Case No. IP-2021-000119

(1)A design shall be protected by a right in a registered design to the extent that the design is new and has individual character.(2)For the purposes of subsection (1) above, a design is new if no identical design or no design whose features differ only in immaterial details has been made available to the public before the relevant date.(3)For the purposes of subsection (1) above, a design has individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the relevant date.…(5)For the purposes of this section, a design has been made available to the public before the relevant date if—(a) it has been published (whether following registration or otherwise), exhibited, used in trade or otherwise disclosed before that date; and(b) the disclosure does not fall within subsection (6) below.(6)A disclosure falls within this subsection if—…(c) it was made by the designer, or any successor in title of his, during the period of 12 months immediately preceding the relevant date;…(7)In subsections (2), (3), (5) and (6) above ‘the relevant date’ means the date on which the application for the registration of the design was made or is treated by virtue of section 3B(2), (3) or (5) or 14(2) of this Act as having been made.58.Thus, the designer of a registered design is accorded a grace period in which he may disclose his design without such disclosure being considered relevant to the novelty or individual character of that design when registered, provided the application for registration is made no more than 12 months from the date of disclosure.59.Pursuant to s.1B(7) and s.14(2), where there is a valid priority date, the grace period extends back over the 12 months preceding the priority date. Put another way, although the novelty and individual character of a registered design falls to be assessed as of the application or priority date, any disclosure of the design by the designer or his successor in title (generally the proprietor) over the previous 12 months is to be ignored in the assessment.60.Two questions arise. First, does the grace period apply in the context of infringement? The design corpus existing at the appropriate date of comparison is relevant to the assessment of infringement (see para.35(iii) of Jacob LJ’s judgment in Procter & Gamble above), but should that be taken to include any disclosure of the registered design by the designer in the 12 months preceding the application date or, as the case may be, the priority date?61.If one assumes that the test of overall impression in relation to any one registered design will invariably be identical for both validity and infringement, the answer must be that the grace period does apply in the context of infringement. 62.Regulation 6/2002 provides an equivalent grace period by art.7(2). So far as is relevant it states:“2.A disclosure shall not be taken into consideration for the purpose of applying Articles 5 and 6 and if a design for which protection is claimed under a registered Community design has been made available to the public:(a) by the designer, his successor in title, …(b) during the 12-month period preceding the date of filing of the application or, if a priority is claimed, the date of priority.”63.The rationale for the grace period was given by the General Court in Sphere Time v OHIM & Punch SAS (Case T-68/10) EU:T:2011:269:“[24] In relation, first, to the applicability of art.7(2) of Regulation 6/2002 to this case, it should be noted that the objective of that provision is to offer a creator or his successor in title the opportunity to market a design, for a period of 12 months, before having to proceed with the formalities of filing.[25] Thus, during that period, the creator or his successor in title may ascertain that the design concerned is a commercial success before incurring the costs relating to registration, without fear that the disclosure that takes place at that time may be successfully raised during any invalidity proceedings brought after the possible registration of the design concerned.”64.If the designer’s disclosure or disclosures during the grace period formed the bulk of designs in the relevant sector made available before the application (or priority) date, this would provide no barrier to a registered design being treated as new and having individual character as of that date. But if those earlier disclosures were to be considered relevant to the assessment of infringement, the protection could be reduced to a narrow scope, liable to be insufficient to cover very similar designs of competitors inspired by the designer’s earlier disclosures. The rationale of the grace period would be substantially defeated. It seems to me, therefore, that the design corpus to be considered when assessing infringement excludes the designs disclosed by the designer during the grace period. This is also consistent with the assumption referred to in paragraph 61 above (see Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2006] EWHC 3154 (Ch), at [26]).65.The second question is whether a disclosure during the grace period is irrelevant to an assessment of novelty and individual character only if it is the specific design claimed in the registered design in suit, or whether the same applies to other similar designs disclosed by the designer during the grace period.66.Going back to the rationale for the grace period identified in Sphere Time, it will commonly be the case that a party wishing to see whether its design is a commercial success, before going to the expense of applying for a registered design, will make and disclose successive iterations in the course of the design’s development before finding the most successful iteration and registering that design. There were three possible intentions of the European legislature at the time the rule of the grace period was created. The first was that in such a case the party would be obliged to apply to register every iteration, including all the failures, in order to be protected. The second, proposed by David Stone, see European Union Design Law, 2nd ed., at paras. 10.110-111, was that the rule protects the designer from adverse consequences of any disclosure by him (or a successor in title) during the grace period of (a) the registered design or (b) any design which does not produce a different overall impression to that of the registered design. The third was that a disclosure by the proprietor of any design at all in the grace period does not count as a prior disclosure. Mr Stone indicates that this has support from a decision of the OHIM Invalidity Division (Stone at para. 10.112-113) and is likely to be the correct interpretation of art.7(2).67.The third best fits the words of s.1B(5) and (6) of the 1949 Act and therefore I think that it is the correct interpretation of those subsections.The relevance of the grace period to this case68.Aldi relied on many items in the design corpus in support of its case on infringement and its argument on the narrow scope of protection of the RDs in suit. The items undoubtedly closest in design to the RDs in suit were these:(1)M&S’s 2019 Snow Globe, marketed from 17 September 2019.(2)M&S’s Glitter Globe, first marketed on 14 May 2020.(3)M&S’s Snow Globe (the same as the registered designs), first marketed on 15 September 2020.(4)Aldi’s peach & elderflower gin liqueur, first marketed on 7 April 2021.69.The priority date of the registered designs in suit is 15 December 2020 and so the grace period began on 15 December 2019. For the reasons I have given, in my view, of the above four only the M&S 2019 Snow Globe is to be considered part of the design corpus relevant to the assessment of infringement.