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• Community Design: English Patents Court construes Art 7 Community Design Regulation

• 
  Jane Lambert    Group moderator

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  Community Design: English Patents Court construes Art 7 Community Design Regulation

  Art 7 of the Community design regulation (Council Regulation (EC) No. 6/2002 of December 12, 2001) provides:
  
  "For the purpose of applying Articles 5 and 6, 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 filing of the application for the CRD] except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European 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."
  
  Art 5 of the regulation deals with "novelty" which is one of the requirements of a Community designs and art 7 with "individual character." Both novelty and individual character refer to what for want of a better description I shall refer to as "prior art". That is to say, all designs published, used in trade or otherwise disclosed before the date of application for registration of the registered design EXCEPT WHERE those events could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the EC.
  
  In Green Lane Products Ltd v PMS International Group Ltd and others [2007] EWHC 1712 (Pat) (19 July 2007)
  URL: http://www.bailii.org/ew/cases/EWHC/Patents/2007/1712.html , Mr. Justice Lewison of the English Patents Court had to decide what is meant by the phrase "sector concerned" in the above context.
  
  One of the great strengths of our system of jurisprudence compared to the brief and often obscure paragraphs that I see in such authorities as Gazette du Palais, Dalloz or even GRUR is that our judges set out all the arguments before them in full so that readers can understand their thought processes. If there have been cases on the same point whether from England or another member state of the EC it is cited and analysed to destruction. And so it was in this case which is why German and other continental lawyers may find the judgment interesting. We shall soon see how communautaire you all are by the number of you who read this case note. My guess is that ti will be no more than 5.
  
  As I have set out the case reference, you can read the judgment for yourselves. All I will say for those who can't be bothered is that his lordship concluded that "the relevant sector is the sector that consists of or includes the sector of the alleged prior art. It is not limited to the sector specified in the application for registration." Art 7 refers to "the normal course of business to the circles specialised in the sector concerned." That raised the question: who is in the circle? The judge held that "it comprised all individuals who conduct trade in relation to products in that sector. This would include those who design, make, advertise, market, distribute and sell such products in the course of trade in the EC."
  
  I should be very interested to learn if this point has come up before either in the Boards of Appeal at OHIM or national courts. If not, is it the view of my continental brethren that Mr Justice Lewison was right?
  
  • 19 Jul 2007, 11:28 pm
  Jane Lambert wrote: > Art 7 of the Community design regulation (Council Regulation (EC) No. > 6/2002 of December 12, 2001) provides: > > "For the purpose of applying Articles 5 and 6, 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 filing of the > application for the CRD] except where these events could not > reasonably have become known in the normal course of business to the > circles specialised in the sector concerned, operating within the > European 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." > > Art 5 of the regulation deals with "novelty" which is one of the > requirements of a Community designs and art 7 with "individual > character." Both novelty and individual character refer to what for > want of a better description I shall refer to as "prior art". That is > to say, all designs published, used in trade or otherwise disclosed > before the date of application for registration of the registered > design EXCEPT WHERE those events could not reasonably have become > known in the normal course of business to the circles specialized in > the sector concerned, operating within the EC. > > In Green Lane Products Ltd v PMS International Group Ltd and others > [2007] EWHC 1712 (Pat) (19 July 2007) > URL: http://www.bailii.org/ew/cases/EWHC/Patents/2007/1712.html , Mr. > Justice Lewison of the English Patents Court had to decide what is > meant by the phrase "sector concerned" in the above context. > > One of the great strengths of our system of jurisprudence compared to > the brief and often obscure paragraphs that I see in such authorities > as Gazette du Palais, Dalloz or even GRUR is that our judges set out > all the arguments before them in full so that readers can understand > their thought processes. If there have been cases on the same point > whether from England or another member state of the EC it is cited > and analysed to destruction. And so it was in this case which is why > German and other continental lawyers may find the judgment > interesting. We shall soon see how communautaire you all are by the > number of you who read this case note. My guess is that ti will be no > more than 5. > > As I have set out the case reference, you can read the judgment for > yourselves. All I will say for those who can't be bothered is that > his lordship concluded that "the relevant sector is the sector that > consists of or includes the sector of the alleged prior art. It is > not limited to the sector specified in the application for > registration." Art 7 refers to "the normal course of business to the > circles specialised in the sector concerned." That raised the > question: who is in the circle? The judge held that "it comprised all > individuals who conduct trade in relation to products in that sector. > This would include those who design, make, advertise, market, > distribute and sell such products in the course of trade in the EC." > > I should be very interested to learn if this point has come up before > either in the Boards of Appeal at OHIM or national courts. If not, is > it the view of my continental brethren that Mr Justice Lewison was > right?
• 
  Dr. Michael Thesen    Premium Member

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  Re: Community Design: English Patents Court construes Art 7 Community Design Regulation

  Great text. I always had problems with this sector thing. However, I also have problems with explaining the clients why it is impossible to get protection for a banana shaped and banana coloured telephone with a "design which does not produce on the informed user a different overall impression" as a banana, which is well known in the sector of fruit merchants.
  
  • 23 Feb 2009, 12:26 pm
  Dr. Michael Thesen wrote: > Great text. I always had problems with this sector thing. However, I > also have problems with explaining the clients why it is impossible > to get protection for a banana shaped and banana coloured telephone > with a "design which does not produce on the informed user a > different overall impression" as a banana, which is well known in the > sector of fruit merchants.