PADIMA
Q: What would you say is the key factor to success when managing a designs filing practice?
A: The most important thing is to consider imitations – not only their prevalence in the industry or sector in which the client is operating, but also the client’s experience in the market. Different prosecution strategies should be followed depending on the sector and the behaviour of imitators in that field.
Moreover, companies need to vary their approach according to their own innovation strategy. Some companies might need to use partial design registrations or technical drawings, while others may have a different filing approach.
Bearing in mind all these factors and being aware of the latest filing techniques, initial public offering practice and court decisions in key jurisdictions is an efficient way to reach a high-quality protection proposal, which includes not only filings but also other measures (eg, internal and external non-disclosure agreements and creativity protocols) – registration is not the only way to protect design innovation.
Q: The firm offers services around digital rights. How important is the interplay between trademarks, designs, digital assets and other rights in the modern business environment?
A: Nowadays, all businesses must consider the digital environment, especially as the pace of change continues to accelerate. On the one hand, IP assets should be able to operate in digital environments (eg, rights holders should consider how products are offered online and where and how first disclosure should be made to win certain design rights). On the other hand, IP prosecution and enforcement systems are constantly being improved to provide digital means to better protect and defend intellectual property. New options to register non-conventional trademarks and digital designs are being implemented in many different jurisdictions, and new enforcement procedures have been created in order to help IP owners defend their intangible assets.
Planning worldwide protection strategies for both physical and digital businesses is something that we do daily – in particular, constructing and obtaining digital evidence and handling online enforcement and other essential e-commerce-related issues.
Q: How do you ensure that attorneys in different jurisdictions keep abreast of the latest developments at both EU and national level?
A: Two key aspects of staying up to date are membership of international organisations and managing global clients and/or clients with interests all over the world. Belonging to – and being active in – organisations such as INTA is a constant learning experience, both personally and professionally. It is also important to keep up to date with all the latest worldwide decisions and criteria; we achieve this by studying and analysing IP office practices, as well as court decisions in the most relevant jurisdictions for our clients.
Further, when managing global portfolios, we look for the best partners and ensure that we are aware of the latest relevant cases before suggesting prosecution or enforcement strategies to our clients. By doing so, we ensure that we are knowledgeable about the last tendencies and criteria.
Q: What developments or cases should trademark and designs practitioners be following with respect to the European IP landscape?
A: The interplay between 3D trademarks, designs and copyright is an interesting emerging area. Recent EU cases sitting at this intersection demonstrate that a number of design and 3D trademark cases now involve copyright law. Moreover, the functionality doctrine must surely be at the forefront of arguments in many cases, especially those dealing with partial design enforcement.
Finally, there is the question of how to embrace new types of trademark and design registration (ie, virtual and digital registrations). Issues to consider include: whether – in light of the digital reality – first disclosure linked to a certain territory should be removed to claim unregistered design protection in that territory; the development of new enforcement proceedings; and/or the impact of 3D printing, augmented reality, AI and robotics on the IP system.
Q: If you could make one change to the EU trademarks or designs filing landscape, what would it be?
A: If I had to choose only one, I would suggest rethinking whether unregistered design protection claims should be linked to disclosure in a territory. From my perspective, almost all first disclosures happen online and these kinds of statutes are thus outdated. A right should be given from first disclosure, provided that such disclosure reaches the relevant public, whether online or offline.
