On the 8th and 9th of April 2013, an important event for the European IP practitioners and users took place at the Auditorium of the Provincial Council of Alicante. The 10th years anniversary of the Community Design was celebrated with a two days of congresses, in which the participation of eminent professionals from the design area has took the chance to illustrate the merits of the community system and a comparative analysis of the related practices within the Member States.
Among the issues under the debate the most controversial one is the role of the dotted lines in the design registrations and the way they should be construed. This feature is still extremely discussed and differently applied in Courts and at the OHIM.
Accordingly to paragraph 11.4 of the OHIM Guidelines “the representation of a design should be limited to the features for which protection is sought. However, the representations may comprise other elements that help to identify the features of a design for which protection is sought”. However, applicants are allowed in the use of dotted lines in order to “indicate the elements for which no protection is sought or to indicate portions of the design which are not visible in that particular view, i.e. non-visible lines”. Thus, it's on the applicant's responsibility the use of dotted lines (as well as of boundaries or colouring), directed to specify and distinguish for which features the protection is sought or not, provided that the examiner only verifies whether the reproduction of the design is suitable for the registration. Applying the practitioners' conventions, the presence of dotted lines in a design registration comprises the possibility that either the contested feature is present in the alleged infringing design or not, while the absence of a dotted feature in the registration ensures a diverging character with the alleged infringement bearing that particular feature.
Nevertheless, in the UK jurisprudence the dotted lines doctrine has been recently applied in a different way. Both the High Court and the Court of Appeal in the Apple v. Samsung case, and similarly, the Patent County Court in the Kohler Mira Ltd v Bristan Group Ltd case, stated that the dotted lines referred to a border visible beneath a transparent surface, and in both cases, the judgments were ruled in favour of the defendants. In particular, in the Apple/Samsung, Judge Birrs QC pointed out that “There is no mandatory rule that dotted lines must be interpreted in a particular way. The Guidelines are not determinative. No doubt in most cases dotted lines will be understood to have been used in accordance with them, but each registration must be understood on its own merits. On the facts of this case I accept Apple's submission. Looking at the two images, the dotted lines would be understood as showing that there is an edge visible under the glass. It is obviously a border around the screen. In cross-examination Mr Ball expressed the view that the registration indicated that the border would only be visible when the screen was switched on but would be invisible when off. I disagree. There is nothing in the images to show that the border is only visible when the product is in a certain state. The border is visible all the time”.
In any event, it is clear that despite the young age of the Community Design its broader utilization reveals the success of this controversial IP right within users from all over Europe and beyond, who are willing for the certainty of an harmonized interpretation of this kind of IP protection.
Written by Valentina Torelli