About the authors:
Robert Cumming: Robert is a partner, dual-qualified trade mark attorney and solicitor, and manages large international portfolios and complex multi-jurisdictional disputes for market-leading businesses. Robert’s expertise lies in the strategic positioning of a brand. His experience managing international trade mark portfolios and complex cross-border litigation, complements his background working on large corporate transactions.
Michael Pokrachynskyi: Michael works in the trade mark team at Appleyard Lees, helping a wide range of businesses, from start-ups to large corporations, to protect, commercialise and increase the value and identity of their brands. As a trainee trade mark attorney, Michael is engaged in a wide range of IP work, from technical tasks concerning trade marks and design registrations to more academic work related to the law of passing off and the law of copyright.
Design disputes tend to focus on the comparison between the design as registered and the prior art. The case PicArt Print & Design v. Daniel Platten O/487/22 is no exception.
On 30 October 2020, PicArt Print & Design Ltd (the Proprietor) successfully registered the design of a cheeseboard (the Contested Design), illustrated below:
On 24 December 2020, Daniel Platten (the Claimant) claimed the Contested Design lacked novelty and individual character and should, therefore, be declared invalid under section 11ZA(1)(b) of the Registered Designs Act 1949. To support his argument, the Claimant submitted blurry pictures of other cheeseboards that were alleged to be for sale on eBay since December 2017, although, the pictures were erroneously dated 22 December 2022. Most of the pictures were found to be inadmissible by the hearing officer, as they were of a low quality, and had no identifiable date of creation. The one illustrated below, however, was accepted for consideration as prior art (the Prior Art):
The Proprietor denied all the grounds for invalidation, stating the Contested Design is substantially different from the Prior Art.
The Registered Designs Act 1949 states:
In this Act ‘design’ means the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation.
The registration of a design may be declared invalid – […]
(b) On the ground that it does not fulfil the requirements of sections 1B to 1D of this Act”.
(1) A design shall be protected by a right in a registered design to the extent that the design is new and has individual character
(2) For the purposes of subsection (1) above, a design is new if no identical design or no design whose features differ only in immaterial details has been made available to the public before the relevant date.
(3) For the purposes of subsection (1) above, a design has individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the relevant date.
(4) In determining the extent to which a design has individual character, the degree of freedom of the author in creating the design shall be taken into account.
In assessing novelty, the hearing office considered Shnuggle Limited v Munchkin, Inc & Anor  EWHC 3149, which held that a later design is “new if part of it differs from any earlier design in some material respect”.
In assessing individual character, the hearing officer referred to Samsung Electronics (UK) Ltd v Apple Inc  EWHC 1882 (Pat) and relied upon the summary from Cantel Medical (UK) Limited v ARC Medical Design Limited  EWHC 345 (Pat), namely:
The court must:
(1) Decide the sector to which the products in which the designs are intended to be incorporated or to which they are intended to be applied belong;
(2) Identify the informed user and having done so decide (a) the degree of the informed user’s awareness of the prior art and (b) the level of attention paid by the informed user in the comparison, direct if possible, of the designs;
(3) Decide the designer’s degree of freedom in developing his design;
(4) Assess the outcome of the comparison between the RCD and the contested design, taking into account (a) the sector in question, (b) the designer’s degree of freedom, and (c) the overall impressions produced by the designs on the informed user, who will have in mind any earlier design which has been made available to the public.
To this I would add:
(5) Features of the designs which are solely dictated by technical function are to be ignored in the comparison;
(6) The informed user may in some cases discriminate between elements of the respective designs, attaching different degrees of importance to similarities or differences. This can depend on the practical significance of the relevant part of the product, the extent to which it would be seen in use, or on other matters”
The hearing officer then applied the law to the case and found that:
i) the informed user is an average member of the public interested in cheeseboards;
ii) there is considerable design freedom in the shape of the cutting surface, the proportions of the board, surface decoration, materials and the handles of the knives;
iii) the prior art has two straight sides and two curved sides whereas the registered design is roughly rectangular with curved corners and the handles of the tools are pear-shaped on the one hand and almost triangular on the other. Additionally, the Prior Art has two recesses in the centre of the drawer front;
iv) the similarities between the blades are only of relevance where they are not functional;
v) both designs are made from wood.
The hearing officer concluded that the differences are sufficient that the informed user will both notice them and form a different overall impression of the respective designs. The invalidation action was therefore unsuccessful, allowing the Contested Design to remain in the register. The parties were ordered to each bear their own costs as both were self-represented.
The case demonstrates two critical components of design disputes:
- Evidence must be clear and correctly dated.
- The informed user of a design product is more attentive to details than a trade mark consumer, so small details can be significant.