The "spiky balls" case
Background
The visual design and appearance for a product can be registered as a Community Registered Design ("CRD"), provided that no identical design has been made available to the public prior to the date of the filing of the application for the registration of the design in respect of which protection is claimed.
In addition, the design must have 'individual character'. This means that the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public prior to the date of the filing of the application for registration.
A design is not deemed to have been made available to the public if it could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned operating within the Community.
The Case
In the recent "Spiky Balls" case, the Court of Appeal had to determine the correct meaning in law of the phrase "the circles specialised in the sector concerned operating within the Community".
In the case in issue, the Claimant made and sold spiky plastic balls for use in tumble dryers. The Claimant registered the design of its spiky plastic balls as CRDs. The Defendant marketed and sold spiky plastic balls from a date prior to the date that the Claimant registered the designs of its spiky plastic balls as CDRs. However, the Defendant had sold its spiky plastic balls as massage balls and not as laundry balls for use in tumble dryers.
Subsequent to the Claimant obtaining its CDRs, the Defendant decided to sell its spiky plastic balls as laundry balls. The Claimant claimed that the Defendant was infringing its CDRs if it sold its balls for anything other than use as massage balls. The Defendant counterclaimed that the Claimant's CDRs were invalid, by reason of the fact that the Defendant had been selling its massage balls prior to the date that the Claimant had registered its spiky plastic balls as CDRs.
The Court of Appeal held that the correct meaning in law of the phrase "the circles specialised in the sector concerned operating within the Community" meant the sector that consists of, or includes, the sector of the alleged prior art. This meant that the Defendant's design for its spiky plastic balls (initially for use as massage balls) could be cited as prior art against the Claimant's CDRs for its spiky plastic balls for use in tumble dryers.
Thus, the Claimant's CDRs were held to be invalid and, as a consequence, the Defendant could not infringe them.
Conclusion
A registered design gives you a monopoly over the use or incorporation of that design in respect of any kind of goods whatsoever. For example, if you obtain a CDR for a flowery print design that you print onto teapots, a person would infringe that CDR if he used the same flowery print design on something other than a teapot, for example on wallpaper.
In the same way, the Court of Appeal has now confirmed that any design that has previously been made available to the public in any sector of business whatsoever can be cited to attack the validity of a later acquired CDR for that design or something very similar. Thus, taking the example, if the wallpaper with the flowery printed design on it had been available to the public before the CDR had been obtained for the same flowery printed design on the teapot, then the registered Community design would be invalid.
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