Court introduces concept of informed user's 'design awareness'

In Gimex International Groupe Import Export v The Chill Bag Company Ltd ([2012] EWPCC 31, July 20 2012), the Patents County Court has ruled that a Community registered design called an Ice Bag was valid and infringed by the defendants’ Chill Bag product.

The claimant owned a registered Community design relating to a product called the Ice Bag which was a portable ice bucket in the form of a bag.  The claimant argued that its registered design was infringed by the defendants’ ice bucket bag marketed under the name Chill Bag. The defendants denied the infringement and claimed that the claimant’s design was invalid on the basis that it was not new and lacked individual character. The key to the defendants’ invalidity claim was the claimant’s prior product called Transline, used to carry wine bottles. 

The claim of infringement was part of a wider dispute between the parties, which had previously been business associates. It was directed by HHJ Colin Birss QC that the issues of infringement and validity of the claimant’s design would be decided first.

The judge considered that the case concerned an issue of principle as to what happens when a designer applies a new use (use as a cooling bag) for an old design (the Transline bottle bag). This raised two questions:

• firstly, whether the fact that the Transline bag was used for a different purpose meant that it was included in the relevant prior art; and
• secondly, whether the intended function of the product should be taken into account when considering the overall impression the design produces.

With respect to the first question, the judge concluded that it was clear that the design must be valid by comparison with all the prior art, irrespective of use. With regard to the second question, the use of a product is relevant to the “knowledge” or “design awareness” of the informed user, so in turn is relevant to the overall impression created by the design. This, however, does not impact on the prior art that can be cited against the design. The judge agreed with submissions that, had the Transline bag been identical to the Ice Bag, the registration would have been invalid. 

Applying this approach, the judge assessed the individual character of the Ice Bag taking into account design constraints and design freedom over the prior art, in particular the Transline bag. He found that the informed user would have a different overall impression of the two products. The Ice Bag design was found to be of individual character and was valid. In contrast, the judge held that, although the scope of protection given to the Ice Bag design was quite narrow, the Chill Bag product did not produce a different overall impression (the important elements of the overall impression being the height and the handles of both products) on an informed user and, accordingly, infringed the Ice Bag design.

In describing the characteristics of the informed user, the judge introduced the concept of the informed user’s 'design awareness' and, in doing so, drew an analogy with the role of common general knowledge in patent cases. Although the judge was explicit that the concepts are very different and that his analogy only concerned the legal framework, it will be interesting to see whether practitioners attempt to develop this concept in future disputes, especially given the impact a particular definition of 'common general knowledge' can have on patent infringement proceedings.  

Leigh Smith, McDermott Will & Emery UK LLP, London