GIPI3: how do you rate?

Recently this Kat was fortunate to attend the launch of the Third Report of the Global Intellectual Property Index (GIPI) at the London office of European law firm Taylor Wessing. After a helpful introduction by team leader Roland Mallinson, there was then a lively discussion of the findings of the survey, with key team members from Taylor Wessing on hand to answer specific questions.

For those unfamiliar with the concept of GIPI, it is an evaluation of the attractiveness of 24 national jurisdictions for obtaining, exploiting, enforcing and attacking the key IP rights (trade marks, patents, copyright and designs). In a new twist, this year the survey also considers personal data requirements for the first time. The survey combines and weights 43 instrumental factors from 14,000 individual responses. It functions to give a better insight on doing business in a particular jurisdiction rather than relying on anecdotal evidence such as ‘trials of patents in Country A take years’ or ‘it is quick to register a trade mark in Country B than Country C’. In doing so, it hopes to create a melting pot of empirical evidence to encourage better laws for doing business in those jurisdictions.

In theory, five kinds of rights, across 24 jurisdictions according to 43 instrumental factors would be enough to strike fear into the hearts of most Kats. However, to their credit, the team at Taylor Wessing has produced a highly readable report. In particular, it provides a number of tables which group jurisdictions into five tiers of competitiveness for each individual right as well as an interesting commentary on significant changes since GIPI2.

The key table is:

Some important insights from this table include:

· Germany scored three 1st positions in the individual IP indices but last for the personal data index.· Russia has pulled away from the other BRIC countries.
· Common law countries made up seven of the top 11 jurisdictions.
· India ranked last overall in three of the five indices.
· Apart from Australia, all six of the top tier jurisdictions ranked consistently well for all individual IP indices except for the personal data index. This in turn raises the concern that data regimes in these countries are weighted too much against business.

In addition to the detailed discussion of the individual IP rights, some general overarching themes also emerged from the survey. These include:

• 62% of respondents said that they had spent more time on IP issues over the last three years.
• 60% of respondents felt that IP law needs updating to keep up with technological and online business developments.
• Value for money is increasingly important for businesses in choosing where to litigate.
• There are improved perceptions of EU harmonisation: 8% decrease in variance between the lowest and highest ranked EU Member States.

The IPKat says that the team at Taylor Wessing are to be congratulated for collating, analysing and presenting such an important and accessible report. He looks forward to GIPI4 to see whether the laws of individual jurisdictions have responded to the interesting questions raised in GIPI3.

Merpel wonders whether the UK could score as highly in the Eurovision Song Contest as it does in the GIPI3.

Spinner dispute hits dizzying new heights

A little bit of soon-to-be-forgotten history was made today when the European Union's General Court handed down its first decision on Community design law in a dispute involving PepsiCo and a Spanish manufacturer of promotional items. The IPKat thanks his Class 99 blog team colleague and great MARQUES supporter David Stone (Simmons & Simmons) for drawing his attention to it. By way of excuse for not spotting it first the IPKat explains that, while he checks the Curia website daily for signs of fresh IP cases, this particular decision hadn't yet been posted by that admirably early when the Kat checked it out ...

Case T-9/07, Grupo Promer Mon Graphic SA v Office for Harmonisation in the Internal Market, PepsiCo Inc, as David points out, is the first from an EU court to discuss in detail the meaning of several key aspects of the current European law on design right law. One is the tricky question as to who is the "informed user". This is the person whose impression of the similarities or differences between a later design and an earlier one is so important (in this dispute, there was discussion as to whether the "informed user" was "a child in the approximate age range of 5 to 10" or a marketing manager).

Another significant issue is the meaning of the term "same overall impression", this being the impression which, when the informed user receives it, means that the registration of the later design is invalid for lack of novelty or individual character. Today's decision will therefore go some way towards harmonising the very different designs jurisprudence that has developed in the various Member States of the EU [if, Merpel adds, the EU's various courts understand it and apply it in a uniform manner, which is far from impossible].

Early summaries of the decision can be found here on Class 99 itself (courtesy of David Musker) and on Elexica here.

Upper Class seat -- no patent or design infringement

In a mammoth judgment of some 344 paragraphs in length, Mr Justice Lewison has ruled that Virgin Atlantic's Upper Class seat patent is valid but not infringed, and that its design rights haven't been infringed either. The ruling, in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group Ltd and Premium Aircraft Interiors UK Ltd [2009] EWHC 26 (Pat) can be read in full here. Judgment was given on Wednesday, 21 January in the Patents Court for England and Wales. While much of it is taken up with a detailed review of the relevant facts, there's a handy referenced abbreviated "principles of patent construction" guide at paragraphs 182-188 that looks as though it may find its way into students' hearts, if not their brains.

Since it may be a while before any of the IPKat team can read the decision in full and comment on it, this blog is pleased to bring you, thanks to the vigilant Chris McLeod (Hammonds), a link to this short note in Design Week -- a publication that is more focused on the chair design itself than on the legal niceties of patent and design law. According to that note:

"Virgin Atlantic was seeking damages potentially running into tens of millions of pounds and an injunction to prevent Contour selling the seat to rival airlines including Delta, Air Canada, and Jet. ...

The Upper Class seat was designed by Virgin’s in-house design team in collaboration with Pearson Lloyd and entered service in November 2003.

Virgin Atlantic holds the patent and design rights to the seat, and Pearson Lloyd was not involved in the legal action. The consultancy declined to comment on the result.

Paul Carter, chief executive of Contour, says, ‘We are proud of the part we played in the development of the lie-flat bed, and we will continue to use our dedicated design and engineering skills to help our customers set new standards for premium-class air travel'

In a statement, Virgin Atlantic, which plans to appeal against the result, says, ‘We are disappointed with the outcome of the case and will be examining the judgement over the next few days.

‘Virgin Atlantic invests huge amounts in its design and product innovation, and it is a major area of differentiation between us and other airlines'".

Upper Class seats here and here

Other aircraft seats here

Keeping warm in the heat of the FEIA ...

Looking through the list of forthcoming events on the Curia website, the IPKat spotted an exciting hearing on Thursday 29 January in Case C-32/08, Fundación Española para la Innovación de la Artesanía (FEIA) v Cul de Sac Espacio Creativo, S.L. and Acierta Product & Position, S.A., a reference for a preliminary ruling from the Juzgado de lo Mercantil Número Uno, Alicante, (Spain), lodged almost exactly one year earlier on 28 January 2008.

Right: members of the Court of Justice consider the Opinion of the Advocate General and agree that it sounds much more impressive in Maltese than in boring old English

The questions turn on the interpretation of Article 14(3) of the Community Design Registration, which the IPKat in his innocence had never thought, even for a moment, might give rise to concern of any description, let alone a reference to the European Union's top tribunal. Article 14 reads:

"Right to the Community design

1. The right to the Community design shall vest in the designer or his successor in title.

2. If two or more persons have jointly developed a design, the right to the Community design shall vest in them jointly.

3. However, where a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to the Community design shall vest in the employer, unless otherwise agreed or specified under national law."

From this apparently simple set of precepts the Alicante judges have woven the following fabric, asking:

"Must Article 14(3) of [Council Regulation ... 6/2002 of 12 December 2001 on Community designs] be interpreted as referring only to Community designs developed in the context of an employment relationship where the designer is bound by a contract governed by employment law whose provisions are such that the designer works under the direction and in the employ of another? or

Must the terms 'employee' and 'employer' in Article 14(3) ... be interpreted broadly so as to include situations other than employment relationships, such as a relationship where, in accordance with a civil/commercial contract (and therefore one which does not provide that an individual habitually works under the direction and in the employ of another), an individual (designer) undertakes to execute a design for another individual for a settled price and, as a result, it is understood that the design belongs to the person who commissioned it, unless the contract stipulates otherwise?

In the event that the answer to the second question is in the negative, on the ground that the production of designs within an employment relationship and the production of designs within a non-employment relationship constitute different factual situations,

(a) is it necessary to apply the general rule in Article 14(1) ... and, consequently, must the designs be construed as belonging to the designer, unless the parties stipulate otherwise in the contract? or

(b) must the Community design court rely on national law governing designs in accordance with Article 88(2) ... ["If the defendant is neither domiciled nor has an establishment in any of the Member States, such proceedings shall be brought in the courts of the Member State in which the plaintiff is domiciled or, if he is not domiciled in any of the Member States, in any Member State in which he has an establishment".]

In the event that national law is to be relied on, is it possible to apply national law where it places on an equal footing (as Spanish law does) designs produced in the context of an employment relationship (the designs belong to the employer, unless it has been agreed otherwise) and designs produced as a result of a commission (the designs belong to the party who commissioned them, unless it has been agreed otherwise)?

In the event that the answer to the fourth question is in the affirmative, would such a solution (the designs belong to the party who commissioned them, unless it has been agreed otherwise) conflict with the negative answer to the second question?"

The IPKat is just itching to see what happens. His hunch is that the Advocate General will produce a massive Opinion, weighed down with state-of-the-art European and national scholarship on design law, employment law and private international law, which the Kats won't be able to read because (mercifully) it won't be made available in English, following which the Court of Justice does one of its famous "it's entirely up to the national court to decide on the facts, having regard to the specific circumstances" rulings, excising all the difficulties, re-drafting the questions to fit the message and cutting through the whole issue in about 36 tidy little paragraphs.

Merpel feels rather cheated. For ages she has been awaiting a reference on Europe's bizarrely cobbled-together compromise on design law, but she had always assumed that it would be on the scope of protection.