Fruit punnets held not to infringe registered design rights, but infringe unregistered rights

In Sealed Air Limited v Sharp Interpack Limited ([2013] EWPCC 23), the Patents County Court of England and Wales has found that Sealed Air Limited’s UK and Community registered designs for soft fruit punnets were not infringed by Sharp Interpack Limited’s designs, but that Sealed Air’s unregistered design rights were. 

Sealed Air claimed that Sharp Interpack had infringed its UK registered designs and Community registered designs (CRDs) and UK unregistered design rights in respect of a number of soft fruit punnets. Sealed Air also claimed UK unregistered design rights in a number of features of these punnets and combinations of those features. 

The laws in respect of CRDs, as governed by the Council Regulation on Community Designs (6/2002), and the equivalent UK rights under the Registered Designs Act 1949, have been harmonised. Article 10 of the Design Regulation provides that the scope of protection conferred by a Community design includes any design that does not produce a different overall impression on the informed user.

UK unregistered design rights are governed by the Copyright Designs and Patents Act 1988. Under Section 213 of the act, a designer can claim rights in the design as a whole or in elements (and combinations of those elements) of it. For a UK unregistered design right to subsist, the designer must show that the designs claimed are original in the copyright sense and not commonplace in the design field in question. Infringement is governed by Section 226 of the act. If UK unregistered design right is found to subsist, the question is whether the allegedly infringing article was produced exactly or substantially in line with the protected design. Unlike with registered designs, this must be as a result of copying.

Mr Justice Birss began by addressing the claims in respect of the registered designs. He noted that there was a preliminary question of how the representation of a registered design should be interpreted. He rejected Sharp’s contention that it should be through the eyes of the informed user. He considered that it is for the court to interpret the design actually registered before considering questions of the overall impression of that design through the eyes of the informed user.  

The judge analysed the various features of each of the registered designs but noted that the design was to be considered as a whole, as it is the overall impression that counts. He found that the CRDs and UK registered designs would not be considered by an informed user as representing much of a departure from a typical punnet. On this basis, he concluded that the designs had a narrow scope of protection. 

Although Sharp’s designs shared some of the individual features of the CRDs and UK registered designs, the judge did not consider the similarities were sufficient to create the same overall impression in the eyes of the informed user. As such, he dismissed the claim for infringement of the CRDs and UK registered designs, concluding that the CRDs and UK registered designs “have an aesthetic element, but in truth their appearance is very largely driven by functional considerations and, to an important degree, the elements which are not constrained by function are conventional”.

This left the UK unregistered design right claim to be decided. The first question to be addressed was whether UK unregistered design right subsisted in the designs claimed. Sealed Air claimed UK unregistered design right in a number of features of the punnets and a number of combinations of those features. Sharp argued that these features and combinations were commonplace in the design field. The judge, however, found on the facts that UK unregistered design right subsisted in five of the 10 features and combinations claimed. 

The judge then turned to the question of infringement. Comparing the elements of the Sealed Air punnet in which he found UK unregistered design right subsisted, he considered that the Sharp punnet was made to Sealed Air’s design in respect of three of the features and combinations claimed. He was further satisfied that the Sharp punnet was derived from the Sealed Air design because Sharp could not show its punnet was designed independently. Accordingly, the judge found that Sealed Air’s UK unregistered design rights had been infringed.

Failing to show infringement of registered designs but succeeding in respect of unregistered rights in the same design is not uncommon. It stems from the designer’s ability to effectively recast the scope of the monopoly claimed to suit the circumstances of its claim. This ability was well employed by Sealed Air, which claimed 10 different elements and combinations of those elements to increase its prospects of the judge finding that one of more features or combinations was original, not commonplace and infringed.

Leigh J Smith, McDermott Will & Emery UK LLP, London