29 October 2018

Why foreigners don’t ‘get’ the English: General Court rejects “obvious” English evidence

In the 1980’s, taking my parents on holiday to Italy, my father wanted to buy candies for his colleagues. The shop owner weighed out a kilo, which was the equivalent £20 (then). Dad looked horrified, shook his head and said “No, I said a pound [lb] of sweets”. The shop keeper looked blankly, not understanding the English. So my father simply raised his voice, repeating what he had said, expecting the shop keeper this time to understand. Obviously, the increased volume did not equate to an increased understanding. Using my vacation Italian, I explained only half a kilo was required. Fast forward nearly 40 years in the EU General Court. While the English has undoubtedly improved, the understanding may not have done: on both sides. This article looks at the problems raised by the use of evidence acceptable in one jurisdiction being insufficient in the EU Courts, as exemplified in the case Mamas and Papas Ltd v EUIPO (Jane Wall-Budden) Case T-672/17.

“Hands, Knees and Bumps a Daisy”

The case concerned an invalidity action against a registered design for a “bumpster”, which is a padded fixing to the bars of a cot, in order to prevent the baby from injuring itself against the sides. The cot bumper in issue had been designed by Mrs Wall-Budden, who obtained a UK design registration on 30th April 2010, and a Community design registration on 18th August 2010. The design was represented by 7 photographs of the cot bumper from different sides and angles. At the time of creation of the design although there was a British standard concerning cots, it did not cover cot bumpers. Therefore, the only limitation restricting the freedom of a designer was the safety requirement that the baby must not become trapped.

The action seems to have been prompted by a cease and desist letter dated 18th June 2014 sent to Mamas and Papas Ltd (‘M&P’) by Mrs Wall-Budden’s company (Bumpsters Limited), which was accompanied by a draft set of particulars of claim. The particulars stated that Mrs Wall-Budden had designed a product called “Bumpster I” first marketed around March 2008. The second design (ie the one in issue) was called “Bumpster II”. Also included were 3 photographs of Bumpster I, but these were undated. M&P launched the invalidity attack on 12th January 2015.

As evidence in the invalidity action, as well as the letter, particulars and images, M&P also produced an “expert” report from its own commercial manager. This claimed that a designer of cot bumpers had a “very limited degree of freedom” in terms of the size of the bumper, the degree of padding, means by which it is attached to the cot bars and so on. Many of the features of the cot bumper related to technical features, which were solely dictated by a technical function.

Despite rejecting the attack, the Invalidity Division accepted that the prior design was “deemed to have been disclosed to the public”, no doubt because of the particulars stating the Bumpster I design was first marketed in March 2008, and Mrs Wall-Budden had not contested this. The Invalidity Division considered that such evidence could not be ignored. They did, however, consider that the designs were not identical and that the design in issue would produce a different overall impression on the informed user. M&P appealed.

Cry baby

The appeal essentially fell into two parts: the issue surrounding whether Bumpster I had been disclosed to the public, and the degree of freedom a designer had (which would affect the overall impression on the informed user). In terms of the latter, the key point arising from Board of Appeal’s review of previous case law, in paragraph 37, was that:-

“The greater the designer’s freedom in developing the challenged design, the less likely it is that minor differences between the designs at issue will be sufficient to produce a different overall impression on an informed user. Conversely, the more the designer’s freedom in developing the challenged design is restricted, the more likely minor differences between the designs at issue will be sufficient to produce a different overall impression on an informed user”.

Accordingly, having found that the designer’s degree of freedom was limited (contrary to the Invalidity Division‘s own finding), taking the Bumpster I design as the starting point, there were differences in measurement, number and positioning of fastenings and also the appearance of the padding. Given the limitations, this meant that the informed user would notice such differences and accordingly a different overall impression would be produced.

The Board of Appeal also took a contrary view in terms of the prior disclosure of Bumpster I. It considered that in order to establish disclosure this must be demonstrated by solid and objective evidence and not proved by means of probabilities or substantiations. What M&P had relied on was the 3 undated images and the letter with the draft particulars of claim. The Board of Appeal considered that absent any additional evidence this was insufficient to draw the conclusion that Bumpster I prior dated the registered design in issue. As the burden of proof was on M&P, this evidence was regarded as insufficient. The fact that the design holder did not contest the disclosure did not discharge the obligation on M&P to furnish proof of disclosure. Accordingly, the Bumpster I design could not destroy any individual character for the design in issue. M&P appealed again.

Toys out of the pram

The appeal had 4 grounds, the first being whether Bumpster I had been made available to the public. As is often the case with the General Court (and CJEU), they will consider what “in essence “the actual pleas relate to, and then only consider one issue (being the main issue). The reason is that if that upholds or finds fault with the previous decision, that is an end of the matter and the other issues need not be considered. The first issue was sub-divided in two: the facts surrounding the disclosure to the public; and the correct assessment of the evidence.

On public disclosure, the General Court pointed out an invalidity applicant was free to choose such evidence as it considered necessary, but that it must be solid and objective evidence. Accordingly, the Board of Appeal was correct to hold the evidence was insufficient to prove disclosure of the earlier Bumpster I design absent any additional evidence or proof.

As to the particulars and the design holder’s statement regarding marketing of Bumpster I, this evidence was considered not having been derived from an independent source, and so insufficient to prove disclosure of the earlier design. Moreover, simply because the design holder had not challenged the disclosure did not mean M&P had overcome the burden of proof threshold: this evidence was also insufficient. As there was no evidence, the Board of Appeal could not have got its assessment wrong (it did, in any event, take it into consideration) the first plea was rejected in its’ entirety. As the other points were all based on the prior disclosure, they were not considered further.

Baby out with the bath water

Having the design holder give the date of first marketing of Bumpster I in a pleading, albeit a draft one, an English Court would have considered that as evidence of fact. Who better to know than the design holder herself? This is, sadly, where English lawyers go wrong. Foreign courts simply do not accept the approach taken by English courts and require evidence which an English lawyer would consider unnecessary, or else fail to take into consideration evidence such as witness statements from eg a director from one of the parties, as this is not ‘independent’.

In this case, M&P fell into the trap that what might appear a winning hand before an English Court would also work in a foreign tribunal. By appealing and repeating the same message over and over again, ever more loudly, like my Dad, M&P considered the foreign tribunal would eventually understand. Actually, the foreign tribunal did understand but were not prepared to accept it because what they consider to be evidence of proof is different to that of an English Court.

Banging your head against cot sides, even with a bumper, hurts: isn’t it time English lawyers stopped and learned the lessons of this case?