Green Lane Products Ltd v PMS International Group Ltd & Ors

For the exception in Article 7 of the Council Regulation (EC) No. 6/2002, the relevant sector is the sector consisting of, or including, the sector of the alleged prior art. It is not confined to the product class specified in the registered design application.

The statutory reference to specialised circles concerns those conducting trade in the relevant sector, including designers, manufacturers, advertisers, marketers, distributors and sellers. The precise circles may be narrower on particular facts. The informed user analysis follows identification of the relevant prior art and should not be conflated with the Article 7 inquiry.

The claimant owned Community registered designs for spiky plastic laundry balls. The defendants had previously marketed substantially the same design as massage balls and later proposed selling it for laundry and other uses.

The preliminary issue concerned the meaning of “the sector concerned” in Article 7 of the Council Regulation (EC) No. 6/2002, particularly whether it meant the sector corresponding to the products specified in the registration application or the sector of the alleged prior art.

1. Preliminary issue determined. The relevant sector for Article 7 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.
2. This construction avoided several consequences indicating that the contrary interpretation was incorrect. A design capable of use in several unrelated product classes could otherwise be registered by specifying only a narrow class, while obtaining monopoly protection across all classes. It could also make lawful, established activity unlawful, freeze existing distribution arrangements, and enable successive registrations to extend protection beyond the total term permitted by Article 12.
3. Article 22 provided only a narrow protection for persons who had themselves begun using the design, or made serious and effective preparations to use it, before the filing or priority date. It did not resolve the wider difficulties created by confining the relevant sector to the registered product class.
4. The explanatory memorandum and travaux préparatoires supported an interpretation directed against obscure prior art, rather than one confined by product classes. The Green Paper was of marginal assistance. The proposed partial-disclaimer solution was also rejected: Article 25.6 concerned disclaiming part of the design itself, not limiting a single design according to product sectors, and Article 10 did not permit such differentiation.
5. The Article 7 inquiry identifies the prior art before the informed user performs the assessment required by Article 6. The two concepts are distinct. The approach in Bailey v Haynes [2007] FSR 10 was treated as conflating them.
6. The specialised circles ordinarily include all individuals conducting trade in products in the relevant sector, including those who design, make, advertise, market, distribute or sell them within the Community. Particular facts may show that the circles are more restricted. The court was not required to delineate the sector on the preliminary issue.