© The Author (2009). Published by Oxford University Press. All rights reserved.
Editorial |
Community design and design community
One of the highlights of the annual conference of MARQUES, the organization representing the interests of European trade mark proprietors and those who counsel them, is the set of workshop sessions scheduled for the second day. Although the workshops are timetabled against the social outings and excursions, they have become increasingly popular for two reasons. One is that the conference already provides ample networking opportunities, which removes much of the reason for boarding a coach to a congenial venue and hoping that the person in the next seat, with whom one exchanges business cards, will be the golden contact whose legal instructions not only justify attendance at the event but pay for it many times over. Another is that, from their initially tentative beginnings, the workshops have increasingly raised the bar in terms of both quality of presentation and commitment to audience participation.
A case in point this year was the workshop on the protection conferred in Europe by the registered design right. In bygone times, the session would have consisted of a presentation, a question-and-answer session, and a retreat to the refreshment area for more coffee and biscuits. But this old model has been superseded by the new. Following a necessary degree of instruction in the ground-rules for Community design registration and the scope of protection conferred on them (necessary in order to bring participants from the Americas, Asia, and beyond up to speed), the participants were divided into teams, each of which represented the producer of a market-leading branded product. Each team received ‘its' product and was told to recommend the registration of a package of two Community trade marks and six registered Community designs in order to fend off competitors. That was the easy bit.
The next stage involved each team being given a specimen of the lookalike product against which ‘its' product had brought legal proceedings for one or more of various IP rights and/or unfair competition. In the light of the legal advice which each team was given, it had to state publicly whether it would have succeeded in driving the me-too product from the market. In four teams of the six, the legal advice was adequate for the purpose; in one it was not and in another the in-house team considered that the product was insufficiently similar to ‘its' product to cause concern, since it reflected what one might describe as a tolerable degree of similarity.
This exercise was valuable for several quite diverse reasons. From a legal point of view, it demonstrated that the protection conferred by registered Community designs was unconnected to that of the Community trade mark and that there was no interface between them, nor indeed any contiguous border. When looked at in terms of actual products, the result that a design feature was protected by both rights, either or neither appeared to be the consequence of some caprice rather than the manifestation of a carefully thought-out market-sensitive legal policy. From a practical point of view, it demonstrated the problems inherent in planning a protection policy for one's products. Rights, once obtained, must be maintained and monitored, and some of the in-house teams clearly shared little consensus as to what the consequences of their choices of registered right might be.
There was also an interesting psychological dimension to the workshop. The teams very soon demonstrated not only a collective identity but reflected the personalities of their component parts. Among the players in the exercise were those who lead and those who follow; those whose decisions are based on intuition born of experience and those whose decisions stem from a dispassionate view of the issues and the logic that leads from the meaning of the words of the Design Regulation to their practical application; those whose contributions were proactive, those who made their presence felt by means of their responses; and those who sat in dignified silence until the rest had spoken, conferring their assent to the position which most closely resonated with their own. How many corporate clients are sensitive to these dimensions? Perhaps not many, but those employed in-house who attended the session might want to ask what lessons they have learned, both when selecting counsel from the private practice sector and when determining how to engage with them.
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