The informed user's perception and a design's individual character

Author: Valentina Torelli (Salvador Ferrandis & Partners, Madrid)

Senz Technologies BV v OHIM, Impliva B (Parapluies), Joined Cases T-22/13 and T-23/13, EU: EU:T:2015:310 General Court of the European Union, 21 May 2015

Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv136, first published online: August 20, 2015

In a scenario in which the freedom of the designer is limited and the informed user shows a higher level of attention when wishing to buy an umbrella, the General Court held that Senz's highly wind-resistant umbrellas had individual character and deserved to be registered notwithstanding a challenge from invalidity applicant Implivia. That was so even though it had been recognized that some prior art existed in the form of an US earlier patent, but that earlier design of an umbrella produced a different overall impression on the informed user.

Legal context

Article 6(1) of Regulation 6/2002 (the Community Design Regulation) sets out one of the two requirements to afford protection to designs in the EU by defining when a Community design has individual character. This occurs when the Community design produces a different overall impression on the informed user from that conceived by any design which has been made available to the public before either the date of application for registration or of priority of the registered Community design or, where the latter is an unregistered design, before the date it has been disclosed to the public.

Article 7(1) of Regulation 6/2002 provides that a design has been made available to the public for the purposes of assessing a Community design's novelty and individual character if it has been published, exhibited, used in trade or otherwise brought to the public before either the date of application for registration or of priority of the registered Community design or before the unregistered Community design has been disclosed in the EU. There are two exceptions to this rule: first, no account is taken of a disclosure when the design cannot be reasonably known in the normal course of business within the circles specialized in the relevant sector in the EU; secondly, a disclosure does not count when it has been made under an explicit or implicit obligation of confidentiality.

Finally, Article 52 in combination with Article 25 of Regulation 6/2002 grants any natural or legal person the right to apply for the invalidity of a Community design when it does not comply with the legal requirements established in Articles 4 to 9 of the Community Design Regulation, among others when it lacks individual character.

Facts

In 2006 Senz applied to register two Community designs for highly wind-resistant umbrellas, featuring respectively a black and a brown asymmetrical canopy with a beak-like shape and an off-centre shaft in respect of the canopy.

In 2009 Impliva sought to invalidate both of Senz's designs before the Office for Harmonisation in the Internal Market (OHIM) on the basis that they did not meet the legal requirements for registration under Articles 4 to 9 of Regulation 6/2002. In particular Impliva claimed that the contested designs produced the same overall impression on the relevant informed user as that characterizing identical or similar umbrellas, among others, the asymmetrical umbrella covered by US patent No. 5505221, registered on 9 April 1996.

Both the Cancellation Division and the Board of Appeal upheld the invalidity claims, holding that the contested designs did not have individual character. In particular, the Board of Appeal stated that, insofar as in the US designs are known as ‘design patents’ and the USPTO register is one of the most important IP registers in the world, the earlier US patent covering an umbrella similar to those of Senz should have been known within the circles specialized in the EU umbrella sector.

As to the assessment of the individual character of Senz's designs, the Board of Appeal started from the premise that the freedom of the designer was limited. It added that the informed user was deemed to be any person willing to buy an umbrella and showing a relatively high level of attention, especially in respect of the umbrella's basic structure. Therefore, the Board of Appeal concluded, all the designs at issue produced the same overall impression, whether from the perspective of the lateral or the underneath view of the umbrellas: all designs had asymmetrical and beak-like canopies and their distribution of the ribs and proportions of the canopies were similar.

In the joined appeals to the General Court, Senz relied on two pleas in law. First, it contested that the US patent could serve as prior art in the assessment of validity, alleging misapplication of Article 7(1) of Regulation 6/2002. Secondly, it argued that the Board of Appeal misapplied Article 6(1) of Regulation 6/2002, in that its umbrella designs had individual character.

Analysis

The General Court sided with the Board of Appeal in the evaluation of the US patent no. 5505221 as prior art of Senz's Community designs, confirming its interpretation of Article 7(1) of Regulation 6/2002.

The court started from the premise that the earlier patent protected both the asymmetrical umbrella's technicalities and its appearance deriving from its various features. On this basis some prior art was disclosed before the filing of the contested designs, in that the USPTO Register was a reliable source for the specialized circles in the umbrella sector to search for possible earlier conflicting rights. That was even more so, said the court, since in this case the design proprietor was a designer of a wind-resistant umbrella which needed to meet specific technical requirements.

Moreover, Senz failed to substantiate its claim properly. It did not provide evidence that European IP lawyers would disregard the fact that, in the United States, designs are protected in the patent register and that patent searches in that register would not be financially sustainable for individual designer and small companies. In any event, Senz failed to prove that the European umbrella sector was composed of such operators.

Finally, the General Court took the view that, contrary to what Senz argued, although the earlier patent had never been incorporated in a product which was actually marketed, knowledge of the patent could have been obtained within the circles specialized in the umbrella sector by means of online searches in the USPTO Register. This conclusion was even reinforced by the circumstance that the United States is an influencing commercial partner for EU specialized operators of the relevant sector.

Notwithstanding all the above, Senz succeeded in relation to its second plea in law and the General Court annulled the Board of Appeal's decisions while affirming that the two contested designs had individual character according to Article 6(1) of Regulation 6/2002.

The court agreed with the Board of Appeal on the definition of the informed user and on the fact that the freedom of the designer was limited. However, it considered that the three designs of asymmetrical umbrellas produced different overall impressions, especially due to the shape of the umbrellas' canopies.

While Senz's designs were characterized by pyramidal and quasi-pyramidal canopies with bent lateral contours forming an irregular octagon, the earlier patent featured a flat surface in the middle and curved lateral contours forming a regular octagon. Although all designs concerned umbrellas' asymmetrical and unusual shapes, the informed user may still be able to perceive the differences between them. Indeed, the informed user may be deemed to recognize their variations despite the fact that all designs shared the same characteristic.

The court then found that the off-centre shaft was not the dominant feature of all the conflicting designs and that it could not have any bearing in establishing that the designs created different overall impressions. Additionally, the perception of the umbrellas from the underneath perspective should not be taken into account, in that design rights protect the appearance of a product as it has been represented in the design, not those perspectives which have not been included in it.

Finally, the court rejected the argument that, inasmuch as the canopies' shapes had been dictated by technical constraints in order to provide the umbrellas with an aerodynamic structure, they were to be disregarded in the comparison of the overall impression. When the appearance of a product is also aimed at fulfilling a technical function it can be nonetheless afforded protection under Regulation 6/2002.

Practical significance

The General Court explained here how the assessment of a design's individual character must be undertaken. What is relevant an identification of the design's features which determine the overall impression capable of influencing the informed user's perception. It follows that, for the purposes of establishing the design's individual character, the comparison between similar designs must entail solely those parts which constitute the appearance of the product as resulting from the design's representation. It therefore cannot be argued that the new and unusual features of a design can be used to prohibit competitors to develop further versions of those features which show significant differences, as in the present case. In such a situation, the General Court clarified that the saturation of the state of the art cannot serve to deny that the informed user can recognize the differences of the conflicting designs insofar as they share a single characteristic feature.

© The Author (2015). Published by Oxford University Press. All rights reserved.

Magmatic v PMS: no RCD infringement on appeal

Authors: David Stone and William Corbett (Simmons & Simmons LLP)

Magmatic Ltd v PMS International Ltd [2014] EWCA Civ 181, Court of Appeal, England and Wales, 28 February 2014; Magmatic Ltd v PMS International Ltd [2014] EWCA Civ 408, Court of Appeal, England and Wales, 10 April 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu103, first published online: June 17, 2014

The Court of Appeal has overturned the High Court's judgment that a registered Community design (RCD) was infringed by a copied child's ride-on suitcase and has refused permission to appeal to the Supreme Court.

Legal context

The Court of Appeal has held that Magmatic's registered Community design (RCD) for its well-known Trunki child's ride-on suitcase is not infringed by a competitor product sold as the Kiddee Case.

Magmatic sought permission to appeal to the Supreme Court. The Court of Appeal refused on the basis that the case does not ‘raise any point of general public importance’. Magmatic has sought permission from the Supreme Court.

Facts

In 1997, a designer created an original design for a child's ride-on suitcase. This design was developed and subsequently commercialized by Magmatic under the trade mark Trunki. The Trunki case proved highly successful: Magmatic estimated that in 2011 approximately 20 per cent of three-to-six-year-olds in the United Kingdom possessed Trunki luggage. The product is now sold in 97 countries.

PMS admitted that its Kiddee Case was inspired by the Trunki product. However, it claimed to have instructed its designer to come up with something different from anything else on the market. PMS began selling the Kiddee Case in late 2012. Magmatic commenced proceedings in February 2013. In July 2013, the High Court (Arnold J), in a ‘clear and concise judgment’, ruled that PMS infringed Magmatic's RCD, and UK unregistered design rights (UK UDR) in relation to the Trunki's clasps, internal straps, internal pouch and tow strap (PMS conceded copyright infringement in relation to a safety notice). PMS appealed only the issue of RCD infringement on two very narrow points: that the trial judge had wrongly interpreted the RCD and had improperly excluded from his consideration of infringement the decoration on the Kiddee Case.

Analysis

How should a tribunal interpret an RCD? The Court of Appeal emphasized that the scope of protection of an RCD is determined by the representation of the design. As Kitchin LJ held, ‘[a]t the end of the day, the scope of the design must be determined from the representation itself … the scope of the protection must be discerned from the graphical representation and the information it conveys.’ Some assistance is available from drafting conventions, such as dotted lines, he said. But colour, Kitchin LJ noted, ‘presents further challenges’.

To assist in interpreting the RCD in this case, Kitchin LJ reviewed two previous Court of Appeal RCD cases, where the interpretation of black and white line drawings was in issue.

In Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936, the RCD was for an air freshener shown in a black-and-white line drawing: it was held to protect the shape of the design in any colour. In Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339, the RCD was again depicted in black-and-white line drawings. Apple had contended that a lack of ornamentation was a feature of its design: accordingly, any decoration on the Samsung tablet was held by the High Court and Court of Appeal to constitute a difference (and it was irrelevant that this ornamentation included a trade mark).

In the present case, Magmatic's RCD represented the design using monochrome 3D renders (which showed how light would play on the surface of the suitcase), perhaps more accurately described as ‘greyscale’. The shape was unadorned with any surface decoration, but the wheels and the strap were shown in a darker shade than the sides of the case.

The Court of Appeal held that the trial judge's first error was in his interpretation of the RCD, enumerated as follows. First, he failed to recognize that Magmatic's RCD looks like a horned animal (the Court of Appeal described this as ‘plainly one of its essential features’). Secondly, although the monochrome representations meant that the RCD protected the shape in any colours, the 3D renders indicated a ‘distinct contrast in colour’ between the wheels and strap on the one hand and, on the other, the rest of the suitcase. Accordingly, the Court of Appeal held that the wheels were ‘a rather striking aspect of the design as a whole’, which the trial judge had failed sufficiently to take into account.

The Court of Appeal identified the trial judge's second error in his comparison of the RCD with the Kiddee Case. Kitchin LJ held that it was ‘wrong for the judge to eliminate the decoration on the accused design from his consideration entirely because it significantly affects how the shape itself strikes the eye, and the overall impression it gives. At least in the case of this particular registered design, the global comparison necessarily requires account to be taken of the context in which the accused shape appears’. Kitchin LJ held that the Kiddee Case's ladybird and tiger versions were ‘plainly not’ horned animals and produced ‘very different’ overall impressions.

Having identified errors of principle, the Court of Appeal felt it was free to form its own view. Kitchin LJ concluded as follows: ‘[t]he impression created by the [RCD] is that of a horned animal. It is a sleek and stylised design and, from the side, has a generally symmetrical appearance with a significant cut away semicircle below the ridge. By contrast the design of the Kiddee Case is softer and more rounded and evocative of an insect with antennae or an animal with floppy ears. At both a general and a detailed level the Kiddee Case conveys a very different impression.’

Practical significance

The Court of Appeal has continued its unbroken anti-RCD run: never has it found an RCD to be infringed. Practitioners who hoped that recent personnel changes on the court may herald a less interventionist and more design-rights-friendly approach will be disappointed with this decision.

Did the trial judge commit an error of law? The first error listed by the Court of Appeal was that the trial judge ‘failed to appreciate that this is a design for a suitcase which, considered as a whole, looks like a horned animal’. First, he did no such thing; the trial judge observed that ‘the ridge and the horns form important parts of its appearance’ and noted ‘the nose and tail of an animal’ shown in the RCD. Both quotes come from paragraph 64 of the trial judgment, excerpted in full by the Court of Appeal in its decision. The Court of Appeal also excerpted the trial judge's conclusion (para 77 of the trial judgment): ‘the overall impression the Kiddee Case creates shares the … prominent ridge and horn-like handles and clasps looking like the nose and tail of an animal which are present in the [RCD]’. Indeed, at paragraph 8 of its decision, the Court of Appeal notes ‘[a]s the judge recognised, one of the striking features of the [RCD] is that the handles and the clasps give the suitcase the appearance of a horned animal’ (emphasis added). It is difficult to reconcile these findings. In any event, even if this ‘fail[ure] to appreciate’ was an error, it was not an error of law but merely a difference in emphasis.

Perhaps more worrying is the Court of Appeal's reference to the RCD being ‘clearly intended to create the impression of a horned animal’ (emphasis added). As the Court of Justice made clear in C 488/10 Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamientos SL [2012] E.C.D.R. 17, the intention of the designer is irrelevant to the interpretation of an RCD.

There is a further sub-point: the Court of Appeal felt that the trial judge underplayed the contrast in shade between the wheels and the rest of the body of the suitcase, and in this they may be correct. A greyscale 3D computer representation of the shape of a product is not to be construed in the same way as a black and white line drawing. For example, a black-and-white line drawing does not show features of ‘texture’ or ‘materials’ (Article 3(a) of the Community Design Regulation (CDR)), whereas these may be shown in a greyscale model. Also, and relevantly here, contrasting shades may be shown—for example, darker wheels against a lighter case. Kitchin LJ noted, ‘the wheels are, to my eye, a rather striking aspect of the design as a whole’. To be fair to the trial judge, at first instance PMS did not list the contrasting wheel shade among the differing features on which it relied. Further, as noted by the trial judge, ‘[i]n the case of the wheels, the real difference is that the wheels on the Kiddee Case have covers over them.’ So the informed user would not have paid much attention to the wheels in any event.

Overall, this appears to have been a difference in emphasis, rather than an error of law.

The second error of law identified by the Court of Appeal is the more important one, as it may have ramifications beyond this dispute. The Court of Appeal found that the trial judge, in comparing the RCD with the Kiddee Case, was wrong to disregard the surface decoration on the later product. Kitchin LJ noted, ‘[a]t least in the case of this particular registered design, the global comparison necessarily requires account to be taken of the context in which the accused shape appears.’ No authority is given for this statement, which reads dangerously like trade mark law. Indeed, the finding runs contrary to authority, including Procter & Gamble in the Court of Appeal, to compare like with like. A copyist ought not to avoid infringement by applying different markings to a product, particularly where the RCD protects shape only, devoid of decorative elements.

It is possible to look at this point another way. The CDR provides protection for ‘the appearance of the whole or a part of a product’. In filing an RCD devoid of surface decoration, Magmatic claimed protection for that ‘part’ of the product, and not the surface decoration ‘part’. In undertaking a like-with-like comparison, the trial judge was therefore right to avoid the surface decoration on the Kiddee Case. In other words, a greyscale RCD for a distinctive motor vehicle shape is still infringed by an identically shaped vehicle, even if the later vehicle is painted with zebra stripes.

In our view, the Court of Appeal was wrong to look at the ladybird and tiger markings: these should have been excluded from the comparison made by the informed user.

It is also of little assistance to practitioners that the Court of Appeal caveated its decision with ‘[a]t least in the case of this particular registered design’. Designers, practitioners and the design protection system benefit from clear tests (to the extent that is possible), and the Court of Appeal has here elucidated nothing that takes this particular design away from the usual ‘like-with-like’ comparison.

The Court of Appeal refused permission to appeal to the Supreme Court, noting briefly: ‘[w]e have reached a conclusion different from that of the judge as to the scope of the [RCD] and the issue of infringement. However, this finding is specific to the circumstances of the present case and we do not believe it raises any point of general public importance.’ It may thus be that this case will be confined to its facts, not being seen as signalling a move away from the established case law on comparing like with like.

In our view, the trial judge made neither error attributed to him, but had made an error. However, that finding did not influence his decision and therefore played no part in the appeal. The Rodeo, an earlier ride-on suitcase created by the Trunki designer, had been disclosed at an awards event in 1998. The trial judge found that that disclosure was not ‘obscure’—it could ‘reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community’. Although admitting that the Rodeo was therefore a prior design for novelty purposes, Magmatic argued that the Rodeo should not be included in the design corpus, because it would not have been a design with which the informed user was familiar. The trial judge agreed, finding support in the General Court's comment in Case T-9/07 Grupo Promer Mon Graphic SA v Office for Harmonization in the Internal Market (OHIM) [2010] E.C.D.R. 7 that the informed user ‘has some awareness of the state of the prior art’ (emphasis added), and the Court of Justice's comment on appeal in that case (Case C-281/10 P E.C.R. I-10153) that the informed user ‘possesses a certain degree of knowledge with regard to the features which those designs normally include’ (emphasis added).

In our submission, there is nothing in a purposive construction of the CDR, or indeed, in Grupo Promer, that supports such a contention. In order to assess the validity of an RCD, it is necessary to compare it against each prior design (Advocate General in Case C-345/13 Karen Millen Fashions Ltd v Dunnes Stores, Dunnes Stores (Limerick) Ltd 2 April 2014 (unreported)). If any one of those prior designs creates the same overall impression on the informed user as the RCD, that RCD is invalid. But it cannot be that an RCD that survives such an invalidity attack is then protected from the ‘kindred prior art’ that may be obscure-ish, but not obscure. For the invalidity test to be the flipside of the infringement test (Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2006] EWHC 3154 (Ch), para 26), the ‘design corpus’ must include all the ‘prior designs’. As a practical matter, the legislature cannot have intended that tribunals should have to apply an additional filter once a prior design is found not to be too obscure. As noted above, this did not affect the trial judge′s findings, because he considered the single prior design, despite not considering it part of the design corpus of which the informed user would be aware.

The Court of Appeal's decision is a timely reminder of the attention to be paid when filing for RCD protection. Many practitioners consider that a black line drawing on white paper gives the broadest scope of protection. Had Magmatic filed for the Trunki in that form, it would likely have survived an invalidity attack based on the Rodeo, as well as leading even the Court of Appeal to a finding of infringement.

It was undisputed that PMS took a version of the Trunki suitcase, and Arnold J found that it had been copied. Modifications were made, but Arnold J found that they were not enough to avoid infringement. The Court of Appeal has disagreed, in a decision that will not please designers, originators or practitioners.

Keeping it clean: invalidity of a registered Community design based on likelihood of confusion with earlier 3D Community trade mark

Author: Birgit Clark (Baker & McKenzie LLP, London)

Case T-55/12 Su-Chen v OHIM—AM Denmark (Dispositif de nettoyage), General Court of the European Union, 25 April 2013

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpt249, first published online: January 9, 2014

The General Court of the European Union confirmed the invalidity of a registered Community design for a cleaning device based on a likelihood of confusion with an earlier 3D Community trade mark covering ‘equipment and containers for cleaning’ in Nice Class 21.

Legal context

Article 25(1)(e) of the Community Design Regulation (CDR) stipulates that

a Community design may be declared invalid if a distinctive sign is used in a subsequent design, and Community law or the law of the Member State governing that sign confers on the right holder of the sign the right to prohibit such use.

Article 9(1)(b) of the Community Trade Mark Regulation (CTMR) provides that the proprietor of a Community trade mark (CTM) shall be entitled to prevent all third parties not having his consent from using in the course of trade: any sign where, because of its identity with or similarity to the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark.

Facts

The applicant in the invalidity proceedings argued that a third party's registered Community design (RCD) for a part of a cleaning device should be declared invalid since it infringed the applicant's earlier 3D CTM, inter alia, registered for ‘equipment and containers for cleaning, including sponges, brushes, wipes, dusting cloths, mops’ in Nice class 21.

Analysis

The contested design

The applicant based its declaration for invalidity of the RCD on Article 25(1)(e) CDR, claiming a likelihood of confusion between its earlier 3D CTM and the design in the sense of Article 9(1)(b) CTMR. The Office of Harmonization for the Internal Market (OHIM), OHIM's Board of Appeal and the General Court all agreed with the trade mark proprietor.

The earlier 3D
trade mark

On further appeal, the General Court confirmed the invalidity of the contested RCD based on a likelihood of confusion with the applicant's earlier 3D Community trade mark.  In its decision, the General Court confirmed that OHIM was correct when it considered ‘that the earlier mark was used in the contested design’ despite the obvious differences between the shapes. In particular, the court explained what was meant by ‘use’ in the sense of Article 25(1) (e) CDR, which does not necessarily presuppose a full and detailed reproduction of an earlier distinctive sign in a subsequent Community design. Even if the contested Community design lacks certain features of the sign in question or has different, additional features, there may be ‘use’ of that sign, particularly where the omitted or added features are of secondary importance (para 23).
This is particularly so since

the public retains only an imperfect memory of the marks registered in the Member States or of Community marks.

The judges therefore concluded that OHIM's finding

… that the geometric form and dimensions of the earlier mark and of the contested design are highly similar and identical in part must be approved.

Further, while the contested design had certain differences and additions when compared with the earlier 3D trade mark, the judges found that these were

limited to a transparent cap, a transparent bottom part on both sides of the main body, and a thin plastic cover placed around the sponge. OHIM rightly notes that, in view of their secondary importance, those additions and differences cannot dominate the impression left by the contested design (para 27).

Given that both shapes were similar (in the words of the court: ‘compact rectangular body rounded at the edges which houses a spray device and a cylindrical sponge’) was enough to show ‘use’ in the sense of Article 25(1)(e) CDR and ‘trade mark type’ similarity under Article 9(1)(b) CTMR. The court stressed that the ‘cleaning devices’ in which the contested designs were intended to be incorporated are included in the list of class 21 goods for which the earlier mark was registered, and that they were therefore identical to those covered by the earlier mark in the sense of Article 9(1)(b) CTMR.

As regards the relevant consumer, the judges held that the goods concerned are everyday consumer items directed at the general public and that the relevant consumer was the average consumer throughout the European Union, who is deemed to be reasonably well-informed and reasonably observant and circumspect. As regards the visual comparison of the earlier mark and the contested design, the court took the view that it was ‘apparent’ that the geometric form, dimensions and shape of the earlier mark and the contested design are highly similar and identical in part, and that any small differences did not alter its overall shape, even though the earlier 3D mark only possessed a minimum degree of overall distinctiveness.

On balance, the General Court decided that the shape of RCD was sufficiently unusual compared to the norms of the sector and sufficiently striking for it to be capable of fulfilling the essential function of a trade mark (here, cleaning products). The judges also emphasized that the owner of the RCD

claimed without success that the minimum degree of distinctive character which OHIM conceded to the earlier mark derives exclusively from the word element ‘am’ and that the assessment of the similarity can be carried out solely on the basis of that word element. It stands to reason that the word element, the negligible character of which was demonstrated …, cannot of itself dominate the image of the earlier mark which the relevant public keeps in min (paras 55, 52).

In conclusion, the judges found that there was likelihood of confusion as required by Article 9(1)(b) CTMR.

Practical significance

There has been a recent upsurge of General Court cases relating to a conflict between trade marks and designs, for example Beifa Group v OHIM—Schwan-Stabilo Schwanhäußer (Instrument d'écriture) (Cases T-148/08 [2010] ECR II-01681 of 12 May 2010 and T-608/11 of 27 June 2013) and Danuta Budziewska v OHIM/Puma SE (Case T-666/11 of 7 November 2013) relating to an infringement of Article 6(1)(b) CDR.

However, Su-Chen appears to be one of a few cases so far in which the General Court has declared a registered design invalid due to a likelihood of confusion with an earlier (3D) trade mark applying the same criteria as one would in a ‘pure’ trade mark cases. Moreover, and somewhat remarkably, the General Court in Su-Chen puts the burden of proof as to whether consumers perceive the shape as a trade indication in a trade mark sense on the defendant, rather than on the trade mark owner claimant (paras 54, 60). The old practice of filing a shape mark together with another element (here the word element am) to avoid a distinctiveness objection has also received some unexpected backing. The General Court only compared the shapes of the RCD and the 3D CTM, finding, in essence, that the word element ‘am’ incorporated in the earlier 3D trade mark would more or less be ignored by the relevant consumers.

While the recent line of General Court decisions concerning conflicts between designs and trade marks may alert trade mark owners to the possibility of supplementing their trade mark portfolio with RCD design registrations, the General Court's decision in this case should certainly boost the practice of adding ‘little bits and pieces’ to an otherwise perhaps slightly bland shape to render it registrable as a trade mark.

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.