Intellectual Property - Recent Changes in Law and Their Effect on Your Business

Author:Ms Fiona Russell
Profession:Jones Day Gouldens
 
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A.Fulton Company Ltd -v- Totes Isotoner (UK) Ltd: On 31 October His Honour Judge Fysh QC gave judgment for the claimant in the Patents County Court in this case for infringement of registered and unregistered design. Gouldens represented the claimant. See the article, "Stop Press".

Community Patent: The Danish Presidency left this issue alone for a while so as to provide a cooling off period. If agreement cannot be reached on the language and litigation issues it is unfortunately possible that the whole project will be dropped at the EU Summit in December.

European Patent: the litigation issue is also dogging the conclusion of a Litigation Agreement for European Patents. This will now be discussed by EPC Member States in December but it remains uncertain that any agreement will be reached.

Patents Court: the principal English Patent Judges have set up a working party to look at the present system for hearing patent disputes. The working party is headed by Mike Barlow, BP's head of IP and will look to see how the system might be streamlined to deliver a quicker more efficient service at reduced cost.

Community Registered Design: with the adoption by the Commission of the Implementing Regulation the advent of the Community Registered Design is not now far off. Applications are expected to be able to be made on 1st January 2003 and will be given a filing date of 1 April.

Design Right

L. Woolley Jewellers Ltd -v- A & A Jewellery (London) Ltd : [2002] EWCA CA Civ 1119

The Court of Appeal considered the trial judge's approach to infringement of design right and concluded that in applying the test for infringement of copyright the judge had been wrong. The tests for infringement of the two rights were different.

The parties were both jewellery manufacturers. The piece of jewellery in question was a pendant which made use of obsolete and imitation coins called inserts which were kept in place by lugs within the mount. The lugs could also be formed within a bezel, a ring with lugs placed over the circumference of the insert. The claimant's design drawing was of a pendant without an insert and was a combination of the features - the bail (a piece of metal attached to the pendant through which a chain was threaded), the bezel, the mounting and the decorative edging. The area around the insert had an outline of three heart shapes into which a bail had been inserted. The centre of the bail was also cut out in a heart shape.

The judge had held that the parts protected by design right were the decorative edge, consisting of the three heart motif, and the bail which took the chain. There was no appeal against this finding. The bail was held to be the designer's own design and the combination of the bail and heart motif was original, not commonplace and thus entitled to design right.

The bail but not the heart motif had been copied. The question at issue was therefore whether the copying of just the bail amounted to copying of the design. The judge applied the approach of copyright law - copying of a "substantial part". He considered whether the bail could be said to be a substantial part of the design and decided it was and so as it had been copied there was infringement.

The defendant appealed against that approach. The Court of Appeal referred to the judgment of Aldous J in the well known first reported design right case - C & H Engineering -v- Klucznik & Sons Ltd [1992] FSR 421 - where he said that under Section 226 Copyright, Designs and Patents Act 1988, there will only be infringement if the deisgn is copied "so as to produce articles exactly or substantially to the design". The alleged infringing article must be compared with the document or article embodying the design.

The Court of Appeal held that "there is a difference between an enquiry into whether the item copied forms a substantial part of the copyright work and an enquiry whether the whole design containing the element which has...

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