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Design infringement: the case for juries

James Nurton

Apple and Samsung were everywhere at the OHIM conference marking 10 years of the Community design this week – not just because everyone in the room seemed to have a smartphone or tablet, but because nearly every session made reference to the litigation between the two companies

RCD10 conferenceRegistered 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 (see the 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 first instance 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 Samsung’s Galaxy tablets (below left) were "not as cool" as Apple’s registered design and therefore did not infringe.

Samsung GalaxyAs 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 that.

Apple designHaving smart 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 Arnold).

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?


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