IP: the "no-patents round-up for non-techie people" Session 3

First to speak after lunch was former guest Kat Darren Meale, on the wonderful world of designs. Designs are usually easy and cheap to register when compared with trade marks, he reminded us, and you don't lose them through non-use.  Better still, if you have an unlimited budget, you can register your designs in lots and lots of different ways. However, they don't last as long as trade marks, which are potentially eternal: they range from just three years for unregistered Community design to a maximum of 25 years for registered designs.

Darren took the audience through the Utopia beer glass case (on which he composed an excellent Katpost here), in which the judge held that the outer shape of the claimant's Aspen glass, with its narrow shape and curved waist, was not merely commonplace and that this shape therefore enjoyed unregistered UK design right. The judge in this case had to do a good deal of comparison between the Aspen glass and its nearest market competitors and to determine whether it conveyed an overall similar impression or not on the part of the informed user of beer glasses. Design freedom was also an important factor here: where there is only limited design freedom, even small changes are likely to produce a different overall impression.  The judge's basic position was that the test was what the judge could see with his own eyes, rather than focusing on a close verbal analysis of the glasses' respective features.

The next case under analysis was the CJEU ruling in Karen Millen v Dunnes Stores [noted by the IPKat here]. This ruling buried the notion that a design could be deemed unoriginal by 'mosaicing' a corpus of different earlier designs.  Prior designs can however be little-known and foreign, in an appropriate case, as the CJEU indicated in Gautzsch [noted by Darren for the IPKat here].

Then Darren turned to Trunki [again noted for the IPKat by Darren here], a decision in which the Court of Appeal for England and Wales overturned what this blogger persists in regarding as a perfectly good trial decision and ruled that the designs of the respective children's cases conveyed an overall different impression. This decision, which is particularly harsh on design owners, is the subject of a petition to appeal to the Supreme Court.

Darren concluded with some observations concerning the design provisions of the UK's Intellectual Property Act 2014, which could land an appropriately villainous infringer in prison. The right to continue prior use of a design that someone else later registers is now protected, and ownership provisions have been tweaked to provide greater protection for the non-employed but nonetheless commissioned designer.

IPEC: a rebranded PCC?

Darren was followed by Matthew Jones (EIP), who abandoned the PowerPoint in favour of the flipchart.  Matthew opened with a review of the Intellectual Property Enterprise Court for England and Wales, which metamorphosed from the highly successful revamped Patents County Court. He explained the cost-capping provisions operated by the IPEC, warning that what the cap caps ("recoverable costs") and what a party actually pays are likely going to be quite different things.

The IPEC has sped up IP litigation considerably, a typical action taking around seven months from issuing the claims form to receiving judgment. Interim applications are heard on paper, disclosure is severely limited by virtue of the fact that there is no standard disclosure. Arguments and facts on which a party intends to rely are "front-loaded", which is certainly not the case with large-scale litigation before the High Court.  There's also a £500,000 cap on IPEC proceedings -- but what exactly does the cap apply to (particularly if there is more than one claim or proceedings are brought against more than one party)?  In Abbott Judge Hacon clarified that the £500,000 cap is pretty well set to cover everything, unless the parties agree to lift it.

The government has been determined to encourage use of the courts by SMEs and litigants in person. This has occurred, though litigants in person have been conspicuously unsuccessful.  Paraphrasing Sam Harris, in Lying: those of us who do not lie have nothing to prepare for, and those who do have much to remember".  This should be borne in mind when filling in Precedent H in drawing up a likely costs budget and in preparing for a costs management conference -- though litigants in person don't have to go through all of this.