Design Infringement

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					Design Infringement

    David Musker
    R G C Jenkins
   ITMA, Feb 2008

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                   UK cases
• The big one – the P&G appeal
• Two name designers follow P&G:
  – Jimmy Choo
  – Karen Millen

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• What rights are involved?
• What is infringement?
  – Scope of design
  – Infringing and non-infringing acts
• Evidence

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 What rights are involved - By
• >25 years     – copyright in non-industrial item
                (includes “printed matter”)
• 10-25 years   – copyright in industrial item
• 10-25 years   – UK RD
• 5-10 years    – attenuated UK UDR (licences
                of right)
• 0-5 years     – UK UDR
• 0-5 years     – RCD
• 0-3 years     – UCD
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        What is Infringement?
•   Scope of design/similarity of infringement
•   Acts of infringement
•   Defences/limitations
•   Copying (for UCD)

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Scope – the test (Dir. Art 9, CDR
             Art 10)
• Includes any design which creates
  –   The same “overall impression”
  –   As “the design”
  –   On an “informed user”
  –   Taking into account designer’s “design

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   Scope - Procter & Gamble v.
        Reckitt Benckiser
• [2008] F.S.R. 8 [2007], [2008] E.C.D.R. 3,
  EWCA Civ 936 CA
• Fully argued RCD infringement and validity
• Parallel interlocutory cases in many
• Infringement at first instance, reversed on

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              The design – 1
• Same test for registered designs and UCD
• For registrations, check file for statements
  narrowing protection
     • Disclaiming parts of what is shown (Woodhouse v.
     • Choosing shape/configuration or pattern/ornament
     • Claiming or disclaiming colour
• Generally, is it a shape design? (Procter &
  Gamble v. Reckitt Benckiser)
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                The design - 2
• Design does not subsist in certain parts of products
  – Dir Art. 7, CDR Art 8
   – “Dictated by technical function” parts (but narrowly
     construed; Landor & Hawa v Azure (CA))
   – “Must fit” parts (also applies to UK UDR); see Dyson v
     Qualtex (CA) case
   – For UK UDR only, “must match” parts; see Dyson v
     Qualtex (CA) case
• So, notionally subtract these from what is shown

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 The design – unregistered cases
• Claimant can select any features of the product as
  their design; Lambretta v Teddy Smith [2005] RPC 6
  (CA); [2004] EWCA Civ 886; for UK UDR see A
  Fulton v Totes Isotoner [2004] R.P.C. 16 (CA)
• Thus, succeeds where registered design claim fails;
  e.g. A Fulton v Totes Isotoner; Woodhouse.
• Need to prove copying, but:
   – Often inferred by access and close similarity;
   – Disclosure and cross examination available;
   – Sometimes conceded (e.g. Karen Millen v. Dunnes)

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A Fulton                 Woodhouse

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The “informed user” - compared
          with patents
• Not the equivalent of the “skilled person” in
  patents – that would be some kind of designer
  not a user.
• An ordinary end user – here, consumer
• But one who cares about appearance and buys
  on that basis, and therefore looks at it
• Taken to know that some shapes were, to some
  extent, required to be that way by reason of
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 The “informed user” - compared
        with trade marks
• Not the same as the "average consumer" of trade
  mark law. More discriminating.
   – Agrees with OHIM - Sunstar Suisse decisions of 20 &
     30th June 2005, referred to by the Spanish Court in
     Panini España SA v. Kellogg's España SL 292/2005
     21/12/05. But see BoA decisions?
• “Things which may infringe a registered trade
  mark may not infringe a corresponding registered
  design. I cannot think of any instance where the
  reverse might be so.” P&G v. R-B

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       Informed user - generally
• Millen v. Dunnes:“a woman with a keen sense of fashion,
  a good knowledge of designs of women’s tops and shirts
  previously available to the public, alert to design and with
  a basic understanding of any functional or technical
  limitations on designs for women’s tops and shirts.”
• Cited OHIM and PCC decisions generally approved
• Aware of other similar designs which formed part of the
  "design corpus" (for assessing both validity and
• In practice – the judge!

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      Informed User – OHIM BoA
•   R 1310/2005-3 (Biscuits) - someone who normally uses a product. “Informed"
    suggests basic information regarding the product: aware of the offering of
    biscuits available on the market. The user usually purchases biscuits in order to
    eat them, i.e. an ordinary person with no professional knowledge of the sector,
    albeit familiar with this type of product.
•   R 250/2007-3 (Tavoli) - a person who chooses a table after having visited
    several shops, reading magazines or searched on the internet. Not the designer.
•   R1337/2006-3, R1380/2006-3 (Internal Combustion Engines) - a person
    wanting to cut the lawn, who has browsed catalogues, garden stores, and the
•   R 1214/2006-3 and R 1215/2006-3 (meat foodstuffs) - a person who “regularly
    consumes meat products and is informed about their ingredients, how they are
    cooked and served, as well as their overall appearance.”

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        Comparison process -
• Identify the design
• Identify the “informed user” (“may be
  problems” where the design and the
  infringement are different products)
• Identify what he would know about the
  “design corpus”
• Identify any “design freedom” limitations
  (objective, not subjective)
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Comparison process - substantive
• “Don the spectacles of the informed user”
• Identify the “overall impression” created by the design
     – i.e. what struck the mind of the informed user when the design was
       carefully viewed
     – Imperfect recollection might have a role, but is not decisive
     – The degree of novelty will affect the overall visual impact (pioneer
       designs have broader scope)
     – A poor quality imitation will create a different impression
     – Less design freedom means less scope: smaller differences required to
       escape infringement
•   Do the same for the alleged infringement (and, presumably, the prior art)
• Ask whether the two are the same

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            Level of generality

• Important to plead “overall impression” at
  the right level
  – Eg “electronic communications device on
    wheels” - Direct Line v. eSure
• Right level is the level the informed user
  would adopt

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                OHIM analysis
• OHIM invalidity cases suggest that the informed
  user will pay more attention to:
   – similarities of inessential features and
   – dissimilarities of essential ones.
• Arrmet SL's Community Design [2004] E.C.D.R.
• This may resolve to a design freedom issue –
  typically less freedom in (functionally) essential

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              Not relevant …

• Products concerned - right applies to any
  product, whatever the registration is for.
• History and subjective factors:
  – Whether or not the defendant copied.
  – How the defendant arrived at his design.
  – How the claimant arrived at his design.

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       Analysis of P&G approach
• Criticism of the first instance in P&G was
  inconsistent definition of the design scope
   – narrow compared with prior art
   – broad compared with alleged infringement
• Jacob adopted the classic patent approach:
   – Construe the patent in vacuo, so as to guarantee a
     consistent approach to validity and infringement
   – Then compare separately with prior art and alleged

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   Sources of in vacuo approach:
• Glaverbel SA V. British Coal (No. 4): The specification ... must
  be construed without the aid of reference to:
• First instance [1994] RPC 443:
    – (a) the alleged infringement;
    – (b) the subjective thoughts, intentions, purposes and opinions of
      the patentee or his witnesses;
    – (c) the way in which the invention was developed by experiment
      and research;
• Appeal [1995] RPC 255 (CA), citing Molins v. Industrial
  Machinery (1938) 55 RPC 31 at 39 (CA):
    – (d) an eye on prior material, in order to avoid its effect

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  Sources of purposive construction
• Catnic Components Limited and Another v. Hill & Smith Limited
  [1982] R.P.C. 183 (HL): Lord Diplock:
    – “My Lords, a patent specification is ... addressed to those likely to have a
      practical interest in the subject matter of his invention (i.e. "skilled in the
      art") ... A patent specification should be given a purposive construction
      rather than a purely literal one derived from applying to it the kind of
      meticulous verbal analysis in which lawyers are too often tempted by their
      training to indulge.”
• Glaverbel SA V. British Coal (No. 4) [1995] RPC 255 (CA)
    – “The court must read and construe the specification objectively through
      the eyes of the sort of person of ordinary skill in the relevant art who is
      likely to have a practical interest in the subject of the invention and to
      whom common general knowledge is imputed. "

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 Patent test adopted into designs
• C&H v. Klucznik [1992] FSR 421 – the eyse
  of the person to whom the design is directed
  - a pig farmer
• Adopted by Court of Appeal –L Woolley
  Jewellers v A&A Jewellery [2002] EWCA Civ
  1119 [2003] F.S.R. 15

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  Sources of structured approach
• Windsurfing v. Tabur Marine [1985] RPC 59 (CA)
  inventive step analysis:
   – (i) to identify the inventive concept in the patent;
   – (ii) to assume the mantle of the skilled but unimaginative
     addressee, who must have imputed to him the common general
     knowledge of the art in question, …;
   – (iii) to identify what, if any, difference exists between matters
     known or used and the alleged invention; and
   – (iv) to decide, without any knowledge of the alleged invention,
     whether these differences constitute steps which would have been
     obvious to the skilled man ...

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P&G – the designs

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R-B’s design

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            P&G - Process
• Should be possible to reach a decision on
  infringement in a couple of hours
• Taken together … do these factors appear to
  mandate the streamlined procedure?

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              P&G - Final thoughts
• Obviously a close case – split decisions all over Europe
• Possible background to the decision – the old UK approach:
    – for infringement of a UK registered design the test used to be doing a
      forbidden act in respect of, "an article, to which [the registered design] or
      a design not substantially different from it has been applied". The test of
      "substantiality" leaves just the same sort of margin as the "overall
      impression" test. Whether it is the same test or not I leave for others to
• This may not be correct: substantial identity is the CDR test for lack of
  novelty; shouldn’t individual character/infringement be broader?
• Isn’t similarity of the impression of an appearance of a product
  inherently broader than similarity of the product?
• Will the ECJ (with no patent background) take a more trade mark-
  oriented line?

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J Choo (Jersey) Ltd v Towestone Ltd and
    Ors [2008] All ER (D) 35 (Jan)
•   ‘Bucket’ bag with four panels and a
    double layer of threaded eyelets
    around the top
•   Oxford St retailer was sued under
•   Inference of copying was deemed
    to be overwhelming
•   Differences included texture and
    the number of eyelets featured
•   Procter & Gamble applied
•   Summary Judgment granted
•   No innocent infringement of the
    Community right – damages or
    account or profit ordered.

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 Karen Millen Ltd. -v- Dunnes Stores &
       Anor. [2007] IEHC 449
• UK fashion designer
  sued in Dublin under
  UCD in women’s tops
• Copying denied –
  then admitted after
• Only subsistence &
  validity were in issue

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               Millen v. Dunnes
• Onus of proof in UCD cases:
   – Proprietor has to prove first publication and indicate the
     innovative areas
   – Does not have to show design is valid
   – Defendant has to disprove validity
• Evidence from purported “informed users” neither
  necessary nor relevant.
• Design different to prior art, valid and infringed–
  apparently appealed.

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          Role of indication of product?

• R 1421/2006-3, [2007] E.C.D.R. 13
• Cash register/point of sale data entry
• OHIM broadened description ex
  officio; we appealed
• Board commented that they could
  not rule out some role for indication
  of product in
    – extent of exclusive rights (i.e.
      infringement rights);
    – Validity
• OHIM ordered to revert the text.

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Infringing Acts (Dir Art 12; CDR
             Art 19)
• In relation to products to the design:
   – Making (note: not just parts?)
   – Offering (broader than contract law– Gerber Garment v. Lectra
     Systems [1995] RPC 383, Tamglass v Luoyang [2006] EWHC 65
   – Putting on the market (selling or hiring out)
   – Importing; see SABAF v. MFI and Meneghetti [2005] RPC 209
     [10] HL; Italian sender who had no title was not importer
   – Exporting (unlike patents)
   – Using (unlike copyright or UK UDR)
   – Or stocking for any of the above purposes (but not “mere
     warehouseman” as in SKF v. Harbottle [1980] RPC 363?)

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        Infringement generally
• Any “use” of the design infringes
• Q: is there such a thing as “use as a design”? (a
  la Matthew Read) Note Jacob J’s comments in
  P&G para 27 “The point of protecting a design
  is to protect that design as a design”
• What about inclusion of an aircraft design in a
  car advert?

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 Non-infringing acts (Dir Art 13;
          CDR Art 20)
• Private & non-commercial acts
• Experimental purposes
• Making citations and teaching, provided that it is
  all fair and non-prejudicial, AND the source is
• Use on ships & aircraft temporarily in UK space
  (Can be a regular visitor: Stena v. Irish Ferries
  [2002] RPC 990[50] and [2003] RPC 668[36])
• Use to repair such ships & aircraft

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Repair (CDR Art 110; UK Act s.
• Apart from any more general right to repair,
• Uses of the design for
  – Repair of complex product
  – To restore its original appearance
• Don’t infringe
• EU law not yet harmonised on that.

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• Innocence – exemption from damages
    – UK Registered Designs s24B “not aware, and had no reasonable ground
      for supposing, that the design was registered”
    – UK UDR “did not know, and had no reason to believe, that design right
      subsisted”. Also note: 2ndary infringement requires knowledge: “which
      he knows or has reason to believe is, an infringing article”
    – Not available for Community Designs – see J Choo (Jersey) Ltd v
      Towestone Ltd and Ors [2008] All ER (D) 35 (Jan)
• EEA-wide exhaustion (Dir Art 15; CDR Art 21); not international
  exhaustion (Sony v Pacific Game Technology [2006] EWHC 2509
• Prior User (only for RCDs, not for UK RDs); CDR Art 22 – narrow in
  scope; Lubrizol v. Esso [1998] RPC 727 (CA)
• Eurodefences!
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              P&G - evidence
• The place for evidence in a registered design case
  is very limited
   – Expert evidence usually unhelpful, cross-examination
     unlikely to be needed (Isaac Oren v. Red Box [1999]
     F.S.R. 785; Thermos v Aladdin [2000] F.S.R. 402, Pat
   – Fact evidence of the design stage usually irrelevant
• Reaction of the public and trade to the design may
  be relevant

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     Millen v. Dunnes - evidence
• Onus of proof in UCD cases:
   – Proprietor has to prove first publication and indicate the
     innovative areas
   – Does not have to show design is valid
   – Defendant has to disprove validity
• Evidence from purported “informed users” neither
  necessary nor relevant.

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