Beverly Hills Teddy Bear Company (incorporated under the laws of the State of California) v PMS International Group Plc

JurisdictionEngland & Wales
JudgeHacon
Judgment Date17 September 2019
Neutral Citation[2019] EWHC 2419 (IPEC)
CourtIntellectual Property Enterprise Court
Date17 September 2019
Docket NumberCase No: IP-2018-000201

[2019] EWHC 2419 (IPEC)

IN THE HIGH COURT OF JUSTICE

BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES

INTELLECTUAL PROPERTY LIST (Ch D)

INTELLECTUAL PROPERTY ENTERPRISE COURT

Royal Courts of Justice, Rolls Building

Fetter Lane, London, EC4A 1NL

Before:

HIS HONOUR JUDGE Hacon

Case No: IP-2018-000201

Between:
Beverly Hills Teddy Bear Company (incorporated under the laws of the State of California)
Claimant
and
PMS International Group Plc
Defendant

Guy Tritton (instructed by Bernard Whyatt, barrister) for the Claimant

Chris Aikens (instructed by Waterfront Solicitors LLP) for the Defendant

Hearing date: 25 July 2019

Approved Judgment

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

HIS HONOUR JUDGE Hacon

Hacon Hacon Judge

Introduction

1

The defendant (‘PMS’) seeks summary judgment which would have the effect of striking out part of the claim. No facts are in dispute – the application raises solely a point of European Union design law.

2

The claimant (‘BHTB’) is a Californian company which sells animal-like toys called ‘Squeezamals’. Six are relevant to this action, being a dog, monkey, panda, penguin, unicorn and a cat. BHTB seeks to protect the designs of the toys by means of registered community designs, unregistered community designs (‘UCDs’) and copyright in the design drawings.

3

This application concerns only UCDs. It is not in dispute that five of the six toys, all but the unicorn, were first shown to the public in October 2017 at the Mega Show, a trade fair in Hong Kong. It is agreed that the nature of the Mega Show was such that the design of each of the toys would have become known in October 2017 in the normal course of business to the circles specialising in the sector concerned, operating within the Community, within the meaning of art.7 of Regulation (EC) No. 6/2002 (‘the Design Regulation’).

4

The toys were subsequently exhibited for the first time in the EU at the Nuremberg Toy Fair in Germany in January 2018.

5

PMS argues that the relevant date for assessing the novelty of a UCD is the date on which the UCD comes into being. That is governed by art.11 of the Design Regulation. In this case, PMS continues, all five UCDs in issue first existed in January 2018. By then all five designs lacked novelty because of the Hong Kong Mega Show the previous October. Therefore none of those five designs is a protected UCD.

6

The issue in this application is whether that is a correct analysis of the law on the agreed facts. There has been no clear authority on the point from the CJEU. There have been judgments in Germany, including one from the Federal Supreme Court, provoking a divided view among text book authors and commentators in the UK.

7

For simplicity of discussion, I need consider only the novelty of the designs.

The Regulation

8

The relevant provisions of the Design Regulation are these:

Article 1

Community design

1. A design which complies with the conditions contained in this Regulation is hereinafter referred to as a ‘Community design’.

2. A design shall be protected:

(a) by an ‘unregistered Community design’, if made available to the public in the manner provided for in this Regulation;

(b) by a ‘registered Community design’, if registered in the manner provided for in this Regulation.

Article 4

Requirements for protection

1. A design shall be protected by a Community design to the extent that it is new and has individual character.

Article 5

Novelty

1. A design shall be considered to be new if no identical design has been made available to the public:

(a) in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public;

(b) in the case of a registered Community design, before the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority.

Article 7

Disclosure

1. For the purpose of applying Articles 5 and 6, a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date referred to in Articles 5(1)(a) and 6(1)(a) or in Articles 5(1)(b) and 6(1)(b), as the case may be, 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 Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.

Article 11

Commencement and term of protection of the unregistered Community design

1. A design which meets the requirements under Section 1 shall be protected by an unregistered Community design for a period of three years as from the date on which the design was first made available to the public within the Community.

2. For the purpose of paragraph 1, a design shall be deemed to have been made available to the public within the Community if it has been published, exhibited, used in trade or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialised in the sector concerned, operating within the Community. The design shall not, however, be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.

Article 110(a)

5. … Pursuant to Article 11, a design which has not been made public within the territory of the Community shall not enjoy protection as an unregistered Community design.

The effect of the Regulation on its face

9

A design cannot be protected as a UCD unless it is new, see art.4(1). A design is new if no identical design has been made available to the public before the date on which the design for which protection is claimed was first made available to the public, see art.5(1)(a). An ‘identical’ design includes one which differs only in immaterial details, see art.5(2).

10

Pausing there, art.5(1)(a) taken in isolation suggests that a design can never prior publish itself. A design cannot have been made available to the public before the date on which it was first made available to the public.

11

That said, the date set out in subparagraph (1)(a) is the date on which the design for which protection is claimed has first been made available to the public. This may mean (it is PMS's case) that the correct date for assessing novelty can be identified only by reference to a UCD which has come into being. If that is right, art.11 must be taken into account.

12

Pursuant to art.11(1), the period of protection of a UCD runs for three years from the date on which it was first made available to the public within the Community. The words I have italicised provide a territorial limitation not present in art.5. It follows that no design can be protected as a UCD unless and until it has been made available to the public within the Community.

13

There is an ambiguity. It arises from the distinction between the ‘event’ of disclosure referred to in art.11(1) – the publication, or exhibition and so on – and the disclosure in the sense of the design coming to the attention of the relevant circles in the Community. The exhibition of a design, whether within or outside the EU, would qualify as a relevant ‘event’ but it may or may not give rise to disclosure in the latter sense. That will depend on whether the requirements set out in art.11(2) are satisfied. The ambiguity is this: does art.11 require that the event takes place within the Community, or does it require only that the event, wherever it happens, could reasonably have become known to the relevant circles within the Community?

14

Art.11(2) explains what ‘made available to the public within the Community’ means. There are three requirements:

(1) At least one ‘event’ must have taken place, being the publication or exhibition of the design, use of the design in trade, or other form of disclosure of the design.

(2) The event must have been such that it could reasonably have become known to the circles specialised in the sector concerned, operating within the Community.

(3) The disclosure relied on must have gone further than a disclosure to a third person under explicit or implicit conditions of confidentiality.

15

As of the first date on which all three requirements are satisfied in relation to a design, that design is protected as a UCD. Protection will run for three years.

16

Going back to art.5(1)(a), the meaning of ‘made available to the public’ in that article is explained in art.7(1). Art.7(1) provides for a presumption – a design is deemed to have been made available to the public if at least one ‘event’ has occurred – but the presumption is rebuttable by the alleged infringer proving that the event could not reasonably have become known to the relevant circles within the Community. This view of art.7(1) – providing for a presumption which may be rebutted – has been explained by the General Court for instance in Visi/one GmbH v EUIPO (Case T-74/18) EU:T:2019:417 at [23]–[24]. (The General Court appears to have assumed that if the event has become known to the relevant circles, the disclosure cannot have been made in confidence.)

17

Although art.7(1) is worded to set up this rebuttable presumption, the relevant events are defined in identical terms to those in art.11(2), as are the two exceptions. In relation to UCD protection, there seems to be no distinction between making a design available to the...

To continue reading

Request your trial
2 firm's commentaries

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT