PRINT RITE (A&J) LTD v. WOBBLEWORKS, INC.

HCMP 90/2017

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NO 90 OF 2017

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JUDGMENT

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Background

1.  This is the plaintiff’s application for a declaration under section 55 of the Registered Designs Ordinance (Cap 522) (“RDO”) that its proposed dealings with the “CoLiDo 3D Pen” (“the CoLi Pen”) in Hong Kong would not constitute infringement of the following registered designs of the defendant:

(a)  Registration No 1402448.7M001 (“RD1”);

(b)  Registration No 1402448.7M002 (“RD2”);

(c)  Registration No 1402448.7M003 (“RD3”); and

(d)  Registration No 1402448.7M004 (“RD4”)
(collectively “the RDs”).

2.  All the RDs have a priority claim of 15 September 2014, and they are all registered in respect of “handheld three-dimensional drawing device”.  The features of the design for which novelty is claimed are “the pattern, ornament, shape or configuration of the article as shown in the RDs except in dashed lines in the representations.”

3.  I was ably assisted by the detailed skeleton arguments and the submissions made by Mr Wong for the plaintiff and Mr Hughes for the defendant.

Legal principles

4.  Section 55 of the RDO stipulates as follows:

“ Without prejudice to the court’s jurisdiction to make a declaration apart from this section, a declaration that an act does not, or a proposed act would not, constitute an infringement of a registered design may be made by the court in any proceedings between the person doing or proposing to do the act and the registered owner, notwithstanding that no assertion to the contrary has been made by the registered owner, if it is shown that–

(a) that person has applied in writing to the registered owner for a written acknowledgement to the effect of the declaration claimed, and has furnished him with full particulars in writing of the act in question; and

(b) the registered owner has refused or failed to give any such acknowledgement.”

5.  Section 31 of the RDO stipulates as follows:

“ (1) Subject to this Ordinance, the registration of a design under this Ordinance gives to the registered owner the exclusive right–

(a) to make in Hong Kong or import into Hong Kong–

(i) for sale or hire; or

(ii) for use for the purpose of trade or business; or

(b) to sell, hire, or offer or expose for sale or hire in Hong Kong,

any article in respect of which the design is registered and to which that design or a design not substantially different from it has been applied.

(2) The right in a registered design is infringed by any person who, without the consent of the registered owner and while the registration is in force —

(a) does anything which by virtue of subsection (1) is the exclusive right of the registered owner;

…

(4) The right in a registered design is not infringed by the reproduction of a feature of the design which, by virtue of paragraph (b) of the definition of ‘design’ in section 2(1), is not taken into account for the purpose of determining whether the design is registrable.

…. ”

6.  Section 2(1) of the RDO provides the definition of “design” as follows:

“ ‘design’ (外觀設計) means features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye, but does not include–

(a) a method or principle of construction; or

(b) features of shape or configuration of an article which–

(i) are dictated solely by the function which the article has to perform; or

(ii) are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part;”

7.  There is no dispute between the parties as to these basic statements of the statutory position.  Where the parties part company is over the degree of resemblance necessary for infringement of the RDs.

The application of the legal principles

8.  The plaintiff’s case is that provided there are differences between the RDs and the design of the alleged infringing product, which cannot be dismissed as insubstantial, there will be no infringement.  They rely on a statement to this effect in the leading text in this area: Russell-Clarke & Howe on Industrial Designs 9^th edition (2016), §3-188 where the learned authors suggest that the basic structure of the exercise required in case of this kind is as follows:

(a) identifying at a purely physical level what needs to be looked at and compared with what;

(b) identifying the features which constitute the design in each case;

(c) identifying the similarities and differences between the two cases;

(d) unless there are no differences between the features which constitute the design in each case, the final step involves attributing some degree of importance or weighting to those features which are similarities, and those which are differences.  If the differences can then be regarded as unimportant, there will be infringement.

Mr Hughes for the defendant accepted that this was the correct approach.

9.  In order to ascertain what the RD is, so that it may be compared with the alleged infringing product, it is necessary to examine the representation of the design on the register.  An actual manufactured article embodying the design may also be looked at to assist the process of comparison: Benchairs Ltd v Chair Centre Ltd (1973) FSR 123, at 126.

10.  I was provided by way of exhibits to the evidence filed with a number of actual manufactured articles being other 3D pens referred to in evidence which have entered the market.

11.  I note in parenthesis that one of these exhibits was a 3Doodler 3.0 produced by the plaintiff which the defendant submitted at the hearing was not the appropriate model since the RDs related to a prior version, the 3Doodler 2.0. Nothing however turns on this since the parties are agreed that my analysis should proceed by way of comparing the RDs to the prior art and thereafter by comparing the CoLi Pen to the RDs.  I would only add that the defendant clearly took the view that it would be of no assistance to produce the actual manufactured article, which incorporates the RDs for me to look at.

12.  It was the plaintiff’s submission that the law required me to concentrate on features which have eye appeal and functional considerationsand features which are there for wholly functional purposes should generally be ignored: Russell-Clarke §3-191; Babyzen v Zhongshan Yuyu Baby Products Co Ltd HCA 74/2017, 28 August 2017, at §27.

13.  It was however agreed that in certain cases functional featuresmay well have eye appeal and so I should not dismiss consideration of them solely because of their functionality.  The defendant prayed in aid here the finding in Interlego AG v Tyco Industries Inc & Ors [1987] HKLR 619 although as I have said there is no dispute about this.

14.  It was also agreed that the eye to which appeal must be made and the eye which is to judge is not the eye of the court, but the eye of the customer.  The underlying purpose of design registration is to give to the owner of the design the commercial value resulting from the customer’s preferring the appearance of articles which have the design to those which do not have it: Amp Inc v Utilux Pty Ltd (1971) FSR 572 at 576 – 577.  In this respect I was also reminded that the law required me to disregard the question of whether the design had any artistic merit.

15.  The plaintiff’s submission as to the way I should proceed taken from Russell-Clarke and English jurisprudence was that once that features of the RD and of the alleged infringing product which count as part of the “design” have been identified, it is then necessary to compare them to see whether or not any differences between those features are substantial.  If a feature of the RD which is an essential feature of that design is not present on the alleged infringing product, then there can be no infringement: Russell-Clarke §3-194.

16.  Mr Wong further submitted that it has long been the law that where the alleged infringement only has that part of the RD which was old and has not taken that which is new, there will be no infringement.  Thus, where the RD differs from what has gone before only by some one particularfeature, then unless the alleged infringing product embodies that feature, it cannot possibly be an infringement.  If only small differences separate the RD from what has gone before, then equally small differences between the alleged infringement and the RD will be held to be sufficient to avoid infringement: Staples v Warwick (1906) 23 RPC 609; Sommer Allibert (UK) Ltd & Anor v Flair Plastics Ltd [1987] RPC 599 at 623; Russell-Clarke §§3-196 to 3-202.

17.  It was clear therefore and conceded by both parties that I needed to have regard to the prior art when comparing the CoLi Pen to the RDs.

18.  Given the absence of direct authority on an application for negative declaration under section 55 of the RDO, Mr Hughes’s submission focused on the test for infringement cases in Hong Kong since this is an area where there is precedent which can be called on.  Mr Hughes relied in particular on the relevant test for infringement set out in Tang Fun Kee Manufacturing Co Ltd v Fortuna Plastic Manufactory [1980] HKC 555, 560:

“ The defendants nevertheless say that, even so, D1 does not infringe the registered design. Whether it does or not is a matter of fact. I have to judge the matter solely by the eye. In deciding whether or not there has been infringement, I must do so with the inexpert eye of a customer—I must consider solely the shape and configuration and not the object for which the article was made. (See Hecla Foundry Co v Walker Hunter & Co (1889) 6 RPC 554.) I am entitled to look not only at the registered design but also at the article manufactured therefrom. And I then can lay that side by side with the alleged infringing article and make mycomparison. I must also apply what has been called somewhat infelicitously ‘the doctrine of imperfect recollection’. In the case Valor Heating Co Ltd v Main Gas Appliances Ltd [1973] RPC 871, Whitford J said at 878:

In considering registered designs you must consider infringement not merely upon the basis of a side by side comparison, but also upon the basis of having had a look at the registered design, then having gone away and come back and perhaps been put in a position of deciding whether same article is the one you originally saw.

And applying all these tests, I must then answer the question, is D1 substantially different from the registered design? I must also take into account the principle that the better known the design the narrower the scope of the protection. (See Saunders v Wiel (1893) 10 RPC 29 and Deans Rag Book Co v Pomerantz [1948] RPC 1.)

There are undoubtedly differences between D1 and the presentations and P1. The cross section is different—the plaintiffs’ article being basically square whereas the defendants’ article is roughly hexagonal.  The tops of the two articles are different—the top of P1 is flat whereas that of D1 is peaked, removable and placeable on the base.  The back of D1 is different in profile and position from that of Pl.  Are these differences of such importance as to cause me to say that the two articles are substantially different?  In my judgment they are not.  Viewing the articles side by side, comparing D1 with the representations, and applying the doctrine of imperfect recollection, I consider that there has been infringement.  The general configurations of P1 and D1 are the same, the strap and the logo and the switch areall in the same position.  The question to be answered is, has the substance of the design been taken, and in my judgment it has.”

19.  The parties were also agreed that the primary comparison to be made is between registered design and alleged infringing article (see A Fulton Co Ltd v Totes Isotoner (UK) Ltd (2003) RPC 27).

20.  Mr Hughes also referred me to the Court of Appeal judgment in Thermos Ltd v Aladdin Sales and Marketing Ltd [2002] FSR 11 at §9:

“ The judge accepted that the 1949 Act required a comparison between the design as shown in the representations and the allegedinfringement. However he recorded that in the course of the case ‘by and large, everybody looked at the physical embodiment of the thermos design rather than designs representation.’ He went on to state that in reaching his conclusion he had checked again with the actual representations. That approach cannot be faulted,but in my view it is better in a case such as the present to use the drawings chosen by the proprietor to show his design as that ensures that the design features chosen by the draughtsman are concentrated.”

and to Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2008] FSR 8 at 212 where Jacob LJ had this to say:

“ [3] The most important things in a case about registered designs are:

1. the registered design;

2. the accused object; and

3. the prior art.

And the most important thing about each of these is what they look like. …”

21.  Mr Hughes specifically referred me to the latter case because of the nature of his submission, to which I shall return, that I should focus on the general appearance and similarity as opposed to the more forensic examination urged upon me by Mr Wong.

22.  It was quickly apparent therefore that the alternative approachescontended for by the parties were not wholly consistent and in part this may be the result of the development of English law, with which Hong Kong law has not kept pace.

23.  The RDO followed closely the provisions of the Registered Designs Act 1949 before its substantial amendment in 2001 to bring it into line with emerging EU legislation.  Mr Wong referred me in this connection to the relevant provisions and their differences set out in Russell-Clarke in A5-007 and A2-013 respectively and it is appropriate to highlight these here.

24.  The pre-2001 law which accords with Hong Kong law was in these terms:

“ 7.—(1) The registration of a design under this Act gives the registered proprietor the exclusive right—

(a) to make or import—

(i) for sale or hire, or

(ii) for use for the purposes of a trade or business, or

(b) to sell, hire or offer or expose for sale or hire,

an article in respect of which the design is registered and to which that design or a design not substantially different from it has been applied.”

25.  The post-2001 position however is in the following terms:

“ 7.—(1) The registration of a design under this Act gives the registered proprietor the exclusive right to use the design and any design which does not produce on the informed user a different overall impression.”

26.  It can immediately be seen that the wording of the tests is very different and it is easy to see how confusion might arise but Mr Wong also helpfully referred the court to a passage in Russell-Clarke §11-014 summarizing the position in Hong Kong:

“ However, most of the substantive provisions of the 1997 Ordinance are closely modelled on the registered design legislation then in force in the UK—namely the RDA(A) before it was amended in order to conform to the new EU harmonised system. Thus, the definition of ‘design’ under the Ordinance is word-for-word identical to the definition in RDA(A) s.1(1). Like the RDA(A) (UK), the Hong Kong Ordinance provides that a design must be ‘new’ in order to be registrable, and a design shall not be regarded as new if it differs from a prior design only in immaterial details or in features which are variants commonly used in the trade. The test of infringement is the ‘not substantiallydifferent’ test, the same as that under RDA(A) (UK). ‘Importation’ means simply bringing an article into Hong Kong, whether to market it within Hong Kong, for transit, or otherwise.”

27.  It was his submission that the defendant, in urging me to adopt a more impressionistic approach to the exercise with which I am charged, had adapted the wrong test.

28.  In his skeleton Mr Hughes put it this way:

“ 43. The correct test is whether the CoLiDo 3D Pen is substantially different from the Registered Designs as a whole in the mind of the consumer, having regard to the prior art, and taking into account imperfect recollection. The determination of this issue is clearly a matter for this Honourable Court based upon an assessment of the overall visual impression of the CoLiDo 3D Pen (Dyson Ltd v Vax Ltd [2012] FSR 4, p173 §8):

Not only is that question apparently straightforward, but, I think, it actually is. It is possible to produce much elaborateargument and evidence—some of which seems to touch upon metaphysics—but generally none of that matters. What really matters is what the court can see with its own eyes.

44. The learned authors of Russell-Clarke, at §2-150, describe the task of the court as follows⁸:

Although the task of the court, of necessity, is to go through a verbalised list of features that are similar between designs, in the end the exercise is a visual one.  What matters is the overall impression left by the designs in question on the informed user, not a verbalised list of features.  Thus, havingreviewed features which are similar or different between the two designs and given appropriate weight to each feature in the light of the design corpus and features which are excludedfrom consideration because they are functional, the court must step back and assess whether they collectively do or do not create the same overall impression on the informed user…”

---

⁸ (In the context of the current harmonised version of the UK Registered Designs Act 1949).  This passage suggests that D has acted quite appropriately in assisting the Court by providing a verbalised list of similar features.

29.   Mr Wong’s simple point is that the Dyson case is post 2001 as indeed is Procter & Gamble, on which the defendant also relies, and his reliance on §2-150 of Russell-Clarke is misplaced because the pre-2001 position is in fact covered by Chapter 3 of the text and not Chapter 2.

30.   It was therefore Mr Wong’s submission that the defendant had not approached the matter in the correct manner and further that they would not be in a position to sustain their objection if they had done so.  Mr Wong referred me to the discussion at §3-184 and §3-185 of Russell-Clarke which highlight the evolution of the law in England:

“ The final, and often in practice the most debatable aspect of infringement, was the question of whether the design applied to the allegedly infringing article was sufficiently similar to the registered design to infringe.  The statutory test, as laid down by the concluding words of subs.7(1) of the RDA(A) was that the infringing article is one to which ‘that design [i.e. the registered design] or one not substantially different from it has been applied’.

This test was first introduced in the RDA 1949 and was not altered by the amendments made by the CDPA 1988. It represented a radical departure from the previous law, under which infringement occurred by applying to an article ‘the design or any fraudulent or obvious imitation thereof.’  It was a radical departure in two respects.  First, the 1949 Act test was purely one of objective comparison and involved no requirement that the defendant’s design should have been arrived at by copying; whilst the pre-1949 test at least prima facie required that there should be copying if not actual dishonesty.  In this respect, the post-1949 test was wider.  However, in a second respect, the post-1949 test may well have been narrower.  Provided there are differences between the registered design and the alleged infringement whichcannot be dismissed as insubstantial, there was no infringement. Under the old test, one article could be said to be an ‘obvious imitation’ of another if the key or main features of its design had been copied, regardless of substantial differences in less prominentfeatures.  In this respect, the pre-2001 test of infringement was inprinciple narrower; now the post-2001 test of ‘overall impression’ takes us back closer to the pre-1949 UK test.  In this as in many other respects a historical perspective on the law of designs reveals a zig-zag progression in which the law changes direction,probably at each stage without any understanding of the reasons why the previous change was made.”

31.   I have already said that the parties agreed with the approach suggested by the learned authors at §3-188 and Mr Wong’s submission was that step 3 was missing in the defendant’s analysis since he submitted it is only after comparing the similarities and the differences as required bystep 3 that one can properly approach step 4.  It was not, in his submission, appropriate to approach the comparison on a general basis, albeit he conceded that after considering the similarities and differences and applying some degree of weighting and importance to them that I should then compare them side-by-side as well as step back and look at the competing products as a whole.

32.   Mr Hughes submitted that there was no misunderstanding on his part as to the law, which he said was based squarely on section 31 of the RDO and he submitted this was clear from the following concluding paragraphs of his skeleton:

“ 53. It is respectfully submitted that, in light of the extremely limited prior art, the striking novelty of the Registered Designs, and the obvious similarities between the CoLiDo 3D Pen as a whole and the Registered Designs as a whole, the differences between the CoLiDo 3D Pen and the Registered Designs are immaterial and do not detract from the overall impression that P has clearly taken the substance of D’s Registered Designs.

54. There are undoubtedly differences between the CoLiDo 3D Pen and the Registered Designs, but the differences are not of such importance as to cause the CoLiDo 3D Pen to be substantially different to the Registered Designs, in particular given the striking novelty of the Registered Designs and the very limited prior art.”

33.   During his submissions he changed “overall impression” in paragraph 53 of his skeleton to “overwhelming conclusion” and asked me to regard this as his submission.  He relied also in this respect on Procter & Gamble.

34.   In order to ascertain what the registered design is, so that it may be compared with the alleged infringement, it is necessary to examine the representation of the design on the register and for this purpose I need to isolate the features which constitute the designs.  Again I was referred extensively to Russell-Clarke by both parties which helpfully sets out in some detail the approach to be adopted:

“ The exercise being carried out involves comparing the ‘design’ applied to the alleged infringing article with the ‘design’ on the register.  In each case this need not be all the features of shape (or pattern) applied to the article, but only those features which have ‘eye appeal’.  Furthermore, features of shape which are dictated by function, methods or principles of construction, and features of a part intended for inclusion in a greater article which‘must match’ the overall design of the article of which the part is to form part, are all specifically excluded from forming part of the ‘design’ according to the statutory definition.  It follows that differences between the article depicted on the register and the alleged infringing article in features which do not form part of the ‘design’ in each case according to the statutory definition, areirrelevant to the question of infringement and are to be disregarded.  Thus, the comparison exercise should concentrate on the features which have eye appeal, and functional considerations and features which are there for wholly functional purposes should generally be ignored.  In this respect, the approach is similar to that adopted in comparing the registered design with the prior art for the purpose of assessing novelty.”   (§3-191)

“ Once the features of the registered design and of the alleged infringement which count as part of the ‘design’ have been identified, it was then necessary to compare them to see whether or not any differences between those features are substantial. If a feature of the registered design which is an essential feature of that design is not present on the alleged infringement, then there could be no infringement.”   (§3-194)

“ It has long been the law that where the alleged infringement only has that part of the registered design which was old and has not taken that which is new, there will be no infringement.  Thus, where the registered design differs from what has gone before only by some one particular feature, then unless the alleged infringement embodies that feature, it cannot possibly be an infringement … Where the design is registered with a statement of novelty which sets out the particular feature which is claimed to be new, it would seem that any infringing design would need to contain the feature so claimed.

More generally, the scope of a design may depend upon the state of the prior art at the date of registration.  In Hecla Foundry Co v Walker, Hunter & Co, Lord Herschell said:

‘ It seems to me, therefore, that the eye must be the judge in such a case as this, and that the question must be determined by placing the designs side by side, and asking whether they are the same, or whether the one is an obvious imitation of the other.  I ought perhaps to qualify this by saying that, as a design to be registered must, by section 47, be a ‘new or original design not previously published in the United Kingdom,’ one may be entitled to take into account the state of knowledge at the time of registration, and in what respect the design was new or original, when considering whether any variations from the registered design which appear in the alleged infringement are substantial or immaterial.’

If only small differences separate the registered design from what has gone before, then equally small differences between the alleged infringement and the registered design will be held to be sufficient to avoid infringement.

In Simmons v Mathieson & Co Ltd Swinfen Eady J said:

‘… and I think under these circumstances, seeing what the defendants have done in producing something independently, something bearing some resemblance to it, but I think differing as much from the plaintiff’s as the plaintiff’s differ from any of its predecessors, it would be impossible to hold that there was sufficient novelty in the plaintiff’s design to sustain his registration as a new and original design, without at the same time deciding that the defendants’ is so different that it cannot be held to infringe.  I think, therefore, on the question of infringement, that the defendants have not infringed the plaintiff’s registered design.’

And on appeal, Fletcher Moulton LJ said:

‘ The only possible way in which this registration could be good would be to magnify the importance of minute details so as to give it novelty or originality, and then if you magnify the importance of small details for that purpose, you must also keep them on that scale for the purpose of deciding whether there is an infringement.’

Thus, where the novelty is small, the court may refuse to hold anything to be an infringement, unless it is almost exactly like the registered design.  This was made particularly clear in the case of Negretti and Zambra v WF Stanley & Co Ltd, where Astbury J said:

‘ In a design of this very humble character, where the design itself is very close to the designs which have gone before, as Lord Halsbury said in the Gramophone case, the plaintiffs, in order to succeed in infringement, must show that the article complained of is an exact reproduction of the plaintiffs’ design,and that any difference, however trifling or unsubstantial, will, or may, protect it from infringement.’

Thus, it may be said that a registered design which is possessed of substantial novelty and originality will have a broader readinggiven to the monopoly which it affords than will a design which is barely novel or original.  It does not however follow that a registered design which has no close prior art is to be given a very wide ambit which can ignore substantial differences between the registered design and the alleged infringement.  Even under the potentially wider test under the pre-1949 law of obvious imitation, the fact that the alleged infringement was nearer the registered design than the anticipations was not necessarily indicative of infringement.”   (§§3-196 – 202)

The factual situation

35.   I turn then to the facts of this case.

36.   Before commencing the present action, the plaintiff had written to the defendant and sought an acknowledgment that dealing in or with the CoLi Pen in Hong Kong would not infringe the RDs.  The defendant refused to provide such acknowledgment.

37.   There is no dispute that the plaintiff’s proposed acts (import into and sale in Hong Kong) will be caught by section 31(1)(a) and (b) of the RDO. The only issue is whether the design of the CoLi Pen is the same or “not substantially different” from the RDs.

38.   It was the defendant’s submission that the facts surrounding the launch of their 3Doodler 1.0 Pen in February 2013 and what followed was important background to my assessment of the prior art and the comparison I am required to make between that and the RDs.  Mr Hughes explained the ground-breaking nature of the defendant’s 3Doodler 1.0, which was he submitted the first 3D pen ever launched.

39.   Perhaps unsurprisingly, following its success, a number of competitors appeared which in Mr Hughes submission fell into two categories: those which were copies of 3Doodler 1.0 and those which were competitive products.  His categorization in his skeleton was as follows:

“ 3.   Following the success of 3Doodler 1.0, copies of D’s 3Doodler 1.0 3D pen began to enter the market:

(1)   In June 2013, the first version of the Yaya 3D pen …;

(2)   After 28 June 2013, the 3D pen depicted in PRC design patent No. CN 302680797 …;

(3)   After 23 July 2013, the 3D pen depicted in PRC design patent No. CN 302781312 …;

(4)   In December 2013, the RainSun 3D pen …;

(5)   In March 2014, the Ahiro-002A 3D pen …; and

(6)   After 21 May 2014, the 3D pen depicted in PRC design patent No. CN 302826272 ….

4.   The commercial success of 3Doodler 1.0 also encouraged other competitors to start producing 3D pens which are not direct copies of D’s 3Doodler 1.0 3D pen:

(1)   In July 2013, the Myriwell 3D pen …;

(2)   In September 2013, the 3Dismo 3D pen …;

(3)   In February 2014, the iMakr/Yaya (second version) 3D pen …;

(4)   In April 2014, the Lix 3D pen …; and

(5)   In July 2014, the CreoPop 3D pen ….”

40.   Details of the pens in question were exhibited to either the affidavit of Daniel William Cowen filed on behalf of the defendant or the second affirmation of Fung Yuk Chun Gayle filed on behalf of the plaintiff.

41.   It was conceded by both parties that all of the 3D pens referred to in the last two paragraphs (including the defendant’s own 3Doodler 1.0 Pen) constitute prior art to the RDs.

42.   On 15 September 2014 the defendant filed US design patent application no 29/502,355 for the 3Doodler 2.0 design.  The priority filing date of the RDs is based upon this US design patent application, which was subsequently granted on 9 February 2016.

43.   For completeness by way of background I should add that following a fundraising campaign the 3Doodler 2.0 3D Pen was launched in late 2015 and on 16 June 2016 the defendant launched 3Doodler 3.0, a further redesigned and improved 3Doodler 3D Pen with, it was submitted, a completely different base design.

44.   I therefore need to consider what needs to be compared to the CoLi Pen when considering the designs encompassed by the RDs.

The parties’ submissions

45.   It was the plaintiff’s submission that this needed a forensic examination of the evidence in relation to the features which the defendant says are similar as well as a focus on the differences between them, whereasthe defendant’s submission was that I should take a broader approach, and arrive at a conclusion by way of overall impression as to whether there is infringement and the more so in a case such as this where the defendant’s initial product and the designs flowing from it were so revolutionary in terms of the state of the art at the time.

46.   The evidence before me consisted of the first affirmation of Fung Yuk Chun Gayle, a director of the plaintiff’s, which recited the background to the application.

47.   The grounds of the defendant’s opposition were then set out in the affidavit of Daniel William Cowen, whose evidence was that to the best of his knowledge, the defendant’s 3Doodler 1.0 was the world’s first 3D Pen when it was launched in 2013, that 3Doodler 2.0 launched in 2015 had a substantially different design and that in the interim on 15 September 2014 a US design patent application be made from which date the RDs all claim priority. Mr Cowen’s evidence is that 3Doodler 2.0 represented in the RDs are radically different in their design to all the prior art and he goeson to draw distinctions between each of those products and the defendant’s own product.  Mr Cowen then gives evidence of the similarities between the CoLi Pen and the RDs and it is these similarities on which Mr Hughes elaborated in his submissions.

48.   The plaintiff’s responded with a second affirmation of Fung Yuk Chun Gayle and it is this affirmation which had a number of the actualmanufactured articles as exhibits.  Madam Fung also exhibited two design patents from China, which were also she said considered at the time of the defendant’s US patent application.  Madam Fung’s evidence was that it is important to consider both the similarities and the differences between the prior art and the RDs in order to arrive at a conclusion as to what is new and novel in the defendant’s pen.  She focused therefore on the similarities between the prior art and the RDs before addressing the differences she claims there are between the RDs and the CoLi Pen.  There formed the basis of Mr Wong’s detailed submissions.  Madam Fung’s second affirmation also exhibited each of the RDs in question.

49.   Now there was considerable discussion over the precise scopeof the design features captured by the RDs, particularly by reference to the dashed lines which customarily illustrate the portion of a design disclaimed from protection.

50.   The defendant’s submission based on Russell-Clarke §2-143 was that ultimately this was a matter for interpretation, but as will become clear I did not find there to be any uncertainty in relation to the scope of the design protection sought, as the circumstances in which the dashed lines were used in this case was clear.

51.   The plaintiff’s submission was that in any event the defendant’s reliance on Russell-Clarke §2-143 in support of this proposition was not well founded since the case law referred to in that section made it clear that this was referable only to the new law pertaining in the UK after the 2001 amendment to the UK Registered Design Act 1949.  Mr Wong referred the court instead to the guidelines issued by the Hong Kong Intellectual Property Department: How to apply to register a design in the Hong KongSAR? and in particular to §§11 and 12 of the accompanying “Notes on representations and statement of novelty” which describe how sectional views should be shown for the purposes of claiming novelty.

52.   Mr Hughes summarized his interpretation of the novel features in the RDs as follows:

“ 37. Whether dashed (or dotted) lines in the representation of a design indicate that parts of a design illustrated are disclaimed from protection is a matter of interpretation (Russell-Clarke, §2-143).‌ ...

(1) The M001 Registered Design is for the entire 3Doodler 2.0—including the tubular body with 3 distinct sections (a front cap, a main tubular section, and a rear cap); a pair of closely positioned circular actuators, one smaller than the other; a rear cap separated from the tubular section by a wavy line; a distinctively shaped front cap separated from the main tubular section by a line, which tapers to the opening of the exit nozzle; and a control panel design;”

53.   Mr Wong took issue with a number of these points of detail, and with the fact, as he saw it that, the summary in relation to RD1 in particular was selective and had not included other features imported in the design, such as the circular device on the rear of the Pen, and indeed its shape.  Furthermore as Mr Hughes conceded, the actuators were not both disclaimed in RD2 but only one of them and Mr Wong further submitted that the summary in respect of RD2 was incomplete because the wavy line referred to in the summary of RD1 had also been disclaimed.

54.   At the end of the day though it seemed clear to me, from the terms of the RDs, the scope and purpose of the use of dashed lines to show what was included and what was not and having regard to the drawings accompanying the design I am unable to accept the defendant’s submission that RD1 is for the entire 3Doodler 2.0 since it is clear from its explicit terms that the features of the design for which the novelty is claimed are the pattern, ornament, shape or configuration of the article as shown, except in dashed lines, in the representation accompanying the registered particulars.

55.   I think it is necessary as the plaintiff submits to do a more forensic analysis of the defined features, having regard to the prior art.  I do not accept the defendant’s submission that the relevant assessment is of each of the RDs as a whole and not of each component part; that flies in the face of what is claimed in the application and in the detail included in the drawing.

56.   I need therefore to have regard to the design features which distinguish the RDs from the prior art before moving on to comparing those design features to the CoLi Pen.

57.   The plaintiff helpfully set out a schedule of material similarities and differences between the CoLi Pen and the RDs in the attachment to their solicitors’ letter to the defendant’s solicitors dated 2 December 2016 and summarized the purport of that schedule as follows:

“ … we set out the material differences between the Proposed Product and the Registered Designs.  In essence, the shape and positioning of the various buttons as well as the overall design of the Proposed Product are substantially different from the Registered Designs.”

58.   The plaintiff then produced further evidence of the alleged differences in Madam Fung’s second affirmation.  The plaintiff’s submission was that in light of the prior art and having regard to the precise scope of the RDs filed that the following comprised the main design features:

In respect of RD1:

“ (a)   Trapezium-shaped main body (Figs 1 to 8);

(b)   Wavy line dividers between the front cap and the main body, and between the rear cap and the main body (Figs 1, 3 – 6);

(c)   Front cap of irregular shape (Figs 1, 5–7);

(d)   A pair of circular actuator buttons on the main body near the front cap (Figs 1, 3 and 5);

(e)   Two ‘stadium-shaped’ device on the main body near the rear cap (Figs 2, 4 and 6);

(f)   Curved rear cap (Figs 5 and 6); and

(g)   Top view design of the rear cap (Fig 8).”

In respect of RD2:

“ (a)   Trapezium-shaped main body (Figs 1 to 8);

(b)   Front cap of irregular shape (Figs 1, 5–7);

(c)   A pair of circular actuator buttons on the main body near the front cap (Figs 1, 3 and 5);

(d)   Curved rear cap (Figs 5 and 6); and

(e)   Top view design of the rear cap (Fig 8).”

In respect of RD3:

“ (a)   Trapezium-shaped body (Figs 1 to 8);

(b)   A pair of circular actuator buttons on the main body near the front cap (Figs 1, 3 and 5); and

(c)   Top view design of the rear cap (Fig 8).”

In respect of RD4:

“ Last but not least, RD4 has the following main design features [B20-25]:-

(a)   A pair of circular actuators on the main body near the front cap (Figs 1, 3 and 5);

(b)   A ‘stadium-shaped’ device on the main body near the rear cap (Figs 2, 4 and 6); and

(c)   Top view design of the rear cap (Fig 8).”

59.   Mr Wong then moved on to differences between the RDs and the CoLi Pen and his submission was that:

(1)   in sharp contrast to the shape of the main body of the 3D pen shown in the RDs (which is trapezium-shaped), the CoLi Pen has an oval-shaped body;

(2)   there is no wavy line divider between the front cap and the main body in the CoLi Pen.  The front cap is separated from the main body by a straight line.  The line divider between the rear cap and the main body is also different from that shown in the RDs;

(3)   in contrast to the shape of the front cap shown in the RDs (which is irregular in shape), the front cap of the CoLi Pen has the shape of a conical frustum;

(4)   the shapes of the actuator buttons shown in the RDs and applied in the CoLi Pen are completely different.  The actuator buttons shown in the RDs are circular in shape.  On the other hand, the actuator buttons in the CoLi Pen are incorporated into a device of irregular shape;

(5)   unlike the RDs, the CoLi Pen does not have any similar ‘stadium-shaped' design(s) on the main body near the rear cap.  There are only two ordinary rectangular buttons located on the main body near the rear cap on the CoLi Pen;

(6)   in respect of the rear cap, the RDs show a curve-shaped rear cap whilst the CoLi Pen has an “S-shaped” rear cap; and

(7)   the top view of the rear cap as shown in the RDs is completely different from that in the CoLi Pen.

60.   Mr Wong produced to the court a comparison table which helpfully set out in summary form these points by showing the similarities and differences between the CoLi Pen and each of the RDs.  In this table he takes the features claimed as novel in Mr Cowen’s evidence for the defendant and provides his answer to each of the design features identified, but in addition goes on to highlight in the case of each of the RDs the numerous differences he submits there are between the RDs and the CoLi Pen.  It is his submission that the similarities alleged were not in fact similarities, save where they feature in the prior art, whilst in the case of the differences, these were numerous and not addressed at all by the defendant in its evidence.

61.   He goes on to submit that none of the design features identifiedin the RDs appear in the CoLi Pen and that none of the differences betweenthe CoLi Pen and the RDs to which the court was referred could be regarded as insubstantial for the purposes of the test I am required to apply.

62.   Mr Hughes on the other hand submitted that the RDs are markedly different to the prior art for 3D drawing devices, the very first of which was defendant’s 3Doodler 1.0 and that there can be no question that the defendant’s 3Doodler 2.0 3D Pen, which embodies the RDs, is highly novel and is markedly different from anything that has gone before.

63.   In light of the revolutionary nature of the article, Mr Hughes said that it is not surprising that there is very little prior art.  In the 18 monthperiod between the launch of 3Doodler 1.0 and the filing of the defendant’s US design patent application, he submitted that only the 11 competing 3D pens, to which I have already made reference, were released to market.  And, as we have seen, of these, he contended no less than 6 are copies of 3Doodler 1.0.

64.   Mr Hughes continued that:

“ 3Doodler 2.0 is a completely different design to 3Doodler 1.0.  The striking visual differences … are myriad. The shape of 3Doodler 2.0 is completely different to the shape of 3Doodler 1.0.  From a (visual) design perspective, it is 75% smaller; it is a much slimmer and more streamlined design (compared to the bulbous 3Doodler 1.0); it features an entirely new nozzle design; it is separated into 3 longitudinal sections compared with the 2 halves of 3Doodler 1.0; it does not have a large, circular fan port; and its actuators are conjoined circular buttons, compared with the separate, triangular actuators in 3Doodler 1.0 ….”

65.   Mr Hughes submitted that a breakdown of the material differences between the RDs and the prior art and between the CoLi Pen and the RDs is of limited assistance to the court because the relative assessment I must make is whether having regard to the RDs as a whole and focusing on eye appeal from the perspective of a notional user, the substance of the designs has been taken, and for this purpose I need to address all the other factors highlighted in the authorities including the similarities. Mr Hughes relied on the judgment of Barker J in Tang Fun Kee Manufacturing, ibid.

66.   It is clear that the parties have approached the position very differently.  The plaintiff has urged me to compare the precise similarities and differences when making the assessments I have to make, whereas the defendant urges me to approach the exercise in a more general manner.

67.   The defendant’s closing submission was that in light of the extremely limited prior art, the striking novelty of the RDs, and the obvious similarities between the CoLi Pen as a whole and the RDs as a whole, the differences between the CoLi Pen and the RDs are immaterial and do not detract from the overall impression that the plaintiff has clearly taken the substance of the defendant’s RDs.

68.   Whilst he conceded that there are undoubtedly differences between the CoLi Pen and the RDs, Mr Hughes’s submission was that the differences are not of such importance as to cause the CoLi Pen to be substantially different to the RDs, in particular given the striking novelty ofthe RDs and the very limited prior art.  Thus comparing the CoLi Pen with the RDs, and applying the doctrine of imperfect recollection, his submission was that:

“ … the general configurations are the same; the general shape and positioning of the tripartite tubular pen design is the same; the general shape and positioning of the actuators are the same; the general shape and positioning of the front cap and of the rear cap are the same; the general shape and positioning of the status ring is the same; and the general shape and positioning of the back cap in the ColiDo 3D Pen is the same as for the front cap in the Registered Design.”

69.   Consequently, Mr Hughes concluded, the plaintiff has failed, on the evidence, to establish that its CoLi Pen is not substantially different from the strikingly novel RDs, being designs which differ markedly from the very limited prior art in the field of handheld three-dimensional drawing devices.

70.   Whilst the parties depart in the degree to which I should examine the precise similarities and differences where there is agreement is that having done such an exercise I should step back and look at them side-by-side, having regard to eye appeal and then come back to it with “imperfect recollection” for the purpose of reaching a conclusion on whether the article in question infringed the RD.  It is important to note that whilst this operates as a restraint on a cold-blooded analysis of the precise similarities and differences, it should not be taken too far.  This was acknowledged by Deputy High Court Judge William Wong SC in Babyzen:

“ 31. In Valor Heating Co Ltd v Main Gas Appliances Ltd [1972] FSR 497 at p 502B–C, Whitford J said:

‘From that time onwards a good deal of play has been made in a great many cases on ‘imperfect recollection’.  It is quite obvious that it may be very easy to take it too far,but the cases which were cited to me by counsel for Valor, Wallpaper Manufacturers Ltd. v. Derby Paper Staining Co.(1925) 42 R.P.C. 443, the relevant passage being at page 449,Watson (R.B.) & Co. Ltd. v. Smith Bros. (Wirewares) Ltd. [1963] R.P.C. 147, the relevant passage being at page 153, and Dunlop Rubber Co. v. Golf Ball Developments Ltd.(1931) 48 R.P.C. 268, the relevant passage being at page 281, do I think establish this, that quite plainly in the past in considering registered designs this court has taken the view that you must consider infringement not merely upon the basis of a side by side comparison, but also upon the basis of having had a look at the registered design, then having gone away and come back and perhaps been put in a position of deciding whether some other article is the one you originally saw.’

32.   In Russell-Clarke & Howe on Industrial Designs 9^th Ed (2016), the learned authors at paragraphs 3-152 and 3-153 stated that:

‘ The test is not only to look at the two designs side by side, but also apart, and a little distance away.  The novelty should in other words be substantial, and it must be substantial having regard to such matters as the nature of the article, the extent of the prior art and the number of previous designs in the field in question. …

   Although the words ‘substantial’ and ‘substantially similar’ are used in some of the judicial decisions referred to above, it should be noted that the Act uses the words ‘immaterial details’ in the test of novelty, and a different phraseology, ‘not substantially different’, in the test of infringement.  Are these two tests meant to be the same or different?  If they are different, which is wider? Is it possible for a prior art design to be far enough away from the registration that it differs in more than ‘immaterial details’,but still be close enough that it is ‘not substantially different’, so that continued production of a prior art design could infringe a later registration?  There are strong policy reasonsfor believing that this cannot be intended, since the purposeof the test of novelty is to permit the public to continue to use prior published designs without interference from a later monopoly.  In Valor Heating Co Ltd v Main Gas Appliances Ltd, Whitford J. considered that, despite the difference in wording, ‘by and large the test must be the same’.’”

71.   Mr Hughes approach was to emphasize the strikingly novel nature of the 3Doodler 1.0 when it was introduced as the first ever 3D pen and he majored in his submissions on the differences between the 3Doodler 2.0 and the prior art without, it seems to me, giving any sufficient consideration to the similarities notwithstanding that he conceded that a number of these were competitive products, rather than copies.

72.   Mr Hughes also submitted that because of the strikingly novel nature of the 3Doodler 1.0 the burden of proof on the plaintiff was higher, but I do not accept that.  The burden of proof remains whether on the balance of probabilities the CoLi Pen infringes the defendant’s RDs.

73.   Mr Hughes sought to compare the 3Doodler 2.0 to the prior arthighlighting the more striking differences between it and the pens exhibited to the evidence before the court but did not focus in the same way on the similarities.  It seemed to me he stopped short of the forensic analysis doneby the plaintiff in terms of looking at all of the similarities and differences.  I have of course no difficulty in concluding that there are substantial differences between the defendant’s product and the prior art, but there are also many similarities which must explain the limited scope of the protection sought in the RDs.

74.   Mr Hughes accepted that it was appropriate to look at the similarities and differences when it came to comparing the CoLi Pen to the RDs but when doing so he reverted to reliance on the fact as he put it that the defendant’s product was strikingly novel, and markedly different from the prior art, and that it was about overall impression.

75.   He pointed to similarities in length, width, the tripartite design, the presence of a wavy line around the base cap, and the hooded nib cap separated from the body of the pen.  The exercise was however divorced from the detail of the RDs which for instance claimed no priority in respect of length and width.

76.   Mr Hughes did not attempt to deal with all of the differences Mr Wong had fully particularized in tabular form and in the plaintiff’s evidence and sought to rely again on overall impression, even to the point of suggesting that the pen, the subject of the RD, was more oval than the trapezium shape, which is a submission I cannot accept.

77.   When it comes to the actuators Mr Hughes maintained notwithstanding his client’s evidence to the contrary that the actuators were conjoined and submitted that in any event it was pedantic to suggest that this level of detail was relevant.  Mr Wong pointed out however it was the defendant’s own evidence that the actuators were not conjoined but rather positioned closely together, as well as this being clear from an examination of the RDs themselves.

78.   I cannot accept the submission that the detail in a case such asthis is a matter of pedantry since the effect of the RDO is to afford protection to all manner of precise design specifications and indeed the defendant concedes this by the degree of detail they include in their RD, including around the precise protection sought in respect of actuators for instance.

79.   The danger of overgeneralization was also apparent in Mr Hughes’ submission that the Lix 3D Pen was not in 3 sections, which was again a direct contradiction of the defendant’s own witness testimony to that effect.  It was fairly pointed out by Mr Wong that given the evidenceon this point tendered by the defendant the plaintiff had not put in evidence of their own on this point.

80.   The overall terms of Mr Hughes’ submission was that there was not much difference in the design and if I were to approach the matter as a notional user applying the doctrine of imperfect recollection, I would be influenced, as he would have it, by the strikingly novel design of the original 3Doodler Pen and conclude that the RDs had been infringed.  I amsatisfied, however, that in making the actual findings I must as to the scope of protection afforded by the RDs, have regard to the detailed similarities between the CoLi Pen and the RDs in the light of the prior art and then apply the necessary weighting to decide whether the impression of the notional user would regard them as important.

81.   There is an attractiveness to the defendant’s argument at one level but at another level it ignores the nature of the task which the law requires that I should undertake in relation to the specific design features which differentiate the CoLi Pen from the RDs and indeed at the prior stage the RDs from the prior art.  I come back to the considerations set out in Russell-Clarke §3-188 which the parties agreed was the approach I should adopt to this application.

82.   It is clear to me that the prior art included a number of alternative 3D Pens and the RDs prescribed the precise design features of the defendant’s product, which it sought to protect.  These are limited, as the design drawings themselves show, to very specific features and do not include any part of the RDs which is not new and so reproduced from prior art.

83.   When I come to approach my task I need to have regard to what Aldous J said in Gaskell & Chambers Ltd v Measure Master Ltd [1993] RPC 76 at 79:

“The decision whether the registered design and the designs of the alleged infringements are substantially different is for the court and cannot be delegated to the opinions of the witnesses.  It must be decided on a comparison of the features which appeal to, and are judged by, the eye.  To do this, the court must adopt the mantle of a customer who is interested in the design of the articles in question as it is the eye of such an interested person, the interested addressee, which is relevant.  To adopt that mantle it is often helpful to look at what was available before the prioritydate of the registered design as the eye of the interested addressee could be drawn to details if the design of the registered design only differs from the prior art by such details.  However where adesign differs radically from previous designs then the interested addressee’s eye would be more likely to concentrate on and he would be more likely to remember the general form of the new design rather than the details.

   It is settled law that the comparison must be made between the registered design and the alleged infringement side by side and also upon an assumption of ‘now and later’, namely upon the assumption that the two designs are compared side by side and thereafter the interested addressee goes away and comes back later to the alleged infringements. It is in that way that the court can conclude which features of the design would in reality appealto and be noticed by the eye and then decide whether the designs are or are not substantially different.”

84.   When I compare the CoLi Pen to the RDs there are clearly a number of similarities as well as a number of differences but I am satisfied that the differences are not insubstantial and whilst there are similarities, that is not the test, and they are in any event more akin to prior art.

85.   And so looking at the RDs and the CoLi Pen side-by-side, whilst I see the resemblance in terms of their both being pens of a similar size, I do not, applying to the best of my ability the eye of the consumer, conclude that the CoLi Pen is a copy of the RDs; nor do I, when I step back, and seek to apply the doctrine of imperfect recollection, reach that conclusion.

86.   For these reasons I grant the plaintiff’s application for a negative declaration in the terms sought and make an order nisi that the defendant should pay the plaintiff’s costs of the application.