be eligible for being held against later designs. Prior publications that are too ambiguous must be disregarded.

(5)  Classification                  
Marques urges abolition of the same class requirement for multiple design application by deleting article 37(1) of the Regulation, and by making abolition mandatory through amending the Directive. Marques supports the recommendation to allow a higher number than the current seven views or to remove the restriction on the number of design views completely.

This is not an exhaustive list of issues, and there are other points on which Marques has taken a position with the aim of clarifying the law, correcting disadvantageous developments at IP office or court levels and to simplify national and international design applications. These include alignment of deferred publication rules; availability of invalidity procedure at office level; mandatory abolition of ex-ante examinations of validity; fees, in particular abolition of increase of renewal fees with each renewal term; and providing means to fight 3D printing design infringements.