The best and the brightest: key UK and EU design decisions from 2017

The year 2017 witnessed a number of key decisions on designs, both in the EU and the UK. Kat friends Nina O'Sullivan and Victoria Wilson from Mishcon de Reya in London report on these developments.

Introduction

There were a number of significant design cases at the CJEU level in 2017 providing important clarification on key points of the Design Regulation and Directive (with more to come on 8 March 2018 when the CJEU delivers its decision in DOCERAM on the technical function exception). From a UK perspective, much uncertainty still exists on the likely treatment of registered and unregistered Community designs post-Brexit, no doubt a partial explanation for significant increases for UK registered design filings during 2017 (the UKIPO reported just this week at the INTA London Design Conference that it had recently received 1,000 design applications in one week). The UK's withdrawal from the EU is also likely to have hastened steps for the UK to join the Hague Agreement in a national capacity, with the launch of the service expected in Spring 2018.

Easy Sanitary Solutions (CJEU judgment of 21 September 2017, joined cases C-361/15 P and C-405/15 P, EU:C:2017:720)

In an important case regarding a registered Community design for a "shower drain" under class 23.02 of Locarno, the CJEU confirmed that the product indication of the registration does not limit either the scope of protection or the citable prior art, thereby aligning with the UK approach in Green Lane Products Ltd v PMS International Group Plc & Ors [2008] EWCA Civ 358. The CJEU noted that, if found otherwise, this would lead to an "absurd result": the subsequent registration of a design, obtained despite the earlier disclosure of an identical design intended to be incorporated in or applied to a different product, would allow the holder of the subsequent registration to prohibit the use of the same design for the product, which was the subject of the earlier disclosure.

Nintendo v. Big Ben (CJEU preliminary ruling of 27 September 2017, joined cases C-24/16 and C-25/16, ECLI:EU:C:2017:724)

In this case (discussed on IPKat here), concerning the use of images of Nintendo game consoles when selling compatible gaming products and accessories, the CJEU adopted a broad interpretation of the citations defence in Article 20(1)(c) of the Designs Regulation. The national court must now assess whether the cumulative conditions are fulfilled for that defence to arise.

The decision also highlighted the complex interplay between the jurisdictional rules of the Design Regulation and the re-cast Brussels Regulation (1215/2012). The effect of the CJEU's decision was that claimants can potentially obtain pan-EU relief against multiple connected defendants located in different Member States, provided that there is an 'anchor' defendant sued in its Member State of domicile.

The complexities of the jurisdiction issues raised in Nintendo have been further highlighted in a recent reference by the Court of Appeal to the CJEU in AMS Neve Ltd & Ors v Heritage Audio S.L. & Anor [2018] EWCA Civ 86 (this is an EUTM case but the principles will apply equally to design infringement). The Court of Appeal is seeking clarity on issues of jurisdiction over EUTM infringement in circumstances where an undertaking in Member State A (here, Spain) had placed an advertisement on a website targeted at consumers in Member State B (here, the UK): is this sufficient to confer jurisdiction in Member State B under Article 97(5) CTM Regulation (codified) (now Article 125(5) EUTMR 2017/1001)?

The Court of Appeal recognised that the CJEU's decision in Nintendo on the question of how the place in which the act of infringement was committed was to be determined in circumstances where the defendant was accused of various acts of infringement committed in various Member States did appear to support the trial decision (discussed on a previous post here). Moreover, it recognised, that only the courts of the place where the defendant had take steps to put the offending signs on the website would have jurisdiction. However, the Court of Appeal was not convinced this was the correct conclusion, but has referred questions to the CJEU.

Audi / Porsche v Acacia (CJEU ruling of 20 December 2017, joined cases C-397/16 and C-435/16, ECLI:EU:C:2017:992)

In a series of cases, the scope of the 'repair clause' exemption under Article 110 Design Regulation, which provides a defence to infringement where the design is a component part of a complex product used for the repair of that product so as to restore its original appearance, has come under review.

Acacia makes and sells alloy car wheel rims designed to replicate the alloys of various major car brands to fit the corresponding make and model. The rims are stamped with the indication 'NOT OEM' (to make potential customers aware that they are not originating from the 'Original Equipment Manufacturer') and its sales materials state the rims are sold exclusively as replacement parts for making repairs.

Porsche and Audi brought separate proceedings in Germany and Italy respectively. On referral from those courts, the CJEU held that the repair exemption will not be available if the replacement part does not correspond, in terms of its colour or its dimensions, to the original part, or if the appearance of a complex product was changed since it was placed on the market. Further, manufacturers have a duty of diligence regarding compliance by downstream users which requires them to:

– Inform them that (i) the design is not theirs, and (ii) it is intended exclusively for the purpose of the repair of the complex product so as to restore its original appearance.

– Ensure, for example by way of contract, that they do not intend to use the component part other than for the repair of the complex product.

– Refrain from selling a component part where they know or ought reasonably to know that the part in question will not be used for the repair of the complex product.

Whilst the CJEU's decision provides welcome clarity as to infringement by manufacturers and traders of replacement parts, it is not yet clear how the national courts will apply the repair conditions and how easily they will be enforced.

UK Cases of Note

Neptune v. Devol (Patents Court, High Court (STS) of 25 August 2017, [2017] EWHC 2172 (Pat))

In a case under the Shorter Trials Scheme concerning kitchen cabinet designs, the Patents Court provided clarification on a much debated issue: the impact of the Intellectual Property Act 2014 amendment to the definition of unregistered design in s.213 Copyright, Designs and Patents Act 1988, namely deletion of the words 'any aspect of' (so that the provision reads "any aspect of the shape or configuration of the whole or part of an article"). In the absence of transitional provisions, there has been doubt whether the amendment has retrospective effect.

The Court clarified that the revised definition only applies where the acts of infringement were committed after 1 October 2014, even if what is infringed is a UK UDR which existed prior to that date. The judge also gave some guidance on the distinction between "aspects" and "parts" of a design: aspects of a design include "disembodied features which are merely recognisable or discernible", whereas parts of a design are "concrete parts, which can be identified as such...".

The pilot for the Shorter Trials Scheme (discussed on a previous post, here) has been extended until 30 September 2018. Henry Carr J noted that unregistered design cases require proof of copying, with no doubt disclosure, significant cross-examination and attacks on credibility. Whilst this did not mean such cases would be unsuitable for the STS, the court would need to exercise robust case management.

Spin Master v. PMS International Group (Patents Court, High Court (Community Design Court) of 9 May 2017, [2017] EWHC 1477 (Pat))

This case management decision gave the High Court the opportunity to provide guidance on litigating registered design cases, with the "lessons for the future" (discussed on a previous post) including the parties, in appropriate cases, producing images at an early stage to show the differences/similarities relied upon, which features are wholly functional and where design freedom is said to be limited.

This follows in the wake of the judgment in Action Storage v G-Force Europe [2016] EWHC 3151 (IPEC) (07 December 2016) (also discussed here), in which the court gave guidance on how to conduct UK unregistered design claims and advocated the use of design charts to identify the features relied upon and clarify the issues in dispute.

Both cases highlight the increasing desire in the UK from both the judiciary and litigants for shorter and more cost effective design litigation.