Green Lane Products Ltd v PMS International Group Plc & Ors

For the purposes of art 7 of the Regulation 6/2002 on Community designs, the specialised circles are identified by reference to the sector of the alleged prior art. They are not confined to the sector for which the later design was registered or intended. The relevant circles may include those who design, make, advertise, market, distribute or sell products in that sector within the Community. The art 7 exception is narrow. It excludes prior art only where the relevant disclosure could not reasonably have become known in the normal course of business to the specialised circles in the sector from which that prior art comes. The product indication in art 36(2) is administrative and does not define the scope of protection or alter validity.

The claimant appealed from a preliminary ruling by Lewison J in the Patents Court, reported at [2007] EWHC 1712 (Pat). The dispute concerned the validity and possible infringement of registered Community designs for spiky plastic balls. The defendants had previously marketed substantially the same design in the Community as massage balls, and later marketed balls for laundry and other purposes.

The central question was the meaning of the specialised circles in the sector concerned operating within the Community in art 7 of the Regulation 6/2002 on Community designs. The court also considered whether the indication of intended products in art 36(2), and related provisions concerning scope, prior use and invalidity, confined the relevant sector to the products specified for the registered design.

1. Appeal and reference. Jacob LJ gave the leading judgment. Ward and Rimer LJJ agreed. The appeal would have been dismissed, the preliminary ruling upheld, and a reference to the European Court of Justice refused. The parties had settled, so no order was drawn up.
2. Article 7. The phrase specialised circles in the sector concerned refers to the circles connected with the sector of the alleged prior art. It is capable of including all persons conducting trade in products in that sector, including designers, manufacturers, advertisers, marketers, distributors and sellers operating in the Community. The exception therefore excludes only prior art which could not reasonably have become known in the normal course of business to those circles. It does not require knowledge by the circles associated with the product for which the later design was registered.
3. Regulatory architecture. Articles 5 and 6 adopt the familiar concept of prior art made available to the public. Article 7 qualifies that general rule narrowly. Article 10 gives protection against use of any design producing no different overall impression on the informed user, without restricting infringement to articles of the type indicated in the registration. Articles 11 and 22 use related language concerning disclosure and prior use, but do not enlarge the art 7 exception.
4. Article 36. The indication of intended products required by art 36(2), and the optional classification under art 36(3)(d), are administrative matters directed principally to classification and searching. Article 36(6) confirms that they do not affect the scope of protection as such. Since invalidity is available only on the grounds in art 25, an inaccurate product indication does not define validity or confine the prior art relevant to it.
5. Construction. The travaux préparatoires supported the conclusion decisively: the exception was introduced as a safeguard against obscure or counterfeit prior art unavailable to the European industry, not to discount prior art merely because it arose in a different product sector. The contrary construction produced realistic and unacceptable consequences, including strategic narrow drafting, freezing existing businesses and extending protection beyond the Regulation’s maximum term. The court considered the point acte clair and declined a reference.

• Court of Appeal (Civil Division): Jacob LJ’s judgment was agreed by Ward and Rimer LJJ. The appeal would have been dismissed and a reference to the European Court of Justice refused.
• High Court, Chancery Division (Patents Court): Lewison J determined the preliminary construction point in favour of the defendants, reported at [2007] EWHC 1712 (Pat).