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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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This was a consolidated IPO decision concerning invalidation applications against 13 UK clothing designs (chiefly of “corset dresses”) registered by Wittaya Asawasuwannakul (“WA”). WA appears to be a director of a Thai company, ASWIDT, or ASAWASUWANNAKUL INDUSTRIAL CO LTD, listed on Alibaba.com (that den of forty thieves) as a manufacturer of “quality women dresses, tops, corset, etc". IPO design decisions are rare these days, and this one illustrates how a dispute between unrepresented clients is handled by the Office – attention to the preparation of evidence is essential to get a good result.

The Hearing Officer (Mr Morris) purported to apply Procter & Gamble v Reckitt Benckiser, finding that the "informed user" was "someone with a keen interest in design matters in this field", and a "keen eye in relation to the design attributes of a particular item of clothing." This test was applied in comparing the overall impression created by each design with the relevant prior art.
RD 4002803 was a corset, not looking (to us) very unusual, but the invalidation action failed because there was no proof that the single citation had been published. Other than that, the Hearing Officer found insufficient similarity (correctly, we think).

RD 4002804 was a simple roll-neck black cardigan, simply invalidated.

RD 4002805 was a figure-hugging black corset dress, said by Blackberry to have been designed in 1899 by Vollers, the oldest remaining corset makers. However, Blackberry again failed to file any dated evidence, which ought not to have been too difficult, had they been correct. The Hearing Officer found the design anyway to differ from the prior art, on the basis that it showed a looser-laced top. Frankly, we have to disagree here: as the applicant said, the tightness depends on the wearer, and the Hearing Officer's comment that "the design as registered ... depicts a loose lacing style and this must be taken to contribute to its design characteristics" appears to assume that the model herself is part of the design, which would certainly be problematic from an infringement point of view.

RD 4002806 was a black rollneck jersey dress. The Hearing Officer held that the design was valid over Blackberry's own prior art, on the basis that it was longer and had longer arms than the prior art. We agree on the former point, but the arm length does not seem to have been measured, just assumed from the wrist position of what was, in the design, a very long-armed dummy.

RD 4002807 was a shorter black fishtailed corset dress, looking very similar to us, but held to have individual character over Blackberry's own prior art on the basis of a deeper bust and the presence of straps - a troublingly narrrow view of similarity, given the obvious parallels between the two.

RD 4002808 was a white lace-up backed halter dress, fairly different from the cited art which featured a floral pattern and contrasting colours. Slightly worrying was the Hearing Officer's comment that "In relation to the pattern (in the prior art) contributing to a difference in overall impression, it should be noted that the registered design is not limited to shape and configuration only (if it were then only the shape and configuration of the prior art would have been relevant). The registered design’s surface decoration (its plain white colour) is, therefore, considered to be part of the design and it is therefore legitimate to consider the surface decoration of the prior art (the floral pattern) as part of the comparison." That does not accord with Procter & Gamble, where even without a "statement of novelty", the design was seen as being a "shape design". It may have been clear in this case that white was part of the design, but we do not think a general rule a statement of novelty ought to be required to indicate a shape design, or that absence of colour is generally to be taken as implying the colour white.

RD 4002809 was a pink dress, staggeringly similar to Blackberry's own prior art - on this one they succeeded in invalidating, despite the difference in colour.

RD 4002810 was a patterned top - the citations were similar in shape but not patterned. The Hearing Officer commented that "the outline shape of many garments will, inevitably, have a degree of similarity given the function and requirements that a top of this nature performs. It is the finer design characteristics that need to be considered here." That coalesces the "design freedom" statutory subtest with the "crowded field" case law subtest, to reach the right result we think.

RD 4002811 and RD 4002813 were opposed over a sketch Blackberry registered as a prior design (RD 4000415) - but the latter showed insufficient detail to invalidate. In the case of RD 4002811 the earlier design was held to show a shape-and-configuration design only, so the colour scheme of the registered design (black and red) was ignored - a curious contrast with the decision on RD 4002808.

RD 4002812 was opposed on the basis of Blackberry's own earlier-marketed product, and a sketch Blackberry registered as a prior design (RD 4000417) - it was clearly dissimilar to both and the challenge failed.

RD 4002812 was opposed over a sketch Blackberry registered as a prior design (RD 4000416) which, taking account of the distorted representations, was a similar overall shape. The pink colour of the opposed design was ignored, as was the thin halterneck strap, and although the bustline was a different shape, the attack succeeded.

RD 4002815 was held to have a bodice shape with "a different look despite it being difficult to vocabularise" from the prior art - it also differed in that the bustline was different and the prior art had side lacing absent from the design. Again, there is perhaps an issue over whether the absence of a feature can be inferred from the fact that it is not shown in the registration - here, with photos, that may have been a fair inference, but not in general.

Would infringement of the design be avoided by adding such features?

So, we think that despite the difficulties in putting into words the essential differences between designs, overall the Hearing Officer was not too far from the mark in delivering justice at a fraction of the cost of Court proceedings. In a case concerned with women’s fashions, we wonder whether a male Officer, possibly with limited design law experience, is the best choice in the absence of oral or expert evidence, but perhaps a male judge would fare no better.