Monday, 25 February 2013

How is the scope of protection of a registered Community design to be determined?

Author: Darren Smyth (EIP, London)

Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339, Court of Appeal, England and Wales, 18 October 2012

Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt004, first published online: February 24, 2013

The Court of Appeal decision on the scope of protection of a Community registered design confirms aspects of the approach established by previous cases, but leaves unresolved issues concerning the significance of the ‘design corpus’ and unanswered questions about product features not claimed as part of the design.

Legal context

The legal test for infringement of a Community registered design—the scope of protection—is set out in Article 10 of the Community Design Regulation 6/2002:
Article 10 Scope of protection

1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.

2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.
As the Community registered design system approaches its 10th anniversary, there have still been relatively few decisions from higher courts to clarify the issue of what is the scope of protection under the new law, which is harmonized throughout the EU. How should the judge don the spectacles of the informed user, and how should the question of different overall impression be judged? There is one decision from the Court of Justice of the European Union in PepsiCo v Grupo Promer (C-281/10 P) which gives guidance on the test of ‘different overall impression on the informed user’ in the context of whether a design has ‘individual character’. In the UK, there have been two decisions from the Court of Appeal for England and Wales, Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936 and Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206. In both of these, Jacob LJ gave the leading judgment; he has once again been summoned from retirement to give the leading judgment in this, the most high-profile registered design case to date.

Recital 14 of the Regulation, referring to the same test as for scope of protection, but in the context of individual character, gained prominence in the first instance judgment and appeal. It states:
The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.
The history of this Recital in relation to the scope of protection in UK cases is significant. In Procter & Gamble Company v Reckitt Benckiser (UK) Ltd, Jacob LJ, reversing the trial decision of Lewison J, rejected the idea that the Recital has the effect that ‘an accused design escape[s] infringement only if its overall impression “clearly differs” from the registered design’. By contrast, Arnold J accepted a more modest proposition in Dyson Ltd v Vax Ltd [2010] EWHC 1923 (Pat):
Recital (13) of the Designs Directive [which corresponds to recital 14 of the Community Designs Regulation] indicates that, other things being equal, a registered design should receive a broader scope of protection where the registered design is markedly different to the design corpus and a narrower scope of protection where it differs only slightly from the design corpus.
This principle was implicitly affirmed on appeal.

In both earlier UK cases, the designs were held to be a great departure from that which went before, and a detailed comparison of the registered design with the prior art corpus, in order to determine the scope of protection that the registration should afford, was not conducted.

Facts

In Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat) (9 July 2012), Judge Birss QC, sitting as a judge of the High Court, granted a declaration that three of Samsung's Galaxy tablet computers (the Tab 10.1, Tab 8.9 and Tab 7.7) did not infringe Apple's Community registered design No 000181607-0001. Validity of the registration was challenged at OHIM, but was not at issue in the UK proceedings.

In arriving at the result, Judge Birss used a seven-feature characterization that was put forward by Apple of features of the registered design allegedly reproduced in Samsung's products, and analysed each feature in relation to a design corpus of over 50 items of prior art put forward by Samsung. Each feature was considered against the design corpus and also considered from the point of view of design freedom.

Apple appealed the decision.

Dismissing Apple's appeal, Sir Robin Jacob (the other two judges agreeing) fully and wholeheartedly endorsed the decision of Judge Birss. He stated at [53]: ‘Overall I cannot begin to see any material error by the Judge’, and then at [54]: ‘I would add that even if I were forming my own view of the matter, I would have come to the same conclusion and for the same reasons.’

Analysis

When reporting Judge Birss's decision for this journal, I commented that the detailed comparison that he undertook contrasted with Jacob LJ's comments in the two earlier appeal decisions, which suggested that the judge should simply conduct a visual comparison, without lengthy consideration of the design corpus, or detailed expert evidence on the degree of design freedom.

In the appeal, Apple criticized Judge Birss for conducting a piecemeal, feature-by-feature analysis. Pointing out at [29] that ‘Apple can hardly complain … since the Judge used the very list of seven features it had identified and invited him to use’, Sir Robin emphasized that, having ‘considered the various features of the design’, the judge then ‘came to consider the overall impression of the Apple design’. Therefore it is clear that, whatever preparatory analysis is undertaken, what matters is the overall impression.

Concerning the relevance of the design corpus, and the need apparently potentially to refer to a large body of prior art in order to determine the scope of protection of a Community registered design, the situation is less clear. In the decision under appeal, Judge Birss approved at [48] Arnold J's dictum in Dyson Ltd v Vax Ltd at [39] quoted above. Moreover, at [189] he referred to the ‘importance of properly taking into account the informed user's knowledge and experience of the design corpus’. This approach is apparently endorsed, and Sir Robin approved at [53] of the ‘overall conclusion, arrived at by using his own eyes and taking into account both the design corpus and the extent to which there was design freedom’. So the consideration of a potentially large corpus of prior art is apparently required to assess the scope of protection of a Community Registered Design. But it is not clear how this is to be reconciled with Sir Robin's statement in Procter & Gamble Company v Reckitt Benckiser (UK) Ltd and repeated in Dyson Ltd v Vax Ltd that ‘[b]y and large it should be possible to decide a registered design case in a few hours.’

There also remain two unresolved issues for practitioners concerning how features of a registered design for which protection is not sought should be indicated.

The first concerns the feature of lack of ornamentation. Apple's list of features included a ‘surface without any ornamentation’ and ‘without features which specify orientation’, and Samsung did not challenge this as a characterization of the registration. Accordingly, both Judge Birss and the Court of Appeal accepted lack of ornamentation as a feature of the design registration. This has been surprising for many practitioners who have worked with the convention that not showing ornamentation in the representations of a registration would result in protection for the design with or without added ornamentation. How is an applicant now supposed to show that such a scope of protection is sought?

The second issue concerns the related question of the significance of dotted lines in a representation. Convention, supported by the OHIM Guidelines and the Invalidity Manual, dictates that features in dotted lines are disregarded, because they are either not claimed, or cannot be seen. In the present case, two views showed on the front of the tablet a frame in dotted lines. Samsung submitted that this was to be disregarded. Apple contended, and Judge Birss accepted, that the dotted line indicated a frame below a glass screen, and was not to be disregarded. Sir Robin dismissed Samsung's submission as a ‘complicated point based on the guidelines for examination’ which ‘is faintly absurd: a bit like the notice-board reading “Ignore this notice”.’ This surprising statement will leave applicants wondering how to define the scope of protection that they seek.

A possible avenue is for applicants to use the description of the invention, provided for on the application form, whose use is optional, to clarify the use of dotted lines, and whether lack of ornamentation forms a part of the claimed design. This approach, however, also awaits judicial approval, and is considered by some commentators to conflict with Article 36(6), which states that the description ‘shall not affect the scope of protection of the design as such’.

Practical significance

This decision, like the previous Court of Appeal cases, highlights that the scope of protection of a registered design is narrow. It suggests more strongly than previous Court of Appeal decisions that the prior art corpus should be taken into consideration when deciding the scope of protection. Moreover, it creates uncertainty for applicants and their representatives concerning how to indicate in an application the features for which protection is sought.

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