Legal Designs on the Outline: a report

On Monday night, Katfriend Adrian Dykes attended a lecture at the Royal College of Art, London, given by another Katfriend, David Stone, partner at Simmons & Simmons and author of European Union Design Law: A Practitioners’ Guide (OUP, here).  This gave David the opportunity to give some air to his thesis: “less is more” when considering registered Community design rights. The lecture was attended by a variety of artists, designers and lawyers (including a variety of Katfriends from the UK Intellectual Property Office), each of whom had a different take on the role which lines play in design. Adrian writes:

“David Stone’s lecture was part of the Line Studies Forum, a research group of artistic institutions investigating an interdisciplinary the study of the line. The Line Studies Forum website notes:

“Encounters with ‘the line’ as figure and practice occur across many disciplines and in everyday life, but what can one instance say to another when talking about line?”

What, indeed, can European design law and practice tell us about “the line”? This was no normal legal lecture.

Looking surprisingly awake for someone who just co-chaired this year's INTA Annual Meeting in Hong Kong, David started his presentation with a proposition familiar to many IP practitioners: line drawings should be used when seeking the broadest scope of registered design protection. Looking at recent UK case law, he then sought to explain why this might be the case – when given little information to rely on, the human brain fills in the gaps from information it already has – including drafting conventions, the indication of product, the allegedly infringing product and even a product made to the design.

Once the non-lawyers had been brought up to speed on the basics of Community design law, a comparison was drawn between a two-dimensional line drawing of a Kit Kat and the favoured chocolate wafer treat. The question was posed, without having ever seen the final product before, would we have known that this was a chocolate bar had our prior knowledge not filled in the gaps?

Artists in the audience were quick to recognise gestalt psychology at play. We do not just see a line drawing when looking at it, our minds automatically consider the line drawing in parallel with other perceptions and experiences, consciously and sub-consciously, and draw out a meaningful perception.

It is difficult to see how this inherent prejudice can be eliminated from design cases dealing with line drawings, which may account for some of the surprising decisions we have seen in the past, for example in Procter & Gamble v Reckitt Benckiser [2007] EWCA 936 (Ch) [noted on the IPKat weblog here]. In this case, in David’s submission, the Court of Appeal focused too much on the appearance of the RCD holder’s Febreeze product itself, rather than the line drawing in the RCD. The Court wrote of how the design “felt”, and also made a reference to “poor quality imitations” (of a line drawing?). Both these comments betray a reliance on the product made to the design, rather than to the design itself, and may have been at least part of the reason the Court of Appeal came to the wrong conclusion. David then looked at some aides to interpreting design drawings. For example, the indication of product (compulsory in an RCD filing) will usually give some guidance, as may the (non-compulsory) description and Locarno classification, albeit that none of these should affect the scope of protection of the design “as such”. The line drawing shown (taken from The Procter & Gamble Company v SCA Hygiene Products AB, here) resolved itself into a sanitary napkin, only after we were told what it is. The impact of the indication of product etc. should not be underestimated.

David then discussed a subject close to his heart – the interpretation of dotted lines, and various other drafting conventions. While the OHIM Design Manual states that dotted lines should be used for design features where no protection is sought, or to show features which are not visible in a particular view, the UK courts have held otherwise. David gave examples from Kohler Mira v Bristan Group [2013] EWPCC 2, Samsung Electronics (UK) Limited & Another v Apple Inc. [2012] EWHC 1882 and Samsung Electronics (UK) Limited & Another v Apple Inc. [2012] EWCA Civ 1339 where dotted lines were held to indicate transparency.

Artists in the audience were surprised to learn that design law lacks a consistent approach to the meaning of lines. While the English courts apply their own, inconsistent interpretations to what lines mean (particularly where the design drawings were imported in the first place from other jurisdictions as part of a priority application), it seems that a consistent interpretation for lines is a long way off. This is, of course, not good news for registered design right holders or potential infringers, both of whom would benefit from certainty.

From an RCD-filing perspective, David concluded that designers may well be best served by filing line drawings (grey scale should be avoided in light of Trunki) and not filing views of all aspects of the design – if the bottom of a sprayer is not novel, then don’t include a view of it. When litigating designs, David suggested, contrary to popular practice, not showing the Court a product made to the design – in his view, an RCD holder may be better served by forcing the judge to compare the allegedly infringing product with a line drawing, so that issues such as “feel” are removed. Following the gestalt theory, it also means that the tribunal may “fill in the gaps” of the line drawing by importing similarities from the allegedly infringing product, rather than importing differences from the product made to the design.

Intellectual property likes to flirt with the artistic world. The definition of a sculpture, the lack of definition of a work of artistic craftsmanship, and the design/copyright interface are some of our most loved dalliances. Perhaps our relationship with lines should be added to this list. Following the Court of Appeal’s decision in Magmatic Ltd v PMS International Ltd [2014] EWCA Civ 181 (the Trunki appeal, blogged about by my colleague and guest-Kat Darren Meale, here), it seems that line drawings are the way forward for design protection: a line in the sand has been drawn next to shaded images.”