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  • Writer's pictureRosie Burbidge

Digging Designs - what's been happening in the last six months?

My final IPKat post was dedicated to one of my favourite IP topics - designs. They are forgotten and misunderstood rights which is a shame because they straddle the issues facing all of the different IP rights. It's hard to truly understand designs without also understanding trade mark, patent and copyright law first. This post is a whistle stop tour of some recent design decisions you may have missed and the first in a regular series of six monthly posts on this topic which I will share as a guest contributor.

UK Court decisions

Unregistered design rights in footballers gloves was the subject of a successful IPEC dispute in Tynan v J4K Sports Ltd [2018] EWHC 3519. This decision from David Stone spends as much time on interesting procedural quirks as designs law. The Defendant (now in liquidation) did not show up to court and clearly stated that it had no intention of appearing either through the liquidators or the sole director and controlling mind.

As the Defendant did not attend court, David Stone exercised his judicial discretion to strike out the Defence and Counterclaim. He also later struck out the witness statement for similar reasons (i.e. the Defendant did not attend court and had not filed a Civil Evidence Act notice). An important background to these decisions was the overall desire for IPEC to take a proportional approach to procedural issues. The only questions of substance was who owned the designs - based on the evidence, Stone had little difficulty in determining that the Claimant was the sole designer.

Despite various shenanigans by the Defendant, including liquidating the company shortly before trial, Stone declined to depart from IPEC's scale of costs noting that, for procedural reasons, departure from the costs cap is reserved for the most extreme situations where there is, for example, dishonest behaviour.

Next we move, from IPEC to the Court of Appeal, here's a discussion about LEDs and the inside of heart rate monitors in Pulseon OY v Garmin (Europe) Ltd [2019] EWCA Civ 138. Garmin sought to invalidate two of PulseOn's RCDs for the inside of its wrist heart rate monitors. Interesting issues arose regarding (i) technical function (although the LED arrangement was optimal it wasn't essential and therefore this didn't apply), (ii) visibility during normal use (it's normal to remove a wrist sensor so the fact it wasn't visible when worn was not a problem), and (iii) the importance of being consistent regarding the assessment of overall impression for both validity and infringement. 

The review of the design corpus was more important than in many similar cases. Although the LED arrangement was not limited by technical function, it was optimal and consequently common across the design corpus to such an extent as to come "very close to the banal end of the spectrum" [58]. The Court of Appeal ultimately concluded that the High Court was correct (i.e. the designs were valid but not infringed).  

Registry decisions

Although they can be a little formulaic, the EUIPO often has some design gems.

Crocs has been particularly active in the registry in the last six months. For example, Crocs successfully invalidated two Registered Community Design for a greyscale version of the classic Croc shoe which was filed by an unrelated Czech company and based on their earlier RCD in ICD 103 260 and ICD 103 259. In other words, two blatant RCD copies were invalidated with relatively minimal fuss. This is how the designs system should work.

Crocs also defended a slipper design which has had a slightly more challenging journey in R1546/2018-3. Very briefly: in November 2013 Gifi Diffusion applied to invalidate the RCD based on 22 prior designs. In November 2014, the RCD was invalidated by the Invalidity Division based on various earlier designs for clogs with furry lining. This decision overturned by the Board of Appeal whose 'procedural economy' meant that it only considered one prior design which the Board did not consider to have the same overall impression as the RCD.

The General Court annulled this decision in March 2018 and reassigned the case to the Board of Appeal. The Board of Appeal's decision in January 2019 found that the declaration of invalidity was unfounded in relation to 17 prior designs but remitted the case back to the Invalidity Division to consider 5 other earlier designs. This is not the best example of the Community Designs system working to optimum efficiency.

Since the Designs Regulation came into force the number of national designs applications inevitably dwindled. This had the knock on effect of reducing the number of invalidity applications in national registries. The application by Ineos Industries to invalidate Jaguar Land Rover's UK registered design for the Defender is therefore a relatively rare beast. (All the more rare since the Defenders has now been taken out of production.)

The decision, O/749/18, is interesting for its consideration of the pre-Regulation law of designs. The designs dates back to 1 September 1999 and at that point Registered Designs could only protect the shape and configuration of a product - much like UK registered designs today - and there was no one year grace period so self-anticipation was more common.

The applicant relied on a reference to the Defender being launched in a magazine without a photograph of the Defender itself being included in the magazine. There was no other contemporaneous evidence to show an image of the Defender before 1 September 1999. Nevertheless, the reference in the magazine was sufficient for the Hearing Officer to determine that the design was not new at the relevant date. In other words, there was a self anticipation by Jaguar Land Rover and consequently the UK registered design was invalid. The design holder blamed various changes in ownership for its failure to prove the launch date for the Defender. However, as this was not included in written evidence, the Hearing Officer was unable to consider this excuse.

To find out more contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London -


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