Registered Community design rights are popular –
nearly 700,000 have been registered so far – and
flexible, offering cheap IP protection for designers in
industries as diverse as fashion, electronics and automobiles.
But it’s only in the past few years that they have
been tested in court, and many have been found wanting.
I moderated a panel of three judges at the conference
report in WTR – sign-up required) who provided a
great insight into the challenges of deciding design cases,
which combine the technical language associated with patents
with the subjective assessment involved in trade marks.
The Apple/Samsung dispute – and in particular the
judgment of Judge Colin Birss – reflects this, and
I expect that’s why commentators kept coming back
to it this week. Famously, Birss found that
Galaxy tablets (below left) were "not as cool" as
Apple’s registered design and therefore did not
As an aside, I
wonder if with the benefit of hindsight he might regret this
language: first, it suggests to the casual reader that he had
in mind not
Apple’s registered design but the iPad product
(or did he actually think the black-and-white rectangle in the
registered design – below right – is cool?).
Second, it begs the question: what if the competing product
were more cool? Would it infringe then? And if so why
are we incentivising the creation of inferior products rather
than superior ones?
When deciding on design infringement, the
judge’s job is to assess the "overall impression"
produced on the "informed user". But I wonder whether a two-day
trial involving lots of argument and expert witnesses (in this
case one was an electrical and biomedical engineer and one was
an industrial designer and inventor) is the best way to do
judges (and there are few smarter than Birss, whose promotion
we expect to be announced any day) weigh up the technical
evidence clearly makes sense in patent cases – though
many US practitioners would insist juries do a comparable job.
But designs are different. One alternative is to use survey
evidence, and a Spanish judge in Alicante referred to a case
where the court had polled 25 students who were regarded as
typical (informed) users. But many courts don’t
like surveys as they not unreasonably suspect that lawyers try
to rig them and that they are a waste of money (for the latest
example of such a view, see the recent ruling in
Interflora 2 – chastening reading for Mr Justice
Take out surveys and you are left with the
judge’s hunch (or, in Birss’s words,
"what the court can see with its own eyes"). But where, as with
designs, the infringement test comes down to overall impression
rather than technical detail, maybe you’re better
off with a group of hunches, rather than just one? In Italy,
apparently, they have a non-judicial panel to evaluate
designs. In other areas of the law, and in the US, we have
juries. Maybe that’s not such a bad idea?