Registered designs for garment hangers found to have been infringed

In Mainetti (UK) Ltd v Hangerlogic UK Ltd ([2012] EWPCC 42, October 24 2012), the Patents County Court has found that three registered designs for garment hangers were valid and infringed.

Mainetti (UK) Limited is the manufacturer of a number of different garment hangers. It is also the proprietor of three UK registered designs, each protecting one of its hanger designs. Hangerlogic UK Limited also manufactures garment hangers. In the first of the two actions before the court between the parties, Mainetti alleged that Hangerlogic had infringed its registered designs, and Hangerlogic counterclaimed that the registered designs were invalid. In the second action, Hangerlogic sought a declaration that the three modified designs it had produced did not infringe the registered designs. Mainetti counterclaimed that the modified designs infringed the registered designs.

Mr Recorder Iain Purvis QC began by noting that, as the registered designs were all registered prior to December 9 2001, the date on which the implementing regulations for Directive 98/71/EC on the legal protection of designs came into force, the validity of the registered designs remained governed by the test as set out in Section 1(4) of the Registered Designs Act 1949, while any infringement of the registered designs would be governed by Article 9 of the directive. After this date, the tests of validity and infringement were harmonised within the 'overall impression' test found in the directive. The judge was, however, unconvinced that the pre-December 9 2001 test for validity which determines whether a design is the same or differs in only “immaterial details” from one registered or published in the United Kingdom would, in fact, produce a different result in this instance, or indeed in many cases. 

The judge first addressed the validity of the registered designs. To do so, he was required to identify any differences between the registered designs and the prior art cited by Hangerlogic and then consider whether such differences were immaterial. If the differences were not immaterial, he had to consider whether they consisted of variants commonly used in the trade. In comparing the registered designs against the prior art, the conclusion reached was that the registered designs were valid. 

The judge then turned to the question of infringement. The test to be applied was whether the Hangerlogic designs gave the same overall impression to the notional informed user as the registered designs. The notional informed user, the judge noted, is particularly observant and has a good knowledge of features which are normal in the existing art, but does not have the extent of knowledge of a designer or technical expert. The scope of protection afforded by the registered designs was also dependent on the design freedom enjoyed by the designer, which could be restricted by technical, functional and (to some extent) economic considerations.  Thus, in order to assess whether the Hangerlogic designs infringed the registered designs, it was first necessary to define the informed user, design freedom and the existing design corpus. 

In respect of the informed user, the parties agreed that it was not the end consumer, but rather someone in the position of a buyer responsible for purchasing hangers for a retail store. The informed user would be sensitive to design differences and very discerning about the appearance of the hangers bought. Mainetti sought to emphasise the fact that the Hangerlogic designs were interchangeable with the registered designs, as an informed user would be able to purchase the parties’ hangers to be used side-by-side in a retail store. This was not disputed by Hangerlogic; however Hangerlogic sought to play down its significance, suggesting that, whilst this meant the public would not notice differences, the public was not the informed user and it did not mean the buyer’s overall impression of the hangers would be the same. The judge found that interchangeability was a factor pertinent to infringement.

As for design freedom, the judge found that, beyond the basic parameters of the function of a hanger, there is plenty of scope for design freedom. The judge considered the design corpus to consist of the prior art cited by Hangerlogic as well as a book on the subject of hangers and a catalogue from Mainetti. Based on this, the judge did not feel that the registered designs were a startling and radical departure from the norm; nevertheless, the informed user would recognise the originality in each of the registered designs. 

Having established how the test for infringement was to be applied, the judge considered each registered design against the equivalent Hangerlogic design. The judge also assessed whether the modified Hangerlogic designs infringed the registered designs. In each instance, by comparing the registered design as on the register against the Hangerlogic design, the judge found that all six Hangerlogic designs were infringing. He invited submissions as to the form of relief to be granted.

Two points of interest arise from this dispute concerning UK registered designs. First, it affirms the view that the directive has not significantly increased the degree of protection afforded to registered designs granted under the new law as compared with the old. Although it has been suggested that harmonising the validity and infringement tests has resulted in a greater degree of protection, this has been rejected in cases where it has been in issue and was rejected here. 

The second is the role of expert evidence. Mr Recorder Iain Purvis QC was critical of the expert evidence put before him. Although he agreed that it was sensible - given the limited role expert evidence had to play in the case - that both parties used their own in-house experts, he noted that much of the evidence was inadmissible as it went beyond the experts’ remit. He reminded the parties that the correct role of the expert is to provide an educated eye which addresses technical matters, the design corpus, limitations on design freedom and, if necessary, to assist in identifying the informed user. What the expert should not seek to do is become a proxy for the informed user.

Leigh Smith, McDermott Will & Emery UK LLP, London