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Designs Case Law Notes

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[1997] AC 728

Procter & Gamble
[2008] FSR 8 (CA)



Green Cartridge

Reckitt Benckiser

Designs KEY RULE: Spare parts that are a significant cost compared to the main product are protected by unregistered design rights FACTS OF THE CASE: Canon made printers, Green Cartridge made compatible ink cartridges which fitted the printer. Canon sued. Held that unlike in British Leyland not only was copyright breached but this was not in the public interest and Green Cartridge were at fault. NOTES: Following the British Leyland v Armstrong patents case there was a market for spare parts and the replacement cartridge market boomed. This case somewhat put a stop to it Distinguishing : Automobile parts requirements are unpredictable and a small fraction of the cost of the car
- printer cartridges are the opposite and consumers will factor in the costs of the cartridges in choosing which printer to buy. STATUTES AND AREAS OF LAW: : CDPA s213, s214, s216; Council Reg (EC) No 6/2002 Art 4(1), 5,6,7, 10,11,19,20 - Unregistered Designs

Designs KEY RULE: Judges access design infringement as a matter of fact - i.e. they look at the two items and the prior art from perspective of an informed user. Imprecise. FACTS OF THE CASE: Fabreeze and Air wick bottle designs - P&G said that RB copied their bottle design (RCD) for Air Wick product Level of generality was important - all bottles with a spray must have some general features in common. Degree of freedom of the designer was limited Judge found shape of head was too different and so didn't infringe NOTES: Key case in defining individual character Jacob LJ described the information "person in field" in some detail (compare with Pepsico case). Said was not the same of the average consumer (invoked for trademark cases). He would be open to design issues and fairly familiar with them. This is based on the purpose of the different rights being protected. Designs protect the overall impression but not features not included (e.g. label colour etc.) STATUTES AND AREAS OF LAW: DDir Art 5(1) - individual character, 5(2) - design freedom, Art 9 overall impression

Green Lane Products
[2008] FSR 28


PMS International

Rolawn Ltd
[2008] RPC 27


Turfmech Machinery

Linder Recyclingtech GmbH
[2010] ECDR


Franssons Verkstader AB

Designs KEY RULE: Novelty is absolute for RCD as for patents. Products made for a different purpose destroy novelty and prevent valid RCD registration. FACTS OF THE CASE: Green Lane made spiky plastic balls for use in a tumble drier - trademarked at Dryerballs(r). In 2004 applied for a RCD. PMS also marketed spiky balls but for massage and not laundry - sold in EU since 2002. In 2006 PMS sold its balls for laundry, as a hand exerciser and a dog trainer as well as for massage Green Lane alleged PMS would infringe its RCD if sold for laundry and PMS alleged the RCD was invalid due to lack of novelty. PMS won the case NOTES: Concerned prior art for registered designs. Article 7 - product made available to public if it has become known in the circles specialised in the sector in the community. The safeguard clause is designed to stop cheap international imports being used to destroy novelty. Very narrowly interpreted STATUTES AND AREAS OF LAW: Registered Designs Act 1949 S7, DDIR Art 6 disclosure

Designs KEY RULE: The defendant had not infringed the claimant's registered and unregistered design rights FACTS OF THE CASE: Rolawn (R) was a turf grower and seller. It had designed and built a wide area mower, with 21 cylinder cutting heads, for its own use. It had registered the design. The first machine was a success and it had built several more which were used on R's own land. Turfmech (T) supplied agricultural machinery including grass-cutting machinery. It had built and supplied wide area mowers: the first had 13 cutting cylinders, and the second had 17. R claimed that the designers of those machines had copied aspects of R's design and thereby infringed its unregistered design rights. It also claimed that T's design infringed its registered design rights because, whether copied or not, it was sufficiently similar to do so. R claimed to be entitled to protect not only the actual design of its mower but also aspects of the overall shape and configuration. Claim and counterclaim dismissed. R's design was valid but T's mower too different to be infringing NOTES Judge said it was probable that T took some ideas from R's mower but apart from these general features the rest could not be explained by copying. The other alleged similarities flowed naturally without copying. (2) Not allowed to protect underlying design concept with a registered design - what patent is for STATUTES AND AREAS OF LAW: Registered and unregistered designs

Designs KEY RULE: If all the features of a design are directed to its technical function it was be excluded from registration FACTS OF THE CASE: Respondent had an RCD for 'chaff cutters' (inner part of paper shreeder) Appellant filed for declaration of invalidity saying i) lacked novelty and individual character and ii) was solely dictated by its technical function Found the features were chosen for its functionality and the RCD was invalid NOTES: Article 8(1) exclusion - purely technical. Meant to prevent monopolies that should be covered by patents If other designs perform the same technical function then the design is not purely functional (the 'multiplicity of forms theory'). This would mean that 8(1) would only occur occasionally and would risk monopolies arising. Alternative test used - is every feature directed to its technical function?
Compare with Philips v Remington case where multiplicity of forms approach was suggested STATUTES AND AREAS OF LAW: Registered Designs Act 1949 S8 (1); DDir Art 7.

[2011] EWCA Civ 1206

T-10/08 Kwang Yang motor Co
[2012] ECDR 2

[2012] EWHC 299 (Pat)






Round & Metal

Designs KEY RULE: What is important is what court can see with its own eyes FACTS OF THE CASE: Dyson sued saying that the MachZen infringed their design NOTES: Colour didn't form part of design so they were both sprayed silver (see images) 9 features put forward by Dyson were far too general - e.g clear parts were very different shapes. Cannot put designs into words and use like a patent claims. Small variations can make a big difference to the design. Judge said "The overall impression produced by the registered design is smooth, curving and elegant. The overall impression of the Mach Zen is rugged angular and industrial - even somewhat brutal" Dyson lost the case STATUTES AND AREAS OF LAW: DDir Art 5 (individual character)

Designs KEY RULE: Individual appearance determined by looking at how constrained the part is FACTS OF THE CASE: KYMCO wanted to register a design for an engine for use in lawn mowers. Honda wanted the design declared invalid because it lacked individual character as identical to a US registered design Board of appeal found design to be invalid as gave same overall impression to an informed user as the previous design. General board upheld technical board's decision NOTES: Design was for a part of a complex product (i.e. a lawnmower) - in these cases it's the parts visible to the end user that need to be considered Informed user has 'some awareness' of existing designs When defining individual appearance you need to look at how much of the shape is contrained (either to be compatible with other components or legislation). The less constrained the more freedom the designer will have and the more diverse non-infringing designs would be expected to be. In this case the engine designer has a lot of freedom so it infringed STATUTES AND AREAS OF LAW: Directive 98/71/EC Arts 1,3,4,5,6,7,9,10,12,13. Council regulation (EC) No 6/2002 Arts 4(1),5,6,7,10,12,19,20

Designs KEY RULE: FACTS OF THE CASE: BMW owned four Community registered designs for wheels for motor vehicles Round and Metal Ltd (R&M) imported into the UK and sold replica alloy wheels which were essentially of the same appearance as each of the designs. BMW claimed that R&M infringed its Community registered designs. R&M denied infringement on the basis that Article 110(1) of the Community Design Regulations (CDR) applied. The Judge found in favour of BMW NOTES: Article 110(1) is a transitional provision which provides that, until amendments are made to the CDR, there shall be no protection as a Community design for a "design which constitutes a component part of a complex product used within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance" STATUTES AND AREAS OF LAW: Registered Designs Act 1949 S1, s1B, s1C, s7, s7A, S8. Directive 98/71/EC Arts 1,3,4,5,6,7,9,10,12,13. Council regulation (EC) No 6/2002 Arts 4(1),5,6,7,10,12,19,20

C-281/10 PepsiCo Inc
[2012] FSR 5

Samsung Electronics
[2012] EWHC 1882 (Pat)


Grupo Promer Mon Graphic SA


Apple Inc

Samsung VERSUS (13 May 2013) Decision of the Invalidity Division


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