While the CFI and ECJ have not had yet the possibility to pronounce on the many still unresolved issues of interpretation surrounding Regulation 6/2002 on Community Design, the UK Court of Appeals is being quite active issuing a number of interesting decisions (for instance the P&G v. RB, the “Febreze” case) whose impact on the development and understanding of this field will no doubt be significant.
The case decided yesterday of Green Lane Products Ltd v PMS International Group Plc & Ors (2008 - EWCA Civ 358), deserves a particular note and, it’s also a good reading since, as Lord Jacob put it, “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”.
Green Lane made and sold spiky balls for use as laundry aids, and obtained registered designs under Nos. 000217187-0001 – 004 with an application date of 24th August 2004, (listed in Locarno class 07.05 "Flatirons and washing, cleaning and drying equipment").
PMS had been selling since 2002 spiky balls as “massage aids” and was beginning to sell them also for other uses: Green Lane said PMS would infringe its CRDs if they continued to sell their product for anything other than use as a massage ball. PMS said that the Green Lane CRDs were invalid by reason of their prior sale of their massage balls.
Green Lane replied (a) that such prior art is irrelevant as a matter of law and (b) even if it is relevant, their CRDs are nonetheless valid because art. 7 RCD restricts the disclosure to specialized circles of the sector: in Green Lane’s view, 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 specialized in the sector concerned, operating in the Community", with "sector concerned" meaning the sector for which the design was registered, not the sector of the alleged prior art.
The High Court had rejected Green Lane’s arguments ruling 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 specialized 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."
The Court of Appeal, in a learned opinion which involved a patient examination of the travaux préparatoires upheld that ruling. In a nutshell, I find the rationale for the decision quite eloquently summed up by the following sentence: “But of even more fundamental significance is this: the [Registered Community Design] right gives a monopoly over any kind of goods according to the design. It makes complete sense that the prior art available for attacking novelty should also extend to all kinds of goods, subject only to the limited exception of prior art obscure even in the sector from which it comes”. Couldn’t have said better.