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27 February 2018Trademarks

INTA Design Conference 2018: No room for gut instinct, says Mr Justice Arnold

Mr Justice Arnold, who sits as an English High Court judge, told an industry conference that he never allows gut instinct to sway his decisions.

David Stone, partner at Allen & Overy, led the keynote judges panel at INTA’s Power of Design conference yesterday, February 26.

Alongside Arnold on the panel was Judge Melissa Clarke of the Intellectual Property Enterprise Court (IPEC) and Harri Salmi of the Board of Appeal of the European Union Intellectual Property Office.

Arnold said that “if the law is clear, you may not agree but you have to apply it—that’s what the rule of law is all about”.

“You try to arrive at a just result in each case but you must be careful,” Arnold added. He said that the result of one case certainly matters, but the rule of law matters more.

If you allow yourself to be “swayed” by gut instinct or on one case, you are acting to the detriment of the law overall, which is “doing no-one a favour”, according to the High Court judge.

He continued: “Any rational first instance judge will consider how a decision looks if appealed—it would be foolish not to.”

Stone asked the judges whether they ever get stuck and “what’s the judicial equivalent of ‘phone a friend’?”.

Clarke explained that you don’t stop being a lawyer when you become a judge, and “wandering into a room and discussing something with other judges” is commonplace at the IPEC.

Salmi agreed that it’s useful to ask other members for assistance as design is still a “very grey area” compared to IP rights such as trademarks.

Arnold concurred with regard to the “grey” nature of design law, and as such it can be useful and “interesting” to have the objects in dispute in court.

He gave the example of a case involving the Dyson, where the parties agreed to bring life-size 3D monochrome models of the vacuums into the court. “I do prefer to have the objects in court,” Arnold concluded.

Clarke added that “we like a more interactive process in England”, evident through case presentation as well as the comments of the judge, who will “challenge and probe and question”.

Similar to trademark disputes, there can be “plenty of subjectivity” when assessing the overall impression of designs, according to Arnold. But trademark decisions across Europe are now more consistent than they were 20 years ago, and the same will happen with designs.

Consistency is determined by the status of a “mature and well-settled legal framework”.

When the design system has “stabilised” and the judiciary has “learnt tests” and “case law” to apply, the consistency of design decisions will be improved, he continued.

Arnold said that the subjective element cannot be totally eliminated, but until it is reduced, the courts will continue to arrive at different conclusions on occasion.

Salmi said 90% of his cases are trademark focussed and just 10% design focussed. Design cases are “quite the opposite” of the “clear-cut” trademark matters, he added.

Clarke added that in her experience it’s better to “wait a couple of days” if you’re stuck on something. Although not commonplace, Clarke has changed her mind in the process of writing a decision. You can apply legal rigour to the facts and “end up somewhere you don’t necessarily expect” in some cases, she explained.

INTA’s Power of Design conference finishes today, February 27.

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