Design Caselaw Flashcards
Dyson v Qualtex UK [2006] EHWC, EWCA, RPC
KEY CONCEPTS: UKUDR, must-fit, must-match
STORY: Qualtex made spare parts, duplicates of Dyson vacuum cleaner parts. Dyson brought UKUDR infringement actions. Qualtex claimed:
- Defence under the must-fit and must-match provisions of the CDPA [213(3)(b)(i)-(ii)].
- Lack of originality in claimant’s design
- Expired claimant’s rights
Qualtex lost.
ISSUE:
- Are Qualtex excluded under must-match?
- Are Qualtex ecluded under must-fit?
- Are Dyson’s desgins original, i.e. not commonplace?
- Had Dyson’s rights expired?
- [RULE: CDPA 213(3)(b)(i)-(ii) says that UKUDR does not subsist in features of a shape or configuration of an article which: enable the article to be connect to, placed in, around, or against another article such that both articles can perform their function; depend on the appearance of another article for which the designer intended the article to form an intergral part thereof.]*
- [RULE: CDPA 213(4) says that a design is not original if it’s commonplace in the field in the qualifying country at the time of it’s creation]*
DECISION:
- [Follows Ford Case] Assessment of must-match ‘dependance on appearance’ takes into account whether the design of the whole article would look radically different if a different spare design was used. Needs must. Would non-replicas be attractive to consumers?
- Must-fit will be found irrespective of the number of alternative means for achieving the fit, and irrespecitive of the aesthetic qualities of the fitting component. Must-fit also applies to ergonomics/human body.
- Commonplaceness is considered after removal of unprotectable features, if any, and is evaluated w.r.t. the field, not generally (as in novelty).
- UKUDR expires 15 years from the end of the calendar year in which the design was first fixated in a design doc, or from when an article was first made the design (whichever comes first). Otherwise, the rights expire 10 years from the end of the calendar year if articles are made available for sale/hire within 5 years of that calendar year.
IMPACT:
Spare part makers should be careful not to copy every single detail.
Farmers Build Ltd v Carier Bulk Materials Handling Ltd & Ors [1998] EWCA Civ 1900
KEY CONCEPTS: UKUDR, Originality, Commonplaceness
STORY: The claiments own the rights to a slurry separator machine which the defendants had designed for them. The defendants began to manufacture and sell their own slurry separator. The claimants brought action to invalidate the defendant’s goods on grounds of originality.
ISSUE:
- Was the slurry separator original?
- To judge originality must you consider only the current designs used in the field or can you look more widely?
- Even so, was the design commonplace?
[RULE: CDPA 213(4) says that a design is not original if it’s commonplace in the field in the qualifying country at the time of it’s creation]
DECISION:
- Similar to Copyright, Labour, Skill and Judgement on behalf of the designer were found to suffice originality.
- The relevant field must be slurry separators and not agricultural machinery more widely.
- To assess commonplaceness:
-
Determine degree of similarity to articles in the same field of design made by other designer.
- The closer the similarities amongst multiple articles, the more the common place.
- Today we add:
- Be careful to filter out similarities due to direct copying or functional design constraints.
IMPACT:
Spare part makers should be careful not to copy every single detail.
R. v Registered Designs Appeal Tribunal Ex p. Ford Motor Co Ltd
KEY CONCEPTS: RD, must-match
STORY: The applicatant had made a number of applications for parts for motor vehicles which had been rejected under RD exclusions (functionality/appearance), and had taken the regulatory board to court.
ISSUE:
- Registrability of component parts.
* [RULE: Old must-match criterion since removed?]*
DECISION:
- The designs were split into two types: integral parts (panels, doors, boot lid, hood lid, windscreen) and non-integral parts (wheels, seats, steering wheel, wing mirrors). For the latter, substitutions would not significantly affect the genenral appearance of the car and are thus not dependent on other articles to maintain appearance.
IMPACT:
What might the average consumer change to compliment but not change the design? For cars, its the wheels, seats, steering wheel and wing mirrors.
Neptune (Europe) Ltd v Devol Kitchens Ltd [2017] EWHC 2172
KEY CONCEPTS: UKUDR, RCD, Definition of Design, Post-‘Any Aspects’
STORY: Both parties made and sold kitchens. Devol sold some kitchens for Neptune, but after they ceased a business relationship, Devol sold a kitchen Neptune felt was a copy of theirs and brought infringement actions for UKUDR & RCD. The alleged infringing acts happened in 2010, the actions were brought in 2015.
ISSUE:
- Is the removal of ‘any aspects’ restrospective?
- How do we distinguish aspects of a design from parts of a design?
- Is there infringement of the UKUDR or the CRD?
[RULE: CDPA 213(2) states that “design” means the design of the shape or configuration (whether internal or external) of the whole or part of an article]
DECISION:
- Acts of infringement committed prior to 1 October 2014 (when the amendment came into force) are still to be judged by the old law, ie, UKUDR is broader and includes “any aspect” prior to this date. Acts of infringement committed after 1 October 2014, even if what is infringed is a UKUDR which existed prior to that date, are judged by the new law. So for such acts, a rights owner cannot rely on “any aspect”.
- An aspect of a design is a disembodied feature which are recognisable but not concrete.
- UKUDR: Copying of the Fulton’s ideas was found, but copying of the physical manifestation of these ideas was not. RCD: Different overall impression found due to presence of cutaway shapes on the drawer units.
IMPACT:
What might the average consumer change to compliment but not change the design? For cars, its the wheels, seats, steering wheel and wing mirrors.
A Fulton Co Ltd v Totes Isotoner (UK) Ltd [2004] RPC 16
KEY CONCEPTS: UKUDR, Defintion of Design, ‘Any Aspects’ timeline
STORY: The defendant’s manufactured copies of the claimant’s umbrella case, but upon hearing it was a protected design, they removed part of the cuff. The claimants broad infringmement actions for reproduction in part of the UKUDR protected umbrella case. The defendants appealed but were dismissed.
ISSUE:
What does ‘any aspect of’ mean; can it cover designs made by trimming protected designs?
[RULE: CDPA 213(2) used to say that UKUDR subsists in _any aspect of_ a shape or configuration, internal or external, in whole or in part]
DECISION:
- ‘An aspect of’ the design was found to cover any of a number of possible permutations of the design, including ‘the whole design minus one piece’
IMPACT:
Important application of UKUDR law demonstrating reduced scope introduced by ‘any aspect of’
Magmatic v PMS [2016] UKSC 12
KEY CONCEPTS: UK, CRD, graphical representations
STORY: The claimaint had CRD protection for their Trunki case, when the defendants produced a Kidee case, importing and selling it in the UK and in Germany. Infringement was found on 1st instance for the reason that CRD is for the shape of the suitcase, and should thus be compared to the shape of the Kidee case, ignoring surface decorations/graphics. The CoA and the UKSC found otherwise though.
The RCD was filed in CAD format in undecorated 2-tone greyscale, which turned out to be a total mare.
ISSUE:
- Is there infringement of the CRD?
* [RULE: RCD 3(a) says designs means the appearance of the article resulting from lines, contours, shape, texture, materials and/or it’s ornamentation]*
* [RULE: RCS 10 (1) says the scope of protection conferred by an RCD includes any design that does not produce a different overall impression on the informed user.]*
DECISION:
- The CoA and UKSC found that the overall impression of the RCD was that of a horned animal, which was not considered properly at the court of 1st instance. The absence of decoration in the CAD image supported this. The CAD image used 2-tone greyscale; the wheels and horn handles were dark and the rest was light. The Kidee case covered the wheels, and the handles were the same colour as the body, which represented a significant difference!
- The claimants asked whether the absence of decoration could be a design feature. The UKSC said, in abstract - YES.
IMPACT:
To protect a shape, submit a fucking line drawing man. Submitting a two-tone rendering restricts you to protect that contrast!
Samsung Electronics (UK) Ltd v Apple Inc. [2012] EWHC
KEY CONCEPTS: UK, CRD, Informed User
STORY: Samsung sought a declaration that it’s Galaxy tablets do not infring Apple’s registered design. Apple counter-claimed for infringement.
ISSUE:
- Is there infringement of the CRD?
- Who is the informed user?
- Whats the overall impression?
[RULE: RCS 10 (1) says the scope of protection conferred by an RCD includes any design that does not produce a different overall impression on the _informed_ user.]
DECISION:
- Depends on overall impression and the informed user!
- The informed user is:
- the user of the product in which the design is intended to be incorporated
- not a designer, tech expert, manufacturer or seller
- more observant than TM’s average consumer
- knows the design corpus and the field
- relatively high degree of attention
- direct comparison unless its uncommon or impractical to do so
- sits between the extremes of noting every detail and looking at the whole
- To assess overall impression, we consider each feature w.r.t:
- design freedoom
- functional requirements
- design corpus
- Courts conlcusion: whilst the front of the tablets produce a similar impression, the back of the tablets do not. The overall impression of the Samsung design is different from the extreme simplicity of the Apple design. Samsung tablets are not as cool.
- The informed user is:
Karen Millen Fashions Ltd v Dunnes Stores Case C-345/13
[KEY CONCEPTS: ECJ, CURD, Originality: Novel, Individual Character, Overall Impression on Informed User, Mosaicking]
STORY: The Irish SC referred questions to the ECJ after Karen Millen sucessfully sued Dunnes for infringing on her CURD rights. Dunnes alleged that Karen Millen didn’t own CURD rights in the garments because they lacked individual character.
ISSUE:
- How do we judge the overall impression on the Informed User?
* [RULE: RCS 10 (1) says the scope of protection conferred by an RCD includes any design that does not produce a different overall impression on the informed user.]*
DECISION:
- The CJEU held that in order for a design to be considered to have individual character, the overall impression must be different from that produced by one or more earlier designs taken individually. No. Mosaicking. Allowed.
- There is a presumption of validity in relation to Community designs and the claimant does not need to prove validity.
Pepsico Inc v Grupo Promer
[KEY CONCEPTS: ECJ, CRD, Overall Impression on Informed User]
STORY: PepsiCo obtained a CRD for a game called “pogs”. The defendants filed for invalidity based on their own previous CRD, under Art 25(d) of the Community Designs Regulation.
ISSUE:
- How do we judge the overall impression on the Informed User?
- What affects design freedom?
- [RULE: RCS 10 (1) says A CRD may be declared invalid only in the following cases:…*
- (d) if the Community design is in conflict with a prior design which has been made available to the public after the date of filing of the application or, if priority is claimed, the date of priority of the Community design, and which is protected from a date prior to the said date*
- (i) by a registered Community design or an application for such a design, or*
- (ii) by a registered design right of a Member State, or by an application for such a right, or*
- (iii) by a design right registered under the Geneva Act of the Hague Agreement concerning the international registration of industrial designs]*
DECISION:
- The CJEU found the later design did not produce a different overall effect on the informed user. In particular they discussed the level of attention to detail of the IU:
- Somewhere between the average consumer and the PSintheA, but slightly skewed towards the patents end of the spectrum
- Particularly observant
- Compares side-by-side
- Not a manufacture, seller, designer, or tech expert.
- Cost, available materials, applicable technical, statutory or other standards, and safety may all limit the freedom of the designer.
IMPACT:
In line with P&G Reckitt Benckiser.
Procter & Gamble v Reckitt Benckiser [2007] EWCA Civ 936
[KEY CONCEPTS: UK, CRD, Overall Impression on Informed User]
DESIGN FREEDOM:
“Design Freedom” is an objective test, determined by external constraints which would apply to all designers, but not internal commercial constraints specific to the particular designer in question.
INFORMED USER:
The informed user was defined in this case as:
- More discriminating than the average consumer
- Less susceptible to imperfect recollection
- Aware of the design corpus
- Alert to design issues
DECISION:
The impression given to the informed user by R’s product was found to be different from that of P&G’s registered design. The similarities between the products were at too general a level to fairly say that they would produce on the informed user the same overall impression. On the contrary the user would get a different overall impression.
IMPACT:
Compare to PepsiCo’s EU version of the ‘Informed User’!
Green Lane Products Ltd v PMS International Group Plc & Ors [2008] EWCA Civ 358
[KEY CONCEPTS: Novelty, Overall Impression**]
STORY:
Spiky ball design in two different fields?
ISSUE:
- How do we judge the overall impression on the Informed User?
* [RULE: Community Designs Regulation Art.10 says that:*
* 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. ]*
DECISION:
- CDR Art.10 is not limited by field, therefore the overall design impression must be assessed irrespective of deisgn field. This isn’t TM after all..
Whitby Specialist Vehicles Ltd v Yorkshire Specialist Vehicles
[Key concepts: Overall Impression]
STORY: Ice Cream Vans!
The defendants (Y) ordered an Ice Cream Van to be made by the claimant’s (W’s) according to one of their designs. The defendants then used bits of the van as physical moulds to make infringing copies of the van.
UKUDR:
This was back in the ‘any aspect of’ days. In court they commented on there being merely recognisable features and concrete features.
OVERALL IMPRESSION:
Although it is proper to consider both similarities and differences between the respective designs, what matters is the overall impression produced on the informed user by each design having regard to the design corpus and the degree of freedom of the designer.
Easy Sanitary Solutions v Group Nivelles
[Key concepts: Overall Impression, UK, CRD]
STORY:
ESS had a design for shower drains they wished to renew. Nivelles argued that the design did not fulfil the novelty requirements under the Regulation and nor did the design have sufficient individual character.
NOVELTY:
Referred to KM v Dunnes case. No mosaicking. It follows that a complete reproduction of the earlier design is essential in presenting an invalidity application.
A design cannot be regarded as being novel if an identical design has been made available to the public before the dates specified in that provision, regardless of the products in which that earlier design is intended to be incorporated or applied.
INFORMED USER:
The IU does not need to have knowlege of the earlier product. It this was a requirement, it would counter Art 10.
SCOPE:
Scope of protection for a registered design extends to the application of the design to any product irrespective of the trade sector.
Amp Inc v. Utilux Pty Ltd (HL)
- if the shape was not there to appeal to the eye but solely to make the article work then it was excluded from statutory protection
- dictated by technical function meant attributable to or caused or prompted by them, regardless of whether they could also be achieved in other ways
VERY OLD CASE
