2016 Asia-Pacific Conference: Designs Into the Future

Registration and Information Desk Open

Networking Breakfast

Welcome and Opening Remarks

Ronald van Tuijl, JT International S.A. (INTA President)(Switzerland)
Felipe Claro, Claro y Cia (AIPPI President) (Chile)
John Bochnovic, AIPPI (Switzerland)

Conference Co-Chairs:
David Stone, Simmons & Simmons LLP (United Kingdom)
Anne Marie Verschuur, NautaDutilh (Netherlands)

Keynote Address: Looking into the Future

Tarek Tabbal, Global Design Leader, Procter & Gamble Asia (Singapore)

Mr. Tabbal will share his perspective on how he has considered intellectual property in his design work and how he envisions it changing in the future.

Global Protection Strategies

Design rights depend on registration in most jurisdictions, but not all (unregistered design rights in the EU, trade dress protection). The standards for registration are different in various jurisdictions and so are the grace periods for registration after publication. An ideal international protection strategy takes into consideration all these factors in order to secure protection in the most relevant jurisdictions. Government officials and practitioners provide recommendations for developing the best strategy for your business and the pitfalls to watch out for!

Speakers:
Reinhard Oertli, Meyerlustenberger Lachenal (Switzerland)
Grégoire Bisson, World Intellectual Property Organization (WIPO) (Switzerland)
Dara Kendall, Procter & Gamble Asia (Singapore)
Manda Tay, Intellectual Property Office of Singapore (IPOS) (Singapore)

Networking Break

Multinational Design Litigation: Different Answers in Different Jurisdictions (Part 1)

Recent high-profile, multinational design rights cases have provided the rare opportunity for various jurisdictions to issue rulings based on similar fact patterns (e.g. same design rights, same accused products).

The variety of outcomes, and the reasoning behind them, has highlighted the differences and similarities among the applicable laws of various jurisdictions. Using common fact patterns, panelists will engage in a cross-jurisdictional comparative analysis of specific design law issues, including the determination of the scope of protection for design rights (e.g., the meaning of broken lines and the treatment of “functional” features) and applicable infringement and validity tests. Along the way, the panelists will offer strategic and practical advice on how best to manage the similarities and differences when conducting a multinational design enforcement campaign.

Speakers:
Christopher V. Carani, McAndrews, Held & Malloy, Ltd. (United States)
Tracy-Gene G. Durkin, Sterne Kessler Goldstein Fox (United States)
Henning Hartwig, Bardehle Pagenberg Partnerschaft mbB (Germany)
David Stone, Simmons & Simmons LLP (United Kingdom)

Networking Lunch

Multinational Design Litigation: Different Answers in Different Jurisdictions (Part 2)

The panelists will continue their discussion of recent high-profile multinational design rights cases and invite audience participation in the panel debate.

Speakers:
Christopher V. Carani, McAndrews, Held & Malloy, Ltd. (United States)
Tracy-Gene G. Durkin, Sterne Kessler Goldstein Fox (United States)
Henning Hartwig, Bardehle Pagenberg Partnerschaft mbB (Germany)
David Stone, Simmons & Simmons LLP (United Kingdom)

The Hague System: What You Need to Know

After years of consideration, the United States and Japan have now joined the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. In this session, the panelists will discuss the advantages and disadvantages of the Hague System and the best strategy to protect designs worldwide.

Speakers:
Shunji Sato, TMI Associates (Japan)
Grégoire Bisson, World Intellectual Property Organization (WIPO) (Switzerland)

Networking Break

Balancing Functionality and Aesthetics

While aesthetic qualities are generally much appreciated in designs of products, from a practical perspective the same can be said for functional aspects. Without functionality, a product may be nice to look at but not very useful; therefore, product designs commonly have functional elements. Design rights dictated solely by technical function, however, are generally excluded from protection. In order to assess the availability of design rights protection, this “functionality exclusion” must be addressed. For instance, what happens when only parts of the designs are functional? Are they valid and/or is the scope of protection affected? Does it matter if there are alternative ways to achieve the same function? This session will focus on those and related questions.

Speakers:
Christopher V. Carani, McAndrews, Held & Malloy, Ltd. (United States)
Wayne Slater, IP Gateway Patent & Trademark Attorneys (Australia)
Anne Marie Verschuur, NautaDutilh (Netherlands)
Lili Wu, CCPIT Patent & Trademark Law Office (China)

Wrap-Up from Conference Co-Chairs

David Stone, Simmons & Simmons LLP (United Kingdom)
Anne Marie Verschuur, NautaDutilh (Netherlands)

Networking Reception

Registration and Information Desk Open

Networking Breakfast

Welcome

Etienne Sanz de Acedo, INTA (United States)

Designs Committees Report Out

Designated members of the AIPPI and INTA Designs Committees will provide an update of the work their committees are doing and solicit input from attendees on open questions and potential projects.

Speakers:
On behalf of AIPPI, Christopher V. Carani, McAndrews, Held & Malloy, Ltd. (United States), Chair of the AIPPI Design Rights Committee
On behalf of INTA, David Stone, Simmons & Simmons LLP (United Kingdom), Chair of the INTA Design Rights Committee

Overlapping Rights: The Interplay among Design Rights, Copyright, Trademarks and Trade Dress (Part 1)

Various IP rights can be used to supplement design rights protection. This session will explore overlapping rights and identify the various pros and cons. Part 1 of the session will cover copyright. Pros, such as protection without registration, generally longer terms of protection and protection against private infringements will be contrasted against some downsides, such as a higher thresholds for copyright protection in some jurisdictions and the need to prove a chain of title.

Speakers:
Reinhard Oertli, Meyerlustenberger Lachenal (Switzerland)
Pei Lin Low, Allen & Gledhill LLP (Singapore)
Jan Bernd Nordemann, Boehmert & Boehmert (Germany)
Shunji Sato, TMI Associates (Japan)

Networking Break

Overlapping Rights: The Interplay among Design Rights, Copyright, Trademarks and Trade Dress (Part 2)

The discussion of overlapping rights continues with a focus on trademark and unfair competition laws. For example, 3D trademark protection has become more difficult but can in principle be renewed time and again, while design rights are limited in time. In addition, trade dress or similar protection may be available under unfair competition laws.

Speakers:
Prof. Dr. Jan Bernd Nordemann, Boehmert & Boehmert (Germany)
Pei Lin Low, Allen & Gledhill LLP (Singapore)
Reinhard Oertli, Meyerlustenberger Lachenal (Switzerland)
Shunji Sato, TMI Associates (Japan)

Industry Panel—How Is Industry Using Designs Today?

Design rights were established in the 1700s. Are design rights any more valuable to industry today than they were in the 1700s? This session will explore the ways in which design rights protection has evolved in the eyes of industry over time and whether or not there will be foreseeable benefits to design rights holders moving forward.

Speakers:
Dara Kendall, Procter & Gamble Asia (Singapore)
Albert Lee, LG Display Co., Ltd (South Korea)
Victoria Lovatt, PhD, Abbott Nutrition (Singapore)

Networking Lunch

Designs in a Virtual World

Testing the validity of a virtual design is challenging, and the significant increase in filings in recent years on a global scale is expensive. Designs are often animated and 2D or 3D in character. Prior art from both the virtual and the analog world and the different industry sectors are relevant to the analysis. Evaluating virtual designs is further complicated by a lack of guidance from the courts. Hear from design and legal experts as they work together to navigate this new frontier!

Speakers:
Henning Hartwig, Bardehle Pagenberg Partnerschaft mbB (Germany)
Tracy-Gene G. Durkin, Sterne Kessler Goldstein Fox (United States)
Karen Law, Digital Domain Holdings Limited (Hong Kong)

Enforcement Strategies—Mediation, Arbitration or Litigation?

In view of the high cost of litigation, it is commonplace to try to reach an amicable resolution without resorting to the courts, but is that always the right solution? This panel will provide insights on the pros and cons of different resolution pathways to help determine if this is a time to fight, a time to play or a time to walk away.

Speakers:
Anne Marie Verschuur, NautaDutilh (Netherlands)
Mark Lim, Intellectual Property Office of Singapore (IPOS) (Singapore)
Wayne Slater, IP Gateway Patent & Trademark Attorneys (Australia)
Richard Tan, Morgan Lewis Stamford LLC (Singapore)

Networking Break

3D Printing—Evolution, Revolution or Extinction for IP Protection?

Is 3D printing a deadly threat to design rights? Is the industry about to miss the next wave—the way the music industry is (was) missing the opportunity to benefit from modern distribution channels? Does 3D printing mean new opportunities for decentralized creativity and distribution without intermediaries? This session will debate these hot topics and more!

Speakers:
Prof. Dr. Jan Bernd Nordemann, Boehmert & Boehmert (Germany)
Yau Tak Lam, Hong Kong Customs (Hong Kong)
Clive Thorne, Weblake Bell LLP (United Kingdom)

Closing Remarks and Thank You

Conference Co-Chairs:
David Stone, Simmons & Simmons LLP (United Kingdom)
Anne Marie Verschuur, NautaDutilh (Netherlands)