Designs Cases Flashcards
1
Q
Dyson v. Qualtex UK [2004] EWHC 2981 (Ch) & [2006] EWCA Civ 166; [2006] RPC 31
In relation to:
UKUDR Must Fit Exception
A
- Must Fit Exception (CDPA s.213(3)(b)(i)) interpretation
- Does not matter if there are two ways of achieving necessary fit or connection between articles, if design chosen by design right owner is a way of achieving that fit or interface then it does not attract UDR, no matter how many alternative ways of achieving fit available
- Article with which subject article is interfacing can be human body
- Design right excluded even if design performs other function, e.g. it is decorative, additional functional does not exclude operation of the provision
- Dyson v Qualtex says that where an article comprises many smaller “articles” each individually excluded under exception, the design as a whole will still be protected, e.g. each part of a car could be excluded individually but car as a whole would still attract UKUDR
2
Q
Dyson v. Qualtex UK [2004] EWHC 2981 (Ch) & [2006] EWCA Civ 166; [2006] RPC 31
In relation to:
UKUDR Must Match Exception
A
- Interpretation of ‘Must Match’ exception (CDPA s. 213(3)(b)(ii))
- When considering whether a feature of a part is excluded you have to consider whether there is a dependency of the kind, or to the extent, which would make the overally article in question radically different in appearance if the first article was not the shape it was
- Feature with little visual significance is less likely to depend on the appearance of another
- Defendant needs to show that as a practical matter there is a real need to copy a feature of the shape and configuration because of some design consideration to fall within exclusion
- More design freedom, less room for exclusion
3
Q
Dyson v. Qualtex UK [2004] EWHC 2981 (Ch) & [2006] EWCA Civ 166; [2006] RPC 31
In relation to:
UKUDR Originality
A
- Interpretation of CDPA s.213(1) - design must be original in its design field to be protected
- Similar interpretation as classic copyright sense - due skill and/or labour
- For design to be original, court must be satisfied that design has not simply been copied from design of earlier article (legally or otherwise)
- However, one design may be very similar or even identical without being copied as original and independent shape may be very similar to or even identical and yet not be a copy
4
Q
Dyson v. Qualtex UK [2004] EWHC 2981 (Ch) & [2006] EWCA Civ 166; [2006] RPC 31
In relation to:
Not Common Place
A
- Upheld an interpretation of “Not Commonplace” exception under CDPA s. 213(4) meaning that all features excluded by statutory exceptions (e.g. must fit, must match etc.) are stripped away first and test for commonplaceness applies to what remains
5
Q
R. v Registered Designs Appeal Tribunal Ex p. Ford Motor Co Ltd. [1995] R.T.R.
68, [1994] RPC. 545 (Court of Appeal)
A
- Interpretation of Registered Designs and UDR “Must Match” exceptions (CDPA s. 213(3)(b)(ii):
- Interpretation followed in Dyson v Qualtex
- Where substitutions can be made without radically affecting the appearance or identity of the vehicle, then parts ‘not dependent on appearance of vehicle’ so must match exception does not apply
- Relates to ‘must match’ exception for Registered and Unregistered designs
- “I come now to the second group of components, such items as wing mirrors, wheels, seats and the steering wheel. All of them are visible on the car as sold but substitutions can be made without radically affecting the appearance or identity of the vehicle. It is such standard practice that I can take judicial notice of the fact that alternatives may be offered for items such as these and an owner may chose to substitute proprietary items in order to give his vehicle a sportier appearance, or (where a seat is concerned) for greater comfort, or for a variety of other reasons. Although if any substitution is made the owner may wish it to blend in the general style of vehicle, I am of the view that such items are not ‘dependent upon the appearance of another article.’””
6
Q
Farmers Build Ltd v Carier Bulk Materials Handling Ltd & Ors [1998] EWCA Civ
1900
A
- Facts: Concerned UKUDR for ‘Target’ slurry separator and its component parts
- Definition of design in CDPA 1988 s213(2) could encompass both the shape and configuration of the individual parts of separator and separator as a whole
- Definition of Originality in (s213(4)) should be construed in copyright sense
- Quote: Time, labour and skill, sufficient to attract copyright protection, were expended by Mr Hagan in originating the designs of the individual parts. Similarly, he originated the assembly or combination of those parts in the TARGET machine as a whole. The designs are original in the “copyright sense”.
- Must have been originated by designer and not merely been slavishly copied
- Test for determining whether design is commonplace from case:
- (i) compare the design of the article in which design right was claimed with the design of other articles in the same field, including the alleged infringing article, as at the time of its creation;
- (ii) consider whether the design for which protection was claimed had not simply been copied from the design of an earlier article;
- (iii) decide whether an original design was commonplace, by determining how similar that design was to the design of similar articles in the same field of design made by persons other than the parties or persons connected with them. The closer the similarity of the designs, the more likely it was that the designs were commonplace. If a number of designers who worked independently in the same field produced similar designs by coincidence, the most likely explanation was that there was only one way of designing that article. In those circumstances it would be fair and reasonable to describe the design in question as commonplace.
- Musker’s interpretation of commonplace test:
- determine similarities with other articles in field at date of creation from unconnected parties
- filter out similarities due to direct copying or functional design constraints
- compare each aspect of similarities and differences with other articles in the field, the more similarities, especially ones not derived from copying, the greater the chance that the design is “commonplace”
7
Q
A Fulton Company Ltd. v Totes Isotoner (UK) Ltd [2003] EWCA Civ 1514, [2004] RPC 16, (2004) 27(2) IPD 27010
A
- Design identified in UKUDR is a matter for the claimant who may specify the design of the whole or part of an article
- This allows the claimant to select and “trim” the part or parts of their own design for the action, (and therefore corresponding parts of infringing product for comparison)
- Specifics:
- infringer copied most but not quite all of an umbrella case
- Design claimed was defined as “the whole case minus a short side of the ‘cuff’”
- Defendant contended in appeal that it’s changes resulted in a new and different design, and that the claimants definition of the infringed design was artificial
- Judge dismissed appeal
- Language of s213(2) established that design right existed in part of the design
- Designer entitled under s226 to object to copying of part provided criteria for UKUDR met by that part
- Fact that copying part might lead to different design did not justify the copying
8
Q
Neptune (Europe) Ltd v Devol Ktichens Ltd
A
- deletion of “any aspect of” in definition of design for UKUDR (CPA s213(2)) only applies to acts of infringement committed on or after 1 October 2014
- “aspects” had included disembodied features that were recognisable/discernable, parts referred to identifiable concrete parts
- followed and so gave strength to EWPCC precedent (Rolawn Ltd) that “design right protects physical manifestation of an idea, and does not protect the idea itself” - applied in this case by “the “asymmetry” of the cutaway is no more than an idea, or method or principle of construction, expressed at a high level of generality, in an attempt to find a common feature in two quite different shapes”
- Dynamic features of design - “the way in which particular parts of an article moved in use” may be protectable
9
Q
Case C-479/12, H. Gautzsch Großhandel GmbH & Co. KG v Münchener Boulevard Möbel Joseph Duna GmbH
in relation to safe guard clause
A
- Relates to interpretation of safe guard clause (RDA s.1B(6)(a)) -disclosures which “could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community”
- Case held:
- the “circles” included traders, as well as creative designers, so disclosure only to traders is enough to anticipate
- a disclosure may not count if it has been made available to only one undertaking in that sector or has been presented only in the showrooms of an undertaking outside the European Union, depending on the circumstances
10
Q
Case C-479/12, H. Gautzsch Großhandel GmbH & Co. KG v Münchener Boulevard Möbel Joseph Duna GmbH
in relation to copying requirement of Unregistered Community Designs
A
- Onus of proving copying rests with the holder, whereas the onus of proving independent creation rests with the opposing party
- However, if a Community design court finds that the fact of requiring that
holder to prove that the contested use results from copying that design is likely
to make it impossible or excessively difficult for such evidence to be produced,
that court is required, in order to ensure observance of the principle of
effectiveness, to use all procedures available to it under national law to counter
that difficulty, including, where appropriate, rules of national law which provide
for the burden of proof to be adjusted or lightened. - Summarising above:
- If proving copying likely to be excessively difficult or impossible then all procedures available under national law are required to be used to counter that difficulty (including rules adjusting/lighterning burden of proof)
11
Q
Magmatic Ltd v PMS International Group Plc [2014] EWCA Civ 181
A
- Scope of protection must be discerned from graphical representation and the information conveys
- Additional information, e.g. indication of product/purpose and description, may be included but this does not affect scope of design
- Decision:
- representation of design was not simple line drawing but computer generated 3D monochrome image showing effect of light upon its surfaces
- use of monochrome meant design was not limited to particular colours
- But use of contrast in design registration was significant, and scope of design was limited to designs having this contrast
- On this basis (and other differences in overall impression), PMS’ Kiddee case found not to be an infringement of Magamatic’s Trunki Registered Design
12
Q
PMS International Group Plc v Magmatic Ltd [2016] UKSC 12
A
- Interpretation of Community Design
- Each community registered design must be interpreted in its own context
- Images on a Community Registered Design should be interpreted by reference to how it would appear to a reader in the light of the terms of the principle regulation, the implementation regulation and the practice of OHIM
- Clarification of rights of Appeal Court to interfere with trial courts judgment (see Designers Guild/Lucasfilm) - Appeal Court can reconsider issue where trial judge had gone materially wrong in their approach
- Upheld EWCA decision
13
Q
Magmatic Ltd v PMS International [2013] EWHC 1925 (Arnold J)
A
- UKUDR in ‘Configuration’:
- Configuration affirmed to refer to relative arrangement of parts or elements of an article
- Design capable of consisting of multiple aspects of configuration (questionable how relevant is this post-removal of “aspects of” in IPA 2014 but design could potentially have multiple “configurations”
- Configuration is capable of description in relatively abstract manner but must be specific enough to avoid being “method or principle of construction”
- Obscure prior art:
- Supports assertion (on basis of CJEU case law) that design corpus for purposes of determining scope of protection consists of designs with which informed user is likely to be familar so there may be designs that are prior art for Art. 5/6 but do not form part of design corpus when assessing overall impression (which determines scope of protection) created by other designs for purposes of Art. 10
14
Q
Gimex v. The Chill Bag Company Ltd., [2012] EWPCC 31
A
- A prior design cannot be excluded from consideration as prior art just because it was used for a different purpose from the one subject to the registration
- However, use to which product is put plays a part in characterisation of informed user as they are informed user of, and so have design awareness of, those kinds of products
- In instant case, the differing product classes between design and prior art made visual differences between them more significant to informed user than if they had both been in same class
- Case facts:
- Ice bag for bottles was marketed by Gimex
- Gimex sued Chill Bag Company for infringement on basis of registered design
- Chill Bag company alleged lack of individual character of design on basis of earlier regular (non-ice) bag by Gimex
- Judge upheld design as valid on basis that small differences would result in different overall impression on informed user of chill bags (in part because of differing product classes)
- Chill bag company’s product found to infringe
15
Q
Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat), [2013] ECDR 1
- in relation to*
- Informed User*
A
- Characterisation of informed user (from High Court and accepted by Court of Appeal)
- The informed user is:
- user of the product in which is the design is intended to be incorporated, not a designer, technical expert, manufacturer or seller
- particularly observant
- has knowledge of design corpus and design feautres normally included in designs existing in the sector concerned
- interested in products concerned and shows relatively high degree of attention when he uses them
- conducts a direct comparison of the design in usse unless specific circumstance or device characteristics making it impractical or uncommon to do so
- informed user neither:
- merely perceives designs as a whole and does not analyse details, nor
- observes in detail minimal differences which may exist
