A recent decision from the High Court has reminded us all of the usefulness and strength of protection that registered designs can provide. Below we review the history and examine the details.
Within European Intellectual Property, designs are the perceived poor relations of patents, trademarks and copyright.
As is well known, whereas patents protect the way things work, designs protect the way they look irrespective of how they work. Designs can therefore relate to nuts-and-bolts products, like a new shape for a tool box or more hi-tech, technological products like tablet computers or smartphones. They can also be used to protect “softer” things, like graphical user interfaces.
Designs exist in both registered and unregistered forms however, in this article, we will focus only on the registered form. It has traditionally been held that the protection that a registered design provides is commercially useful but narrow in scope. In other words, the protection that a registered design offers may be capable of stopping a direct counterfeit, but may not be capable of stopping a third party from bringing out a product which looks very similar to the registered design but has had one or two details changed.
This was noted after a case in the UK Court of Appeal a few years ago involving Procter and Gamble (P&G) and Reckitt Benckiser.
The case related to an aerosol dispenser. P&G had a Registered Community Design (RCD) for the shape of a striking looking dispenser. The design is shown below as Figure 1. Reckitt Benckiser brought out a competing product, shown in Figure 2 below, which looked similar in some ways to the P&G design.
P&G sued for infringement of their RCD and won in the High Court. An appeal was filed which led to the original decision being overturned. The conclusion of the Court of Appeal, agreeing with and endorsing the view of a fellow European (Dutch) court, decided that whereas one of the products looked like a snake’s head, the other looked like a lizard’s head. Therefore the overall impression made by the two is sufficiently different such that there was no infringement. The lesson from this case was that designs which look on the surface quite similar are not necessarily conflicting if there are some differences which are sufficient to generate a different overall impression.
Over the next few years the courts have been busy with cases enforcing and revoking registered designs. Recently, the High Court decided that a Samsung tablet computer was not an infringement of an Apple RCD relating (although not identical) to the iPad.
The silver lining for Apple which perhaps softened the absence of the injunctive relief they sought was that the judge as part of his written judgement stated that the reason the Samsung product did not infringe the Apple RCD is that the design of the iPad was “cooler” than that of the Samsung Galaxy tablet. So, Samsung avoided a finding of infringement only because their product was not cool like Apple’s. Some victory! Again though, the striking similarity led many to expect that the court would indeed find infringement. The Apple RCD is shown below in Figure 3, and the Samsung alleged infringement is shown below in Figure 4.
The decision confirmed the prevailing wisdom which is that protection provided by registered designs is narrow. Of course, this does not detract from their commercial significance as an easy cost-efficient way to obtain an enforceable right to stop third parties copying a new design. However, their perceived narrowness, made them appear to some as a mere luxury.
Roll forward 5 years from the lizard and snake decision and we are back to animals once more. Not reptiles this time, but firmly in the mammalian domain. In July 2013 the High Court was faced with a Community Registered Design infringement and validity case in Magmatic Ltd v PMS International Limited.
It related to the Trunki ® kids’ suitcase, made by Magmatic and made famous (in the UK at least) by its appearance on the BBC television series Dragons’ Den ® . Here, would-be entrepreneurs pitch their ideas to a small number of wealthy individuals who may decide to invest in a new product or business for a return of some equity in the new business. The Trunki is a small suitcase on wheels for children and is styled as an animal; tiger or zebra are common colourings. A third party copied and produced their own version.
Magmatic sued for infringement of their RCD. The third party product looked similar in some respects but very different in others from the Trunki and its representations in the RCD. The way it worked was largely the same as the Trunki, but this is not relevant to design infringement (and the way it worked was not new anyway). The prior art relied upon was an earlier design, “the Rodeo”, for a similar article. Figure 5 below, from left to right shows the representation in the RCD, the Trunki product and the alleged infringement.
The judge found there was infringement despite there being some very noticeable differences. Despite the differences, both the RCD and the infringement looked like animals and shared some significant design features, such that he concluded that they did create the same overall impression on an informed user. To the untrained eye it is certainly arguable that the difference between the Trunki and the infringement was at least as great as that between a snake’s head and lizard’s head, so what was different this time?
The answer lies in an important factor in determining the breadth of protection or scope of a registered design. What needs to be considered is the design corpus existing at the time the application for the RCD was filed. If the RCD is far from the design corpus then the scope of the right is broader than if it is close. The judge in defining the “design corpus” accepted Magmatic’s proposal that it consists of “the designs with which the informed user is likely to be familiar”. In this case, very few, if any, existing designs were available for wheel-able suitcases with a shape emulating another object (such as an animal). The scope of design protection for the Trunki RCD was therefore quite wide because the Trunki design was very different to the design
corpus. Compare this to the Apple vs Samsung case where the protection was relatively narrow because most tablets, including the one represented by Apple’s RCD and Samsung’s tablet, have a lot of similarities.
Thus there may be designs which can be relied upon as prior art, but nevertheless do not form part of the design corpus. It is a term in some ways analogous to “Common General Knowledge” (CGK) in the field of patents. In patents, the mere publication of an article before the priority date of a patent does not mean that the article forms CGK against which the patent is judged. It may be available as a prior art reference in its own right but still does not form part of the CGK which can be important in considering inventive step. In designs, the mere availability of something as prior art, i.e. published at least one year before the priority date of the RCD in question, does not mean it forms part of the design corpus; a general body of designs knowledge in a particular field.
Whilst the reasoning in the Magmatic case is entirely consistent with the statute, expressed in this way its consequences in affording broad protection to an RCD are clear. Because the Trunki RCD was determined to be far from the relevant design corpus, the protection it provided was correspondingly broad. It is worth bearing this in mind when a new design is created that has some significantly different features from the design corpus such that the design creates a very different impression on the public at large and the informed user within it. In the Magmatic case, for the relatively low cost of a registered design application, the design owner was able to secure a broad exclusivity in a lucrative market.