RCD valid and infringed for a change

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.

Small differences in designs may not be insignificant

In Case T-68/11, Kastenholz v OHIM, the General Court confirmed that this registered Community design:

representing watch dials was valid over earlier designs protected by German copyright law (which I won't bore you with). The earlier designs changed colour or intensity according to the time: the registered design's dials were coloured uniformly, which amounted (according to the Court, and I suspect to most sensible people) to a significant difference between the designs. The Court therefore decided that the registered design possessed the necessary quality of novelty (but was the novelty in the appearance of the design, or in the function of the watches? We are on tricky ground here, where form and function are difficult to distinguish). The Court also rejected the argument that the design lacked individual character.

The interesting point to note, I think, is the Court's observation that even though the differences were small the informed user would attach a great deal of importance to the appearance of articles like this and would not regard even small differences as insignificant.

Construing patents: pretend the defendant had never been born

Convatec Ltd. & Ors v Smith & Nephew Healthcare Ltd & Ors [2011] EWHC 2039 (Pat) (27 July 2011) is a 185-paragraph blockbuster of a judgment of HHJ Birss QC, sitting in the Patents Court for a change. The case itself is a fairly straightforward infringement claim and invalidity counterclaim concerning wound dressings made from cellulose in various forms. There is a lot of consideration of wound dressing techniques and the construction of the claims of the claimants' patent - leading the judge to point out, as the IPKat notes, that it will not do to try to read the claims onto the defendant's product: "A patent is to be construed as if the infringer had never been born." (Nobel's Explosives Co. v Anderson (1894) 11 RPC 519.) Remarkably, Floyd J cited exactly the same principle (indirectly, given that he was quoting from Jacob LJ's judgment in Technip France's Patent [2004] RPC 46) in his judgment in Cephalon v Orchid & Mylan [2011] EWHC 1591 (Pat):

It is clear that one does not start with the alleged infringement, read the patent, and ask whether the patentee meant to cover it. But it is sometimes necessary to have regard to the infringement in order to identify the question which has to be asked on construction. In Technip France's Patent [2004] RPC 46 Jacob LJ put it in this way:

"Although it has often been said that the question of construction does not depend on the alleged infringement ("as if we had to construe it before the defendant was born") per Lord Esher M.R. in Nobel's Explosives Co. v Anderson (1894) 11 R.P.C. 519 at 523), questions of construction seldom arise in the abstract. That is why most sensible discussions of the meaning of language run on the general lines "does it mean this, or that, or the other?" Rather than the open-ended "what does it mean?"

I wonder whether I can encourage people to adopt the title "Man of the World Rule" for this principle - after the bleak but beautiful song by Peter Green?