Trade marks and designs: overlaps and boundaries -- Cinderella, bootees and the Great Debate

"And I still say that you can't protect
different configurations of zebra stripes ..."

In the faintly fairytale surroundings of the Stationers' Hall two lions of the IP world, Professor Doctor Alexander von Mühlendahl and Professor Sir Robin Jacob, duelled over the honour of the Cinderella of IP law and her two (not so) ugly sisters. After John Olsen, Head of IP at host law firm Edwards Wildman, introduced the speakers and the chair, Jonathan Griffiths (Senior Lecturer at the Queen Mary School of Law), we were informed that, so progressive was this debate, the topic itself had changed its boundaries and copyright would be added to this IP Venn diagram.

Jonathan, who gave a brief overview of the spread of trade marks, copyright and designs, questioned whether intellectual property rights should be allowed to follow their own unfettered logic as individual disciplines or should we step in and guide them with policy based constraints? Over the years we have become less tolerant of these policy based interventions, particularly in relation to overlap. Jonathan cited the reduction of the copyright protection term to 25 years in the United Kingdom for items already registered as a design as a policy often seized upon by his students for its unfairness.

Would the informed user would gain
the overall impression that these stripes
were those typically found on a zebra?

Having framed the debate Jonathan then gave the floor to Alex, who focused on two principal factors: the subject matter of protection (i.e. validity); and the scope of protection (i.e. infringement) as they applied to trade marks and designs. The protection regimes were briefly outlined with reference to the statutory law in Europe. Alex then raised the issue of concurrent protection of signs under trade mark, patent, utility model design, copyright and unfair competition law. Asking whether an earlier patent, design or copyright protection, once expired, precludes trade mark protection, he offered the thesis that a sign which fulfils the requirements of trade mark law may at the same time qualify for protection as a design or a "work" under copyright law. However such a sign will only rarely – as a 3D mark – constitute a technical invention (required for it to be considered a patent or utility model). He then observed that the exclusion from trade mark protection for signs consisting of shapes "necessary to obtain a technical result" avoids undesired overlap between trade mark protection and patent or utility model law.

Continuing with the example of signs, Alex highlighted areas of overlap and pointed out the positive effects; trade marks are granted even when concurrently or previously existing design rights have expired and, although it rarely arises, design protection could be granted or continued if a trade mark expired.

Sir Robin Jacob then opened with the historical perspective on parallel rights, starting with an old case – this time the US Playing Cards case of 1902 where the Patent Office objected to registering as a trade mark a design on the back of cards because it was already a registered design. Sir Robin then pointed out that, where there is potential for infringement, you run through the things you might "shoot" the other side with – patents, trade marks, copyright or designs. In these situations rights owners will take full advantage of overlaps, perhaps unfairly.

The UK's 1911 Copyright Act got as far as realising there would be an overlap between registered designs and copyright and so included an anti-overlap provision – section 22 – in the form of the industrial use requirement: "This Act shall not apply to designs capable of being registered under the Patents and Designs Act, 1907, except designs which, though capable of being so registered, are not used or intended to be used as models or patterns to be multiplied by any industrial process." However the provision never really worked as many designs were not initially created for industrial use and so benefited from copyright protection as well.

Sir Robin mentioned that overlap was also visible in the Dolly Blue case (William Edge & Sons Ltd v William Niccolls & Sons Ltd [1911] A.C. 693) between patents and passing off. He noted that some overlap provisions are only relevant for UK registered designs and not for Alicante-registered [i.e. Community] designs. Sir Robin eagerly hoped that someone might be deprived of an entitlement to protection under a right guaranteed by European Union law and might thus make a Francovich claim against the UK government.

The overlaps were not viewed quite as positively by Sir Robin as by Alex.  Sir Robin referred to the trade mark protection of the Eames chair and the Jif Lemon passing off case as examples of overlaps causing unfair protection and of regimes protecting what they are not meant to protect.

Sir Robin concluded that policymakers never limit the overlaps in trade mark law properly. He felt that they need to work out what the objective of their protection is, otherwise you get a collection of rights with no clear lines between them and no obvious directions regarding which route is the most appropriate in each case. In his opinion the area of design rights has been sufficiently narrowed; however, copyright law has still not been clearly defined.

There followed a short discussion between the two speakers regarding 3D marks, the Alicante system and copyright. The argumentative nature inherent in a debate faded further as both agreed that the Alicante system leaves something to be desired with regard to the accuracy of the registrations and that there was a need for some sort of European copyright harmonisation.

When the debate was opened to the floor it was revealed that there was another IP lion in our midst in the form of Mr Justice Richard Arnold. He asked the two panellists whether the overlap between copyright and design rights should be addressed by policymakers square on or not. Both said yes. Alex cite the way this issue been addressed in Brussels as an example of the way not to do it – he feels the requirement to run comparisons is unnecessary. Sir Robin also pointed to the limiting of copyright for a registered design to 25 years as a bad example of dealing with overlap, questioning why anyone would ever register a design now if it's going to result in a shortened copyright.

Mr. Justice Arnold then questioned why designs protected under the design system should also be protected under unfair competition too. Alex responded that it's easier to get quick relief without looking into complicated issues of validity and infringement but felt that, if a party did not win on design infringement, then it should not win on unfair competition. As the discussion drew to a close both speakers were asked to give a one minute summary of their positions. Sir Robin said that each right should be tailored for its specific purpose: whether it overlaps with another right is entirely sententious. Rather untypically for a debate, Alex abstained from summarising and agreed with Sir Robin's summary.

Given the unusual nature of this debate, we were not asked whether we felt the motion had been carried or lost. However, we were asked to vote on who was to be awarded the "Cinderella Glass Slipper". Alex received the honour of Slipper and Sir Robin was awarded a consolatory pair of woollen bootees (sadly too small to keep his paws warm).

The IPKat thanks Elva Cullen (Allen & Overy LLP) for preparing this note.