No limit to prior art attack on validity, says Court of Appeal

In Green Lane Products Ltd v PMS International Group plc (Case A3/2007/1867 and 1867A, April 23 2008), the Court of Appeal of England and Wales has confirmed that any prior art can be relied on to attack the validity of a registered Community design.

The case involved a dispute over Green Lane Products Ltd's four registered Community designs for spiky plastic balls. The certificate of registration described the class of products to which the designs were intended to be applied as "flatirons and washing, cleaning and drying equipment".

PMS International Group plc started marketing spiky plastic balls (which were sold as massage balls) before Green Lane's designs were registered. Subsequently, PMS decided to sell the balls for other purposes, including as laundry balls. Green Lane alleged that PMS would infringe its registered Community designs if it sold its product for any use other than use as a massage ball.

The High Court had to determine whether:

• prior art from all kinds of goods could be used to attack the novelty of a registered Community design; or
• prior art had to be limited to the field in which the right was registered.

The court concluded that prior art should not be limited to the sector specified in the application for registration. Given the implications that this ruling could have for the validity of its registered Community designs, Green Lane appealed.

The Court of Appeal upheld the High Court's ruling. In the Court of Appeal's view, since a registered Community design gives its owner "a monopoly over any kind of goods according to the design", it was logical 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 that is obscure even in its own sector.

In a postscript to the judgment, Lord Justice Jacob noted that the Court of Appeal had handed down its judgment even though the parties had settled their differences. A majority of the judges decided that the case "gave rise to points of law of general importance which have an impact on those not directly engaged in the dispute". Therefore, it was in the public interest for the judgment to be delivered.

This ruling is significant in that it confirms that registered Community designs will be vulnerable to attack from prior art from all fields of design. This clarification will help to avoid situations where prior use of a design in a different sector to that specified in a subsequently registered design might become unlawful without the consent of the proprietor of the registered design (eg, where the manufacturer wishes to appoint a new distributor following the registration of the design).

Nick Rose and Louisa Albertini, Field Fisher Waterhouse LLP, London