Community Registered Designs:
Defining the scope of the prior art

Court of Appeal puts laundry balls registration through the wringer
A recent decision by the UK Court of Appeal provides useful guidance on the definition of prior art in Community Registered Design (CRD) cases.

Background
This decision centred around a series of CRDs owned by Green Lane Products Limited ('Green Lane').  These CRDs had been filed in August 2004 and covered a range of spiky plastic balls marketed as "Dryerballs" for use in tumble drying laundry.  In applying to register these designs, Green Lane had indicated the following class of goods: "flatirons and washing, cleaning and drying equipment".

The other side in the dispute, PMS International / PMS International Far East Limited ('PMS'), had marketed its own range of spiky plastic balls in the European Community since 2002.  These closely resembled Green Lane's Dryerballs designs, but had previously been marketed solely as massage balls.  However, in 2006 PMS began marketing its balls for a range of other purposes too.  This included packaging them as dog-training balls, hand exercisers and, significantly, laundry balls.

Infringement
Green Lane alleged that the sale of PMS' balls as laundry balls would infringe its CRDs.  It pointed out that under Article 10 of the Community Designs Regulation ('the Regulation'), the scope of protection conferred by a CRD includes "any design which does not produce on the informed user a different overall impression".

  This provision enables the owner of a design for, say, a mobile phone to prevent the use of that design for, say, a toy, a key ring or a chocolate bar, regardless of the particular class of goods identified on the registration certificate .  As such, the scope of protection conferred by Green Lane's CRDs was not limited to "flatirons and washing, cleaning and drying equipment".

Invalidity
PMS counterclaimed that Green Lane's registrations were invalid on the grounds that the designs covered were not "new" within the meaning of Article 5 of the Regulation and did not have "individual character"  within the meaning of Article 6.  This was because the designs were practically the same as PMS' own spiky plastic ball design, which had been made available to the public (in the Community) prior to the date of filing of the registrations.  As such, PMS' design constituted conflicting prior art.

In response, Green Lane submitted that PMS' balls did not constitute prior art within the meaning of Article 7 because their sale as massage balls could not "reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating in the Community".  Green Lane argued that the "sector concerned" was confined to the sector specified when they applied to register the designs in question (i.e. the sector specialised in "flatirons, and washing, cleaning and drying equipment").

Judgment
In its preliminary ruling, the High Court had agreed with PMS that the "sector concerned" consisted of or included the sector of the alleged prior art.  The Court had also ruled that "the circles", within the meaning of Article 7, were "capable of consisting of all individuals who conduct trade in relation to products in the sector concerned, including those who design, make, advertise, market, distribute and sell products in the course of trade in the Community."

Having conducted a detailed analysis of the Regulation and the background legislative materials, the Court of Appeal upheld the preliminary ruling and made a number of important observations in reaching this decision.  These included the following: -

1.    There is nothing in the background legislative materials to indicate that the "circles" referred to in Article 7 of the Regulation could refer to anything but the circles of the prior art.

2.    If the "sector concerned" were confined to that identified in the registration certificate, an astute applicant could indicate a narrow class of products, thereby also narrowing the scope of prior art which could be used to attack the validity of the registration.  At the same time, the scope of protection conferred by the registration would still extend to all articles, not just the goods arbitrarily identified in the registration certificate.

3.    Where a design is old and well-known in a particular sector, a designer should not be able to obtain a registration by simply specifying a different sector in which there is no prior art, particularly as this would give him monopoly rights extending across all sectors, including the sector in which the design is already old and well-known.

  4.    A designer should not be allowed to obtain a registration specifying one particular sector, then as the 25-year term of protection comes towards its end, simply re-apply specifying a different class, thereby extending the total term of protection beyond what is permitted under the Regulation.

  In conclusion, the Court found that: "A Community Registered Design right gives a monopoly over any kind of goods according to the design.  It makes complete sense that the prior art available for attacking novelty should also extend to all kinds of goods, subject only to the limited exception of prior art obscure even in the sector from which it comes."

 Boult Wade Tennant

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