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Community registered designs and prior disclosure

Print publication

12/09/2013

A recent High Court judgment provides useful guidance on when a prior disclosure of a design, which is subsequently improved and only then registered as a Community registered design, may invalidate the registration.

The case of Magmatic Ltd v PMS International Ltd [1] is another illustration of the benefits of registering a design under the Community Designs Regulation [2].

In order to be capable of registration under the Community Designs Regulation, the design must be “new” and have “individual character”. It will have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the filing or priority date of the design for which protection is sought.

Disclosure of a design prior to an application may therefore cause the application to fail. Under Article 7 of the Community Designs Regulation, a design will be deemed to have been disclosed, i.e. made available to the public, if, among other things, it is exhibited or used in trade before the date of the filing of the application, except where these events could not reasonably have become known, in the normal course of business, to the circles specialised in the sector concerned operating within the EU.

The claimant, Magmatic, manufactured and sold a child’s ride-on suitcase under the trade mark “Trunki”. The antecedents for the Trunki design went back to 1998 when Magmatic’s founder, a Mr Law, won a design award for his ride-on suitcase (called “Rodeo”). He continued to develop the design and applied for a UK registered design in 2002 (which has since lapsed) and a Community registered design in 2003. The design of the product, now sold under licence and by Magmatic itself, continued to be refined.

The defendant, PMS, was a distributor of a competing product – the “Kiddee” case. Magmatic claimed that Kiddee design infringed its registered design. PMS argued that the registered design upon which the claim was based was invalid because of the earlier disclosure of the Rodeo design. Magmatic however asserted that the disclosure at the 1998 awards ceremony of the Rodeo design did not count as a relevant disclosure in that, by way of the awards nomination and ceremony process, the “Rodeo” design would not reasonably have become known in the normal course of business to circles specialising in suitcases within the EU as a result of the award ceremony. This defence is known as the ‘obscure disclosures’ defence.

The High Court rejected Magmatic’s ‘obscure disclosures’ defence, noting that the award was well-known in the industry and people associated with the luggage trade would have seen the Rodeo design.

It was therefore necessary to consider the impression on the informed user of the designs of the original Rodeo design and the later Trunki design, to establish whether the earlier Rodeo design which had been disclosed meant that the Trunki registered design was invalid. Such an informed user, the Court concluded, would appreciate both similarities and differences between the two but would also conclude that the latter was considerably more sophisticated. The differences were sufficient to defeat PMS’s invalidity argument, and the Court turned to the infringement claim.

On the question of infringement, the judge (Arnold J) did not consider that the Rodeo design formed part of the design corpus of which the informed user would have been aware because of its relative obscurity. The Trunki design differed markedly from the existing design corpus. As the Trunki design represented a substantial departure from the design corpus and the designer had considerable design freedom, it was entitled to a broad scope of protection. In other words, more latitude is granted to designs that differ markedly from previous designs to those that do not.

The judge then went on to look at the Kiddee design and whether it infringed the Trunki registered design and concluded that, despite some differences, the overall impression it created was similar. It therefore did infringe Magmatic’s registered design right.

Comment

The novel aspect of the case concerned the “obscure disclosures” exception, which has not been a subject to have troubled the courts to date. Arnold J stated that the burden was on the party relying on the exception, in this case Magmatic, and the question was whether the Rodeo design could not reasonably have become known in the normal course of business to circles specialising in suitcases within the EU as a result of the award ceremony. It is also noteworthy that, whilst accepting that the Rodeo design was a prior disclosure, Arnold J did not consider it to form part of the existing design corpus – the latter constitutes only those designs with which an informed user is likely to be familiar.

[1] [2013] EWHC 1925 (Pat)
[2] 6/2000/EC

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