Intellectual Property - Recent changes in Law & Their Effect on Your Business


By Ms Fiona Russell


Community Patent: The European Parliament has accepted amendments to the draft Community Patent Regulation on the crucial issues of language, the judicial system and the role of national patent offices. It is expected that the Council will approve the amendments at their meeting in May and adopt the Regulation as amended. Once this is done the path will be clear for the introduction of the Community Patent.

Glaxo -v- Dowelhurst: The European Court of Justice delivered its jugdment in this pharmaceutical parellel import case (Case C-143/00) referred from the High Court. Gouldens represented Glaxo. A full briefing note can be found in the accompanying Stop Press. The full judgment can be found at:

The Copyright, etc and Trade Marks (Offences and Enforcement) Bill: received its second reading in the House of Lords on 10 May. It has now been committed to a Committee of the Whole House. No amendments have yet been tabled to the Bill as received from the Commons. The Bill amends the Copyright, Designs and Patents Act 1988 in respect of criminal offences, search warrants, powers of seizure and orders for forfeiture and the Trade Marks Act 1994 in respect of search warrants and powers of seizure and other related matters.

The Patents Act 1977 (Amendment) (No.2) Bill: which amends the Patents Act by introducing a power for the courts to award additional damages in infringement actions received its first reading in the House of Commons on 24 April. The provisional date for the second reading is 19 July.


Guild -v-Eskandar Limited

Court of Appeal: 14 March 2002

In Issue 23 we reported on the High Court decision in Guild -v- Eskandar Limited. In that case the Claimant, Mrs Guild, proved subsistence and infringement of (unregistered) design right in three designs from her range of distinctive knitwear "inspired from ethnic or peasant dress". The designs were remarkably simple: they were based on "a big rectangular shape", about 100cm across at their widest, which when laid flat were "symmetrical, untailored and unstructured" but, when worn, "draped and flowed over the body". Despite their simplicity, the Claimant's garments retailed at about 1,000 each. The Court of Appeal has now overturned both the finding of design right subsistence and the finding of infringement.

Dealing with subsistence of design right, the Court of Appeal held that the trial judge's conclusion that the designs were "original in the copyright sense" was wrong. The designs had been developed by Mrs Guild from an earlier design by a Mr Gigli. The trial judge found that Mrs Guild was responsible for the differences between Mr Gigli's and Mrs Guild's designs and that those variations involved sufficient skill and labour to give rise to originality. The Court of Appeal disagreed. The evidence did not support either of those findings and the judgment contained internal inconsistencies on this point. The judge was wrong in principle on the issue of originality and design right did not subsist.

The Court of Appeal went on to deal with infringement and held that the judge had erred in finding that the "inevitable inference" from the similarities between the Claimant's and Defendant's garments was that the Defendant must have copied the Claimant's designs.

The Vice Chancellor pointed out that:

"... the simplicity of the design was such that the burden of proof of copying resting on Mrs Guild was considerable. The likelihood of coincidence rather than copying is that much greater with a basic and simple design than with something more unusual and elaborate".

Lord Justice Rix added:

"... given the simplicity of the design, the hesitancy of the finding of originality in it, and the uncertainty of the features of it which are said to be reproduced, it needs to be recognised that any prima facie inference of copying is itself a weak one".

The samples of Mrs Guild's garments available in court were not made to her original designs and there were no design drawings or sketches in evidence. The trial judge nevertheless decided that one of the Defendant's garments was made to Mrs Guild's original design with only "minor" alterations and inferred that the Defendant's other garments were also copies. The Court of Appeal said these findings were wrong. The Defendant's garments were dissimilar in design and Mrs Guild had not discharged the considerable burden of proof of copying. Therefore, even if the Court of Appeal was wrong to find that design right did not subsist, the Defendant had in any event not infringed any such design right as no copying had been proved.

This decision highlights two points of caution for claimants in (unregistered) design right actions. First, the threshold of originality is not as low as the first instance decision appeared to suggest. There is a real evidential burden to be discharged by a claimant on this issue, whether or not a defendant argues that the design was in any...

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