1 December 2013

Design Right and Registered Designs: Utopia Tableware v BBP Marketing

This was a claim for registered design and unregistered design right infringement in the new Intellectual Property Enterprise Court ("IPEC"). Both the claimant Utopia Tableware Ltd of Chesterfield and the first defendant BBP Marketing Ltd of Mirfield supplied glasses. At the start of the litigation Utopia applied for and won an interim injunction (see Utopia Tableware v BBP Marketing [2013] EWPCC 15 (21 Jan 2013)). However, the evidence on which it relied was found to have been concocted and Birss J referred the matter to the Attorney General under CPR 81.18 so that he could consider committal proceedings (see Utopia Tableware Ltd v BBP Marketing Ltd and Another [2013] EWPCC 28 (30 May 2013)). The action came on for trial before Mr Recorder Campbell on 24 Sept 2013 and he delivered judgment on 12 Nov 2013 (see Utopia Tableware Ltd v BBP Marketing Ltd and Another [2013] EWHC 3483 (IPEC) (12 Nov 2013)).

The Registered Design
Utopia had registered the following design with the Designs Registry under registration number 4021276 pursuant to the Registered Designs Act 1949:

The Design Right
The design document in which the design was recorded appears below.

Infringing Articles
The following photograph shows the glasses sold by each of the parties.  Utopia's appears to the left and BBP's to the right.

The Issues
The defendants admitted that they had copied the exterior dimensions of the claimant's design but not its interior measurements nor the wall thickness since their glasses were made out of polycarbonate rather than glass.  Having admitted copying of the exterior dimensions the defendants could hardly deny copying of the unregistered design or claim that their glass produced on an informed user a different overall impression from the registered design. Their defence was that the claimant's design was commonplace and lacked individual character.

Mr Recorder Campbell found for Utopia on both points.

As for the "commonplace defence" the judge directed himself at paragraph [58] to identify the relevant design field for the purposes of the Act.  He decided at [69] that it was beer glasses.  Comparing
"The shape of the profile of the outer surfaces of the Claimant's Vessel, that profile in particular including, above a waisted section, an elongated tulip shaped section which tapers inwardly as it approaches the rim of the Claimant's Vessel,"
to similarly shaped glasses distributed by Amstel, Carlsberg and Peroni to promote their beers he concluded that that feature was not commonplace though other features were. As design right can subsist in any aspect of the design of part of an article the Recorder found that that was enough for design right to subsist.

Relying on Judge Birss QC's decision in Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat) (9 July 2012) which I discussed in  Apple v Samsung - compare and contrast 28 Aug 2012 NIPC law the Recorder identified the "informed user" as a beer drinker, held that the designer of a waisted glass had limited design freedom and compared Utopia's glass to the Amstel, Carlsberg and Peroni glasses. Having regard to those factors he concluded that the design did have individual character and was therefore valid.

He therefore held that both Utopia's design  right and the registered had been infringed.

Despite the submissions of Sir Robin Jacob, the leading scholars on intellectual property law, the Intellectual Property Bar Association and many others the government seems hell bent on its proposal to criminalize registered design right infringement. Had that proposal been law it is possible that the executives of two well established and highly regarded local companies would have been prosecuted, This question whether the registered design had individual character was difficult enough for an experienced intellectual property practitioner to resolve. It is hard to imagine lay justices and juries attempting a similar careful analysis. In a case such as this where the claimant's witnesses had acted particularly badly a conviction would have been intolerable.