Court of Appeal rule on Design Right Prior Use

28 September 2009, filed under Intellectual Property

A recent Court of Appeal decision in the case of Green Lane Products v PMS International saw a modern issue of infringement of design rights rejected.

Green Lane Products manufactured and sold a design of spiky rubber balls to be used in tumble dryers to help with drying the clothes. They then obtained Community Registered Designs (CRDs) for these spiky rubber balls which gave them the right to stop other businesses creating a product of a similar design. However, another company, PMS, sold similar spiky balls and had begun selling them before Green Lane had registered their CRDs. PMS sold their spiky balls as massaging aids. They appeared to be very similar in design but were used for a totally different purpose.

After Green Lane had registered their CRDs, PMS began selling their spiky balls for different purposes other than just massaging aids and also sold them as laundry balls among other things. Green Lane claimed that PMS infringed their CRDs when selling the product for any purpose other than massaging aids. Green Lane maintained that PMS were not able to criticise the validity of the Green Lane CRDs by using earlier sales in another market area to that sector in the CRDs. PMS said that the design was not original based on their previous sales throughout the European Union of what was, in essence, the same design.

The parties arrived at a settlement before judgement was made, but the Court of Appeal decided to still issue a judgement for the sake of public interest. Lord Justice Jacob dismissed the appeal, stating that for a CRD to be acceptable, the design must be original and have distinctive character. Use of a similar design in any sector would mean that the design could not be original and would not qualify for protection as a CRD.

For further intellectual property resources visit our intellectual property category page. For more detail on this case, please see Green Lane Products Ltd v PMS International Group plc; [2008] EWCA Civ 358