Green Lane Products Limited v PMS International Limited (and others) and Poundland Limited* (Lewison J.; [2007] EWHC 1712 (Pat); 19.07.07)

In this preliminary ruling, Lewison J held that “the sector concerned” for the purposes of Article 7 of the Community Designs Regulation, should be interpreted as 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.

Green Lane Products Limited (GLP) owned four community registered designs in respect of spiky blue and pink balls with square or rounded nodes for use in tumble dryers to help soften clothes and quicken drying times. The designs were registered in 2004 in respect of “Flatirons and washing, cleaning and drying equipment”.

PMS International began selling spiky plastic balls in the EU in 2002 and marketed them as massage balls. In 2006 PMS began marketing the same balls as laundry dryer balls. GLP claimed infringement of their CRDs through the sale and marketing of PMS balls for anything other than use as massage balls. GLP relied on Article 10 which protects the design from use in any product even if that product was not specified in the application.

Under Article 7, any design is deemed to have been made available to the public if it has been published, exhibited, used in trade before the date of filing except where these events could not reasonably have been known in the normal course of business to the circles specialised in the sector concerned. The preliminary issue to be decided was the true construction of the “sector concerned”; namely whether is it (i) the sector corresponding to the product class indicated on the CRD application; or (ii) the sector of the prior art.

Lewison J found in favour of the latter. He held that if the former were correct, there would be several undesirable consequences, including the following:

  1. An applicant may gain a monopoly over all classes of products if he registers his design in a product class with no prior art, even if prior art exists in other product classes.
  2. The monopoly would make it unlawful to start using an “old and well known” design in another product class not specified in the application. In addition it could block a manufacturer which uses the design from changing distributors, as any new distributor will not be able to show prior use, thus freezing pre-existing business arrangements.
  3. It could also enable an individual to extend the protection for the design beyond the 25 year maximum by re-registering it in a different product class where it had not been used before, thus prolonging the monopoly.

Lewison J also rejected GLP’s comparison of the characteristics and role of the informed user in Article 6 (which requires industry specific knowledge) with the purpose of Article 7, which is to identify the relevant prior art. The two are separate concepts and should not be conflated.

Lewison J finally held that the ‘circle’ for the purposes of Article 7 comprises all individuals who conduct trade in respect of products in that sector (including designers, manufacturers, advertisers and distributors), although Lewison J accepted that there may be circles which are more restrictive that this.