© The Author (2009). Published by Oxford University Press. All rights reserved
Editorial |
Locarno in the limelight
International IP treaties and conventions cover those that are high-profile, politically sensitive documents to those that scarcely register on the consciousness of the average practitioner. The epitome of the former is TRIPs—the Agreement on Trade-Related IP Rights—which is rarely off the IP agenda. At the other end of the scale can be found such rare creatures as the Stresa Convention of 1953 on the use of names and designations of origins of cheese, a collector's item if ever there was one. Not quite as obscure as the Stresa Convention, but down in the basement with some other dull and dusty documents, is the Locarno Agreement Establishing an International Classification for Industrial Designs.
Concluded in 1968, when America was rocked by the Tet Offensive, the British were rocked by the Beatles Double White album and the Czech ‘Prague Spring’ was crushed by Russian tanks, the Locarno Agreement came into force. With fewer than 50 national adherents, Locarno is not one of the must-sign obligations that every good country must endorse. Yet it quietly does its little bit, by providing a classification system enabling examiners to perform design searches more efficiently and accurately. The Locarno system is constantly revised and updated, with a new edition being published about every 5 years.
Recently, the Locarno system has been in the news following an initiative taken by MARQUES, the association of European trade mark proprietors. The initiative calls for a serious effort to modernize and improve the operation of the Locarno, especially the basis on which design concepts are classified. As MARQUES succinctly puts it:
Within the European Union, and in many other countries, design law relates to the protection of the appearance of a product or part of a product (‘what it looks like’). Designs do not protect functionality (‘what it does’). At present, the Locarno Classification relates more to what a product does, rather than what it looks like.This is most annoying for those who trade in manufactured products: a person who seeks to launch a new product has no easy way to see whether that product infringes existing registered design rights because, while reasonably accurate searches can be conducted in a small number of Locarno classes or subclasses, in reality an allegedly infringed design may be hidden within an unsearched class or subclass. An exhaustive search is expensive, so traders often shoulder a worrying degree of risk when they take the decision to launch new products.
The inconveniences of the existing classification are not experienced by those who wish to launch new products alone. The current ease with which designs may be registered in many jurisdictions, the paradigm again being the European Union, means that traders in well-established products are constantly inconvenienced by third parties who register, for little cost, unexamined designs that correspond to those earlier products. While such designs may be invalidated, the cost, inconvenience, and delay involved are deeply resented by honest businesses that sense that, despite its laudable objectives, design registration is open to grievous abuse. A classification system that makes it hard for traders to police their products adds to their sense of outrage.
Among those who operate the Locarno classification system will be found many who praise it. The system is stable in the sense that it has withstood the test of time and a remarkable effulgence in the range of design-based products. It has also served the needs of different types of registration system. Above all, it is the devil we know. Who can predict whether any replacement system would introduce new deficiencies?
It may be anomalous to classify a product by what it does, not what it looks like, when the protection of the design right relates to what it looks like. However, function is far easier to identify than form. A kettle boils water, whether it looks like one of a number of existing shapes or assumes any of an almost infinite number of abstract forms.
MARQUES's criticisms of the current system are valid and cannot be ignored—but equally we must not ignore the danger that the remedy may be more troublesome than the ailment which it is intended to cure. Let us support MARQUES's proposals but we must get the new classification scheme exactly right, for it may be a long time before the opportunity for root-and-branch reform arises again.
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