Matters to be considered in an assessment of infringement
18.Both M&S and Aldi followed the approach to the comparison of a registered design to an accused design set out in Cantel Medical (UK) Limited v ARC Medical Design Limited [2018] EWHC 345 (Pat). This comprises four stages taken from the judgment of the General Court in Case T-525/13 H&M Hennes & Mauritz BV & Co KG v OHIM (Case T-525/13) EU:T:2015:617, plus two considerations drawn from other authorities discussed in an earlier section of the judgment in Cantel:“[181] I here adapt the four-stages prescribed by the General Court in H&M Hennes for assessing the individual character of a Community design to the comparison of an RCD with an accused design, adding other matters relevant to the present case. The court must: (1)Decide the sector to which the products in which the designs are intended to be incorporated or to which they are intended to be applied belong; (2)Identify the informed user and having done so decide (a) the degree of the informed user’s awareness of the prior art and (b) the level of attention paid by the informed user in the comparison, direct if possible, of the designs; (3)Decide the designer’s degree of freedom in developing his design; (4)Assess the outcome of the comparison between the RCD and the contested design, taking into account (a) the sector in question, (b) the designer’s degree of freedom, and (c) the overall impressions produced by the designs on the informed user, who will have in mind any earlier design which has been made available to the public. [182] To this I would add:(5)Features of the designs which are solely dictated by technical function are to be ignored in the comparison. (6)The informed user may in some cases discriminate between elements of the respective designs, attaching different degrees of importance to similarities or differences. This can depend on the practical significance of the relevant part of the product, the extent to which it would be seen in use, or on other matters.”19.Points (5) and (6) were not intended to be sequential stages following (1) to (4) but further matters to be taken into account when conducting the comparison in stage (4). They may have been better labelled (4)(d) and (e).
- This judgment was handed down remotely at 10.30 on 31 January 2023 by circulation to the parties or their representatives by email and released to the National Archives.
- Introduction
- Brexit
- The statutory law on infringement
- Right given by registration
- Interpretation of the registered designs
- Matters to be considered in an assessment of infringement
- The relevant sector
- The informed user, awareness of prior art and level of attention paid
- The designer’s degree of freedom
- Snow Globe
- Features solely dictated by technical function
- The relevance of branding
- The date of assessment
- Registration of design where application for protection in convention country has been made.
- The law on the comparison of overall impressions
- The design corpus
- The grace period
- Requirement of novelty and individual character
- The design corpus in this case
- The comparison of the overall impressions in this case
- Conclusion