International Design Protection
A Global Handbook, Second Edition
International Design Protection is an international compendium of design law in 30 major jurisdictions. It also deals with the practicalities of design protections and the enforcement of design rights, including qualification for protection, infringement, design infringement litigation, licensing and exploitation.
International Design Protection is an international compendium of design law in a selection of major jurisdictions. It covers the applicability of registered and unregistered design rights and ancillary protection by copyright and trademarks. It also deals with the practicalities of design protections and the enforcement of design rights, including qualification for protection, infringement, design infringement litigation, licensing and exploitation.
Written by a team of leading specialists in design law, this updated second edition reflects recent developments across a number of jurisdictions and is an essential practical guide to navigating this complex and fascinating field.
Table of Contents
|Table of contents||4|
|Preface Clive Thorne Baker Botts LLP||6|
|Australia Timothy Webb Clayton Utz||8|
|Belgium Karel Nijs Pierstone Philippe Péters Nauta Dutilh||24|
|Brazil Simone Lahorgue Nunes Levy & Salomão Advogados||38|
|Canada Gina Demczuk Canadian Competition Bureau Stuart C McCormack Barrister and solicitor||52|
|Denmark Claus Barrett Christiansen Anne Dahl Hansen Maria Rose Kristensen Bech-Bruun||68|
|Finland Kukka Tommila Properta Attorneys Ltd||84|
|France Stefan Naumann Hughes Hubbard & Reed LLP||96|
|Germany Moritz Hüsch Heymann & Partner Rechtsanwälte Katharina Scheja Dentons LLP||104|
|Hong Kong Anna Mae Koo Vivien Chan & Co||118|
|India Amita Arora Archana Shanker Anand and Anand||134|
|Israel Shlomo Cohen Dr Shlomo Cohen & Co||154|
|Italy Massimiliano Pappalardo D&P Studio Legale||162|
|Japan Takamitsu Shigetomi Oh-Ebashi LPC & Partners||174|
|Netherlands Thijs van Aerde Houthoff Buruma||184|
|New Zealand Paul Sumpter Chapman Tripp||196|
|Russia David Aylen Gowling WLG Russia/CIS||206|
|Singapore Alban Kang Bird & Bird ATMD LLP||246|
|South Africa Lodewyk Cilliers Owen Dean Spoor & Fisher||260|
|Sweden Michael Plogell Plogell Advokatbyrå Erik Ullberg Wistrand Advokatbyrå||270|
|Turkey Ug˘ur Aktekin Mutlu Yıldırım KöseGün + Partners||282|
|United Kingdom Clive Thorne Baker Botts LLP||294|
|United States Jared Bunker Lynda Zadra-Symes Knobbe Martens||312|
|About the authors||328|
Partner, Gün + Partners
Uğur Aktekin is a partner at Gün + Partners. He co-heads the intellectual property and the technology, media and telecoms practice groups of the firm. He specialises in trademark, design, copyright, patent, information technology, data protection, data privacy, unfair competition, advertising and media law.
His trademark and industrial design practices include advising on and implementing protection and enforcement strategies and portfolio management, representing clients before the Turkish Patent Institute (TPI) in oppositions and administrative appeals, representing clients in cancellation, infringement and other types of court actions and in alternative dispute resolution proceedings. His intellectual property and technology, media and telecoms practices have been recognised by many independent guides to the legal profession including Who’s Who Legal, Chambers and Partners, Managing IP – IP Stars, Legal 500, Expert Guides (Euromoney), WTR 1000 and Best Lawyers.
Managing associate, Anand and Anand
Amita Arora is currently a managing associate at Anand and Anand. She has extensive experience in patents and designs. Her work includes advising Indian and international clients on various aspects of designs and patents, conducting searches, filing and prosecution of Indian and foreign applications and dealing with oppositions. She represents a vast portfolio of clients from various industries and technological fields. She has a comprehensive and holistic client-focused approach towards intellectual property matters.
Managing partner, Gowling WLG Russia/CIS
David Aylen is an intellectual property lawyer and engineer with extensive experience advising foreign nationals and Russian companies on doing business in Russia, Canada and elsewhere. As managing partner in Russia, David is a client’s first point of contact – he ensures that a western approach to problem solving and client service is delivered to clients. The Moscow office is dedicated to all fields of intellectual property. David ensures that clients always obtain optimum results.
He has been repeatedly recognised as a leading intellectual property lawyer by Who’s Who Legal, IAM Patent, Managing Intellectual Property and World Trademark Review. In 2016 his office was named IP Firm of the Year by Managing Intellectual Property.
Having practised in Canada for many years, David is certified as an intellectual property specialist (trademarks, patents and copyright) by the Law Society of Upper Canada. He is also the only alternative dispute resolution expert certified by the International Trademark Association.
Partner, Knobbe Martens
Jared Bunker represents and counsels clients in intellectual property disputes relating to patents, trademarks, copyrights, and trade secrets. His primary focus is patent litigation. He has participated in all phases of the firm’s litigation practice, including alternative dispute resolution, pretrial, trial and appellate stages. In addition to district court litigation in the United States, Jared is a registered patent attorney and represents clients in proceedings before the US Patent Trial and Appeal Board. He also counsels clients in patent and trademark prosecution and licensing. He is on the board of directors of the Legal Aid Society of Orange County, and is a member of the Federal Circuit Bar Association’s Patent and Trademark Office pro bono programme.
Claus Barrett Christiansen
Claus Barrett Christiansen is a partner in Bech- Bruun’s intellectual property and technology department. He has extensive experience in design law, copyright, trademarks, patents, marketing practice, intellectual property contracts and litigation. He is an external professor at the University of Aarhus and has run courses in international copyright, international trademark law and marketing practice law for several years. He has taken a leading role in advising Danish and international clients in the retail, fashion and pharmaceutical sectors, and is a widely used and experienced litigator before the Danish courts in intellectual property litigation.
Partner, Spoor & Fisher
Lodewyk Cilliers is a patent attorney and a partner at Spoor & Fisher. He specialises in the preparation, filing and prosecution of patent and registered design applications. Before joining the legal profession, Lodewyk was a mechanical engineer in the nuclear energy industry for a number of years. He has been practising intellectual property law for the past nine years. Lodewyk is a former lecturer and current moderator for the subject of design law and practice for both the South African Institute of Intellectual Property Law and the South African Patent Board. Lodewyk is the author of the design law chapter in Introduction to Intellectual Property Law, a leading text book on South African intellectual property law.
Partner, Dr Shlomo Cohen & Co
Shlomo Cohen is the founder of Dr Shlomo Cohen & Co, a law firm specialising in intellectual property. Shlomo has written extensively in the field of intellectual property. He has appeared in various court cases in the intellectual property field, including several major precedents. Additionally, he has chaired the Justice Ministry committee to revise the Registered Designs Act, was a member of the Justice Ministry committees to revise the Patents and Copyright Acts and was president of the Israel Bar Association from 1997 to 2007.
Consultant, Spoor & Fisher
Owen Dean is a former partner and chairman of Spoor & Fisher, specialist intellectual property solicitors, and a former holder of the chair of intellectual property law at Stellenbosch University. He practised as a specialist intellectual property lawyer for 38 years, specialising in trademark, copyright and design law, primarily as a litigator. He was involved in many of the leading South African cases in these fields. He served for many years on a statutory advisory committee on intellectual property law to the South African government, and had a role in drafting many of South Africa’s current intellectual property statutes. He is a former president of the South African Institute of Intellectual Property Law. Throughout his professional career and beyond, Owen has been a regular speaker at conferences, both in South Africa and abroad, and has lectured on intellectual property law at several South African universities. He is the author of the Handbook of South African Copyright Law and chapters in several compilations dealing with intellectual property law. He is the editor of Introduction to Intellectual Property Law, and has published numerous articles in South African and international legal journals on intellectual property topics.
Canadian Competition Bureau
Gina Demczuk worked as an associate with Stikeman Elliott LLP before joining the Competition Bureau. Her practice focused on intellectual property, telecommunications law, privacy law and administrative and regulatory matters. Gina has a JD from Queen’s University, a master’s in biomedical technology from the University of Calgary and a BSc (honours) from McMaster University.
Anne Dahl Hansen
Junior associate, Bech-Bruun
Anne Dahl Hansen is a junior associate in the intellectual property and technology department of Bech-Bruun in Aarhus, Denmark. She holds a degree in law from Aarhus University, and has taken part of her master’s degree at the National University of Singapore.
Anne Dahl Hansen has specialised in trademarks, designs, patents and litigation.
Partner, Heymann & Partner Rechtsanwälte
Moritz Hüsch is a partner in the intellectual property and information technology department of Heymann & Partner. Moritz studied law at the universities of Freiburg, Hamburg, Hanover and Bologna. He holds a doctor of law degree from the University of Hamburg and a master of law degree earned at the University of Hanover and at the University of Bologna, both specialising in information technology and intellectual property law.
Moritz has extensive experience in crossborder intellectual property and information technology transactions, outsourcing, complex intellectual property and information technology licensing, antitrust law, and intellectual property and information technology litigation. In recent years, Moritz has advised, among others, E.ON SE, in a complex cross-border outsourcing of its entire information technology infrastructure, and one of the leading German car manufacturers, in a number of information technology outsourcing transactions. He has also advised in various marketing and acquisition transactions in the solar and renewable energy sector.
Partner, Bird & Bird ATMD LLP
Alban is a partner in the Intellectual Property practice and Tech & Comms group based in Singapore. He currently leads the ASEAN and Japan focus practice of the firm. He has been in practice for over 30 years.
Alban represents major software companies, computer manufacturers, well-known trademark owners, pharmaceutical companies, book publishers, international airlines and well-known hotel chains, as well as collection agencies and advertising agencies. He also represents a number of Japanese clients. He is regularly engaged in complex patent litigation and other contentious IP-related cases, and has also been involved in a number of high profile IP cases before the Singapore Court of Appeal. He also handles multijurisdictional IP litigation cases.
He has written and presented many articles and papers in the spectrum of IP law. Alban is the author of the book Enforcing Injunctions, cocontributor of Essays on Computer Law, and general editor of A Guide to Singapore Patent Law. He has also authored the Patent section of Halsbury’s Law of Singapore, and the Singapore chapter on patent claim Interpretation. Alban has been consistently ranked as a leading intellectual property lawyer by the Asia Pacific Legal 500, IAM Patent 1000 and the Chambers Asia-Pacific editions.
Anna Mae Koo
Solicitor, Vivien Chan & Co
Anna Mae Koo is a solicitor at Vivien Chan & Co, practising non-contentious, contentious and transactional intellectual property law. Anna Mae regularly advises on all areas of intellectual property, including licensing, franchising and other transactional intellectual property, due diligence and strategic acquisitions, prosecution, technical assistance and technology transfer agreements, trade practices and unfair competition law in China and Hong Kong.
Anna Mae is a Techstars mentor, and is involved in international associations, including the litigation committee of the International Bar Association and the internet committee of the International Trademark Association. She was named the intellectual property rising star in Euromoney Legal Media Group’s Women in Business Law Awards in both 2013 and 2015. Anna Mae was a Prince Philip scholar at the University of Cambridge where she graduated with an MA in law. She has also obtained a master’s in real estate from the University of Hong Kong.
Mutlu Yıldırım Köse
Managing associate, Gün + Partners
Mutlu Yıldırım Köse has worked with Gün + Partners since 2006, and is currently one of the managing associates in the intellectual property rights department. She has been involved in numerous projects in all fields of intellectual property. Her involvement includes both contentious and non-contentious matters in relation to trademarks, copyrights, industrial designs, patents, domain names and unfair competition. She has extensive litigation experience, has counselled various domestic and foreign clients regarding their intellectual property strategies, legal disputes, licensing and settlement agreements. She is also a member of leading intellectual property organisations worldwide, such as the International Association for the Protection of Intellectual Property, the Institute of Trademark Attorneys and the Association of European Trademark Owners.
Maria Rose Kristensen
Junior lawyer, Bech-Bruun
Maria Rose Kristensen is a junior lawyer in the intellectual property and technology department of Bech-Bruun in Denmark. She holds a degree in law from Aarhus University, Denmark and has specialised in trademark and design law.
Simone Lahorgue Nunes
Partner, Levy & Salomão Advogados
Simone Lahorgue is the head of Levy & Salomão’s media, entertainment and sports law practice group, which covers the intellectual property, audiovisual, image rights, promotions and advertisement and sports areas, and advises clients in connection with a broad variety of matters, including fashion law. She has also many years of experience representing clients in financial market transactions. She served as general counsel at Organizações Globo, where she worked for 11 years.
Ms Lahorgue is arbitrator with the World Intellectual Property Organization, the Court of Arbitration for Sport and the Mediation and Arbitration Chamber of the Italo-Brazilian Chamber of Commerce, and is also a member of the International Bar Association (IBA), where she serves as co-chair of the Technology Law Committee. Chambers and Partners, Who’s Who Legal, The Legal 500 and Best Lawyers listed her among the world’s leading media and entertainment lawyers.
She is a professor with the judge-training programme of the State of Rio de Janeiro and with the graduate programme of the Pontifícia Universidade Católica-RJ. Ms Lahorgue holds a master’s and a PhD in economic law from the Universidade de São Paulo.
Stuart C McCormack
Barrister and solicitor
Stuart C McCormack was formerly the managing partner of Stikeman Elliott’s Ottawa office and head of the firm’s intellectual property practice group, and sat on the partnership board of the firm. Stuart obtained the first Anton Piller order in Canada. He was previously the head of Sony Corporation’s anti-counterfeiting group and worked in its licensing division in Tokyo for several years.
Stuart was formerly a member of the International, American, New York State and Canadian bar associations, the Intellectual Property Institute of Canada, the International Trademark Association (where he was a member of the North American sub-committee on anticounterfeiting and enforcement, and of the international trademark committees), the Law Society of Upper Canada, the Computer Law Association, the European Community Trademark Association (where he was a member of the anticounterfeiting committee) and the IEEE.
He is the author of a number of articles and texts relating to intellectual proposers and currently consults privately.
Partner, Hughes Hubbard & Reed LLP
Stefan Naumann is a partner with Hughes Hubbard & Reed LLP, and heads the firm’s intellectual property practice in Paris. He is admitted to practise in France and in California, and is an independent neutral for the World Intellectual Property Organization, particularly for domain names. Stefan acts for well-known entertainment, medical device, advertising, new media, publishing, personal care and manufacturing companies. His patent litigation practice covers additional industries.
Stefan and his team handle litigation, arbitration and advisory and transactional work on patents, trademarks, copyrights, designs, neighbouring rights, image rights, trade dress and data protection. His media work includes French media regulations, film production, distribution and merchandising, contract negotiation and collective bargaining, anti-piracy, and enforcement for a number of studios. Stefan has been repeatedly ranked among the leading French trademark practitioners by Chambers and the European Legal 500 Guide. His patent litigation and media practices have also been ranked repeatedly.
Karel Nijs specialises in commercial and intellectual property law, with a particular focus on distribution, trademarks, designs and copyright, IT, e-commerce and commercial practices, including advertising.
He regularly assists numerous leading national and international companies from various industries, including in the automobile, luxury, clothing, fast moving consumer goods and pharmaceutical sectors, both in contentious and non-contentious matters.
Karel has published several articles and contributions to international publications on trademark, copyright, design law and trade practices and is the co-author of a theme code on Belgian corporate criminal law.
Karel obtained his law degree from the University of Leuven in 2005 and graduated cum laude from the LLM programme for foreign students at the University of Münster, Germany. He is fluent in Dutch, French, English and German.
Partner, D&P Studio Legale
Massimiliano Pappalardo is founding partner of the boutique law firm D&P – Legal Support for Ideas focusing on intellectual property, information technology and data protection law. He has 20 years’ experience in litigation, particularly with regard to intellectual property matters. Massimiliano has extensive experience in advising companies on the protection and exploitation of intangible assets. He has tutored courses on information technology law at the Università dell’Insubria and frequently lectures on intellectual property and information technology matters. Massimiliano has written extensively on the subject. His publications include: Elementi di diritto dell’informatica (Giappichelli Editore, 2003); “Il difficile equilibrio tra valore sostanziale e carattere distintivo della forma” in Il Diritto Industriale 4/2008; “Il caso ‘Smart’ e il valore sostanziale della forma” in Il Diritto Industriale 6/2008; and “The modern lawyer’s privacy and information security trials”, in Data Protection Law and Policy, Volume 13, Issue 2 (2016).
Managing partner, NautaDutilh
Philippe Péters specialises in intellectual property and information technology. He has significant experience in trademark, design, patent, information technology and commercial litigation. Philippe has represented Unilever Belgium, the Scotch Whisky Association, GlaxoSmithKline, BMW, Nestlé, Henkel, LEGO, L’Oréal, Proximus (Belgium’s largest telecom company) and IBM, among others.
Philippe is a member of various international intellectual property associations and a former president of both the Belgian Computer Law Association and the standing committee on intellectual property and new technologies of the Association Internationale des Jeunes Avocats. Philippe taught IT law at the Haute Ecole Commerciale Saint-Louis for eight years and has been a deputy judge in Brussels since 1988. He has published various articles and has given lectures on intellectual property law within and outside Belgium.
Together with Jean-Jo Evrard, he co-authored a (Belgian) treatise on Benelux trademark law, published in 1996 and reissued in 2000. He is listed in Chambers and Pritchard’s European Legal 500.
Owner, Plogell Advokatbyra
Michael has more than 20 years’ experience in providing legal advice to Swedish and international clients. Michael has been a member of the Swedish Bar Association since 1993. Michael primarily advises in the fields of intellectual property and marketing law, and is considered one of Sweden’s leading experts in these fields. He is ranked in both Legal 500 and Chambers for Sweden, and has also produced several articles and books on intellectual property and marketing law. In addition Michael is a qualified mediator and appointed as mediator by the International Trademark Association and the World Intellectual Property Organization.
Partner, Dentons LLP
Katharina Scheja is head of the German information technology department of Dentons LLP. Katharina studied law at the University of Frankfurt and the University of Munich and holds a doctor of law degree from the University of Munich, specialising in intellectual property law. Before joining Dentons in 2016, Katharina was a partner with Clifford Chance, Willkie Farr Gallagher, FPS Fritze Paul Seelig and Heymann & Partner.
Katharina has extensive experience in complex intellectual property and information technology litigation and arbitration, cross-border intellectual property and information technology transactions, outsourcings, complex intellectual property and information technology licensing and antitrust law. In recent years, Katharina has advised, among others, Deutsche Lufthansa in a complex cross-border outsourcing of its entire information technology infrastructure, and has also given advice in a number of complex intellectual property litigation cases (encompassing copyright, design protection, unfair competition and/or licensing disputes).
Senior partner, Anand and Anand
Archana Shanker is a senior partner at Anand and Anand and heads the firm’s patent and design practice. Her comprehensive repertoire enables her not only to represent clients in contentious matters in the pharmaceutical industry, but also to advise on protection and prosecution across a number of business sectors including bioinformatics, pharmaceuticals, biotechnology and chemicals, not only limited to India but also in the United States, Europe, Japan and other key jurisdictions.
Archana handles complex patent and design litigation issues before various judicial and quasijudicial forums in India, such as the High Court and the Intellectual Property Appellate Board, and has been involved in advising her clients on intellectual property strategies and regulatory affairs. Her practice blends legal acumen with business know-how in this complex area of practice.
She is an active contributing member of various international bodies, such as the Asian Patent Attorneys Association, the Association Internationale pour la Protection de la Propriete Intellectuelle and the Federation Internationale des Conseils en Propriete Industrielle, des Conseils en Propriete Industrielle (FICPI).
Partner, Oh-Ebashi LPC & Partners
Takamitsu Shigetomi is a partner of Oh-Ebashi LPC & Partners and in charge of the intellectual property practice department.
He specialises in intellectual property-related advice, licensing and litigation of all types (including design patents, copyright and trademarks), and has prepared, tried and argued intellectual property cases in various fields and industries.
He is a frequent author and lecturer on intellectual property practice topics, and is a professor of (i) Kobe University Graduate School of Science, Technology and Innovation and (ii) the Graduate School of Intellectual Property at Osaka Institute of Technology.
Consultant, Chapman Tripp
Paul Sumpter is a consultant in the litigation department of Chapman Tripp, one of New Zealand’s largest law firms. He is also an academic in the Faculty of Law at the University of Auckland and a member of the New Zealand Copyright Tribunal.
Paul is the author of Trade Marks in Practice (Lexis Nexis, 2013; third edition, 2015). He is also the author of Intellectual Property: Principles in Practice (CCH, 2006, second edition, 2013). He teaches undergraduate and postgraduate courses in intellectual property law. He has practised in this field since 1977.
Special counsel, Baker Botts LLP
Consulting editor, Clive Thorne, is special counsel in the London office of Baker Botts LLP. His practice over many years has focused on intellectual property litigation and arbitration in England and Hong Kong. He has a particular interest in design law and has authored a number of textbooks on the subject. He has acted for clients in the electronic, toy, food, architectural, fine art, retail, motor, fashion, watch and jewellery, computer, furnishing and medical sectors in relation to design disputes, including many leading cases under English law.
Partner, Properta Attorneys Ltd
Kukka Tommila is a renowned intellectual property expert, who advises domestic and global clients in the field of various intellectual property rights. She has particularly strong experience in and knowledge of trademark and design law. Kukka’s areas of expertise include dispute resolution, negotiation and agreements, as well as protection and defence strategies, both in Finland and internationally. She constantly advises and represents clients in numerous cases related to trademark, design, domain name, patent and commercial name issues, and in other matters concerning intellectual property rights. Kukka also handles cases related to fair trading. In addition, Kukka provides lectures and has authored several publications related to issues within her fields of expertise. Kukka is recognised in international rankings as a leading lawyer in the field of intellectual property in Finland.
Partner, Wistrand Advokatbyrå
Erik Ullberg is a partner with Wistrand Advokatbyrå. He has been a member of the Swedish Bar Association since 2009. Erik Ullberg works primarily in advising Swedish and international clients in matters related to information and other technology, intellectual property and advertising and marketing law. He has extensive experience in matters concerning data protection, social media, online marketing and other marketing related matters. He has over 10 years of experience of working with legal matters within these fields.
Erik Ullberg has contributed to various publications and is also frequently engaged as lecturer within the fields of his specialisation at, among other places, Chalmers University of Technology.
Thijs van Aerde
Senior associate, Houthoff Buruma
Thijs van Aerde is a lawyer in both the IP/IT Practice Group and the Dispute Resolution Practice Group of Houthoff Buruma in Amsterdam. Thijs regularly advises and litigates in IP matters. The focus of his practice is on contentious IP work.
Thijs is one of the few lawyers in the Netherlands who is admitted to the Supreme Court bar, and one of five lawyers in the Netherlands who combine an IP practice with a Supreme Court practice. This enables him to act as ‘lawyer’s lawyer’: a lot of his work is referred to him by IP lawyers of other firms who do not have a Supreme Court practice.
Before the Supreme Court, Thijs’ practice comprises the full spectrum of IP-rights, including designs, trademarks, copyrights, neighbouring rights, database rights, patents, plant variety rights and trade secrets. He also has experience in litigation before the European Court of Justice.
Partner, Clayton Utz
Tim Webb is a partner at Clayton Utz, a leading Australian law firm. He helps clients with litigation and dispute resolution arising from intellectual property, contracts, torts and trade practices. He also has an extensive advisory practice. Tim’s expertise covers all aspects of intellectual property law (copyright, trademarks, patents, designs, domain names, confidential information, plant breeders rights) in both contentious and non-contentious matters. Tim has acted for clients in multiple jurisdictions, including the High Court, the Federal Court, the Supreme Courts (and their inferior courts), the Administrative Appeals Tribunal and the Copyright Tribunal. He also has expertise in domestic and international arbitration. He is a fellow of the Chartered Institute of Arbitrators, a member of the Intellectual Property Society of Australia and New Zealand and a member of the Law Society of New South Wales’ litigation law and practice committee.
Partner, Knobbe Martens
Lynda Zadra-Symes is a litigation partner in the firm’s Orange County office. She represents clients through all stages of US litigation, from pre-suits through trial and appeal, in federal courts throughout the country and before the Trademark Trial and Appeal Board. Her practice involves all types of intellectual property, including patents, trade secrets, trademarks, copyright, false advertising, unfair competition, rights of publicity franchising and labelling. She also advises on issues relating to customs and anti-counterfeiting, international trademarks and copyright, advertising, social media, competition and passing off. Lynda is an arbitrator with the Domain Name Dispute Panel of the World Intellectual Property Organization in Geneva, Switzerland, has arbitrated numerous domain name disputes, and is also a listed mediator with the International Trademark Association’s trademark mediators network.
She was called to the Bar of England and Wales in November 1989 and admitted to the California Bar in 1991.