Locarno Classification Set to Be Reformed
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Locarno classification set to be reformed
As design protection becomes more common, a number of problems with the Locarno classification
have become apparent. David Stone reports on an attempt to update the system
any IP owners readily acknowledge that searching for registered designs is
difficult, slow, expensive and inexact. In part, this is due to the internation-
al convention that governs the classification of products to which designs On -inIute read
may be applied - the Locarno classification. A recent meeting of the Ad Hoc The Locarno classification
Working Group of the Special Union for Industrial Designs, which administers the system for esigns corn
Locarno classification, agreed to form a pilot project to try to address some of the 6 poses 32 classes and 223
difficulties inherent in the system. -classes and is recog-
This is welcome news for IP owners - anything that can be done to streamline i4 e
design searching is in the interest of all IP owners, and not just designers. For exam- system aims to help both
ple, the specific inclusion of logos and fonts amongst registered design protection in design applicants and examiners in searching
the European Union increases the imperative for cost-effective and accurate search but it is unevenly applied and, moreover,
capabilities. relates to functionailityrathert the
A taonomc sytemappearance of prodUCtS, which is what is pro-
A taxonomic systemb w. This makes searching
The Locarno classification provides for a taxonomic system for the classification of more complex, time-consuming and expensive
products - a filing schema, begun in 1968, that, through a system of 32 classes and than necessary. Now a Working Group is to
223 sub-classes, seeks to ensure that the growing number of registered design filings look at how the Locarno classification can be
are orderly. The aim of the Locarno classification is to facilitate searches for designs improved and a pilot group will develop a new
for IP owners seeking to launch new products and for IP offices that continue to system for searching based On Visual features.
examine registered design applications for novelty. This new classification system needs to be
Many important IP jurisdictions are contracting parties to the Locarno clear precise, self-contained, easily accessible,
Convention. However, the Locarno classification is unevenly applied, with many intelligible, durable and objectie
countries also applying their own additional classification, such that there can be
significant inconsistencies between member countries. This is unfortunate in an
increasingly globalised world.
The Working Group met in Geneva from June 30 to July 2 this year and heard
presentations from the Czech Republic, Japan, Mexico, the Russian Federation, the
United States and the Benelux Office for IP. The presentations canvassed some of the
difficulties of the Locarno classification, as well as making suggestions for moving
forward.
Difficulties with Locarno
Design law relates to the protection of the appearance of a product or part of a prod-
uct (what it looks like). Designs do not protect functionality (what it does). At pres-
ent, the Locarno classification relates to what a product does, rather than what it
looks like. This can cause difficulties.
For example, there is OHIM case law
relating to designs used on toy cars as A classification system would benefit from
opposed to real cars (Supermarked A/S v be
Ferrari SPA, ICD 842, November 13 ing clear, precise, self-contained, easily
2006), as well as a decision of the Court accessible, intelligible, durable and objective
of Appeal of England and Wales relating
to a design that can function as both a
laundry aid, and a massage device (Green Lane Products Ltd v PMS International
Group Plc & Ors [2008] EWCA 358). In these instances, a search of a classification
system based on purpose or function would not have identified the allegedly invali-
dating design, because it came from a different field of endeavour.
This apparent mismatch between appearance and function creates a number of
difficulties for practitioners. Primarily, an innovator seeking to launch a new prod-
uct has no way quickly and inexpensively of ascertaining whether its innovation
infringes the registered design rights of a third party. While reasonably accurate
26 1 NOVEMBER 2008 WWW.MANAG1NGIP.COM](ViewImageLocal?handle=hein.journals/manintpr184&div=11&collection=&method=preview&ext=.png&size=3)
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Locarno Classification Set to Be Reformed
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