In
Magmatic
Ltd v PMS International Ltd
[2013] EWHC 1925 (Pat)
(11 July 2013) the High Court held
a registered Community design for a child's ride on suitcase valid
and infringed. The case is important because previously infringement
had rarely gone beyond counterfeiting and identical designs.
(Incidentally, can one really say something is a design if it has
been copied?)
This design was
disclosed in 1998 and the Registered Community design was filed four
years later. The claimant argued that the disclosure was obscure: the
court said it was not so obscure has to be excluded from prior
designs, but it was obscure enough not to form part of the design
corpus. This is a fine distinction: it interprets Article 7 (1) so as
to protect early disclosures.
Unregistered
design right also featured. The court said UDR claims much must be
effectively particularised. The features to be protected must be
chosen carefully, and the claimant must be specific.
The design had
been entered in a competition in 1998. The question was, what was
disclosed as a result of the awards ceremony? The concept was made
available to the public that only those present at the awards
ceremony would have enabled to discover the details.
The design is
considered obscure if "those events could not reasonably have
become known in the normal course of business to the circles
specialised in the sector concerned, operating within the Community"
according to the Court of Appeal in the Green Lane case.
In the present
case, the court concluded that:
The
specialised circles must become aware of the design himself, not
just its existence.
The relevant
sector is that of the prior design, although since the Green Lane
case the Board of Appeal has twice decided that the relevant sector
is actually that of the later registered design (Ferrari v Dansk
Supermarked R84/2007-3 and Crocs v Holey R9/2008-3). But the Court
of Appeal was bound by the Green Lane case, and it did agree with
it.
The
specialised circles must be interpreted widely, including all
individuals who conducted trade in relation to the products in that
sector - designing, making, advertising, marketing, distributing and
selling in the community according to the Green Lane case, and also
experts and all businesses involved in the trade including importers
(R552/2008-3, Harron v THD Accoustics).
the phrase
"could not reasonably have he have become known in
the normal course of business" (Court's emphasis) must be
interpreted as a composite whole.
The burden
of proof lies on the party relying on the exception. The onus may
shift once it is shown that the disclosure relied on is obscure.
The first of
these is common sense. The the is an interesting procedural
development. The Court held that the obscure designs exception was
not a plot applicable in the present case because people connected
with the luggage trade were at the awards ceremony and saw the
design.
The court held
that the informed user was a child between three and six years old,
or a related adult. Parties agreed, although the Pogs case differed:
children would not buy suitcases out of their pocket money.
The designer of a
child's ride on suitcase it had considerable design freedom, so
abroad scope of protection was appropriate. The substantial departure
from the design corpus also supported this.
The different
overall impression given by the Registered Community design compared
with the earlier design meant that the validity of the Registered
Community design and was not compromised.
Comparing the
parties' products, the registered Community design did not include a
representation of the bottom of the case, so that was excluded from
the comparison. Also, the Registered Community design did not feature
graphical elements so the comparison had to be of the shapes alone.
The claimant
identified the features of the Registered Community design present in
the defendant's product. The defendant identified the novel features
of the Registered Community design not in its case, and the features
of the case which were not present in the Registered Community
design. The court held that the differences were not as visually
significant as the defendant contended. The defendant's case was more
like the Registered Community design than it was like the old
original design, so the Registered Community design was infringed.
As for UK UDR,
the court stressed how important it is to particularise the claim.
The claimant must make absolutely clear on what designs it relies,
with clarity and precision. In this case, the claimant for only got
to the final version on day two of the trial.
The defendant
argued that the claimant particulars extended to abstract
generalisations rather than delineating particular designs. The court
rejected this argument, but it did hold that the claimant's
particulars if design poor more like patent claims than an
identification of particular aspects of configuration of a product,
so they amounted to methods of principles of construction. (check
words in judgment).
The court held
that where the particulars of the design were permissible, there was
an infringement.
There was also a
claim aim relating to infringement of copyright in the packaging. The
court held there any copying that had taken place place was not of a
substantial part.
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