Community design right issues examined by Patents Court

In Green Lane Products Ltd v PMS International Group Ltd ([2007] EWHC 1712 (Pat)) the Patents Court has examined issues relating to the Community design right. The court clarified that disclosure of a design in the "sector concerned", which bars registration under Article 7(1) of the Council Regulation on Community Designs, refers to the sector of the alleged prior art and not simply the sector covered by the product class specified in the registration.

Green Lane Products Ltd sells laundry balls which are placed inside a tumble dryer in order to soften fabrics without the need for chemicals. The balls are sold in packs of two, one with round-tipped spikes, the other with square-tipped spikes. They reputedly reduce drying time by 25%.

Green Lane registered the designs used for the balls as Community registered designs in August 2004, the certificate of registration described the products for which the design was registered as "flatirons and washing, cleaning and drying equipment". In August 2001 PMS International Group Ltd ordered a company in China to create a tool for making spiky plastic balls; PMS then marketed balls made from that tool extensively in the European Union and elsewhere from 2002, though they were sold as 'massage balls', not laundry balls. In October 2006 PMS realized that its tool could also be used to make balls sold as laundry balls and as "massage, hand exerciser, easy-catch toy, dog trainer" balls. Green Lane said PMS would infringe its design rights if it continued to sell the product for anything other than use as massage balls. PMS was unconvinced that Green Lane's design registrations were valid since spiky balls were a known phenomenon well before the date of Green Lane's registrations.

Article 7 of the Council Regulation on Community Designs deprives a design of protection if it had already been made available to the public at the time when registration was sought. In this context:

"(1) ... 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 the application], except where these events could not reasonably have become known in the normal course of business to the circles specialized 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."

In this context a preliminary issue arose as to what was the "sector concerned" in this case. According to Green Lane it was the sector covered only by the product class specified in the registration. PMS disagreed: in its view the relevant sector consisted of or included the sector of the alleged prior art.

The Patents Court, holding for PMS, agreed that the "relevant sector" was the sector that consisted of, or included, the sector of the alleged prior art. In its view the definition which Green Lane argued for could give rise to several surprising consequences, it being most unlikely that any of those consequences had been intended. Among other things, the court noted that one consequence could be that the designer would have the possibility of obtaining wider protection by specifying the products to which the design was intended to be applied in the narrowest possible way, so as to avoid exposing its design to prior art. A further unwanted consequence might be a restrictive interpretation of Article 22, which grants rights of prior use, preventing other parties from using an old and well-known design within their own field of operation.

Jeremy Phillips, IP consultant to Olswang, London