Beanbag design registration held to be invalid

United Kingdom
In In the matter of Registered Designs 4008773 to 775 in the name of Helen Allison and a request to invalidate (16/08 to 18/08) by Beanbag Bazaar Ltd (Case O-166-10, May 25 2010), the Designs Registry has found that one of three registered designs for beanbags was invalid, even though the concept of the modular furniture was already in the public domain.
 
In September 2008 Helen Allison applied to register three designs for beanbags in the shape of sofas/chairs which folded out to provide temporary bedding. No specific claim to novelty was made and they were registered on September 18 2008. On October 10 2008 Beanbag Bazaar Ltd applied for declarations of invalidity of the registered designs under Section 1(B) of the Registered Designs Act 1949, which requires a design to be new and to possess individual character. 

In accordance with section 1(B)(7) of the act (which states that prior art can be relied upon to invalidate a registered design only if it has been disclosed to the public before the application date of the registered design in question), the hearing officer established that the relevant date was September 2 2008. However, if disclosure was made by the designer (or his/her successor in title) during the 12-month period prior to the relevant date, then such disclosure is not relevant (Section 1B(6)(c)). Therefore, only disclosure made by Allison before September 2 2007 was taken into consideration. The hearing officer stated the importance of assessing the identity of the “informed user”. He established that it could not be simply someone who happened to buy a sofa/chair, but a person who is more familiar with other types of designs on the market, such as a buyer or consumer with background knowledge.

Witness statements were filed by both parties, including witness statements from professionals in the soft furnishings business. The hearing officer closely examined all the evidence filed by both parties and considered its relevance, as it contained a mixture of submission and fact. He pointed out that, to successfully invalidate a design registration, prior art evidence had to prove that it had been disclosed before the application date of the registered design. Some of the evidence provided was identical to the registered designs. However, as there was no information to confirm that it was disclosed to the public before the relevant date, it was not taken into consideration.
 
The first design (Registered Design 4008773) consisted of a sofa unit, a chair unit and a corner unit. The hearing officer stated that the design of the three units together should be considered when assessing if an identical or similar design had been made available to the public. As a statement of novelty was not provided at the time of filing, it was uncertain which aspects of the design were novel. The representations were filed in black and white and no details were provided as to the material used. The hearing officer concluded that the novelty must have subsisted in the shape and configuration of the design as filed. 

The hearing officer first compared the registered design to the prior art filed, which consisted of individual components - chairs or sofas - made from foam blocks which converted into beds. Although the foam may not have been part of the disclosed design, it created a squared-off visual appearance. Beanbag Bazaar claimed that the individual components of the registered design had been disclosed and that the idea of modular furniture, including corner suites, was a known concept. The hearing officer found that, as the registered design was a combination of elements which appeared to have been designed to fit together to make the overall corner suite configuration, this considerably limited the scope for the registered design to be declared invalid on the basis of an individual component having the same overall impression as a piece of prior art. This scope was reduced further by the fact that the individual components that made up the registered design did not create a squared-off look equivalent to that of the prior art. As such, the hearing officer found that the overall impressions of the two designs were quite different. The hearing officer then compared the corner suites prior art with the registered design and concluded that the overall impressions were not sufficiently similar. While the hearing officer understood the argument that the registered design was similar to the prior concept of modular furniture, he did not concur with it and, therefore, held that the application for invalidation had failed.

The second design (Registered Design 408774) consisted of a chair with two large square cushions (one on top of the other), a cuboid backrest running the full width of the chair and a cuboid armrest of a similar shape to the backrest positioned only on one side (the right hand side). The cushions, backrest and armrest had a look of looseness rather than tautness. 

The prior art consisted of foam chairs or sofas which converted into beds. Beanbag Bazaar claimed that the backrest and armrest of the registered design were irrelevant, as chairs with backrests and armrests were known prior to the relevant date. The hearing officer disagreed with Beanbag Bazaar’s argument. The hearing officer found two overall differences with respect to these designs, namely:

  • the looser look of the registered design compared with the tauter look of the prior art; and
  • the presence of an armrest in the registered design. 
The overall impression of the registered design was clearly different from that of the prior art. He took into consideration Allison’s point that there was not a great deal of design freedom in the design of new seating articles. The other sofa which was filed as prior art contained straps which were functional. In addition, it had a different looking backrest and no armrest. As a result, the hearing officer found that the small differences between all the goods were sufficient to produce a clearly different overall effect. Therefore, the invalidation action with respect to the second registered design also failed.

The third design (Registered Design 4008775), a chair that folded out into a bed, was made up of three roughly equally sized rectangular cushions. Each cushion was joined together, but could be folded and unfolded. The cushions could be stacked one on top of each other to form a seating article. Alternatively, the top panel could be folded back to produce a two-panel stack with a backrest. The hearing officer did not take into consideration the zips that appeared in the rear view, as it would go beyond the acceptable level of assessment. The prior art filed by Beanbag Bazaar was also a chair consisting of three roughly equally sized rectangular cushions and with the same loose feel as the registered design. Allison tried to defend her registration by saying that the disclosed designs had different zips and connecting material, and that the older design had square corners, whereas the new design was more rounded. The hearing officer’s view was that these differences would not create a different overall impression of the registered designs. Therefore, he held that the invalidation action had succeeded.

The hearing officer awarded £600 per successful case to Allison, and £400 to Beanbag Bazaar for its successful case (presuming that it was not represented). As such, Allison was entitled to the sum of £800. The hearing officer later realised that Beanbag Bazaar did in fact appoint representation after the applications were filed. As a result, he amended the costs order and awarded Allison the sum of £650.

As long as a registered design has sufficient differences from the prior art, it can remain registered. If Allison had claimed novelty or filed more detailed representations when the applications were first filed, the outcome may have differed.

Triona Desmond, Hammonds LLP, London

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