Court finds infringement of UK unregistered design, but no infringement of RCD

In Kohler Mira Ltd v Bristan Group Ltd ([2013] EWPPC Civ 2), the Patents County Court has found an infringement of a UK unregistered design right (UDR) in an electric shower unit, but no infringement of two registered Community designs (RCDs) relating to the same model of shower unit. 

Mira claimed infringement of two RCDs and a UK UDR pertaining to its electric shower units by three Bristan products. Bristan denied infringement and, in the case of the UDR claim, contended that the designs were derived independently. Bristan also contended that the RCDs lacked individual character and were invalid.

Although HHJ Birss QC concluded that Mira’s RCDs were valid, as they each had individual character, neither one of them was found to be infringed. Bristan’s products had certain differences to Mira’s RCDs, which created an overall different impression on the informed user. In coming to this conclusion, the judge engaged in a detailed analysis of the RCDs, regarding, in particular, the use of dashed or dotted lines in their representations. He noted that dashed lines could either indicate portions of a design for which no protection was sought, or portions of a design that were not visible from a particular view. He interpreted the dashed lines in the second RCD to mean that it had a transparent or translucent front face, indicating what was visible in the article. Owing to the lack of the striking transparent front panel, the judge did not think that Bristan’s designs produced the same overall impression as the second RCD.

In relation to the first RCD, the judge interpreted the dashed lines to indicate features that were disclaimed from the scope of protection. The result was that the judge found no infringement, as the differences between the RCDs and Bristan’s products were so great to produce a different overall impression.

Considering the UDR, the judge noted that Mira’s product was a very significant departure in the field of electric showers when it was launched in 2006. It made a significant impact on the market and achieved substantial sales. Although there were some differences between Mira’s and Bristan’s designs, the overall similarities were striking. Although the judge believed that the main designer of Bristan’s designs had not copied Mira’s design, he found that other individuals involved in the creation of Bristan’s designs had in all likelihood, either consciously or subconsciously, been influenced by Mira’s products. As Bristan was unable to explain the similarities satisfactorily, the judge was willing to infer copying. He went on to consider whether Bristan’s products were exactly the same as, or substantially similar to, the design, and found that those elements reproduced in Bristan’s products were those that made Mira’s products striking and original. Consequently, he found that there had been infringement of Mira’s UDR.

The judge acknowledged that he had reached a different conclusion in the case of registered and unregistered designs, but noted that the disparity arose because certain aspects, such as the transparent or translucent front panel, which were relevant to the second RCD, had no significance when considering UDR.

Subtle differences between unregistered and registered design rights can ultimately be significant enough to lead to different outcomes in infringement cases. Accordingly, parties considering infringement actions are well advised to pursue both claims side-by-side rather than relying on registrations alone.

There has been some debate as to whether the judge’s interpretation of the use of dashed or dotted lines was correct. The Office of Harmonisation for the Internal Market guidelines headed “Format of the Representation of the Design” (EX-03-09) state that “dotted lines identify elements which are not part of the view in which they are used”. The judge noted that the guidelines were not the only possible interpretation. Had the judge taken the guidelines as prescriptive, however, the analysis in relation to infringement of the second RCD may well have been different.

Keo Shaw, McDermott Will & Emery UK LLP, London