Case Background

• The Study Bed Company filed an invalidity application against UK registered design no. 6248940 owned by Fradur S.A which had a priority date of 13 June 2022
• The design covered by the registration is indicated to be an articulated parallelogram mechanism for furniture movement.  
• Registered design images:

• The Study Bed Company claimed that they sell a furniture component that assists in the conversion of a desk to a bed and vice versa and have been purchasing this item for onward sale since 2006, first selling the product in the UK in 2007.

Selection of Comparison Images of Contested Design and Prior Art:

Novelty Assessment

• The Hearing Officer accepted there were some differences between the designs (although this may simply have been due to the lack of visibility in the images of the prior art).
• The burden of proof was on The Study Bed Company to show that any differences between the designs were immaterial.
• The adjustability (or lack of) of the length of the arm of the product is something that would have been relatively easy for The Study Bed Company to demonstrate with evidence, if it was in fact a feature of the prior art, but it had not done so.
• The arm length was not an immaterial difference and so the Hearing Officer did not consider  the registered design lacked novelty.

Individual Character Assessment

• Informed User: The informed user was held to be an individual involved in the business of manufacturing furniture, but also may include members of the general public who engage in DIY.
• Design Corpus: No evidence was filed regarding the relevant type, range or variety of furniture mechanisms that are available as part of the design corpus before the priority date.
• Design Freedom: The designer will have been constrained by the function of the product and the specific movement that needs to be facilitated, however there could nonetheless have been some variation in the specific construction of the mechanism, the shape of its parts and the way those parts are intended to move.
• Features Solely Dictated by Technical Function: Any adjustability of the design which enables the mechanisms to fit to a part of furniture is a solely functional aspect which could not be attributed weight in the assessment of the overall impression.
• Overall Impression: The prior art shares the same attachment mechanisms at each point, with the same number of holes in the same positions. The appearance of the individual limbs of the mechanism are very similar, as is the shape of the bracket. The differences between the designs were not sufficient to create a different overall impression.
• Consequently, the registered design did not have individual character.

Conclusion

The registered design was declared invalid on the basis it did not have individual character and a costs award was made in favour of The Study Bed Company.

Key Takeaway Points

1. A registered design which is considered novel will not necessarily be considered as having individual character – the legal assessments are different.
2. It is important to show as many different views of the prior art as possible, including showing any adjustability of the design (where relevant) and identical views of the prior art to the registered design to make comparison easier.