On 9 December 2001 the United Kingdom became the first country to implement EC Directive 98/71EC. This was enacted in order to harmonise design registration laws within the EU. Somewhat to our surprise, however, we have since observed an influx in the United Kingdom of national design registrations for things which do not exactly correspond to our traditional ideas of what constitutes a design but which can, on the other hand, pass for “ordinary trademarks”.
Some examples from the list, which has now reached over 100, include MY TRAVEL (UK design no. 301085), where the words are shown in two coloured ovals; PLUCKIN’ (UK design no. 3000651), where the model shows a hand and a wire and, probably the best-known example, ARSENAL (UK design no. 3001159), showing a cannon.
Are such design registrations supposed to be a simple and inexpensive substitute for an all-class trademark application? Will such designs still “hold water” when challenged in a court of law? Will the EU’s design registration system follow the same path? Will our French and German colleagues follow the same reasoning or will they be more conservative and draw clearer lines about what constitutes a trademark and what constitutes a design? Will a device mark search now have to be extended to all EU design registrations and vice versa?
Only time will tell but, as things stand today, we are in for some exciting times.
Jan Van Barel “Compu-Mark newsletter June 2003