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6 May 2016

ITMA designs seminar: Trunki, biscuits and shape marks

Barristers who argued in the Trunki case discussed the effect the case has had on designs and designers at a seminar held in London on April 27.

Law firm Gowling WLG played host to the event, which was organised by the Institute of Trade Mark Attorneys. John Coldham, a director at the law firm, chaired the discussion.

During the event delegates also considered how shape trademarks could be registered in the EU and UK in light of the Trunki decision.

Earlier this month, WIPR reported that the UK Supreme Court upheld a ruling that the Kiddee Case did not infringe a registered Community design (RCD) covering the Trunki case.

Lord Neuberger handed down a unanimous verdict, which upheld the English Court of Appeal’s decision.

Mark Vanhegan, a barrister at 11 South Square, who acted for Kiddee maker PMS, and Michael Hicks, of Hogarth Chambers, who acted for Trunki designer Magmatic, looked back at the case and discussed how attorneys can safely protect their designs in the future.

Also on the panel was Nathan Abraham, practice manager for trademarks and designs at the UK Intellectual Property Office.

Coldham began proceedings by asking panellists what they found most interesting from the case.

“As the case progressed through the courts, a number of puzzling points for design law were more or less being exposed and understood by the courts,” said Hicks.

“Design law still has a number of difficult points which it has to answer in the future.”

Vanhegan added: “Designers should be entitled to protect minimalist designs.”

Three images of the Trunki case were then displayed which showed greyscale, colour, and line drawings of the product.

They showed the differences between computer-aided design, greyscale and line drawings and how each proposed design had a lesser or greater extent of elements than can be protected.

Coldham then asked the panel whether they thought the UK’s design system was working.

A unanimous verdict from all three panellists agreed that the designs system worked.

Abraham said: “Demand for registration of designs in the UK is rising”, adding that filings were up by 32% in 2016 compared to last year.

Biscuits, registered designs and copyright

Martin Howe, a barrister at 8 New Square, departed from the Trunki case and instead spoke about the overlap between registered designs and copyright.

He produced pictures of biscuits with bites taken out of them and talked about how companies often advertise their products in this way.

Howe referenced Biscuits Poult SAS v OHIM, a case between confectionery companies Banketbakkerij Merba and Biscuits Poult.

Biscuits Poult applied for an RCD at the European Union Intellectual Property Office (EUIPO) in 2009. The design showed the word ‘cookies’ with an image of a biscuit with chocolate innards.

In February 2010, Banketbakkerij Merba opposed the application and claimed the design was invalid because it was “not new” and had “no individual character”.

In a decision handed down in 2012, the EUIPO’s Third Board of Appeal said the design lacked individual character and that “the layer of filling inside the cookie could not be taken into consideration for the assessment of the individual character of the contested design, as it did not remain visible during normal use of the product”.

In 2014 the General Court upheld the ruling. Biscuits Poult was ordered to pay costs.

Howe asked whether the EUIPO had “confused it with a trademark case” and whether “in the course of eating the biscuit, one sees the interior”.

Shape marks and hurdles to registration

Trademarks became a theme in the next discussion, hosted by Guy Tritton of Hogarth Chambers.

He said that consumers can “associate the shape with the brand” and that [shape] marks are “inherently registrable”.

During the talk, he referenced the landmark Kit Kat case, which Nestlé lost in January this year.

Tritton discussed the facts of the case and said that the company conducted two surveys which asked whether UK consumers identify just the shape with a Kit Kat. He reported that the consumers said “yes, that’s a Kit Kat” and the results showed that 50% of consumers do identify the shape with Nestlé.

But, Tritton explained, Mr Justice Arnold found that these surveys were not good enough to successfully prove distinctiveness and that the EU is “not particularly keen about putting the shape of objects on to the register”.

Presenting design cases at the IPEC

In the final session of the seminar, Judge Hacon of the Intellectual Property Enterprise Court (IPEC) discussed present design cases at the court.

He started by talking about unregistered design cases, saying he had overseen a hearing on one “last week” and said “to my surprise” there was quite an “old fashioned” pleading in that instance where too many designs were being presented. He advised delegates to “pick” your best “five” which is something he “quite often allows”.

Hacon also spoke of the diary at the IPEC and explained about interim injunctions at the court.

He said there are “some doubts whether the IPEC diary is flexible enough to hear an interim hearing”, but he assured delegates that they would always get a hearing if it is “urgent”.

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