Green Lane Products Ltd v PMS International Group Ltd and Others
| Jurisdiction | England & Wales |
| Judge | Lord Justice Jacob,Lord Justice Rimer,Lord Justice Ward |
| Judgment Date | 23 April 2008 |
| Neutral Citation | [2008] EWCA Civ 358 |
| Docket Number | Case No: A3/2007/1867 and 1867A |
| Court | Court of Appeal (Civil Division) |
| Date | 23 April 2008 |
[2008] EWCA Civ 358
Lord Justice Ward
Lord Justice Jacob and
Lord Justice Rimer
Case No: A3/2007/1867 and 1867A
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
The Hon Mr Justice Lewison
HC 07 C00539
Royal Courts of Justice
Strand, London, WC2A 2LL
David Vaughan QC and Dr Heather Lawrence (instructed by Messrs Briffa)
for the Claimant/Appellant
Richard Hacon (instructed by Gordons Partnership LLP)
for the Defendants/Respondents
This appeal is from a judgment of Lewison J given on 19 th July 2007, [2007] EWHC 1712 (Pat). He determined a preliminary point of construction of the Community Designs Regulation, 6/2002 (“the Regulation”) The point was:
The correct meaning in law of “the circles specialised in the sector concerned operating within the Community” as that phrase is used Art 7 of the Regulation.
Mr David Vaughan QC and Miss Heather Lawrence appeared for the appellant, Green Lane. Mr Richard Hacon appeared for the respondents (collectively “PMS”).
The appeal arises out of assumed facts which, if they were not the subject of a real case, might be thought to have been devised for a student moot. They are these:
(1) Green Lane make and sell under the trade mark “Dryerballs” spiky plastic balls for use in tumble driers. There are blue ones with square nodes and pink ones with rounded nodes. They apparently have a beneficial effect, for instance, helping soften fabrics and reducing drying time by lifting and separating the laundry as it tumbles.
(2) Green Lane has registered the design of its Dryerballs as community registered designs (CRDs) under Nos. 000217187–0001 – 004 with an application date of 24th August 2004. Below I show 0001, consisting of the combination of one ball with square nodes and one ball with rounded nodes, there being no colour restriction. It is not necessary to illustrate the others.
(3) PMS marketed spiky plastic balls (made in China from a tool created for PMS) extensively in the EU from 2002. They were sold as massage balls, not as laundry balls. They look like this:
(4) In 2006 PMS decided to sell its balls (of exactly the same design as its massage balls) for other purposes too. One of these purposes is as a laundry ball, but other packages are marked “Massage, Hand Exerciser, Easy-Catch Toy, Dog Trainer.”
Green Lane says PMS will infringe its CRDs if they continue to sell their product for anything other than use as a massage ball. PMS says the CRDs are invalid by reason of their prior sale of their massage balls. Green Lane says (a) that such prior art is irrelevant as a matter of law and (b) even if it is relevant, their CRDs are nonetheless valid. We are concerned only with the first of these points.
The parties' contentions are based on the provisions of the Regulation. So many of these provisions are referred to in the argument that I set them out the Annex hereto rather than break up this judgment with chunks of text.
Green Lane says that the extent of its rights under its CRDs are defined by Art. 10 – any article, whatever its intended purpose, will infringe unless it does not produce on the informed user a different overall impression. The only reason why continued sales by PMS of balls for massage purposes do not infringe is that such sales are protected by Art. 22. Even then such sales are protected only to the extent provided by that Article.
PMS says the design registrations are not “new” within the meaning of Art.5 or do not have “individual character” within the meaning of Art.6. They say this is so because of their own prior sales in the EU of what, for all practical purposes is the very design complained of. In short they say the design is old.
Now absent Art. 7 one would say that PMS are right: that a design cannot be “new” or have “individual character” if it is the same or practically the same as an article previously used in trade. But, say Green Lane, a design may be new or have individual character even if it is fact old: Art. 7 says that a prior design is not taken to be made available to the public, even if it in reality was, where “these events [i.e. prior use in trade] could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating in the Community”.
And, says Green Lane, the “sector concerned” means the sector for which the design was registered, not the sector of the alleged prior art.
Lewison J rejected that submission. He ruled that:
1. “The sector concerned” within the meaning of Article 7 of the Regulation is the sector that consists of or includes the sector of the alleged prior art.
2. “The circles specialised in the sector concerned, operating within the Community” within the meaning of Article 7 of the Regulation are capable of consisting of all individuals who conduct trade in relation to products in the sector concerned, including those who design, make, advertise, market, distribute and sell such products in the course of trade in the Community.”
I would uphold that ruling. Moreover, notwithstanding the elaboration of the argument, I think Lewison J was clearly right: the position is acte clair and there is no need for a reference. I turn to explain why.
The Applicable Principles of Construction
One starts with the actual language to be construed. But that is only a starting point. It was of course common ground that the language should be read in the context of the Regulation as whole. Moreover it should be read with the objectives and purposes of the Regulation in mind, particularly the recitals, and it is legitimate in so doing to consider the travaux préparatoires. Mr Vaughan did not dispute and could not dispute that one would eschew a construction which led to unreasonable results or absurdities provided those results or absurdities are realistic rather than remote or fanciful.
The Language of Art. 7 itself
I start first simply with the language of the first sentence of Art 7 itself:
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 …., 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.
As Ward LJ observed during the course of oral argument, if that is read alone, the only “circles” which could be referred to are those of the prior art – those in which the design has been “exhibited, used in trade or otherwise disclosed.” One looks to see, therefore, whether the context or the purpose or the travaux indicate any other meaning. I think they most certainly do not – that they are all confirmatory of the meaning when the sentence is read on its own.
The Context of the Language
To put the language properly into its context one needs first to consider the basic architecture of the Regulation. So I go to that first, omitting later parts which are not relevant for present purposes. The Regulation is divided into “Titles” which themselves are aids to construction.
Title I identifies the two types of “Community design” for which protection is to be given, an “unregistered Community design” right (“UDR”) and a “registered Community design” (“RCD”).
Title II is headed “The Law Relating to Designs.” It is divided into 5 Sections entitled:
1 “Requirements for Protection” (Arts. 3 to 9);
2 “Scope and Term of Protection” (Arts. 10–13);
3 “Right to the Community Design” (Arts 14–18);
4. “Effects of the Community Design” (Arts. 19–23); and
5. “Invalidity” (Arts 24—26).
Title III (Arts 27 -34) has a single heading “Community Designs As Objects of Property.”
Title IV is “Application for a Registered Community Design”. Section 1 of this is “Filing of Applications and the Conditions which Govern Them” (Arts. 35–40). It is not necessary to go any further into Title IV or any of the remainder of the Regulation.
Turning now to the requirements for protection, the basic rule, is that a design must be “new” and have “individual character” (Art. 4.1). Art. 5 elaborates on what is meant by “new” and Art. 6 on what is meant by “individual character”. In both cases the test involves consideration of an earlier design, that is a design which “has been made available to the public.”
This is a clear incorporation of a key concept and well-known language of patent law defining the prior art which may be used to attack validity of a patent. An invention is “new” if it is not part of the “state of the art”. The “state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way before [the relevant date]” (see Art.54 of the European Patent Convention). I shall use the expression conventionally used for this test: “absolute novelty.”
From time to time people have wondered whether the absolute novelty test in patent law is not a little harsh – it covers for instance a fanciful example I made up some time ago – a disclosure in a document written in Sanskrit and misplaced in the children's section of Alice Springs public library is one which is “made available to the public.”
As a matter of history of UK patent law...
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