The Cheshire Cat design - use of dotted lines in representations
This member of the IPKat team was present, together with our own dear blogmeister, at the two-day celebratory conference in Alicante to mark the 10th anniversary of the Community design.
One of the topics that arose in discussion was the use of dotted lines in representations. Your correspondent in his own presentation disagreed with the finding of both the High Court and the Court of Appeal that the dotted lines in the Apple/Samsung case referred to a border visible beneath a transparent surface (and, for that matter, the finding by the Patents County Court in the later case of Kohler Mira Ltd v Bristan Group Ltd that dotted lines referred to a transparent face plate). He maintained his conviction in the face of challenge from a senior member of the judiciary who was present in the audience, and who staunchly upheld the Apple/Samsung decisions.
Many practitioners are concerned that the understanding of the courts and litigators may be diverging from those who regularly apply these conventions in their daily work before OHIM. For such practitioners, dotted lines basically mean that the feature is shown for illustrative purposes, so that generally its presence will be optional.
So, what is the difference between showing a feature in dotted lines and not showing it at all?
Most practitioners necessarily proceed on the assumption that showing a feature in dotted lines is broader than not showing it at all. If a feature (such as a border) is not shown, then that feature should be considered to be absent, and therefore the presence of such a feature in an alleged infringement would be a point of difference from the registration. On the other hand, if the feature is shown in dotted lines, then it may generally be present or absent in an alleged infringement, and both possibilities are encompassed by the registration. It may even, arguably, be present in modified form in an alleged infringement and still conform to the registration.
These are conventions that practitioners assume. But are they correct? What is frustrating is that, in the UK cases so far, there has been very little guidance as to whether this understanding of the conventions will be accepted by the courts, and sometimes the legal submissions of the parties seem to be entirely contrary to the understanding of practitioners. In the Kohler Mira/Bristan case, the submissions of the parties, as recorded in the final judgement, are unrecognisable and somewhat incomprehensible to this Kat.
The showing of features in dotted lines is not however always without limitation of the design, and here the practice of practitioners and recent UK jurisprudence probably agrees. This is where features in broken lines indicate the context of the design, and may therefore constrain the claimed design (for example by indicating scale, or the product in which the design is incorporated) and thereby be limiting. This is consistent with the decision in recent the case of Gimex International Groupe Import Export v The Chillbag Company Limited & Others (relating to Community Registered Design No. 616057-0001, first representation shown above) where Judge Birss stated, notwithstanding that the bottle (and ice) were shown in broken lines, that :
On the other hand, there are clearly cases where the dotted line conventions have been pushed too far, and created results of very dubious validity. The most extreme version is dubbed by this commentator the “Cheshire Cat design” – one where so much of the original product design is dotted that, like the Cheshire Cat’s smile, only a solitary, isolated feature hangs disembodied in the air. The IPKat hesitates to name such cases, but hopes that his readers will have seen them. Merpel suspects that it may be a very long time before the owner of such a registration risks taking it to a court.
One of the topics that arose in discussion was the use of dotted lines in representations. Your correspondent in his own presentation disagreed with the finding of both the High Court and the Court of Appeal that the dotted lines in the Apple/Samsung case referred to a border visible beneath a transparent surface (and, for that matter, the finding by the Patents County Court in the later case of Kohler Mira Ltd v Bristan Group Ltd that dotted lines referred to a transparent face plate). He maintained his conviction in the face of challenge from a senior member of the judiciary who was present in the audience, and who staunchly upheld the Apple/Samsung decisions.
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| RCD No. 616057-0001 |
So, what is the difference between showing a feature in dotted lines and not showing it at all?
Most practitioners necessarily proceed on the assumption that showing a feature in dotted lines is broader than not showing it at all. If a feature (such as a border) is not shown, then that feature should be considered to be absent, and therefore the presence of such a feature in an alleged infringement would be a point of difference from the registration. On the other hand, if the feature is shown in dotted lines, then it may generally be present or absent in an alleged infringement, and both possibilities are encompassed by the registration. It may even, arguably, be present in modified form in an alleged infringement and still conform to the registration.
These are conventions that practitioners assume. But are they correct? What is frustrating is that, in the UK cases so far, there has been very little guidance as to whether this understanding of the conventions will be accepted by the courts, and sometimes the legal submissions of the parties seem to be entirely contrary to the understanding of practitioners. In the Kohler Mira/Bristan case, the submissions of the parties, as recorded in the final judgement, are unrecognisable and somewhat incomprehensible to this Kat.
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| The Cheshire cat as envisioned by illustrator John Tenniel |
"The design has a square base, its height is low enough such that a normal wine bottle will sit proud of the top of the bag and its width is wide enough to accommodate water and ice along with the wine bottle. These elements of height and width give the product an appearance reminiscent of an ice bucket when it contains a bottle of wine. The bottle is sitting proud of the top of the bag in a similar manner to a bottle in an ice bucket."Here, therefore, the dotted features of the bottle and ice indicated the dimensions of the product, and its identity as an ice bucket bag to contain a bottle.
On the other hand, there are clearly cases where the dotted line conventions have been pushed too far, and created results of very dubious validity. The most extreme version is dubbed by this commentator the “Cheshire Cat design” – one where so much of the original product design is dotted that, like the Cheshire Cat’s smile, only a solitary, isolated feature hangs disembodied in the air. The IPKat hesitates to name such cases, but hopes that his readers will have seen them. Merpel suspects that it may be a very long time before the owner of such a registration risks taking it to a court.
