Intellectual Property Enterprise Court

IP-2020-000029 - [2024] EWHC 3058 (IPEC)

Fecha: 28-Nov-2024

The law

The law

15.

The law on infringement was (non-exhaustively) summarised in Cantel Medical (UK) Limited v ARC Medical Design Limited [2018] EWHC 345 (Pat), at [181]-[182], here reproduced with adapted numbering as proposed in Marks and Spencer plc v Aldi Stores Ltd [2023] EWHC 178 (IPEC), at [19]:

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,

(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,

(d)

that features of the designs which are solely dictated by technical function are to be ignored in the comparison.

(e)

that 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.