Tuesday, 9 October 2012

October JIPLP -- and editorial on 'cool' design rights

The October issue of the Journal of Intellectual Property Law & Practice (JIPLP) is available online from to subscribers to its electronic version -- but you don't have to be a subscriber to see the list of contents, which you can access here.

This month's Editorial is by Paul Joseph (partner, RPC):
'Cool' design rights 
The Oxford English Dictionary defines ‘cool’ as (among other things) ‘(1) fashionable, (2) moderately cold temperature and (3) unproblematic’. Even enthusiasts may hesitate to apply the term ‘cool’ to the intellectual property arena, but ‘coolness’ has been central to two recent decisions in the English courts that shed light on the complexities of registered design right protection across Europe.

The first decision was in the UK limb of the well-known dispute between Apple and Samsung, in which Samsung sought a declaration of non-infringement from the High Court for England and Wales that its Samsung Galaxy tablet computer did not infringe Apple's registered community designs for its own iPad tablets. The High Court examined the background design field and decided that, to the informed user, the Apple and Galaxy tablets were both members of the family of pre-existing thin, smooth-fronted tablet computers. What made the Apple design novel, and a valid design registration, was the extreme simplicity of its design (rather than the mere fact it was a ‘flat fronted’ tablet). On that basis, the Samsung Galaxy did not infringe. Although it appeared to share many design features with the Apple product, those features were common to the design field. It created a different overall impression on the informed user because it was ‘not as cool’ as the Apple design.

The second decision (handed down by the same judge a mere two weeks later) concerned a transparent bag for transporting wine bottles. The novel feature of the bag was that it was reinforced so that it could be filled with ice and so act as a ‘cool bag’ to chill the wine bottle inside. This novel purpose worked in the claimant's favour. Previous (almost identical) bag designs were deemed not to invalidate the community registered design for the cool bag, because those previous bags were designed for a different purpose (for carrying, rather than cooling). In respect of infringement, relatively wide protection was given because in the ‘new area’ of cool bags, even competing cool bags with small design differences would leave the informed user with the same overall impression.

The decisions are well reasoned and clear. And the consideration of how ‘cool’ the designs are, both in terms of a ‘fashionable’ look and feel and ‘cooling’ purpose were clearly appropriate considerations in these cases for considering the overall impression of the designs and so the validity and infringement arguments. Appropriate factors they may be, but stepping back from the legal arguments, the bigger picture is somewhat surprising. On the one hand an iconic, recognizable design in the high fashion, multi-billion euro computer market seems difficult to enforce, whereas a much more basic bag design can be used to carve out a niche in the wine cooling industry in which high-design seems less critical. To put the concern another way, it would have been hard to foresee these two outcomes at the outset. Tellingly, the judge in the Apple case expressly acknowledged that when ‘[he] first saw the Samsung products in this case [he] was struck by how similar they look to the Apple design when they are resting on a table’. It was only when the judged educated himself as to the mindset of the informed user that his views on that point changed.

Ironically, recital 21 to Community Design Regulation (6/2002) highlighted ‘greater legal certainty’ as one of the key advantages of registered designs. In fact (as implied by recital 18) it seems to be the registration system itself, that does not require substantive examination of applications, that can most correctly be called ‘certain’—in the sense that design registrations are easy to obtain and, once obtained (at least on the basis of the Apple case) are difficult to invalidate. Understanding the contours of the landscape for the effective enforcement of design rights is much more difficult and less certain. This is the case both in Europe as a whole and even more so in the UK where the position is complicated by the existence of overlapping UK registered and unregistered design rights, leading Sir Robin Jacob to comment recently in response to a government paper that ‘… nobody in their right mind would have such a complicated system.’

As things stand, the third meaning of ‘cool’, unproblematic, is unlikely to be a term many would apply to design rights in Europe.

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