Three most important aspects when dealing with a registered design are firstly the registered design, secondly the accused object which is said to infringe the design and thirdly other similar objects out in the marketplace before the date of the registered design. It is known as the prior art. It seems obvious to say but the most important thing about each of these three factors is what they look like. You can spend forever and a day in discussing and analysing the design but truth be told any expert evidence or further delays as one would expect in a patent case is limited indeed. Overall it should be possible as Lord Justice Jacob said “to decide a registered design case in a few hours”.
In the Appeal case of Proctor and Gamble -v- Reckitt, (The first case concerning a Community Design Registration (“CDR”) granted pursuant to Council Regulation EC 6/2002 (“the Regulations”).
Jacob summed it up very neatly by saying “The evidence of the designer, e.g. as to whether he/she was trying to make, or thought he/she had made, a breakthrough, is irrelevant. The evidence of experts, particularly about consumer products, is unlikely to be of much assistance: anyone can point out similarities and differences, though an educated eye can sometimes help a bit. Sometimes there may be a piece of technical evidence which is relevant e.g.that design freedom is limited by certain constraints. But even so, that is usually more or less self-evident and certainly unlikely to be controversial to the point of a need for cross-examination still less substantial cross-examination”
In particular Jacob J was doubtful as to the need for any experts ” I think the court should take care before allowing any expert evidence. In particular, the court should know precisely to what areas that expert evidence will be directed. If blanket permission is given, each side feels compelled to get an expert who then has to say something. What is then said has to be read by the other side. Thereby time and cost to no particular use is expended”. In the Proctor case the use of the expert was “redundant”. A dispute over a registered design is largely to do with what the designs look like! Other matters are “secondary”- even if the defendant copied is irrelevant:-
“So it is irrelevant for the claimant’s witness to throw down a challenge that he thought the defendant copied, as was done here, and it is equally irrelevant for the defendant to prove or to give disclosure about how his design was arrived at.Similarly, it is irrelevant for the claimant to prove, if it be the case, that he spent a fortune in arriving at his design. It matters not whether he thought of it in the bath or by engaging the most prestigious design consultants in the world”.
Jacob J did however believe that “one area of evidence which I think is admissible, and is of some secondary assistance, is the reaction of the public and trade (who expect to sell to the public) to the design”. So what does the design look like and can you gauge the reaction from the public and trade.
The Legislation: Regulation EC 6/2002
By Article 10.1 “the scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.” Jacob thought that the “informed user” test makes sense in that “a user who has experience of other similar articles will be reasonably discriminatory” able to appreciate enough detail to decide whether a design creates an overall impression which has individual character and whether an alleged infringement produces a different overall impression. It follows that the informed user is not the same as the “average consumer” of trade mark law”. Jacob explained the purpose of a design:-
“The point of protecting a design is to protect that design as a design. So what matters is the overall impression created by it: will the user buy it, consider it or appreciate it for its individual design? That involves the user looking at the article, not half-remembering it. The motivation is different from purchasing or otherwise relying on a trade mark as a guarantee of origin”.