Patents and Registered Designs: Safestand Ltd v Weston Homes PLC

 

Jane Lambert

Patents Court (HH Judge Hacon) Safestand Ltd v Weston Homes PLC and others [2023] EWHC 3250 (Pat) (19 Dec 2023)

This was a claim by Safestand Limited ("Safestand") against Weston Homes Plc, Weston (Logistics) Limited. and Weston Group Limited ("the Weston companies" or "Weston") for patent and registered design infringement. There was also a counterclaim by Weston for revocation of the patents for obviousness and invalidation of the registered designs for want of unity and/or clarity and/or lack of novelty and/or individual character.  The action and counterclaim came before His Honour Judge Hacon sitting as a judge of the High Court between 8 and 19 June 2023.  He delivered judgment on 19 Dec 2023 (see Safestand Ltd v Weston Homes PLC and others [2023] EWHC 3250.  By para [254] of his judgment, he held that the patents were valid and infringed but the registered designs were invalid.

The Patents

Safestand's patents were UK Patent No. 2 378 978 ("UK 978") for Builders' Trestles, European Patent No. EP 1 660 738 B1 ("EP 738") for Builders' Trestles and UK Patent No. 2 420 822 ("UK 822") for a Kickboard Bracket for Builders Trestles.  In para [1] of his judgment, Judge Hacon described builders' trestles as "scaffold-like structures".   He explained: "In series they support a platform on which workers can stand to gain access to a point of work in the construction or maintenance of buildings." 

The Registered Designs

The designs in suit had been registered with the European Intellectual Property Office as registered Community designs under Council Regulation (EC) No 6/2002 of 12 December 2001 on Community Designs ("the Community Designs Regulation") before 23:00 on 31 Dec 2020.  Art 54 (1) (b) of the agreement for the withdrawal of the UK from the EU required the UK government to continue to protect designs that had been registered as registered Community designs as registered designs under the Registered Designs Act 1949.  That obligation was implemented by reg 5 and Sched. 3 of The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019.   The re-registered designs upon which Safestand relied were No. 9000229349001 ("RRD 0001"), No. 90003121450004 ("RRD 0004") and No. 90003121450005 ("RRD 0005").  The title of each of those designs was "Trestles for the Building Industry." 

Alleged Infringement

Safestand relied on the above-mentioned patents and registered designs to protect its market. It complained that Weston's that Weston's KK1500 or Kwik Kage System and the KK600 system infringed its patents and registered designs.   Further details and photos of those products are to be found between para [24] and para [26] of Judge Hacon's judgment.

The Issues

Judge Hacon had to decide the following:

• Weston's application for permission to amend its Grounds of Invalidity;
• Safestand's claim for patent infringement
• Weston's counterclaim for revocation of EP 738 and UK 822
• Weston's counterclaim for invalidation of the registered designs, and
• Sagestand's claim for registered design infringement

Application for Permission to Amend the Grounds of Invalidity

As I stated in the first paragraph, the Weston companies counterclaimed for the revocation of the patents on the ground of obviousness.  Where the validity of a patent or registered design is challenged, para 4.2 (2) of the Part 63 Practice Direction requires a separate document to be attached to the Defence, Defence and Counterclaim or other pleading as the case may be headed "Grounds of Invalidity"  Such document must specify the grounds on which the validity of the patent or registered design is challenged, and include particulars that will clearly define every issue that the challenger intends to raise.

 On the morning of the first day of the trial, the Weston companies applied for permission to re-re-amend their Grounds of Invalidity to plead that the patents were invalid for lack of novelty.  They relied on an article in a trade journal that suggested that Safestand had used the invention before it applied for the patents. Safestand resisted Weston's application.  

Both parties agreed that the most relevant authority was Mrs Justice Carr's judgment in Quah Su-Ling v Goldman Sachs International [2015] EWHC 759 (Comm) where the claimant had applied for permission to re-amend her particulars of claim three weeks before the start of the trial.  Her ladyship dismissed the application for the reasons set out in paras [36] to [38] of her judgment:

"[36] An application to amend will be refused if it is clear that the proposed amendment has no real prospect of success. The test to be applied is the same as that for summary judgment under CPR Part 24. Thus, the applicant has to have a case which is better than merely arguable. The court may reject an amendment seeking to raise a version of the facts of the case which is inherently implausible, self-contradictory or is not supported by contemporaneous documentation.
[37] Beyond that, the relevant principles applying to very late applications to amend are well known. I have been referred to a number of authorities: Swain-Mason v Mills & Reeve [2011] 1 WLR 2735 (at paras. 69 to 72, 85 and 106); Worldwide Corporation Ltd v GPT Ltd [CA Transcript No 1835] 2 December 1988; Hague Plant Limited v Hague [2014] EWCA Civ 1609 (at paras. 27 to 33); Dany Lions Ltd v Bristol Cars Ltd [2014] EWHC 928 (QB) (at paras. 4 to 7 and 29); Durley House Ltd v Firmdale Hotels plc [2014] EWHC 2608 (Ch) (at paras. 31 and 32); Mitchell v News Group Newspapers [2013] EWCA Civ 1537.
[38] Drawing these authorities together, the relevant principles can be stated simply as follows:

a) whether to allow an amendment is a matter for the discretion of the court. In exercising that discretion, the overriding objective is of the greatest importance. Applications always involve the court striking a balance between injustice to the applicant if the amendment is refused, and injustice to the opposing party and other litigants in general, if the amendment is permitted;
b) where a very late application to amend is made the correct approach is not that the amendments ought, in general, to be allowed so that the real dispute between the parties can be adjudicated upon. Rather, a heavy burden lies on a party seeking a very late amendment to show the strength of the new case and why justice to him, his opponent and other court users requires him to be able to pursue it. The risk to a trial date may mean that the lateness of the application to amend will of itself cause the balance to be loaded heavily against the grant of permission;
c) a very late amendment is one made when the trial date has been fixed and where permitting the amendments would cause the trial date to be lost. Parties and the court have a legitimate expectation that trial fixtures will be kept;
d) lateness is not an absolute, but a relative concept. It depends on a review of the nature of the proposed amendment, the quality of the explanation for its timing, and a fair appreciation of the consequences in terms of work wasted and consequential work to be done;
e) gone are the days when it was sufficient for the amending party to argue that no prejudice had been suffered, save as to costs. In the modern era it is more readily recognised that the payment of costs may not be adequate compensation;
f) it is incumbent on a party seeking the indulgence of the court to be allowed to raise a late claim to provide a good explanation for the delay;
g) a much stricter view is taken nowadays of non-compliance with the CPR and directions of the Court. The achievement of justice means something different now. Parties can no longer expect indulgence if they fail to comply with their procedural obligations because those obligations not only serve the purpose of ensuring that they conduct the litigation proportionately in order to ensure their own costs are kept within proportionate bounds but also the wider public interest of ensuring that other litigants can obtain justice efficiently and proportionately, and that the courts enable them to do so."

These principles were approved by the Court of Appeal in Nesbit Law Group LLP v Acasta European Insurance Company Limited [2018] EWCA Civ 268:

"[41] The principles relating to the grant of permission to amend are set out in Swain-Mason and in a series of recent authorities. The parties referred particularly to Mrs Justice Carr's summary in Quah Su-Ling v. Goldman Sachs International [2015] EWHC 759 (Comm) at paragraphs 36-38 of her judgment. In essence, the court must, taking account of the overriding objective, balance the injustice to the party seeking to amend if it is refused permission, against the need for finality in litigation and the injustice to the other parties and other litigants, if the amendment is permitted. There is a heavy burden on the party seeking a late amendment to justify the lateness of the application and to show the strength of the new case and why justice requires him to be able to pursue it. These principles apply with even greater rigour to an amendment made after the trial and in the course of an appeal."

Judge Hacon dismissed Weston's application.  The amendment that the Weston companies sought would have been allowed had it been made in good time as it would have had a real prospect of succeeding. The problem was that the issues raised in the proposed amendment could not be resolved in the present trial.  Weston proposed that the application could be heard after trial when directions could be given for a second trial on whether the patents were invalid for want of novelty.  The judge rejected that proposal at para [20] of his judgment:

"I think that underlying the point was the judge's concern that save in exceptional circumstances parties should not be put to the expense inevitably caused by the late adjournment of a trial. Likewise, only rarely will it be appropriate to incur the waste in court time and the delay to a final judgment that will generally be caused by a late adjournment. A second trial in the present case would still give rise to those disadvantages."

Judge Hacon asked why the article could not have been produced earlier but received no explanation that satisfied him.  He concluded at para [23]:

"Applying the balance identified in point (a) of Carr J's judgment, the heavy burden identified in point (b) and in the Court of Appeal's judgment in Nesbit, plus the matters raised by Carr J in (d), (e) and (g), I think it matters a good deal that there was no satisfactory reason why prior use could not have been pleaded in good time. If it did not matter much, applications to amend Grounds of Invalidity, even on the first day of the trial, would routinely be allowed on the sole basis that something has just come to light. This would be not in accordance with the overriding objective. The application to amend is dismissed."

Claim for Patent Infringement

S.60 (1) (a) of the Patents Act 1977 provides:

"Subject to the provisions of this section, a person infringes a patent for an invention if, but only if, while the patent is in force, he does any of the following things in the United Kingdom in relation to the invention without the consent of the proprietor of the patent, that is to say—
(a)  where the invention is a product, he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise..."

The "invention" for the purposes of the Act is taken by s.125 (1) to be that specified in a claim of the patent specification as interpreted by the description and any drawings contained in that specification.  

In this case, Safestand alleged that Weston had infringed three of its patents.   In all three patents, the claim in dispute was claim 1.   Claim 1 of UK 978 was:

"1. A modular system comprising a plurality of builder's trestles, each trestle comprising a pair of upright supports connected by a crossmember upon which planks or boards can be supported in use to make a platform, at least one upright support of each trestle having an upward extension above the crossmember, the modular system comprising rails having points at which they can be attached between adjacent trestles to form a safety barrier, the spacing between the attachment points for a given rail being variable whereby the spacing between adjacent trestles may likewise be varied; the system further comprising a bracket attachable to a said crossmember, to support the otherwise overhanging ends of the planks or boards wherein said bracket comprises a pair of U-channels having downwardly facing openings to fit over the trestle crossmember, said channels being linked by a metal strip which lies along the top of the crossmember in use, and by a U-shaped tubular framework."

Claim 1 of EP738 was:

"A builders' trestle providing a safety barrier and comprising a pair of upright supports connected by a crossmember upon which planks or boards can be supported in use to make a platform, one of the upright supports having an integral upward extension above the crossmember reaching to a height at which one or more generally horizontally extending rails can be attached to form the safety barrier, characterised in that the crossmember is provided at its end opposite the upward extension with a removable upright, with a fitting for receiving the lower end of the removable upright and with further upper and lower generally horizontally extending rails which can be attached to the removable upright to form a further safety barrier, the upper and lower generally horizontally extending rails being selectively removable in use."

Claim 1 of UK822 was:

"A bracket for securing a first kickboard transversely of a second kickboard, comprising a socket dimensioned for securely receiving an end of the first kickboard and a clip for securing the bracket to the second kickboard, the clip comprising a hook part dimensioned for securely suspending the bracket from the top edge of the second kickboard, and a lateral extension aligned with the longitudinal axis of the second kickboard for stabilising the bracket thereon, characterised in that the socket comprises a back wall positioned between the first and second kickboards in use."

As each invention was a product, Judge Hacon had to determine whether any of Weston's products fell within any of the above claims and, if so, whether Weston had done any of the acts mentioned in s.61 (1) (a).

In interpreting the claims the judge was guided by s.125 (3):

"The Protocol on the Interpretation of Article 69 of the European Patent Convention (which Article contains a provision corresponding to subsection (1) above) shall, as for the time being in force, apply for the purposes of subsection (1) above as it applies for the purposes of that Article."

Art 1 of that Protocol provides:

"Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties."

When interpreting a claim a judge must put him or herself in the position of the skilled addressee (the person or persons to whom the specification is addressed also known as "the person(s) skilled in the art").  The judge must read the patent with the knowledge that such skilled possess.   Such knowledge is generally referred to as "common general knowledge" or "CGK".   Mr Justice Laddie said in Bourns Inc v Raychem Corp [[1997] EWHC 372 (Pat), [1997] EWHC 372, [1998] RPC 31:

"The common general knowledge is the technical background of the notional man in the art against which the prior art must be considered. This is not limited to material he has memorised and has at the front of his mind. It includes all that material in the field he is working in which he knows exists, which he would refer to as a matter of course if he cannot remember it and which he understands is generally regarded as sufficiently reliable to use as a foundation for further work or to help understand the pleaded prior art. This does not mean that everything on the shelf which is capable of being referred to without difficulty is common general knowledge nor does it mean that every word in a common text book is either. In the case of standard textbooks, it is likely that all or most of the main text will be common general knowledge. In many cases, common general knowledge will include or be reflected in readily available trade literature which a man in the art would be expected to have at his elbow and regard as basic reliable information."

It was agreed that the person skilled in the art was interested in the design or manufacture of scaffolds, working platforms and products affording low-level access at a construction site.  Weston argued that he or she might also be a designer of such products.   The parties filed an extensive joint statement of common general knowledge.  There were some differences between the parties which the judge mentioned between para [40] and [52] of the judgment.

Between paras [64] and [87] Judge Hacon considered the differences between the parties in their respective interpretations of claim 1 of each of the patents. These included the meaning of the word "trestle" and the use pf such trestles with cross-beams and planks. His honour considered Weston's systems between [90] and [109] and concluded at [110] that subject to experiments arranged by Weston on cross-bracing all the integers of the claims of UK978 were satisfied. He discussed those experiments between [111] and [117] and found them to be of no assistance in resolving any of the issues between the parties.  He held at [119] that UK 978 was infringed by the marketing of the KK1500 system.  As Weston did not argue that there was any feature of the KK600 system such that its sales would avoid infringement if KK1500 infringed, he found that the KK600 system also infringed on a normal construction of the claims of UK 978.  As the arguments against infringement were the same for all 3 patents, Weston acknowledged that if UK978 infringed then so too must UK 978 and EP 738.

Counterclaim for Revocation of EP 738 and UK 822

S.72 (1) of the Patents Act 1977 enables the Patents Court or Comptroller-General of Patents, Designs and Trade Marks that is to say, (the chief executive of the Intellectual Property Office) to revoke a patent on several grounds one of which is that the patent was not patentable.  One of the conditions for the grant of a patent is that it involves an inventive step (see s.1 (1) (b)).  I mentioned in the first paragraph that Weston alleged that the inventions were obvious,  That is another way of saying that they lacked an inventive step.

S.3 of the Patents Act 1977 provides:

"An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 2 (2) above (and disregarding section 2 (3) above)."

S.2 (2) defines "state of the art" as:

"...... all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way."

The Court of Appeal provided the following four-step test to determine whether an invention involves an inventive step in Pozzoli SpA v BDMO SA and another [2007] FSR 37, [2007] 1 Bus LR D117, [2007] BusLR D117, [2007] EWCA Civ 588, [2007] Bus LR D117:

"(1) (a) Identify the notional 'person skilled in the art';
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the 'state of the art' and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

The judge had already taken steps (1) (a) and (b) when considering whether the patents had been infringed.  He had also construed claim 1 of each of the patents,  In identifying the differences between the state of the art and the inventive concept he was reminded of Lord Diplock's dicta in Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd [1972] RPC 346 on page 362:

"The cross-examination of the respondents' expert followed with customary skill the familiar "step by step" course. I do not find it persuasive. Once an invention has been made it is generally possible to postulate a combination of steps by which the inventor might have arrived at the invention that he claims in his specification if he started from something that was already known. But it is only because the invention has been made and has proved successful that it is possible to postulate from what starting point and by what particular combination of steps the inventor could have arrived at his invention. It may be that taken in isolation none of the steps which it is now possible to postulate, if taken in isolation, appears to call for any inventive ingenuity. It is improbable that this reconstruction a posteriori represents the mental process by which the inventor in fact arrived at his invention, but, even if it were, inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result."

He was also referred to para [61] of Lord Justice Floyd's judgment in Koninklijke Philips NV v Asustek Computer Inc [2019] EWCA Civ 2230, [2020] RPC 1:

"If the invention claimed is, as it is here, a simple idea, then it is correct that this simple idea is the target for the obviousness attack. That does not mean, however, that the court is entitled to assume that the skilled person takes a different approach to the prior art, stripping out from it detail which the skilled person would otherwise have taken into account, or ignoring paths down which the skilled person would probably be led"

The judge mentioned para [403] of his judgment in Autostore Technology AS v Ocado Group plc [2023] EWHC 716 (Pat) in which he interpreted Mr Justice Kitchin's remarks in Eli Lilly & Co v Human Genome Sciences Inc [2008] EWHC 1903 (Pat)[2008] EWHC 1903 (Pat), (2008) 31(10) IPD 31066, [2008] RPC 29, (2009) 105 BMLR 27 that having considered cited prior art, the skilled person may conclude that it is simply not a worthwhile starting point and so put it to one side:

"Giving particular attention to the words 'starting point', as AutoStore has done, can lead away from what, in my view, Kitchin J had in mind. As Kitchin J said, the skilled person must be deemed to consider every cited item of prior art with interest, in the sense of giving it diligent consideration. It is not part of the hypothesis in law that the skilled person begins their consideration by assessing the merits of the prior art as a starting point. The skilled person may often be aware of a technical problem in the art, but he or she knows nothing about the invention and therefore cannot know how interesting the prior art may be as a starting point on the road to that invention. It is just a piece of prior art. In reviewing what the skilled person would make of it, I think that it is better to focus solely on what the prior art discloses and what it does not disclose, rather than gauging its interest to the skilled person. Having diligently considered a piece of cited prior art in its entirety at the relevant date, as must be done in every case, the skilled person either contemplates a variation on it which is the invention, or they do not. In the latter case, they put it to one side."

He mentioned the starting point because one of the items of prior art cited in relation to EP738 was a 1941 patent application. 

That application was US Patent Application No. 2 237 543 A ("Berchem"),  The other item of prior art was UK patent application GB2364733A  Improvements in and relating to builders trestles ("Kelk").  His honour considered Berchem between [133] and [140] and concluded at [141] that EP738 did not lack an inventive step over Berchem.  He turned to Kelk between [142] and [147] and found that EP738 did not lack an inventive step over Kelk.  The prior art cited in relation to UK822 was German utility model DE7827622 U ("Dobersch") and UK Patent Application No. 2 228 955 A ("Harris"),  He considered Dobersch between [148] and [157] and decided that UK822 was not obvious over that utility model at [158].   He discussed Harris between [159] and [176] and found at [177] that the patent did not lack an inventive step over Harris.  The upshot was that the patents were valid.

Counterclaim for Invalidation of the Registered Designs

S.117A (1) of the Registered Designs Act 1949 enables a design to be declared invalid on the grounds that it does not fulfil the requirements of s.1 (2) of the Act or those of s.1B to s.1D.  Weston contended that the registration of each of the re-registered designs was invalid because those designs did not depict the design of a single article and they lacked clarity and individual character having regard to prior published designs.

S.1 provides:

"(1) A design may, subject to the following provisions of this Act, be registered under this Act on the making of an application for registration.
(2) In this Act 'design' means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product or its ornamentation.
(3) In this Act—
'complex product' means a product which is composed of at least two replaceable component parts permitting disassembly and reassembly of the product; and
'product' means any industrial or handicraft item other than a computer program; and, in particular, includes packaging, get-up, graphic symbols, typographic type-faces and parts intended to be assembled into a complex product."

The judge noted at para [183] that he was required by s.6 (3) of the European Union Withdrawal Act 2018 to continue to apply the case law of the Court of Justice of the European Union and the General Court,  He also observed that he was obliged to interpret the Registered Designs Act 1949 in accordance with Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs OJ L 289, 28.10.1998, p. 28–35 (ES, DA, DE, EL, EN, FR, IT, NL, PT, FI, SV) and that relevant principles of law are derived from the Court's rulings on the the Community Design Regulation.

At para [186] the learned judge recalled that he had discussed the principles governing the interpretation of a registered design in Marks and Spencer plc v Aldi Stores Ltd [2023] EWHC 178 (IPEC):

"[11] Where the image is a photograph of a product, the design claimed consists of the features - the lines, contours, colours, shape, texture, materials and/or ornamentation - visible in the photograph ... . Usually, there will be no problem of interpretation. The present case is an exception. The point at issue is whether one of the features of each of the RDs in suit is an integrated light in the base of the bottle.
[12] A design must be interpreted objectively; the circumstances of the proprietor of the design, and by extension the intention of the designer, are not relevant, see Celaya Emparanza y Galdos Internacional SA (Cegasa) v Proyectos Integrales de Balizamiento SL (C-488/10) EU: C:2012:88; [2012] E.C.D.R. 17, at [55].
[13] Objective interpretation of a design is a matter for the court - not the court viewing the matter through the eyes of the informed user, particularly since there is no reason to suppose that the notional informed user is aware of the conventional understanding of what dotted lines, grayscale etc. are intended to convey, see Sealed Air Ltd v Sharp Interpack Ltd [2013] EWPCC 23, at [20]-[21].
[14] Products manufactured by the proprietor which are said to be protected by the registered design are irrelevant to the interpretation of the design ... [see] Samsung Electronics (UK) Limited v Apple Inc [2012] EWCA Civ 1339; [2013] ECDR 2; [2013] FSR 9."

The judge remarked at [190] that the definition of "design" in s.1 (2) of the 1949 Act was substantially the same as in art.3 (a) of the Design Regulation. The EU Intellectual Property Office publishes guidelines to explain how the Office implements the Community Design Regulation ("the Design Guidelines").  Guideline 5.2 requires each application to be in respect of a single design.  In T-9/15 Ball Beverage Packaging Europe Ltd v EUIPO [2017] EUECJ T-9/15, ECLI:EU: T:2017:386, EU: T:2017:386 the General Court upheld a decision of the EU IPO Board of Appeal that the image of a collection of beverage cans of different sizes could not be registered as it was not the design of a single object,  Mr Martin Howe QC reached a similar decision in GBL UK Trading Ltd v H&S Alliance Ltd BL O-374-21, [2022] RPC 3 when he upheld the hearing officer's finding that the representation of 4 castors could not be registered because they were not the design of a single product. 

Judge Hacon next considered whether there was an obligation for a design to be clear,  It appeared from paras [48] to [51] of the Court of Justice's judgment in  C-217/17 P Mast-Jägermeister SE v EUIPO [2018] EUECJ C-217/17P, EU: C:2018:534, ECLI:EU: C:2018:534 that such a duty was implied by art 36 of the Community Design Regulation and art 4 (2) of Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs:

"[48] According to settled case-law of the Court of Justice, the interpretation of provisions of EU law requires account to be taken not only of their wording but also of the context in which they occur and the objectives of the rules of which they form part (judgments of 19 September 2000, Germany v Commission of the European Communities (C-156/98) EU: C:2000:467, [50], and of 19 October 2017, Raimund v Aigner (C-425/16) EU: C:2017:776, [22]).
[49] As regards, first, the wording of art.36 (1) (c) of Regulation 6/2002, it provides that the application for registration of a design must contain a 'representation of the design suitable for reproduction'. That wording seems to emphasise the technical quality of the representation. However, as the Advocate General noted in [AG32] of her Opinion, the concept of representation encompasses, in itself, the idea that the design must be clearly identifiable.
[50] In addition, it should be noted that, whilst art.4 (1) (e) of Regulation 2245/2002 does not add substantive requirements to that of art.36 (1) (c) of Regulation 6/2002, it states, inter alia, that the representation must be of a quality permitting all the details of the matter for which protection is sought to be clearly distinguished.
[51] Analysis of the wording of art.36 (1) (c) therefore leads to the conclusion that the representation of the design for which registration is sought must enable that design to be clearly identified.
[52] The literal interpretation of art.36 (1) (c) of Regulation 6/2002 is confirmed by the teleological interpretation of that provision, which must contribute to the proper functioning of the system of registration of designs. Accordingly, the function of the graphic representation requirement is, in particular, to define the design itself in order to determine the precise subject of the protection afforded by the registered design to its proprietor (see, by analogy, judgment of 12 December 2002, Sieckmann v Deutsches Patent- und Markenamt (C-273/00) EU: C:2002:748, [48]).
[53] In that regard, it should be noted that the entry of a design in a public register has the aim of making it accessible to the competent authorities and the public, particularly to economic operators. On the one hand, the competent authorities must know with clarity and precision the nature of the constituent elements of a design in order to be able to fulfil their obligations with the prior examination of applications for registration and to the publication and maintenance of an appropriate and precise register of designs (see, by analogy, judgments of 12 December 2002, Sieckmann EU: C:2002:748, [49] and [50], and of 19 June 2012, Chartered Institute of Patent Attorneys v Registrar of Trade Marks (C-307/10) EU: C:2012:361, [47]).
[54] On the other hand, economic operators must be able to acquaint themselves, with clarity and precision, with registrations or applications for registration made by their current or potential competitors and thus to obtain relevant information about the rights of third parties (see, by analogy, judgments of 12 December 2002, Sieckmann EU: C:2002:748, [51], and of 19 June 2012, Chartered Institute of Patent Attorneys EU: C:2012:361, [48]). Such a requirement, as the General Court points out, in essence, in [47] of the judgment under appeal, is intended to ensure legal certainty for third parties.
[55] It follows that the Community design system arising from Regulation 6/2002 confirms the interpretation that results from the wording of art.36 (1) (c) of that regulation by requiring that the representation of a design for which registration is sought makes it possible to identify that design clearly.
[56] That conclusion is indeed also confirmed by the fact that the obtaining of a date of filing, which, in accordance with art.38 of Regulation 6/2002, is the date on which documents containing the information specified in art.36(1) are filed with EUIPO, enables the proprietor of the design concerned to benefit from the right of priority, as provided for in art.41 of Regulation 6/2002. Contrary to Mast-Jägermeister's contention on the basis of art.4 of the Paris Convention, the wording of which corresponds, in essence, to that of art.41 of Regulation 6/2002, the fact that the date of filing enables that right of priority to be obtained justifies in itself the requirement that the representation must not lack precision as regards the design for which registration is sought. As the Advocate General noted, in essence, in [AG55] of her Opinion, an imprecise application for registration would give rise to the risk that a design in respect of which the matter to be protected is not clearly identified would obtain excessive protection under the right of priority.
[57] Finally, the interpretation that art.36 (1) (c) of Regulation 6/2002 requires the representation of the design contained in the application for registration to enable the matter for which protection is sought to be clearly identified is also confirmed by the contextual analysis of that provision.
[58] In that respect, since art.36 (5) of Regulation 6/2002 provides that the application for registration must comply with the conditions laid down in Regulation 2245/2002, reference should be made to other provisions of the latter regulation relating to the application for registration.
[59] Thus, it should be noted, as EUIPO correctly submits, that art.12 (2) of Regulation 2245/2002 provides that a correction of the application for registration cannot change the representation of the design concerned. That necessarily implies that, before the application for registration can obtain a date of filing, it must contain a representation that enables the matter for which protection is sought to be identified. It is not possible to interpret Regulation 6/2002 as allowing an application for registration to be considered validly filed when it does not enable the design for which registration is sought to be clearly identified and that deficiency can no longer be remedied.
[60] Accordingly, it is apparent from [49]–[59] of the present judgment that the literal, teleological and contextual analysis of art.36 (1) (c) of Regulation 6/2002 leads to the conclusion that that provision must be interpreted as requiring the representation of a design for which registration is sought to clearly identify that design, which is the subject of the protection sought by that application.
[61] It follows from art.46 (2) of Regulation 6/2002 that an application which contains deficiencies relating to the requirements referred to in art.36 (1) of that regulation that have not been remedied within the prescribed period is not to be dealt with as an application for a registered Community design and that, consequently, no date of filing is attributed to it."

Safestand had argued that a design can be invalidated only on the grounds provided by s.11ZA of the Registered Designs Act 1949 and that section makes no reference to clarity,  Neither does art 25 of the Community Design Regulation.  However, the judge noted that s,11ZA (1) (a) does provide that a design may be declared invalid on the ground that it does not fulfil the requirements of s.1 (2) and s.1 (2) contains a definition of "design".  His honour observed at [214]:

"There is an obvious policy reason for saying that if it is not possible to identify with sufficient certainty the design registered - because the illustrations in the registration are unclear - then the registration is invalid."

The judge noted that Mast-Jägermeister was concerned only with arts 36 and 38 which applied to registration and not on the position after registration.  However, the General Court's judgment in Ball Europe was based on art 3 (a) of the Community Design Regulation which was the equivalent of s.1 (2) of the 1949 Act,   As it was not in dispute that the resolution of whether a design is of a single article was relevant to validity after registration, it seemed to the judge that the same principle must apply to clarity of design.

Judge Hacon noted that Weston's arguments on clarity and whether the illustrations depict a single article overlapped.   He considered each of the re-registered designs copies of which were in the schedule to His Honour's judgment.  He directed himself as follows at para [223]:

 "The first issue is whether in the case of each of the RRDs in suit, taking all the views into account, the registration is seeking to protect a single design and thus a design within the meaning of s.1(2) of the 1949 Act. The second is whether it is possible to tell with reasonable certainty that the design is of a single article. As I have said, the latter implies being able to tell what the design is."

He concluded at [233]:

"The design represented in the images of RRD 0001 is not a single design. If I had not arrived at a clear conclusion about that, I would have decided that is not possible to tell with reasonable certainty that it is a single design. On either ground RRD 0001 is not validly registered."

He addressed RRDs 0004 and 0005 in [234] and [235] holding at [236] that neither RRD 0004 nor RRD 0005 was validly registered,

The judge dealt with Weston's argument that the designs lacked individual character having regard to the prior art shortly in paras [252] and [253],  Because no single design could be identified and the designs lacked clarity it was difficult to consider whether they were invalid for want of individual character.  Weston said that it had raised the argument only as a squeeze in answer to Safestand's case on infringement.   The case was fully pleaded only in the re-re-amended grounds of invalidity which the judge had disallowed.  His honour did not consider the point further.

Claim for Registered Design Infringement

Both sides followed the approach set out by Judge Hacon in Cantel Medical (UK) Ltd v ARC Medical Design Ltd [2018] EWHC 345 (Pat) at [181] as modified in Marks and Spencer plc v Aldi Stores Ltd [2023] EWHC 178 (IPEC), at [19]:

"(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, and
(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."

The judge also referred to paras [51] to [54] of Lord Neuberger's judgment in Magmatic Ltd v PMS International Group plc [2016] WLR(D) 126, [2016] RPC 11, [2016] ECDR 15, [2016] UKSC 12, [2016] Bus LR 371, [2016] 4 All ER 1027 as colour played a significant part in the comparison of the RRDs and Weston's trestles:

"[51] Kitchin L.J.'s third criticism of Arnold J.'s judgment was that he failed to take into account the fact that the CRD image, as exemplified in [1] above, was in two colours, one, shown grey, for the greater part of the body (including the horns), and the other, shown black, for the wheels and spokes, the strap and the strip. As mentioned in [14] above, Arnold J. described the CRD as constituting a claim "evidently for the shape of the suitcase" and that decorations on the Kiddee Case were therefore to be ignored. On the other hand, Kitchin L.J.'s view was that the colouring contrasts on the CRD and the allegedly infringing articles represented a potentially significant difference, as the wheels and handles (ie horns) on the CRD rather stood out as features, whereas on the Kiddee Case the wheels were very largely covered, and the handles (at least on the first of the two examples in [4] above) had the same colour as the body.
[52] If, as in the case of the CRD, an applicant for a Community Registered Design elects to submit CADs of an item, whose main body appears as a uniform grey, but which has a black strip, a black strap and black wheels, the natural inference is that the components shown in black are intended to be in a contrasting colour to that of the main body. That conclusion is reinforced by the short passages from Dr Schlötelburg's article cited in [31] and [46] above. It is also supported, as Kitchin L.J. pointed out, by the fact that other features such as the clasps or the horns are not shown in a contrasting colour. It was argued by Magmatic that the wheels were shown black because they had a specific function, but I find that unconvincing: there is no logical connection between the colour and the function, and it does not explain the black strip.
[53] Accordingly, I consider that Kitchin L.J. was right in concluding that the CRD claimed not merely a specific shape, but a shape in two contrasting colours - one represented as grey and the other as black on the images, and that Arnold J. was correspondingly wrong in holding that the CRD was a claim simply for a shape. Once one concludes that a registered design claims not just a three dimensional shape, but a three dimensional shape in two contrasting colours, one colour for the body and another colour (or possibly other colours) for specified components, then it seems to me that it must follow that, when one compares the allegedly infringing article with that design on a "like for like" basis, one must take into account the colouring on that article. If the predominant colour of the first example of the Kiddee Case shown in [4] above was the front part and was coloured red, then one would presumably compare it with the CRD on the basis that the CRD was principally coloured red, but that the wheels and spokes, strap and strips of the CRD were in a contrasting colour, and the Kiddee Case was differently coloured.
[54] I therefore consider that Kitchin L.J. was right in his third criticism of the judge. I should perhaps add that counsel for Magmatic pointed out that Arnold J. rightly took into account that the wheels on the Kiddee Case were substantially covered by wheel arches whereas the wheels on the CRD were not. That is plainly correct, but Kitchin L.J.'s criticism was that the judge nowhere referred to the fact that the wheels of the CRD were shown having a different colour from the rest of the image (other than the strap and the strip)."

The judge observed at [239] of his judgment:

"Thus, although each case will turn on its facts, where the proprietor of a registered design has used colour and thereby made colour a significant aspect of the distinctiveness of the design over the prior art, colour may also play a significant part in the assessment of overall impression when the registered design is compared to a design alleged to infringe."

The parties agreed that the design sector was "low-level platforms".  The judge identified the informed user as the owner of a small construction business that uses low-level platforms.  It was agreed that the function of a builders' trestle and the applicable British Standards constrained design freedom, in particular the placement of the uprights and the handrails and the spacing of the trestles.   No finding on infringement was made because a complete analysis of the designs of the 3 RRDs when compared and Weston's products would, absurdly, require the task to be done by reference to all possible alternative designs for each RRD. That seemed to the judge to be a pointless exercise. He pointed out that the root of the difficulty was that there was no single design claimed for any of the RRDs in suit.

Comment

This was a gargantuan case that is authoritative on: 

• the exercise of the judicial discretion on whether or not to allow amendments to statements of case, 
• the construction of claims, 
• revocation of patents on grounds of obviousness,
• invalidation of registered designs for lack of design clarity and unity, and
• infringement of registered designs.

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