Making headway with headrails

The joy of Google Image: on a search for
'informed user' + 'headrail', this image was
on the first page of research results

Last week Judge Birss QC handed down his decision in Louver-Lite Ltd v Harris Parts Ltd (t/a Harris Engineering) [2012] EWPCC 53, another in the growing body of cases delimiting the parameters of infringement of Community registered design rights.

In this action Louver-Lite (LL) alleged infringement by Harris Parts (HP) of its Community registered design for a headrail which formed part of a window blind system (the registered design, the allegedly infringing product and some other relatively unmemorable artwork -- unless you belong to the esoteric world of window-blind headrail aficionados -- are all annexed to the judgment here). LL's design, and indeed other earlier designs for window-blind headrails, all generally had a C-shaped cross-section with a flat top, side channels on each side underneath the flat top, side walls running downwards, and flanges extending inwardly at the bottom. This inspired HP, in trouble for selling a look-alike Valencia headrail, to argue that LL's design was invalid for lack of novelty and lack of individual character.

The learned judge started off by considering the attributes of the informed user, the hypothetical construct who got over 30 mentions in his judgment -- more than the words "claimant", "defendant" or "infringe". This blogger cannot rid himself of the notion that the constant references to this informed user, mandated by Community and national law and sanctified by judicial approbation, are often little short of farcical.  By the time a court is looking more closely at the attributes of the informed user than the claimant's design and the defendant's product, it does seem that a case can be made for saying that there must be a better and easier way of going about things.  The judge said, at paras [32] and [33]:

"... I accept that the appearance [of the headrails] in situ is very important and that the informed user will look at and consider the appearance of these products in situ. These products are used by being fixed to a ceiling and their appearance in that context is undoubtedly important. However I do not accept that this means that the informed user never interacts with these products by looking at them directly when not fixed to a ceiling [presumably it is the headrail that is fixed to a ceiling, not the informed user] and I do not accept that the informed user will be unable to make a side by side comparison.

... It is impossible to analyse the issues in this case without looking in detail at the profiles in cross-section. However in doing so I must not lose sight of the fact that overall impression to an informed user is the real issue. The informed user is never going to take a hacksaw to these rails and cut them so as to scrutinise the cross-section, nor are they going to dismantle a whole item to scrutinise the cross-section either. ... "

Anyway, while the informed user of window blinds would not consider that LL's design was a radical departure from earlier headrail designs, that design was at least novel and the informed user would regard it as creating a more rounded, almost oval overall impression. The next closest prior design looked very different to LL's because it was a wide design with a boxy appearance.

In short, LL's design did have an individual character and was validly registered. True, it only had a relatively narrow scope of protection, but HP's design had infringed it: it looked almost identical to LL's design.  Even an informed and particularly observant user who, for reasons best known to himself, showed a relatively high degree of attention, would find the LL's design and HP's product virtually indistinguishable.

Focus on India

Some resources on Indian designs.  Intellectual Property India (the patent office) have made available the following:

• General Information Booklet for Registration of Design
• Manual of Designs Practice and Procedure
• Database of agents (very useful in view of the hailstorm of mailings from various organisations these days)
• Design database, apparently a beta version, searchable by number.

Registered Designs are published in Part II of the monthly Patents Journal, available here online (by clicking on Patents - Journal under the "Our Publications" heading") as a searchable pdfs with colour pictures and plenty of bibliographic data.

Finally, a couple of interesting cases, drawn to our attention by Sharad Vadehra, Vikrant Rana and Rajeshwari Hariharan in the Indian Group Report to APAA's Design Committee. 

Last year, in Eagle Flask Industries v Bon Jour 2011(48) PTC 327 (Mad.) the Honourable Justice Ramasubramaniam refused to grant an interlocutory injunction, in a case where the infringer had their own design registration, leaving it at least arguable that even though the Designs Act 2000 contained no express defence corresponding to that available in the Trade Marks Act, the same should apply, as "The principles which form the basis for the provision contained in Section 30(2)(e) of the Trade Marks Act, 1999 are based upon the general principles relating to the extent up to which the rights conferred by the statute would go. The rights conferred by statute on a person could travel only as far as the area of operation of another person's similar right commences.". 

This decision was considered this year in Micolube India v Rakesh Kumar T/A Saurabh Industries [2012] INDLHC 2243, 2012 (50) PTC 161 (Del.) (html format here) and the judge decided to refer to the enlarged Bench of the Delhi High Court the question:

a. Whether the suit for infringement of registered Design is maintainable against another registered proprietor of the design under the Design Act, 2000 ?

EU readers will notice that this is the selfsame question answered in the affirmative by the Court of Justice of the EU on a reference from the Spanish court in Case C-488/10 CEGASA, which we covered here and here.  The Australian Federal Court also answered in the affirmative in LED Technologies v Elecspess [2008] FCA 1941, summary here.  It seems that the referring judge took the opposite view, that there was a defence of "own design", but let's see what the court en banc makes of the matter.

Another issue arising was whether the existence of statutory design registration had the effect of displacing common-law "passing off" protection for shapes, in the absence of a statutory preservation (as was found in the Trade Marks Act).  The judge also referred the following questions:

b. Whether there can be an availability of remedy of passing off in absence of express saving or preservation of the common law by the Design Act, 2000 and more so when the rights and remedies under the Act are statutory in nature?

c. Whether the conception of passing off as available under the Trade Marks can be joined with the action under the Design Act when the same is mutually inconsistent with that of remedy under the Design Act, 2000 ?

Again, it is clear that the judge himself thought that passing off was not available, but hopefully we'll be able to bring you the answer in due course.

Lastly, a case on copyright in designs - Kiran Shoes Manufacturers v Registrar of Copyrights (pay-per-view copy here).  This concerned the side trim device of the sport shoes, the design of which had been registered as a trade mark.  A copyright registration was then sought.  Had it been a design registration, the Copyright Act 1957 would have been fairly categorical on this point, eliminating any overlap:

15. Special provision regarding copyright in designs registered or capable of being registered under the Designs Act, 1911.-
(1) Copyright shall not subsist under this Act in any design which is registered under the Designs Act, 1911.

This was not directly applicable, but s15(2) provides that

(2) Copyright in any design, which is capable of being registered under the Designs Act, 1911, but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his license, by any other person.

Accordingly, the trim was found registrable and industrially applied, and the copyright registration was cancelled by the Copyright Board and also on appeal to the Delhi High Court.
Again, to European readers, this will have a familiar resonance - this time with the recent Court of Justice decision in Case C-168/09 Flos SpA v Semeraro Casa e Famiglia SpA, which held that European design law requires cumulative protection, rather than the Indian (and old UK) model of complete separation.  We commented variously on Flos in the past, and there is a nice summary of the background to the case on today's 1709 copyright blog.

Oxford/Indiana conference papers

We trailed the recent Oxford/Indiana conference on design law some time ago.  The papers are now available online, here (a few more will be added soon), for those who couldn't make it.

Statements of Novelty can create a twist in the tale

Thanks to Baldwins for their blog posting discussing Brand Developers v Ezibuy, [2011] NZHC 50, an interlocutory case concerning those weight-shedding ab training devices you see on daytime TV.  The proprietor, Brand Developers, sells the Ab Circle Pro device (left picture - personal trainer not included), and a quick visit to their website will give you the whole spiel (precis: "Are you struggling to lose those love handles that nobody loves?   .. Take the ride of your life and get the body of your dreams!"). 
As an aside, the US Fair Trade Commission has apparently initiated proceedings in respect of some of the claims made for the Ab Circle, noting sourly that "Weight loss is hard work".  So much for the body of our dreams.
The alleged infringement was the Ab Twist device (pictured on the right).  There are some similarities between the two, but the Ab Circle has, as the name suggests, a circular track for swinging the knee supports, whereas the Ab Twist has a circular arc rather than a complete circle.
However, life is never that simple.  The Ab Circle depicted in the NZ design registration number 412655 was a development of an earlier device which looked somewhat similar.  The judge quoted the statement from UK design bible Russell-Clarke (5th Ed 1974 at 88):
"Where the defendant has taken only that part of the registered design which was old and has not taken that which is new, there will be no infringement. Thus, where the registered design differs from what has gone before only by some one particular feature, then unless the alleged infringement embodies that feature, it cannot possibly be an infringement."
According to the judge, "Here Fitness Brands’ registered design differed from what had gone before by only one particular feature, the single tubular ring. The fact that it was Fitness Brand’s own earlier design is irrelevant. All non-registered prior art, even if the copyright is owned by a plaintiff, is to be taken into account, and can be relied on by a defendant in assessing novelty. This means that the pivotally mounted knee rests were not novel at the time of registration. That argument can only be made for the tubular ring, and its supporting of the knee rests. For reasons that I have already set out, to my eye the AB TWIST does not contain the same or similar tubular ring that features in the AB CIRCLE PRO. In the AB TWIST the twin tubular guides are significantly different. This factor alone would indicate that there is no serious question to be tried in relation to the alleged infringement."

That conclusion was supported by the statement of novelty of the registered design which stated that ‘….. novelty resides in the features of shape and configuration of the exercise machine having a tubular ring and a pair of pivotally mounted knee rests movably supported on the tubular ring, as shown in the accompanying representations’.  The prior art had a circular arc and not a "ring", and likewise the infringement.  Perhaps the narrow statement of novelty was necessary to achieve validity over the past design, but as Baldwins point out, this case illustrates the dangerous effects on infringement.

US readers will recognise Russell-Clarke's dictum as representing the "point of novelty" analysis followed there until recently.  It is a good short-cut in cases where (as here, apparently) the design has just one difference from the prior art but is "difficult to apply in cases in which there are several different features that can be argued to be points of novelty in the claimed design", as the Federal Circuit en banc ruled in Egyptian Goddess v Swisa, substituting instead the "ordinary observer" test now used.  Having said that, if a US design patent had included a claim corresponding to the statement of novelty used in New Zealand, there would perhaps have been little alternative but to construe it to exclude the alleged infringement.

With no "statement of novelty", claim or disclaimer is it feasible to apply the "point of novelty" approach to Community Designs in Europe?  The "overall impression" test would seem, like the "ordinary observer" test, to rule out concentrating on just the novel features.  Perhaps there is no need of this shortcut since a broader view of the scope of the design would lead to invalidity.  However, in cases such as Apple v Samsung (or Samsung v Apple, depending on your jurisdiction) where the infringement Courts had no jurisdiction over validity since it was already in issue before OHIM, the temptation to take a shortcut rather than wait for the multitude of validity appeal stages to be complete may be irresistable.

Swedish sandal scandal: Vagabond puts the boot in

"Micro"

From Catharina Bratt (Glimstedt Advokatfirman, Gothenburg) comes news of a design case that settled before it had the chance to ripen into maturity.  This is what she writes:

Here in Sweden we were very close to getting one of our first judgments on Community unregistered design protection. 

 Vagabond [for whom Glimstedt acted in this matter] is a company which designs and sells shoes. Today Vagabond distributes more than two million shoes in about 25 countries. Vagabond invests heavily into the design department and has a full workshop for prototypes, most likely the only one in Northern Europe. 

"Peperoni"

 In 2010 Vagabond initiated proceedings at Stockholm District Court against another Swedish company, LT Skor, claiming infringement of Vagabond’s unregistered design right to a gladiator sandal named “Micro” (illustrated, above right). Micro had become an immediate success and appeared in several magazines and blogs after it was launched in 2009. LT Skor’s shoe model “Peperoni” (illustrated, left) was put on the market in 2010. The defendant contested the validity of the right with a counterclaim for a declaration of invalidity. 

"Macy"

One of the main issues in the proceeding was whether Vagabond’s shoe design Micro should be considered to be new and have individual character. The defendant claimed that Vagabond’s design was not new and did not produce an overall impression which differed from earlier shoe design, among others a design “Macy” by the company Miss Sixty (illustrated, right), which was put on the market before Vagabond’s design. The defendant also argued that the design of Vagabond’s model was dictated by its technical function. 

Further, the defendant claimed that it had not copied Vagabond’s design, but that its design was the result of a design arrived at independently with inspiration from, inter alia, Miss Sixty’s shoe. Even if Vagabond’s shoe model would be considered new and of individual character, it would (according to the defendant, of course) thus not be question of an infringement since copying is a prerequisite for infringement of an unregistered design right. 

 After settlement discussions on the first day of trial, LT Skor consented to the demand and agreed to pay compensation, following which the court gave judgment.  Thus the limits of the unregistered design right was not tested in this case and Sweden/the European Union was not enriched by another judgment on the unregistered design protection.

Thanks, Catharina -- we, and all our readers, all appreciate this.

LED shines a light on the underside of infringement

Some time ago we briefly commented on one aspect of the Australian appeal decision in LED Technologies v Elecspess, the first instance decision of which is discussed here.  The same designs have been re-litigated against other defendants in LED Technologies v Roadvision, the first instance decision being reported at [2011] FCA 146 and this year's appeal at [2012] FCAFC 3.  It is well worth a read, and European readers will find much of interest in view of the similarity between Australian and European design law.

The point of interest discussed here is the effect of parts of the design which are not visible in normal use.  The registration in this case was for a vehicle indicator lamp assembly, and included rear views (depicted) which would not have been visible once the assembly was connected to a vehicle.  The alleged infringement had a different rear view, and the question was how significant this difference should be.  Naturally, the proprietor thought it should be downplayed, and submitted evidence that the alleged infringer marketed the product with only the front visible.

At both instances the Court held that the rear views should be taken into account.  According to Besanko J.,

"The trial judge did not identify a particular class of persons as constituting the informed user, and the informed user may be taken to include the wholesaler who buys for the purpose of on-selling the lights, the person who fits the lights and the ultimate consumer who uses the vehicles to which the lights are fitted. I did not understand the appellant to submit that the trial judge had erred in his identification of the informed user. The difference in the back of the lights is a significantly different visual feature.  It seems to me that in terms of infringement, one of the most significant matters is that the registered designs appeared in a crowded field of prior art. As the trial judge noted, many of the features of similarity between the registered designs and the respondents’ lights were features that were common in the prior art. Even if less weight is placed on the difference in the underside of the base it is still a relevant visual feature and, with the other features identified by the trial judge, leads me to conclude that the trial judge did not err in deciding that the design embodied in the respondents’ lights was not substantially similar in overall impression to the registered designs."

These features, being features of a component not visible in normal use by the end user, would be ignored for validity purposes under Art 4 CDR, but are not "crossed out" for infringement purposes.  Thus, would the case have been decided differently in Europe?  Not in the UK, at any rate.  According to Judge Birss in Samsung v Apple [2012] EWHC 1882 (Pat),

"They [the design and the alleged infringement] look similar because they both have the same front screen. It stands out. However to the informed user (which at that stage I was not) these screens do not stand out to anything like the same extent. The front view of the Apple design takes its place amongst its kindred prior art. There is a clear family resemblance between the front of the Apple design and other members of that family (Flatron, Bloomberg 1 and 2, Ozolins, Showbox, Wacom). They are not identical to each other but they form a family. There are differences all over these products but the biggest differences between these various family members are at the back and sides.  The user who is particularly observant and is informed about the design corpus reacts to the Apple design by recognising the front view as one of a familiar type. From the front both the Apple design and the Samsung tablets look like members of the same, pre-existing family. As a result, the significance of that similarity overall is much reduced and the informed user's attention to the differences at the back and sides will be enhanced considerably." 

 He was upheld in this by the Court of Appeal.

However, the approach of OHIM and the EU Courts is that the "informed user" is the end user (see Cases T-10/08 and T-11/08), and that differences which are not visible in normal use are inherently downplayed.  See for example the General Court decision T 9/07 Communications Equipment:

"... when the conference unit is in use, the speaker is raised in order to be able to fulfil its function. Consequently, the decoration at issue is on the back of the device and therefore outside the user’s immediate field of vision, which means that it will not have any major impact on the user’s perception. ...It should also be observed that, contrary to what the applicant claims, taking into account the reduced visibility of the lid of the speaker is not contrary to the rule that the overall impression produced by the contested design on the informed user should be assessed. That impression must necessarily be determined also in the light of the manner in which the product at issue is used, in particular on the basis of the handling to which it is normally subject on that occasion."  

The CJEU in Pepsico declined to criticise the General Court for having considered the design "in particular from above" rather than focusing on the profile.  As an aside, via Hiroyuki Nakagawa's Japan Group Report, we learned at the recent APAA conference of Japanese Case No. Heisei 21 (wa) 13219 Decision of December 27, 2011, Tokyo district court, concerning a "steam mop" design, also seems to have given highest weight to the features which were visible during end use by the user of the mop. 

For more discussion, see our earlier postings here, and here.

Out of sight - in the wall and in the Patent Office

Some time ago we covered a decision of the Polish Supreme Administrative Court holding that the depicted speckly insulation block (the subject of Registered Community Design RCD 150917-0004 was not valid as it was a "component part of a complex product" not visible in "normal use" of the complex product under Art 4 CDR. OHIM's Invalidation Division took a parallel validity decision, coming to the opposite conclusion (or at least concluding that it was case not proven), in invalidation decision ICD 5353. 
In Board of Appeal Decision R 1482/2009-3 TERMO ORGANIKA Sp. z.o.o. v Austrotherm GmbH, the Board admitted new evidence on that issue, and remitted the case back to the Invalidation Division for a new decision, which promises to be interesting.  The former UK law held that buildings (other than portable ones) were not "articles" registrable as designs, which made sense on several grounds.  Firstly, there was intended to be no overlap between designs and copyright and buildings were understood to be protectable as architectural works.  Secondly, unlike the articles which are the subject of most designs, you can't import or export buildings - they tend to stay put.  If, as I tend to think, the same is also true of "products" under the current EU law, then these building blocks are not "component parts" of any product at all.  Even if they are, however, there are issues about whether they can be disassembled and replaced.  Anything could, with enough brute force, be pulled out and replaced, so it will be interesting to have a decision on how much permanence is required in order to avoid the "not visible" exclusion.

However, a second interesting issue arose in the appeal, discussed in Alicante News on OHIM's website here.  The cited prior art was a German Utility Model and it's Turkish priority document, filed but not granted before the date of the opposed RCD.  Apparently, the drawings of German Utility Models are in the file and can be inspected after filing, and some information (e.g. classification) is available if anyone were interested in doing so. 

On this point, the case makes an interesting comparison with the prior art considered in patent law.  A good summary of the European position is in the recent EPO Board of Appeal test case T 1553/06-3.5.04 Public availability of documents on the World Wide Web/PHILIPS.  According to the Board in that case, mere theoretical availability (e.g. a single unindexed, uncatalogued copy of a thesis in a library) is insufficient for disclosure, but where it is indexed or catalogued (as here), it matters not that only members of the public with no connection with the field saw it or indeed if no one saw it at all, provided that it could have been seen on request.  This is probably also true these days in the US (see the MPEP here). 

However, as Art 7 CDR excludes disclosures where

"these 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", 

and as the opponent filed evidence from search companies that customers did not in fact routinely review the files of unpublished Utility Models, the Board held that the effort involved in ordering up the file coupled with the evidence that this was not routine practice meant that the disclosure was excluded from the state of the art.  On the evidence, I think they were right and the first instance were wrong, as we said back in 2009.

OHIM scalded in radiator appeal

Our thanks to Dr Anna Tischner of Jagiellonian University Cracow, Poland, for a summary in English of the most recent General Court case T-83/11 and T-84/11 (joined judgments - as so often, the judgment is available in just about every other language). 
The cases concerned two designs for radiators (RCDs 000593959-0001 and 000593959-0002) , apparently of the vertical type, owned by Antrax IT and opposed by The Heating Company (THC).  The invalidation was based on lack of individual character over The Heating Company's own International Design registration DM/060899.
The first instance invalidation decisions were ICD000005312 and ICD000005320, and the appeals were R 1451/2009-3 and R 1452/2009-3, all in Italian only.  According to Anna, the General Court repeated the rule they had laid out in the Communication Equipment case T 153/08 that the informed user is unable to distinguish, beyond the experience gained by using the product concerned, the aspects of the appearance of the product which are dictated by the product’s technical function from those which are arbitrary.

Moreover, the Court clearly distinguished between the degree of freedom of the designer (which is not limited by the crowded prior art but legal or technical constraints) and the "crowded field" (referred to I think as "saturation") as a factor influencing the perception of the design by the informed user (its overall impression), especially its sensitivity to certain changes in proportions of the subject designs.  It appears that one of the issues was a "de facto" radiator pipe diameter, which was not a technical or regulatory constraint and hence not a "design freedom" issue.
Since "saturation" had been raised in argument but the Board of Appeal did not deal explicitly with it in its decision, the decision was overturned.
The Heating Company have some previous form in this area, having successfully opposed other Italian applicants using the same prior art in invalidity case ICD000002913 (in English) and appeal R 976/2007-3 (in Italian, English summary here) - the "crowded field" test played quite a part in the latter decision - as well as appeal R 592/2007-3 (in Italian, English summary here).
If anyone who can read one of the published versions would care to comment further we'd be glad to know more about what looks to be quite an important decision.

Apple railroaded into copyright licence?

Blogs and newspapers report with glee that Apple have paid out a sum not unadjacent to $20M for the right to use the Swiss Railway clock in their iOS 6 operating system. 
The clock, modern version pictured, dates back to 1944 and so the oft-repeated question is - what on earth is left to enforce against Apple?  And the answer, as so often, is our old friend copyright which in Switzerland apparently lasts a European-standard life-plus-70-years. 
This nice, slightly minimalist clock - modern in its day but looking fairly ordinary now - was commissioned by the Swiss Railway, SBB, and designed by the late Hans Hilfiker, an employee.  It is licensed, for watches at least, to Mondaine. It was found to be a copyright work at least in Switzerland, for example in Handelsgericht Aargau HOR.2006.3‚ sic! 2008, 707, 711 ff. «SBB Uhren lll» (discussed in German by Mathis Berger here).  And SBB themselves appear to make it available as a widget on their website.
The licence was taken following complaints from SBB.  Would Apple have willingly paid the same upfront?  I wonder.  They made the mistake of assuming that the clock had counted down on SBB's protection after nearly 70 years, whereas since Mr Hilfiker reputedly died in 1993, there is almost another half-century left, and it may have been cheaper to settle than to recall the product - a reminder that whilst copyright in works of applied art is unharmonised, there are dangers in a worldwide launch before taking local advice in all major markets.

Beauty - it's in the eye of the expert

Since it has already been covered by our colleagues at the 1709 Blog and elsewhere, this is just a short note on Judge Birss' fascinating copyright judgment concerning genuine Highland tartans designed, woven and infringed in England (Moon v Thornber [2012] EWPCC 37).  Infringement was found, on the basis of similarity, access and a wholly unconvincing defence of independent creation. 
But infringement of what?  The pleaded copyright work was the "Ticket Stamp", which contained instructions and some kind of visual representation of the tartan.  That was reproduced in some sense in the claimant's fabric.  The defendant then produced their own fabric, via their own "ticket stamp", derived so as to resemble the claimant's.
Judge Birss held that the ticket stamp had two copyrights, as both a literary and an artistic work.  The defendant's ticket stamp was an infringement of the former, although their fabric was not.  However, the defendant's fabric was an infringement of the claimant's ticket stamp in its character as an artistic work.
So far so good.  But according to the Judge:
"The Skye Ticket Stamp is not a drawing of the Skye Sage fabric and if a layman looks at the Skye Ticket Stamp, all they see are two pages of words and numbers. However Mr Aveyard and Mr Wellings gave clear evidence which shows in my judgment that to an experienced fabric designer, the ticket has real visual significance. Mr Wellings said he could look at a weaving ticket and visualise what the fabric looks like. Mr Aveyard said that he visualised the design and then recorded it in a ticket. Thus it seems to me that to those people, the ticket has a visual significance. I do not see why it matters that the visual significance is only apparent to some people. Apart from anything else the people concerned are the very people working in this field. Moreover there is no problem of subjectivity in this conclusion. We can all see what Mr Aveyard and Mr Wellings can see, albeit we need the loom to actually make the fabric in order to do so. Experts however can see it without the loom.
Mr Turner submitted that there was no visual resemblance between the Spring Meadow fabric and the Skye Ticket Stamp. That is true in the sense that, as a lay person looking at them, one is a plaid design of fabric while the other is a collection of words, letters and numbers. However I rely again on the impact of the evidence of Mr Wellings and Mr Aveyard. To someone who can see the fabric design from looking at the ticket (or vice versa) the one has a clear visual resemblance to the other. In my judgment the appearance of Spring Meadow reproduces the whole or a substantial part of the appearance of Skye Sage and thus is a reproduction of the whole or a substantial part of artistic work embodied in the Skye Ticket Stamp within the meaning of s17 of the 1988 Act. Making Spring Meadow fabric involves an act of copying that artistic work and is an act of infringement." Whilst initially surprising, I suppose this is not controversial these days since copyright works such as computer programs might often require an expert eye.  Judge Birss' decision is historically consistent with previous cases such as Brigid Foley v Elliott [1982] RPC 433.  We did once have a UK "lay recognition" defence, in s9(8) of the Copyright Act 1956, but that probably would not have applied to fabrics: "The making of an object of any description which is in three dimensions shall not be taken to infringe the copyright in an artistic work in two dimensions, if the object would not appear, to persons who are not experts in relation to objects of that description, to be a reproduction of the artistic work."  It was in any event severely undercut by the House of Lords in LB Plastics v Swish who held that the "non-expert" could take account of text and was "credited with some ability to interpret design drawings", and it has long since been swept away. But if the comparison can be between a ticket stamp (as artistic work) incomprehensible to the lay observer and a fabric, which are poles apart, it seems artificial to continue to maintain the rigid walls between separate protectable "boxes" such as "artistic work" and "literary work".  If the ticket stamp met the protection criteria for copyright as either, and was reproduced, why should the category matter?  The claimant argued that the CJEU decision in Infopaq (Case C-5/08) had the effect of removing the basis for such "boxes" altogether.  Judge Birss declined to follow them, "[h]owever tempting it may be".  Is this the end of the argument against "boxes" based on Infopaq? I suspect not.  We will keep you informed.

Apple v Samsung: that judgment is now available

The ruling of the Court of Appeal, England and Wales, that Apple failed to publish a proper notice to the effect that Samsung did not infringe its Community registered design right (on which, see earlier Class 99 post here) is now available online here via the excellent BAILII website.

Design infringement: a hanging offence

In Mainetti (UK) Ltd v Hangerlogic UK Ltd [2012] EWPCC 42, decided by Mr Recorder Iain Purvis QC on 24 October 2012, the Patents County Court for England and Wales ruled that three of Mainetti's UK registered designs for garment hangers were valid and indeed infringed by Hangerlogic's garment hangers.  As the three designs were applied for before 9 December 2001, the transitional provisions set out in the Registered Designs Regulations 2001 (SI 2001/3949) -- which implemented the Design Directive  -- applied.  The effect of this was that, while validity was governed by the Registered Designs Act 1949, infringement was determined by the Design Directive.

Design and allegedly infringing product superimposed

According to the Recorder, all the designs were valid since they contained features that were materially different from the cited prior art and they did not constitute variants common in the trade. As for infringement, the test was whether Hangerlogic's allegedly infringing products conveyed the same overall impression when viewed through the eyes of a notional informed observer, the scope of protection varying according to the degree of design freedom enjoyed by the designer and the existing design corpus (a curious euphemism for the relevant prior art). Superimposing Hangerlogic's hangers over Mainetti's designs (see illustration above), the Recorder had no problem finding infringement.

The best part of the judgment comes at [24] when the Recorder, discussing the degree of design freedom enjoyed by hanger designers, says

"Within the basic parameters imposed by the function which a hanger has to carry out (the need for a hook to fit a hanging rail positioned in the middle of the hanger, arms which are roughly the size and shape of the shoulders of a garment etc.), there is plenty of scope for the exercise of design freedom. I was provided with a book entitled 'Cintres, Hangers' by one Daniel Rozensztroch which contains photographs of hundreds of different hangers collected by the author over a period of years [which leads this blogger to wonder whether there is a special Latin or Greek term for a collector or lover of clothes hangers ...]. It demonstrates the wide scope for the creativity of the designer which exists in the world of hangers, even extending to the world of 'disposable' plastic hangers ... ".

Canadian Court cracks Bodum's glassware

Smart and Biggar Fetherstonehaugh, who represented the winning defendants, report here the recent Federal Court of Canada  in Bodum and PI v Trudeau, 2012 FC 1128, the first substantive design infringement case under the current (1993) revision of the infringement provisions.  To cut to the chase, Bodum lost because the prior art was closer than the infringement.  That made it inevitable that the design would be either not infringed or invalid, and in fact the Court found it was both. 
Several features of the decision will resonate with European readers.  First, the role of imperfect recollection (which the CJEU has stated to have some limited relevance in both of the two design cases it has so far heard).  The Canadian court referred to Valor Heating v Main Gas Appliances, [1972] FSR 497, in which Whitford J summarised the development of the doctrine of imperfect recollection in design cases to that date: "It is quite obvious that it may be very easy to take it too far, but the cases which were cited to me ... do I think establish this, that quite plainly in the past in considering registered designs this court has taken the view that you must consider infringement not merely upon the basis of a side by side comparison, but also upon the basis of having had a look at the registered design, then having gone away and come back and perhaps been put in a position of deciding whether some other article is the one you originally saw."  The Court neither criticised nor applied Valor on that point.
Second, the test person.  The Court explained the development of the "informed consumer" standard and found it synonymous with the French term "consumer averti" ("aware consumer"). 
The purpose of the double wall was thermal insulation, as Bodum's advertising made clear.  When considering infringement, the Court apparently assumed that the lines did indeed represent a double wall so that the air gap was considered to have been dictated by function and was ignored in considering infringement (following Sommer Allibert v Flair Plastics, [1987] 25 RPC 599 at 625).  However, nothing in the design registrations indicated that the lines drawn showed a double wall with an air gap.  Thus, prior art showing thick walled glasses could anticipate.  This different treatment of the design for infringement and validity purposes seems to have contributed to the finding that it was both invalid and not infringed.

Death in Venice for Crocs shape mark

We have covered various aspects of the Crocs saga over the years.  Thanks once more to Hogan Lovells, and particularly to Maria Luce Piattelli and Maria Luigia Franceschelli, for an Italian update from Venice, this time concerning a shape mark for those gorgeous plastic clogs.  Result: trade mark invalid as the shape, though ugly, added value.  Crocs lost the trade mark but won the case because unfair competition was found.  Read the Lovells article here for more information.

Infringement by parts

Our thanks to the good people at Hogan Lovells, and particularly to Mareike Hunfeld and Juliane Diefenbach, for drawing our attention to a German case that makes a nice, clear point: with designs, you get what you file.  The case, I ZR 124/10, "Wine Decanter" before the BGH, concerned RCD 000383757-0001 which showed a wine decanter ((though it might look more like a specimen jar), alone in some views but with a base in others.  The infringer (or, as it turned out, non-infringer) supplied the decanter but not the base.  Read the Lovells article here for more information.




 

Community Designs - RT*M

It has been many years now since OHIM published their Guidelines on Invalidation cases.  However, more recent and comprehensive (though less authoritative) guidance on design invalidity, both as to substance and procedure, can be found in their relatively new "Manual concerning the Examination of Design Invalidity Applications".  This features, amongst other things, guidance on functional designs based on the Lindner Chaff cutters decision R 690/2007-3 discussed here.  Well worth a read before attempting to prepare an application to invalidate.

Tablets of Stone

We are delighted to hear that Class 99-er and Marques design guru David Stone has written a new design law book entitled "European Union Design Law - A Practitioner's Guide" - should definitely be worth a read.  It isn't out for a month or so, but we hope to review it when we see it.  In the meantime you can place advance orders with OUP here.

CJEU issue a gnomic design ruling

Some time back we brought you our news and views on the case of the angry gnomes before the General Court.  The case has recently made its way through the Court of Justice, whose judgment is here.  It does not, however, contain any fundamentals of design law - it concludes that the General Court was entitled in law to come to the conclusions it reached without stating whether those conclusions were in fact correct.
I suppose this is a disappointing result for those of us who are hoping that the CJEU will lay out its thinking on designs at an early stage, but three levels of appeal (each lasting at least a year and perhaps several) are too many, so as a practical matter the CJEU may be right to take a narrow view of their competence - if only to keep the number of final appeals and the consequent backlog within bounds.

Oxford/Maurer Design Seminar

Thanks to Professors Graeme Dinwoodie of Oxford University's OIPRC and Mark Janis of Indiana University's CIPR for jointly arranging the excellent conference last weekend, which we had trailed in advance, and to the stellar cast of academics, practitioners and judges who participated.  No doubt some word of the proceedings will leak out but in the meantime some tweets of key moments can be found here.

Not an Applogie ...

Apple have now published the statement that Samsung do not infringe their Community Design in the form requested by the Court of Appeal (more or less, anyway).  Here is a link to Pocket-Lint's critique of the statement.  Their own website contains a rather embarassing correction - here's a link, look at the bottom of their main UK page. 
We've all gotten somewhat sick of the design drawings by now, so as a retro treat I am bringing you this League for Programming Freedom badge from the days when Apple and copyright law, rather than Microsoft and patent law, or Google and economic dominance, were the enemies of all decent techies.  The report of the most recent Court of Appeal hearing should be a bit of a hoot, and unless the Supreme Court are inclined to accept another layer of appeals that is probably going to be the last word in Europe on this splendid design case.

Egyptian Goddess seminar: final reminder

The joint Class 99/CIPA seminar on "Life After Egyptian Goddess", featuring a presentation by Perry Saidman followed by a panel discussion, takes place tomorrow from 5pm to 7pm at the CIPA Hall.  Details can be found here, and information concerning the panel is here.

If you are planning to attend but haven't yet summoned up the energy for a few mouse-clicks, there's still time.  Please let Jeremy know that you are attending by not later than 4pm today. Just email him here. There are no formal registration requirements and there is no charge.