Green Lane Products Ltd v PMS International Group Ltd and Others

JurisdictionEngland & Wales
CourtChancery Division (Patents Court)
JudgeMR JUSTICE LEWISON,Mr Justice Lewison
Judgment Date19 Jul 2007
Neutral Citation[2007] EWHC 1712 (Pat)
Docket NumberCase No: HC07C00539

[2007] EWHC 1712 (Pat)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

Royal Courts of Justice

Strand, London, WC2A 2LL

Before

Mr Justice Lewison

Case No: HC07C00539

Between
Green Lane Products Limited
Claimant
and
(1) PMS International Group Limited
(2) PMS International (Far East) Limited
(3) Poundland Limited
Defendants

Dr Heather Lawrence (instructed by Briffa & Co.) for the Claimant

Mr Richard Hacon (instructed by Gordons Partnership LLP) for the Defendants

Hearing dates: 11 July 2007

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.

THE HONOURABLE MR JUSTICE LEWISON

MR JUSTICE LEWISON Mr Justice Lewison

Introduction

1

A design may be protected as a Community Registered Design (a “CRD”). The legislation is contained in Council Regulation (EC) No. 6/2002 of December 12, 2001 (“the Regulation”). In order to qualify for protection a design must be new and have individual character. A design is new if no identical design has been 'made available to the public' before the date of filing of the application for the CRD (Article 5). Whether a design has individual character is also to be assessed by reference to any design which has been 'made available to the public' before the date of filing the application for the CRD (Article 6). Designs pre-dating the application for the CRD are usually referred to as “prior art”.

2

Article 7 provides:

“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 of filing of the application for the CRD] 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.”

3

The question raised by the preliminary issue before me is: what is “the sector concerned”?

The assumed factual context

4

The facts have not yet been found so anything I say about them is necessarily provisional.

5

Green Lane Products Ltd (“Green Lane”) sells laundry balls. They are packaged as a pair of spiky blue and pink pastel plastic balls, one with square nodes and one with rounded nodes, which you put in a tumble dryer. The idea is that they help to soften fabrics without chemicals, because the design of nodes helps to break down the stiffness created by water drying in fabric. In addition they claim to reduce drying time by up to 25 per cent by lifting and separating the laundry while tumble drying, and by retaining the heat and transferring it to the clothes as they tumble; to reduce creases and wrinkles and to cut down on lint.

6

Green Lane has registered its designs as CRDs (Nos. 000217187–0001 – 0004). The application date for all four registrations is 23 August 2004. The certificate of registration described the class of products (in the Locarno classification) to which the designs are intended to be applied as:

“Flatirons and washing, cleaning and drying equipment.”

7

PMS International Group plc and PMS International Far East Ltd (“PMS Far East”) buy and distribute high volume low cost products mainly sourced in China. In August 2001 PMS Far East ordered a company in China to create a tool for manufacturing spiky plastic balls. Balls made from this tool were marketed extensively by both PMS companies in territories including the EU from 2002. They were not marketed as laundry balls but as massage balls. The idea was that rubbing the body with the ball would tighten the skin and muscles and increase blood flow. In October 2006 it occurred to PMS that the tool created in 2002 for making massage balls could be used to make more of the same balls to the same design, but this time sold as laundry dryer balls. It also has devised other potential uses for the balls. One package I was shown described the self-same balls as “Massage, Hand Exerciser, Easy-Catch Toy, Dog Trainer”.

8

Green Lane say that PMS will infringe their CRDs if they continue to sell their product for anything other than use as a massage ball.

More about community designs

9

To explain the relevance of the preliminary issue it is necessary to say a little more about the way in which community designs are protected. First, community designs are of two kinds: registered designs and unregistered designs. In the case of a registered design the protection can last for up to “a total term” of twenty five years (Article 12). In the case of an unregistered design the protection lasts for three years (Article 11). Second, in the case of a registered design, the designer must apply for registration. If the design is registered, protection runs from the date of application. In the case of an unregistered design, there is no need to apply for anything. Protection runs from the time when the design is made available to the public. Third, the scope of the protection conferred by a community design (either registered or unregistered) includes “any design which does not produce on the informed user a different overall impression” (Article 10). Fourth, the nature of the protection as between registered designs and unregistered designs is very different. Article 19.1 of the Regulation states:

“A registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.”

10

This right is in the nature of a monopoly. By contrast an unregistered design is only protected against copying (Article 19.2).

11

Article 22 protects certain existing activities. It provides:

“1. A right of prior use shall exist for any third person who can establish that before the date of filing of the application, or if a priority is claimed, before the date of priority, he has in good faith commenced use within the Community, or has made serious and effective preparations to that end, of a design included within the scope of the protection of a registered Community design, which has not been copied from the latter.

2. The right of prior use shall entitle the third person to exploit the design for the purposes of which its use had been effected, or for which serious and effective preparations had been made, before the filing or priority date of the registered Community design.

3. The right of prior use shall not extend to granting a licence to another person to exploit the design.”

12

An application for a CRD must contain an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied (Article 36 (2)). However, once the design is registered it is protected not merely in relation to the products specified in the application, but also in relation to any product in which the design is used (Article 10). So if a design is registered following an application saying that it is intended to be applied to a widget, it will prevent anyone from making a sprocket. In the present case this means that although the application for the CRDs specified the intended products as “flatirons and washing, cleaning and drying equipment”, the registration will prevent anyone from using the design to make massage balls, dog toys, novelty golf balls, Christmas tree decorations, charm bracelets or anything else that an ingenious marketeer can think of. Nor does it matter whether the design is the same size as Green Lane's own product. It could be half the size or a hundred times the size. Use of the design is prohibited.

13

Now, suppose someone says that the CRDs ought not to have been registered because of some piece of prior art. Suppose that the prior art was “used in trade” and the only question is whether the use in trade of the prior art could not reasonably have become known in the normal course of business to “the circles specialised in the sector concerned”. Which sector is the relevant one? Is it (i) the sector corresponding to the product class indicated in the application for the CRD (ii) or the sector of the prior art?

Text books and other materials

14

The text books give different answers to the question. Mr Martin Howe QC, the author of Russell-Clarke & Howe on Industrial Designs, says that the relevant sector is the sector of the prior art (para 2–32). Mr David Musker, the author of Community Design Law, also says that the relevant sector is the sector of the prior art (para 1–062). The authors of Laddie Prescott & Vitoria The Modern Law of Copyright and Designs hedge their bets (para 44.30). They tentatively suggest that the relevant sector is a single sector comprising both the sector of the registered design and the sector of the prior art (although somewhat confusingly they refer to the latter as “the sector in which infringement is asserted”). They go on to suggest that a registration might be partially invalid in that it would not apply to certain commercial sectors, while remaining valid in relation to commercial sectors in which there was no prior art.

15

The Regulation tracks the form of the Design Directive (97/71/EC of 13 October 1998). The UK government had the task of transposing the directive into domestic law. The Patent Office published a consultation paper to assist in that process. In paragraph 19 of the...

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